This article is a continuation of our previous article. In the preceding article, we had discussed that one could secure the trademark protection to the 'title' of a series of works (like Harry Potter, Golmaal Series, Hera Pheri series, etc.). However, the 'title' of a single work can acquire trademark protection only in case it has gained the secondary meaning. Further, I had analyzed the concept of 'secondary meaning' in detail in the last article. You can access the first part of the article by clicking here. I had finished that article with a question that what is the significance of registering a 'title' under the Trade Mark Act? Will that provide sufficient protection to the title of a work? In this article, we are going to discuss that point.
The judgment by Delhi High Court in the matter of Biswaroop Roy Choudhary vs Karan Johar, 2006 is a relevant case study in this regard. In this case, the Plaintiff has applied for the registration of the title of his film Kabhi Alvida Na Kehna (KANK). He started the process of registration with the Registrar of the Trademark. In meanwhile, the Plaintiff started the shooting of his film. Later, the Plaintiff came across the news that the Defendant is also making a film with the same title. The Plaintiff send the legal notice to the defendants when the defendant started the shooting of his film. The defendant had registered his title with the Association of Motion Pictures and TV Programme Producers. Finally, the Plaintiff approached the Court to seek an injunction at the film of the defendant just before the release of the film.
The Court denied injunctive relief to the Plaintiff. The Court acknowledged that the Plaintiff has applied for the registration (at the Trademark office) before the defendant. However, that is not adequate. The Court gave the following holding;
a) No party has coined the title KANK as that is the line of the lyrics of a famous song. Hence, no party can claim absolute ownership over the title like this.
b) The Defendant has completed the shooting. He is about to release the film. However, the plaintiff is carrying out the shooting only. Hence, the defendant shall be entitled to use the title on the First use basis. It does not make much difference that the Plaintiff has applied for the trademark registration first.
c) The Plaintiff has approached the Court just before the release of the defendant’s film. The Plaintiff should approach the Court earlier. Now, it shall be unjust for the defendant if the last moment injunction is given in favor of the plaintiff.
Conclusion: In sum, the Defendant has completed the Production of the film. He is ready to release it for commercial exploitation. This is the major ground to deny injunction and the Court allowed the Defendants to use the title.
The take away from the articles (Part I & Part II)
a) You shall be legally able to protect the title of your films most conveniently in the case you have made a few sequel and prequel with the same/similar title.
b) You shall be able to protect the title of your single film/published book only in case you have been able to create a brand value (secondary meaning) of the same. People should relate the title only with your work. For example, there is no sequel/prequel of film Sholay. However, the Court has granted it the trademark status in a matter.
c) Only registering the title with the Trademark Office shall not be sufficient. You still need to create a brand value of you protect by promoting the same. Hence, even if you register the title of your script, it does not guarantee you the full protection.
d) You should not wait for the last moment injunction in case any other person is using the title that you have created and established the brand value of the same. You need to be proactive in this regard.
We can see that there is no solid protection granted to the title under the provision of Indian Law. The title of an unpublished work gets almost negligible protection. Further, it is sometimes unfair too. The bigger producers having more resources can promote their film more compare to the small producers and creators. Consequently, a big producer shall be able to establish the brand name more conveniently. However, this is the position currently, let’s hope with the changing dimension in the entertainment industry with the advent of OTT platforms should evolve the law.
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