20 August 2019

Trademark passing-off against film release

by Sutapa Jana

In the case of Dr. Vijay Abbot v. Super Cassettes Industries Private Limited & Ors.[See endnote 1], a Single Judge of Delhi High Court while dealing with the issue of passing-off in respect of a title of the film, vide its Order dated July 29, 2019, laid down the principles governing the test to be applied to cases seeking prevention of a film release.  Additionally, the Single Judge held that while a title by itself is not entitled Copyright protection the same can be protected under the trademarks and unfair competition law. Moreover, the titles of single literary works can be granted protection under trademarks law only if it acquires distinctiveness and a secondary meaning during the course of trade.
Facts of the case

The plaintiff was an Ayurvedic Sexologist running Hakim Hari Kishan Lal Shafakhana Clinic in New Delhi. He is the son of Late Hari Kishan Lal Abbot, claimed to be a world-renowned sexologist who had contributed significantly by providing ayurvedic medical care for all kinds of sexual dysfunctions for over three generations.  The plaintiff claimed proprietary rights in the logo/trademarks/ brands/ business names/ portraits.
In June 2019, the plaintiff came to know about the defendants’ feature film with the title “KHANDANI SHAFAKHANA”. The portrait being used by the defendants in their film was also claimed to be deceptively  similar to that of the plaintiff’s late father. Also, from the trailer of the movie, the plaintiff claimed that the movie is based on the real life and contributions of the plaintiff’s father. Accordingly, the plaintiff contended that the defendants are passing off the proprietary materials which belong to the plaintiff and his family.

Thus, the plaintiff approached the Court on the ground of passing off, seeking permanent injunction to restrain the ten defendants being the producers, directors and others from releasing the film “KHANDANI SHAFAKHANA” and mandatory injunction directing the defendants to change and remove the title of the film to any other title not similar or deceptively similar to that of the plaintiff. Additionally, the plaintiff claimed damages to the tune of Rs. 2 crores from the defendants. 

To assess whether the title of the film caused any damage to the reputation of the plaintiff, the Court ordered a special screening of the film, post which arguments were heard from both sides.
Contentions of the parties before the Single Bench

The plaintiff’s primary contention was that his father had originally coined and invented the aforesaid marks, that have been in existence and use since 1925, and constituted the proprietary material of the plaintiff and his family members. Moreover, the plaintiff claimed that the Indian Registry of Trademarks has declared the plaintiff and his brother as subsequent proprietors of the trademark numbers 164663 and 213916 pertaining to above marks and consequently allowed the plaintiff and his brother to trade in the name of “KHANDANI SHAFAKHANA”. The plaintiff argued that subsequent removal of the marks from the Registry was irrelevant  as the marks can be restored belatedly.

Further, the plaintiff claimed that the portrait of their father is being still used as corporate identity of their profession, which has attained distinctiveness and have acquired secondary meaning for the treatment of all kinds of sexual dysfunctions in both genders, rendered by the plaintiff’s father and thereafter by the plaintiff. The defendants by using a deceptively similar portrait were making financial gains without obtaining any permission from the plaintiff and his family leading to passing off.  It was also argued that the film was defamatory and tarnished the reputation of the plaintiff’s father and his family.

The defendants, on the other hand, argued that in a civil suit between the family members of the Plaintiff filed in the year 2001 before the District court, there was a compromise arrived at between the parties therein,  whereby none of the parties was to use the mark “KHANDANI SHAFAKHANA” and thus it was an admitted fact that  the plaintiff had not been using the mark “KHANDANI SHAFAKHANA” for the last 18 years, prior to the institution of the present suit. Further, the defendants contended that none of the documents filed by the plaintiff evidenced the Late father of the plaintiff or the plaintiff or any of his family members as proprietor of the above-mentioned trademarks. Moreover, there had been no sale or business in the name of “KHANDANI SHAFAKHANA” since 2001, and the plaintiff had been carrying on the business with other trade names. Also, the trademark numbers 213916 and 164663 were only valid till February 19, 2005 and June 22, 2010, respectively. Thus, no injunction can be claimed for marks that have lapsed in the years 2005 and 2010 and which have been admittedly not in use since 2001.

The defendants further submitted that the protagonist of the film was not any man but a woman and all apprehensions of the plaintiff, of the film being based on his father, were misplaced. They also contended that the reference in the film to the man whose photograph appears on the posters, is only to show how the lady protagonist of the film got the clinic and the same was shown not more than five or six minutes in the film of over two hours.

The defendant also submitted that the film was socially relevant and raised the issues of the need for sex education for youth through the eyes of a lady and treatment of sexual disorders like any other disorder/diseases. Moreover, the look of the man in the image of the marks, with Peshawari looks, handlebar moustache and wearing a turban, is generic and there can be no rights over the same. Further, the defendants argued that the plaint does not disclose any cause of action for defamation and thus, no relief can be granted for the same.

Decision of the Single Judge

At the outset, the Single Judge observed that the plaintiff gave a false representation of the trademarks being alive, i.e. the plaintiff indulged in concealment by not disclosing that the registrations of the marks in the name of the Plaintiff already stood removed. In a suit seeking discretionary relief of injunction, such concealment not only disentitles the plaintiff from any interim relief but also entails dismissal of the suit. 

On merits, as the Single Judge was privy to the screening of the film, the Court observed that the film deals with the subject of sex education and the stigma attached to sexual dysfunctions and disorders and treatment thereof. It was also observed that the film gave an opportunity to the plaintiff and other medical practitioners in this field of medicine as it raises the issue of the need to impart sex education and lift the stigma attached to sexual diseases/disorder/dysfunction and its treatment. Despite the same, the plaintiff failed to see the potential that the film could offer him and the public at large.
Further, on the issue of prevention of a film release, relying on a series of judgments[See endnote 2], the Single Judge inter-alia enlisted the governing principles which should be taken into account while issuing such a ban (i) any restrictions imposed on expression of artistic thought, affects the constitutional right of the film makers; (ii) the standards that we set for our censorship must make a substantial allowance in favour of freedom, thus leaving a vast area for creative art to interpret life and society, with some of its follies along with what is good; (iii) we must not look upon certain aspects, as banned in toto and forever from human thought and must give scope for talent to put them before the society; (iv) the requirements of art and literature include within themselves, a comprehensive view of social life, not only in its ideal form; the Constitution protects the rights of the artist to portray social reality in all its forms; some of that portrayal may take the form of questioning values and mores that are prevalent in the society; (v) right to communicate and receive ideas, facts, knowledge, information, beliefs, theories, creative and emotive impulses by speech or by written word, drama, theatre, dance, music, film etc. is an essential component of the protected right of freedom of speech and expression; (vi) our commitment to freedom of expression demands that it cannot be suppressed unless the situations created by allowing that freedom are pressing and the community interest is in danger; anticipated danger should not be remote, conjectural or far-fetched – it should have proximate and direct nexus with the expression and the expression to which objection is taken should be equivalent of a spark in a powder keg; etc .
            It was also observed by the Court that films are a legitimate and important medium for the treatment of issues of general concern and it is open to a producer to project his own message, even if others do not approve it. A film that illustrates the consequences of social evil necessarily must show that social evil. In the said films, the effect of the allegedly offending visuals/words are to be judged from the standards of a reasonable/strong-minded, firm and courageous man and not those of weak and vacillating minds nor of those who scent danger in every hostile point of view. Moreover, a film is to be judged in its entirety, from the point of view of its overall impact.

With respect to the intellectual property right in the titles of the films, the Court held that the protection of literary titles lies in the field of trademark and unfair competition. Further, the titles may relate to two types of works, i.e. titles of single literary works and titles of series of literary works, whereby the titles of series of books, periodicals or newspapers do function as a trade mark, however, the titles of single literary work as such, do not enjoy trademark protection and in order to be entitled for trademark protection, it is necessary to prove that the title of single literary work has acquired a secondary meaning, associating itself with a particular work or source. It was also observed by the Court that the evidence necessary to establish secondary meaning of literary work are the following:
  • presence of an educated audience capable of understanding that the title means the work of a particular artist;
  • length and continuity of use;
  • extent of advertising and promotion and amount of money spent;
  • closeness of the geographical and product markets of the plaintiff and the defendants.
After applying these principles, the Court observed that in the present case the plaint did not disclose any right or cause of action for the plaintiff to sue as no proprietary rights of the plaintiff had been violated, nor is there a prima facie case of defamation. Apart from noting that the mark had admittedly not been in use for the last 18 years, the Court also observed that the words “KHANDANI SHAFAKHANA” singly as well as when used in conjunction with each other were generic Hindu and Urdu words. It was also observed that the registration was never for the word mark “KHANDANI SHAFAKHANA” but of the device mark comprising the said word “KHANDANI SHAFAKHANA” and of the portrait of the father of the plaintiff. Further, it was held that film is based on a social issue and the artist cannot be prevented from depicting the same. The Court also concluded that the viewer of the film was more likely to walk away after "being more open than earlier to the acceptability of the profession as a sexologist". For the above reasons, the Court held that there was no merit in the suit and dismissed it without imposing any costs.

In the instant case, the Court reiterated the well-established principle that a plaintiff who approaches the Court for discretionary relief of injunction by concealing and suppressing material facts should not be entitled for any relief. Secondly, words which are generic in nature cannot be monopolized by any person. Thirdly, the standards set for censorship must make a substantial allowance in favor of freedom and the Court should generally refrain itself from granting an injunction against release of a movie when the Central Board of Certification has already granted the certificate. Further, films are important way to highlight the social issues and an artist and the producer has the right to portray the life in all its hues, including social vices and curbing the same would be against the Constitutional right, as freedom of expression is sacrosanct. 

[The author is a Senior Associate, IPR practice, in Lakshmikumaran & Sridharan, New Delhi]


  1. CS (Comm.) No. 364/2019
  2. Nandini Tewari v. Union of India 2014 SCC OnLine Del 4662; Dharmaprachar Sabha v. Union of India 2014 SCC OnLine Del 6559, Yahoo Inc. v. Firoz Nadiawala, MANU/DE/0784/2014; Prem Mardi v. Union of India, 2015 SCC OnLine Del 12039, Kanungo Media (P) Ltd. v. RGV Film Factory MANU/DE/1592/2017, Ajay Gautam v. Union of India 2015 SCC OnLine Del 6479 (DB)


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