Can film names be trademarked?

Guest post by Pallavi Mohan

Recently, the Delhi High Court decided that the name of the acclaimed film “Sholay” is protected under the Trademarks Act, 1999. This movie, originally produced by Sippy Films Pvt Ltd and released in 1975, has gained a cult status over the years. Though the word “Sholay” means “burning coals” in Hindi, the film has become so famous that a reference to the word immediately creates a connection with it.

What are trademarks?

A trademark is a visual mark that helps  a person  distinguish between goods and services of one enterprise from the goods and services of a similar enterprise. These marks could be a word, signature, numerals, combination of colours, etc.

The complete list of all trademarks registered in India can be found in the Register of Trademarks.

Click here to know more about trademarks.

What was the controversy before the Delhi High Court?

The controversy arose when a company, different from the original producers, registered a domain name “www.sholay.com” and started advertising the website through a magazine titled “Sholay”. Both the website and the magazine extensively used scenes from the original film for marketing and advertising. The name “Sholay” and the logo were also used on the merchandise sold by this company, which included Ganpati silver coins, sweets and savouries from Indian Mithai shops, DVDs of the film ‘SHOLAY’, etc. The company had also filed applications for registration of the trademark “Sholay” in India and the United States in the year 1999.

In 2001, the original producers of the film sued the company, asking the court to restrain them from ‘passing off’ their products by using the mark “Sholay”. At this time, the trademark registration applications of the original producers filed in the year 2000 were pending.

What is meant by ‘passing off’ action?

When one  entity misuses an unregistered trademark of another entity to misrepresent a good or service as his own, a ‘passing off action’ helps protect the goodwill of the original manufacturer or service provider.

Who holds the intellectual property rights with respect to the film “Sholay”?

While this suit was pending, the trademark “Sholay” was registered in favour of the original producers of the film, i.e. Sippy Films Pvt Ltd. Other trademark applications submitted by the original producers for merchandise such as perfumes, cosmetics, jewellery, consumables, etc. were also allowed a few years later. In 2015, in a different case, the Court recognised that all intellectual property rights, including copyright in the film “Sholay” vest in the original producer company.

What did the Court finally decide in this case?

The Court first dealt with the issue of  this company filing for trademark registration of the name “Sholay” before the original producers. It held that the adoption of the name “Sholay” by the company was dishonest and an attempt to encash the goodwill and reputation associated with the original film. Therefore, an earlier trademark application would not vest any rights in them.

The Court also held that titles and films could be recognised under the trademark law, especially in such cases where the title of the film has crossed the boundary of just being ordinary words or has gained a secondary meaning, such as the name “Sholay”.

The infringing company was directed to pay costs and damages of 25 lakhs to the original producers of Sholay.