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Titles of films are capable of being recognized under trademark law: Delhi High Court

The Delhi High Court found that the word ‘SHOLAY’ is the title of an iconic film, and hence, as a mark linked with the picture, cannot be deemed to be unprotected through Justice Prathiba M. Singh in the case of Sholay Media Entertainment v. Yogesh Patel ( CS (COMM) 8/2016 & CRLM 1918/2002)

FACTS OF THE CASE:

Sholay Media and Entertainment (P) Ltd. and Sippy Films (P) Ltd. brought this action against defendants 1 to 8.

The defendants registered the domain name ‘www.sholay.com,’ published a magazine under the name Sholay, and sold items based on scenes and names from the film ‘SHOLAY.’ Defendant 5 – Netangle.com Pvt. Ltd. is also a firm registered by Defendants 1 to 3. Defendants 6, 7, and 8 were the administrators of the domain name ‘Sholay.com.’

The plaintiff’s rights to the word ‘SHOLAY,’ which is also a registered trademark, have been recognized by the courts.

In the current case, the Plaintiffs claimed that after discovering a magazine titled “IT-Information Technology” published in the year 2000, they discovered that the Defendants had registered the domain name “www.sholay.com.” The magazine was accompanied by a free compact disc (“CD”) including a website advertisement. The defendants intended to develop an entertainment portal with numerous services such as chat, e-greetings, countdowns, horoscopes, kid zone, classified, matrimony, and grocery shop in the aforementioned advertisement.

The plaintiff further learned that the defendants had filed a trademark application in India with the United States Patent and Trademark Office for the mark SHOLAY. Furthermore, the defendants registered defendant 4—a corporation called Sholay.com (P) Ltd., which the plaintiffs challenged under Section 22 of the Companies Act, 2013. As a result, the Registrar of Companies in Chennai ordered defendant 2 to remove the word “Sholay” from its current name. To challenge the aforementioned order, the defendants filed a case before the Madras High Court, which was granted, and the impugned order of Regional Director, Company Affairs, Southern Region, was set aside solely on the basis of a violation of natural justice principles.

JUDGEMENT:

The defendants argued that their application came before the plaintiffs’ application and registration of the mark. The High Court held that the aforementioned claim lacked any validity because the plaintiffs’ film ‘SHOLAY’ was released in 1975, many years before the defendants’ application for registration and formation of the company.

The availability of the CD and DVD of the film ‘SHOLAY’ on the defendants’ website, according to Bench, demonstrates that the defendants’ adoption was, in fact, fraudulent and dishonest. Furthermore, the defendants had registered a number of domain names that were identical or deceptively similar to the title of the film ‘SHOLAY,’ which could not be justified. As a result, the plaintiffs plainly had a claim under Section 27 of the Trademarks Act of 1999. Bench went on to say that the mark ‘SHOLAY’ was already recognized as a well-known mark. As a result, mere past trademark applications or use as part of a company name would not confer any prior rights on the Defendants.

The internet has created an added market for ‘SHOLAY,’ which is a nearly 50-year-old film, and the defendants adopted it with full awareness of the plaintiff’s film, especially given that the defendant’s companies were operated by Indians who were more than likely aware of the film ‘SHOLAY.’ As a result, the goods and services being sold could be deemed offshoots of the claimants. The bench stated that titles and films are capable of being recognized under trademark law, and ‘SHOLAY’ would be a typical illustration of such a case in India.

Furthermore, the High Court ruled that the claim that the internet is only used by educated people was unconstitutional. As a result, it would be simple for anyone, not just educated persons, to build a link between the Plaintiffs’ video and the Defendants’ website. The use of the mark ‘SHOLAY’ as part of domain names, company names, and so on is absolutely illegal and illegitimate, according to the High Court.

The Defendants, their directors, partners, proprietor, and anyone acting for or on their behalf are prohibited from using the name ‘SHOLAY’ in relation to any goods and services, as well as from using the domain name ‘Sholay.com’ and making any reference to the movie ‘SHOLAY’ or using any images or clippings from the said movie, as well as from selling merchandise under the name SHOLAY.

Furthermore, the affected domain name registrars are required to transfer the infringing domain names to the Plaintiffs within one week of receiving the current order and the Plaintiffs’ contact information.

Also, The Plaintiffs had filed a statement of costs. The same is documented. However, a cost statement has been produced, revealing expenses totaling Rs 6,58,036.00/- on various accounts such as court fees, incidental charges, and legal fees. Counsel for Plaintiffs further claims that substantial services were provided even on a pro gratis basis. This Court determined that this is a proper case for the Plaintiffs to be awarded costs. As a result, the suit was decreed for a sum of Rs 25,00,000/- as costs and damages, in accordance with the relief sought in the Plaint.

In light of the foregoing, all pending applications were disposed of.

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JUDGEMENT REVIEWED BY REETI SHETTY

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