Delhi High Court recognizes trade mark rights in film titles: “Sholay” granted trademark protection
The Hon’ble High Court of Delhi, vide its long-anticipated order[1] has provided relief to the makers of the iconic film “Sholay” by restraining the Defendants from using the name 'SHOLAY' in respect of any goods and services, the domain name 'Sholay.com' and making any reference to the movie 'SHOLAY' or using any images or clippings from the said movie, as also from selling merchandise using the name SHOLAY or any images from the said cinematographic film.
The Court, while noting that titles and films are capable of being recognised under the trademark law, has also granted damages to the tune of INR 25 lakhs (USD 32200 approximately) to the makers of the film. In its injunction order, the court noted “the word ‘SHOLAY’, is the title of an iconic film, and consequently, as a mark having been associated with the film, produced and now vesting in the Plaintiffs, cannot be held to be devoid of protection. Certain films cross the boundaries of just being ordinary words and the title of the film ‘SHOLAY’ is one of them. Titles and films are capable of being recognised under trademark law and in India ‘SHOLAY’ would be a classic example of such a case.”
The suit was instituted in December of the year 2000, when the Plaintiffs came across a magazine titled "IT-Information Technology” and learnt that the Defendants had registered the domain name 'www.sholay.com'. The Plaintiffs subsequently also discovered that the Defendants had filed a trademark application dated 11th February 1999 for the mark 'SHOLAY' with the USPTO as well as in India.
The main contention of the Defendants was that ‘Sholay.com’ is a website on the internet, which is used by educated persons, which would consequently lead to lesser likelihood of confusion. While repudiating the aforementioned contention, the court noted that “insofar as internet usage is concerned, the said platform is now being accessed by billions of users across the world who may range from very educated to even illiterate people. In this day and age, the internet as a medium has become a platform for dissemination, communication and empowerment to the common man. Thus, in the opinion of this Court, the contention that the internet is only being used by educated persons is unacceptable. It would be easy for any person, not just educated individuals, to establish a connection between the Plaintiffs’ film and the Defendants’ website. The use of identical logos, marks and names originating from the movie ‘SHOLAY’ further confound the issue. Moreover, the chances of confusion which have been narrated in the Plaint and extracted hereinabove, leave no doubt in the mind of the Court that there is every likelihood of confusion”.
The court, while recognizing the cult status of the movie, also stated that "If there is one film that transcends generations of Indians, it is 'SHOLAY'. The said film, its characters, dialogues, settings, and box office collections are legendary. Undoubtedly, 'SHOLAY' is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema... The mention of the word 'SHOLAY' immediately creates a connection with the movie 'SHOLAY'. There are industry estimates which claim that, although the words 'SHOLAY' may have a dictionary meaning in Hindi (specifically, 'burning coal'), upon the movie going public, the word 'SHOLAY' came to be associated only with the film."
