On 2nd September 2024, the Delhi High Court (DHC) in the case of Vishesh Films Private Limited v. Super Cassettes Industries Limited (pdf) delivered a judgment restraining T-Series from using the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” or any other title that includes the mark “Aashiqui” for their proposed film. Interestingly, T-Series enjoys joint ownership of the franchise “Aashiqui” with Vishesh Films. The Single Judge Bench (SB) consisting of Justice Sanjeev Narula made some intriguing observations regarding the trademarkability of the mark “Aashiqui” as a movie franchise and restraining its use by other entities. The 37-page judgment is a well-written analysis of some rather intriguing aspects of trademark law, and this post will analyse the observations of the SB and anticipate how far the DHC has deviated from its decisions in similar matters brought to it previously.
A Lot is a Name! How Far Can One Claim Rights in the Title of a Film
It is a well-established principle that a film title cannot be protected under copyright. According to Section 13 of the Copyright Act, copyright subsists in, among other things, an original literary work. A title does not qualify as a “work” in this context. Titles of works are not considered suitable subjects for copyright protection, as they are essentially names of the work and are not complete by themselves without the work. In Krishika Lulla v. Shyam Vithalrao Devkatta (2015), the Supreme Court held that a film title, such as “Desi Boys,” cannot be subject to copyright infringement (paras 8-11). This principle was echoed by the Madras HC in Radhakrishnan v. A.R. Murugadoss (2013) concerning the title “Raja Rani” and by the Bombay HC in Zee Entertainment Enterprises Ltd v. Ameya Vinod Khopkar Entertainment (2020) over “De Dhakka”.
Film titles, however, can find protection under trademark law, specifically under Class 41 of the Trademarks Act, 1999, which covers entertainment services. A film title may be protected under trademark law if it is part of a film title series or, if a standalone film, if it has acquired secondary meaning.
The viability of title registrations with societies and guilds has also been a major aspect of discussion for film title registrations. Film titles are customarily registered with trade associations like the Film and Television Producers Guild of India, the Indian Film and Television Producers Council, etc. These entities generally do a check to avoid duplication before registration, however, such registration lacks legal sanctity. Courts may consider registration to determine the first user in disputes but some notable instances indicate otherwise (side note: In case any reader is aware about a case where the Courts have deferred to these registrations before associations to determine prior use, please share it in the comments below.). In M/s. Lyca Productions v. J. Manimaran (2018), the Madras High Court ruled that registration of the title ‘Karu’ with the Film and Television Producers Guild of South India did not prevent others from using it. Similarly, requests to restrain movies with similar titles were rejected by the courts in the case of Yash Raj Film’s “Thoda Pyaar, Thoda Magic” (registered with the Indian Motion Picture Producers’ Association (IMPPA)). In contrast to the above, in 2013, Anil Kapoor changed the title of his film from “Shortkut” to “Shortkut – The Con Is On” following a dispute with Bikramjeet Singh. Singh had an earlier registration of the title with the Indian Motion Picture Producers’ Association (IMPPA) and raised concerns about the similarity with Kapoor’s title. The issue was resolved amicably, leading Kapoor to alter the film’s name.
What did the Court Observe (and How Much did it Deviate)
Coming back to the present judgement, the Court has succinctly commented upon some preliminary principles of trademark law to determine the tenability of Vishesh Films’ claims. But before we get to that, a brief of the facts: Vishesh Films Private Limited, an Indian production house led by Mr Mukesh Bhatt, claimed that their proprietary rights to the “Aashiqui” film franchise were being infringed by the Defendant, Super Cassettes Industries Private Limited (T-Series), despite their joint ownership of the franchise. Vishesh Films, which co-produced the hit films “Aashiqui” (1990) and “Aashiqui 2” (2013) with T-Series, asserted ownership over the trademarks “Aashiqui” and “Aashiqui Ke Liye” and sought to block T-Series from releasing a proposed film titled “Tu Hi Aashiqui” or “Tu Hi Aashiqui Hai,” fearing public confusion and brand dilution. T-Series denied any intention to produce a sequel or derivative work related to the “Aashiqui” films and argued that their new project will be entirely distinct, with no sequential linkage or potential for confusion.
- Does the Plaintiff Have a Trademark?
The DHC noted that “Aashiqui” is not generic or merely descriptive, but is a distinctive mark. It commented that a secondary meaning is now enjoyed by the mark and acts as a ‘distinctive identifier’ of the Aashiqui Franchise. According to this, the SB found the trademark eligible for protection as it suggested a ‘specific brand of romantic films.’ On the defendant’s contention of the mark having become ‘common to trade,’ thereby reducing its distinctiveness, the SB, relying upon Pankaj Goel v. Dabur India, commented that the defendant must show that the use is substantial while the defendant could only show isolated instances of third-party use. So the Court concluded that the mark is neither generic nor common to trade, but instead a suggestive mark that has acquired distinctiveness and goodwill.
- Was there ‘Deceptive Similarity’?
After establishing the above, the court proceeded to the question of deceptive similarity, referring to Amritdhara Pharmacy v. Satya Deo Gupta and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. The DHC analysed that the defendant’s film title “Tu Hi Aashiqui”/”Tu Hi Aashiqui Hai” is deceptively similar to the plaintiff’s trademark “Aashiqui,” given their identical use in films and entertainment services. The DHC also commented that the mere addition of “Tu Hi” and “Hai” does not alter the title’s overall impression and would still likely cause confusion. This similarity is further emphasised by the fact that the defendant had a partnership in the commercially successful franchise. The historical association between the parties and the defendant’s similar title and thematic elements are likely to mislead the audience, creating an affiliation with the “Aashiqui” brand and damaging the plaintiff’s reputation. The Court also noted that stylistic differences in the presentation of the term “Aashiqui” will not resolve the issue (with respect to the plaintiff’s registration of the mark under No. 2563752), nor will attempting to dissociate the franchise using a disclaimer.
Was The Court On Track? Analysing the Court’s Decision in light of IP Principles and Precedents
- Dominance of ‘Aashiqui’ in the Title and the Non-Waiver of Right
The SB’s decision in the current case diverged from its earlier ruling in Venus Worldwide Entertainment Private v. Popular Entertainment Network by addressing the issue of trademark protection for the word “Aashiqui” in isolation, unlike the composite mark in Venus (for “Khiladi”). The SB found that since “Aashiqui” is the sole element in the trademark application and thus the dominant feature, the principles from Venus—where the court denied exclusivity for a single word within a composite mark—did not apply. In response to the defendant’s claim that the plaintiff had waived their rights by not objecting to the release of “Chandigarh Kare Aashiqui,” the SB ruled that the distinctive term “Chandigarh” significantly alters the title’s overall impression, reducing confusion with the “Aashiqui” franchise and implying no direct connection. The SB also noted that trademark owners are not obligated to pursue every instance of potential infringement, especially when confusion is unlikely due to distinguishing elements. At the same time, the SB also emphasised that any future challenges to “Chandigarh Kare Aashiqui” would need to be assessed based on its specific facts and circumstances.
- A ‘Timely’ Application Seeking Injunction
Secondly, the court commented that while the plaintiff in Venus acted belatedly after significant investments were made, the present case involves a timely quia-timet action aimed at preventing potential harm before substantial commercial exploitation by the defendant. Thus, the Venus case is distinguishable and not applicable to the current situation, and a relief for the plaintiff will lie. This reasoning is not isolated in its genesis. Many other cases have reflected similar reasoning by the courts for refusing relief due to delayed action on this issue. For instance, in the case of “Nishabd” (Kanungo Media (P) Ltd. v. RGV Film (DHC 2007)) and “Kabhi Alvida Na Kehna” (Biswaroop Roy Choudhary v. Karan Johar (DHC 2006)).
On these two aspects, the court seems to have acted justly in light of judicial precedents and IP principles towards protecting the rights of the parties. However, there are always questions that can be raised. Restricting the plaintiff completely from using “Aashiqui” in any manner whatsoever in their title does seem a bit extreme. If they decide to incorporate another distinctive word into their title, could the court’s approach not mirror the principles used for “Chandigarh Kare Aashiqui”? That is bound to change the overall impression of the new title to determine if it truly causes confusion or misrepresents a connection to the “Aashiqui” franchise. The defendants in this case have made some really competing arguments and a more flexible approach could ensure that trademark protection is upheld without unduly hampering the plaintiff’s ability to utilise their mark in a differentiated manner.