India’s Bollywood is the booming and shining face of the movie-instituted economy wherein, by producing thousands of films within one year, it marks itself as one of the world’s largest industries for filming motion pictures. While more scale productions pour in day by day, the most vital function that rebusts falls into place is the intellectual property right (IPR) so as to keep exclusive rights for the filmmakers and production houses on their contents. Among all kinds of IPR trademarks concerning film titles is one primary safety mechanism for mass publicity, marketability, and constituency. Such titles, they realize, carry enormous values in the same way as brand names. Well-known film title conversions become more or less synonymous with a franchise to earn a revenue stream out of sequels, merchandising, licensing, and digital rights. Any unauthorized use may confuse the public, dilute the goodwill, and lead to a probable financial loss to the legitimate owners. The trademark acts thus prevent filmmakers from infringement of title.
In India, it protects the film title from misuse and wrongful invocation under the Trademark Act, 1999, retaining the same use or registration from unauthorized persons. Enforcement of such rights faces difficulties mainly because of the peculiar features of the law with respect to proof required for distinctiveness and secondary meaning. This blog thus discusses how Bollywood is protecting the titles of films through trademarks, landmark legal cases on trademark protection of film titles, and problems in their enforcement as making it comprehensible about the legal framework governing title protection.
Understanding Trademarks Under the Trademark Act, 1999
The word “trademark” is an indication of its being a sign, name, word, symbol, or combination serving to identify and distinguish one’s goods or services from those of others, for example in the film industry where the criteria laid down enable the deciding of whether a movie title qualifies as a trademark or not.
Legal Provisions for Trademarks on Movie Titles
- Definition under the Act: A trademark is any mark capable of representation graphically and distinguishing goods or services of one person from another according to section 2(zb) of the Trademark Act, 1999.
- Prohibition against deceptively similar marks: As declared in Section 11 of the Act, trademark registration is denied to those trademarks that may potentially confuse consumers or deceive them.
- Refusal Grounds: Section 9 prevents registration for generic and descriptive marks unless evidence of secondary acquired distinctiveness is presented.
- Protection against passing off: Section 27 gives protection under an unregistered trademark provided an owner can prove prior usage and reputation in the market.
Can Movie Titles Be Trademarked in India?
Generic vs. Unique Titles
- Single movie titles: As a rule, single movie titles are deemed descriptive and thus should not be registered as trademarks unless they have acquired distinctiveness or secondary meaning in the public mind.
- Franchise titles: A title that is part of a series or a franchise (e.g. Dhoom, Golmaal, Krrish) offers stronger trademark protection since it indicates a commercial source.How Bollywood Protects Its Film Titles
- Registering Movie Titles with the Indian Motion Picture Producers’ Association (IMPPA) As an industry norm, Bollywood producers register their titles with industry-based associations such as those with the Indian Motion Picture Producers’ Association (IMPPA), Film & Television Producers Guild of India, Western India Film Producers’ Association (WIFPA), or even the Central Board of Film Certification (CBFC) before making a bid for trademark registration for a film title. Although such registrations do not provide legal protection like a trademark, they act as valid evidence among the other industry stalwarts claiming ownership and deterring any future conflicts.
- Trademark Registration with the Indian Trademark Office All production houses solely claim the title of the movie applying for a trademark under Class 41, which relates and includes all entertainment services, including motion pictures and television programs, as per the Nice Classification.
- Legal Action Against Infringement As for cases of unauthorized usage of any protected movie title, production houses may institute legal proceedings under Sections 27 and 29 of the Trademark Act, 1999: proceeding under these sections popularly known for offering remedies against passing off and trademark infringement. The above includes Mercantile Injunctions to restrain subsequent use of the infringing title; as well as damages and compensation for looting lost revenue; and the seizure of infringing goods where mnemonics are associated with an unauthorized title.
Landmark Trademark Disputes in Bollywood
- Warner Bros. Entertainment Inc. v. Harinder Kohli & Ors. (2008) – “Hari Puttar” vs. “Harry Potter”
The company Warner Bros. sued the producers of the film Hari Puttar: A Comedy of Terrors by its title, which sounded deceptively similar to the global franchise Harry Potter of Warner Bros. The resemblance could mislead people and dilute Warner Bros.’s brand by any of their standards. However, the Delhi High Court ruled in favor of the defendants, stating that “Hari” is a very common Indian name and “Puttar” means “son” in Punjabi, making it distinguishable from Harry Potter. The court also emphasized that there was not going to be any confusion among the viewing audience, given the completely different content, genre, and cultural context in which they wake.
- Mehra v. Chopra (2013) – “Zanjeer” Remake Dispute
The heirs of Prakash Mehra, original producer of Zanjeer (1973), objected to the remake of the film by Apoorva Lakhia on the basis of their trademark rights over the title. They argued that without the authorization of the actual successors of the original producer, the remake could not be made. The Bombay High Court endorsed their argument by ruling that title rights from the original creator or his legal heir must be sought for remakes of classic films. The case thus reinforced the importance of obtaining intellectual property rights before making adaptations or remakes of films.
- Kanungo Media (P) Ltd. v. RGV Film Factory (2007) – Dispute over “Nishabd”
Kanungo Media alleged Ram Gopal Varma’s Nishabd to be deceptively similar to its Bengali film Nishabd, thereby leading the audience to confusion. The Court rejected the claims of Kanungo Media, observing that distinctiveness and originality are significant determinants of ownership claims with respect to movie titles-in as much as the word-that is, Nishabd-in fact is a common Hindi word defined as “silent.” It very obviously did not sufficiency give it distinctiveness entitling it to exclusive rights. It emphasized that there must be proof that a title has acquired a special identification towards a specific production to be able to make any claims for title protection.
Protection of movie titles in the Bollywood film industry is an important aspect of intellectual property that deals with the rights of filmmakers and their production houses over creative and commercial interests. The Trademark Act, 1999 provides for the protection of movie titles; however, enforcement becomes a difficult task due to various legal hindrances that do not make for a cleanly distinct battleground, such as distinctiveness, unauthorized use, and jurisdictional issues.
Legal efforts in and surrounding Bollywood have the added need to usher the law forward into a new era in order to devise improved protection strategies. Consequently, enhancing legal literacy within the industry and lobbying specifically for industry-relevant legislation will assume a significant role in ensuring the intellectual property rights of filmmakers and preserving the uniqueness of Indian cinema. As change happens in the business, improvements in the legal infrastructure along with the means to enforce such laws will be very important for the protection of one of the most precious assets in Bollywood-the titles of movies.
Author: Daisy Banakhede, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
References-
https://www.mondaq.com/india/trademark/1208372/movie-titles-protected-under-indian-law
https://www.bananaip.com/trademark-film-title/
https://www.managingip.com/article/2aosgyqn0ku4nudurokcg/sponsored-content/rights-in-movie-titles-and-characters-through-an-indian-lens
https://www.candcip.com/single-post/navigating-the-trademarkability-of-film-titles-through-judicial-interpretation