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REGISTRATION AND PROTECTION OF MOVIE TITLES

a) A movie title can be registered as a service mark under Class 41 of the 4th Schedule
of the 1991 Trademark Rules. This class comprises of a number of services, and
among those services is the provision for entertainment. Thus, the filmmakers apply
for registering the film titles under the same.1
b) The makers of the movie can also apply for registration under Class 9 of the 4th
Schedule of the Trademark Rules, which provides for “apparatus for recording,
transmission or reproduction of sound or images”. The film titles can be protected as
an Intellectual Property under this class because movies can also be viewed on
devices like DVDs and OTT.2
c) 2 Different Circumstances that are to be evaluated-
1) Single film title: There are some conditions that a single film title (no sequel) has
to meet so that it can acquire protection under the trademark law as a trademark. The
most vital prerequisite is that the title must acquire a secondary meaning in the minds
of the audience. This means that the audience who watch the movie must connect the
title of the movie with a specific source or production house. Such secondary meaning
can be achieved by the promotional events that are carried out before the release of
the film so that the prospective audience gets to know about the movie during the
promotional events. When such a secondary meaning is obtained, the title of the
movie attains the status of a well-known mark and thus can be registered under the
trademark Act as a trademark. 3 Whether a title has attained a secondary meaning is
ordinarily contingent to the time period for which it has been used, the promotional
events of the movie, the total expense on such promotions and collection from the
movie, and the like.

2) Series of titles: In the presence of a series of film titles like Singham, Dhoom,
Golmaal, Baaghi, etc. the series of film titles can get trademark protection and
registration more easily that those compared to a single film title. This is because a
series of the title implies that each movie is the result of the work of the same
production house and thus can be registered as a trademark without any complex

1
https://dipp.gov.in/sites/default/files/tmr_rules_2002_0.pdf.
2
https://dipp.gov.in/sites/default/files/tmr_rules_2002_0.pdf.
3
Section 9 of Trade Marks Act 1999.

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issues. Also, the titles of the same have also gained immense popularity among the
audience, thus ascertaining that the ownership of such a trademark is not challenging.

CASE LAWS
1) M/S SONA BEVERAGES PVT. LTD. vs. ROHIT SHETTY PICTUREZ LLP 4
Chhattisgarh-based Company named Sona Beverages Co. Ltd owned the trademark
'SIMBA' for selling a variety of drinks, sent a notice to Rohit Shetty Picturez LLP
[production house of SIMMBA] and thereafter filed a suit against the Defendant.

On 10th December 2018, both the parties entered into a Trademark License
Agreement. In addition with consent terms that were placed by the parties on 19th
December 2018 and signed by the representatives of both the parties. As per the
agreement, a disclaimer had to be shown in the title slides/credits of the film that the
trademark 'SIMBA' actually belongs to 'Sona Beverages Co. Ltd' and the production
house is using it under a trademark licensing agreement between both the parties.

Furthermore, the order stated that the Censor Board shall ensure that the disclaimer
has been appropriately been added in the title slides/Credits of the feature film
'SIMMBA'. Thus, the suit was decreed and all the other interim applications are
disposed of.

2) PRASAR BHARATI vs. RITU ARYA & ORS5

Facts- Prasar Bharti recently filed a suit seeking injunction against producers and
distributors of a film titled “DOORDARSHAN” to restrain them from passing off
their trademark DOORDARSHAN before the Delhi High Court.

Held- The Hon’ble Court granted an interim injunction restraining the defendants
from using the mark “DOORDARSHAN” and directed them to make the necessary
alterations/modification in the film within two days of the order.

3) SHOLAY MEDIA AND ENTERTAINMENT PVT LTD. vs. PARAG M.

SANGHAVI6

4
[CS(COMM) 1224/2018]
5
CS(COMM) 96/2020.
6
CS (OS) 1892/2006

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The Delhi High Court restrained the release of Ram Gopal Verma’s film “Ram Gopal
Verma Ke Sholay” due to copyright and trademark infringements with respect to the
famous film Sholay. One of the issues raised in this care was whether trademark
protection could be granted to the title of the film.
The High Court of Delhi ordered an ex-parte injunction in order to restrain the
defendants from infringing the rights of the plaintiff, and also recognised the rights in
the title of the film. Additionally, the defendant also gave an undertaking that it will
not infringe the rights of the plaintiff.
4) KANUNGO MEDIA (P) LTD vs. RGV FILM FACTORY7
This case is an important case with respect to trademarks, as the judiciary made a
great attempt in order to fill the gap and establish a position wherein even a single title
of a film can obtain trademark protection under the 1999 Act. The Court observed that
a film title falls under two categories:
i) Titles of series of film and
ii) Titles of single copyrighted works.
As discussed before, the protection is certain in regards to the titles of a series of film,
and such titles have standard trademark protection. Additionally, the Court observed
that for this protection to extend to the title of a single copyrighted work, it must be
proven that the title has acquired a distinct reputation among the audience or public
and the industry that is, has acquired secondary meaning. Consequently, for obtaining
an injunction, the plaintiff has to establish that their film title has attained secondary
meaning.
5) WARNER BROS. ENTERTAINMENT INC. AND ANR vs. HARINDER
KOHLI AND ORS8,
The plaintiffs are well known for the registered Trademark ‘HARRY POTTER’ and
they alleged infringement of Trademark and prayed for a permanent injunction from
the use of the title ‘Hari Puttar’, that was registered with Indian Motion Picture
Producers’ Association and the Association and was ready for the movie’s
commercial release.
However, the Court dismissed the case stating that the Harry Potter films can be
distinguished by the public and the audience can understand the difference between
films based on a Harry Potter book and a movie which is a Punjabi comedy. It was

7
CS(OS) No.324/2007
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155 (2008) DLT 56

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observed that confusion of Hari Puttar with the plaintiff’s popular trademark Harry
Potter was unlikely.

6) BISWAROOP ROY CHOUDHARY vs. KARAN JOHAR9

Facts-Biswaroop Roy Choudhary had applied for registration of the trademark or title
‘Kabhi Alvida Naa Kehna’ under Class 41 of the Trademarks Act, 1999 for movies.
The application for registration had been published. 40% of the shooting of the movie
was complete. Karan Johar later used the name for his movie and produced it. An
action of infringement was brought against Karan Johar.
Held- The High Court of Delhi held that the title of the single film can be registered
as a trademark provided only that they achieve a secondary meaning. Yet, due to
delay in filing the suit, the court decided in favour of Karan Johar. The court also
considered the argument of Karan Johar that, for the release of the movie he had spent
a lot of money and the movie was well known as a movie produced by Karan Johar,
and therefore, changing the name of the movie will be detrimental to him and will not
be commercially viable.

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2006 VIII AD (Delhi) 351