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Muskan Kukreja & Snehal Khemka
Dec 9, 20245 min read

Navigating the Trademarkability Of Film Titles Through Judicial Interpretation

INTRODUCTION


In India, the protection of film titles is primarily governed by trademark law. Generally, movie titles, being fully dependent on the movie to complete themselves, do not qualify as “work” under Section 13 of the Copyright Act, 1957. While copyright law offers robust protection to the creative elements of a film—such as the script, direction, music, and visuals—titles are not considered original enough to qualify for copyright protection. A film title, in its essence, is seen as a short label or identifier rather than a creative work. Therefore, filmmakers cannot claim exclusive copyright over the title itself, regardless of how iconic or memorable it may become. They can and do, however, justify trademark protection under Class 41 of the Nice classification of goods & services, read along with the Trademarks Act, 1999, which essentially covers a wide range of entertainment services. Moreover, a film title may be protected under trademark law if it is part of a film title series or, if as a standalone film, has acquired secondary meaning. This protection prevents other entities from exploiting the title in a manner that is likely to confuse audiences or dilute the brand identity of the original film.


However, not all film titles can be automatically registered as trademarks. For a title to qualify for trademark protection, it must meet certain criteria: it must be distinctive, non-generic, and not likely to cause confusion with pre-existing marks. For instance, generic or descriptive terms, being devoid of the unique identifier function cannot function as trademarks. However, unlike generic terms, common terms might still acquire distinctiveness if they are so closely associated with a particular source that they do not become diluted and lose their ability to identify that specific source.    



A BRIEF BACKGROUND ON THE REGISTRATION OF FILM TITLES WITH FILM INDUSTRY ASSOCIATIONS IN INDIA


In the Indian film industry, it is a common practice for filmmakers to register their film titles with various film trade associations, although it is not mandatory. These associations are typically subsidiaries of the Film Makers Combine such as the Film and Television Producers Guild of India, the Indian Film and Television Producers Council (IFTPC), the Indian Motion Picture Producers Association (IMPPA), the Western India Film Producers’ Association (WIFPA) etc.


While these associations offer title registration as a customary service, the main objective is to avoid duplication or confusion of film titles by cross-checking with other associations. They ensure that no two producers can claim ownership of the same title. However, title registration with these associations does not provide any legal protection or exclusivity. Although it may offer some level of industry recognition, it does not guarantee that the title will hold up in legal disputes. That being said, in legal proceedings, courts may refer to these registrations as evidence to establish the first adopter or user of a title, should a dispute arise.


In addition to registering with industry associations, filmmakers in India can protect their film titles more robustly by registering them as trademarks under the Trade Marks Act, 1999. According to Section 2(zb) of the Act, a trademark is defined as any distinctive mark, including a word, logo, signature, color combination, or even the shape of goods, that distinguishes one person's goods or services from those of others. As briefly mentioned above, filmmakers can register movie titles as a service mark under Class 41, which covers services related to entertainment, including Film production,  Radio and television entertainment, Film studios, Online music and video streaming and other related services. 


The following cases of Sholay Media & Entertainment Pvt. Ltd. v. Parag Sanghavi, Vishesh Films Pvt. Ltd. v. Super Cassettes Industries Ltd., and Kanungo Media (P) Ltd. v. RGV Film Factory, offer a comprehensive view of how Indian courts are navigating with the trademarkability of film titles through the lens of acquired distinctiveness. These cases illustrate the complex interplay of factors such as secondary meaning, the public's recognition of a film title, and the distinctiveness required for trademark protection.


JUDICIAL INTERPRETATIONS


In the case of Sholay Media & Entertainment Pvt. Ltd. v. Parag Sanghavi, the Delhi High Court granted trademark protection to the iconic title "Sholay" and its associated characters, such as "Gabbar Singh," based on their  extensive recognition and cultural significance in Indian cinema. The Court ruled that these titles had become well-known marks, heavily associated with the original 1975 blockbuster, and that they had acquired significant goodwill and reputation over decades. This case highlighted the strong protection afforded to well-established titles, especially those that have become cultural icons, and underscored the value of long-term use and recognition in acquiring distinctiveness. The ruling also demonstrated the Court’s readiness to award punitive damages for intentional infringement, reinforcing the notion of exclusive moral rights attached to well-known marks.


In the case of Vishesh Films Pvt. Ltd. v. Super Cassettes Industries Ltd., the Delhi High Court ruled in favor of Vishesh Films, granting protection to the title "Aashiqui," despite the argument that the word was generic and widely used in the romance genre. The Court held that "Aashiqui" was a suggestive term rather than descriptive, and therefore could serve as a distinctive brand associated with the film franchise. The Court's reasoning centered on the idea that a suggestive term that hints at a theme—romance in this case—can acquire distinctiveness over time, even if the term itself may have generic associations. The decision emphasized the importance of secondary meaning, noting that "Aashiqui" was seen not just as a generic term for love, but as a unique identifier of a specific type of romantic film. This case underscores the flexibility of trademark law in recognizing the distinctiveness of film titles that evoke specific themes or genres, even if they share common words with other films.


In contrast, the case of Kanungo Media (P) Ltd. v. RGV Film Factory highlights the opposite end of the spectrum in terms of acquired distinctiveness. The Delhi High Court ruled that the title "Nishabd" could not be protected as a trademark because the Plaintiff’s film had never been commercially released, meaning it had not developed any secondary meaning or public recognition. This case reinforced the principle that mere registration of a title is insufficient for trademark protection; a film title must have been widely recognized by the public and associated with a particular source of entertainment. Without any significant public viewership or financial success, the title "Nishabd" had not acquired distinctiveness, and thus was not entitled to trademark protection.


CONCLUSION


Together, the above mentioned  cases offer a comprehensive view of how Indian courts are navigating with the trademarkability of film titles through the lens of acquired distinctiveness. These cases illustrate the complex interplay of factors such as secondary meaning, the public's recognition of a film title, and the distinctiveness required for trademark protection. The central issue revolves around whether a film title has acquired sufficient secondary meaning to distinguish it from others in the same genre. In the Sholay case, the decades of widespread use and cultural association gave the film title and characters a protected status, demonstrating that long-term commercial success and public recognition are crucial in establishing the distinctiveness required for trademark protection. In Vishesh Films, the Court recognized that the term "Aashiqui" had become distinctive due to its association with a specific type of romantic storytelling, while in Kanungo Media, the lack of public recognition of "Nishabd" led the Court to deny trademark protection. 


In summary, the courts are increasingly attentive to the role of acquired distinctiveness in determining whether a film title can be trademarked. The key factors include the extent to which the title has become widely recognized by the public, its association with a particular source of entertainment, and the long-term use and reputation that elevate a title from a generic term to a distinctive mark.


REFERENCES


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