Delhi High Court imposes ₹25 lakh costs on website for infringing trademark of legendary film 'Sholay'

In a significant order in a trademark infringement suit, the Delhi High Court recently imposed costs and damages of ₹25 lakh on a website 'Sholay.com' for infringing the trademark of the legendary Amitabh Bachchan starrer, Sholay [Sholay Media Entertainment & Anr. vs. Yogesh Patel and Ors.]..The Court rejected the argument of the defendant that films cannot be registered under the law of trademarks.Justice Pratibha M Singh said that titles of landmark films are entitled to protection under trademark law since it transcends generations of Indians and it's characters, dialogues, settings and box office collections are legendary."Certain films cross the boundaries of just being ordinary words and the title of the film ‘SHOLAY’ is one of them. Titles and films are capable of being recognised under trademark law and in India ‘SHOLAY’ would be a classic example of such a case," the Court opined.The Court, therefore, also restrained the website from using the logo, designs and selling the DVD of the 1975 movie. "The adoption of the mark ‘SHOLAY’ by the defendants was clearly mala fide and dishonest, owing to the use of the infringing logo, designs, selling of the DVD of the film ‘SHOLAY’ on the Defendants’ website, etc. For the reasons contained above, this Court is convinced that this is a fit case for award of costs to the Plaintiffs. Accordingly, the present suit is decreed for a sum of ₹25,00,000," the Court ordered.The Court directed the same to be paid to the plaintiff within 3 months, failing which the plaintiff would be at liberty to avail remedies in accordance with law for execution of the decree.The defendants were ordered not to use any variation of the mark 'Sholay' on the internet or otherwise including use as a metatag in the source code..The trademark infringement suit was filed by Sholay Media Entertainment Pvt. Ltd. against a domain name and magazine, using the name of the film in an unauthorized manner and indulging in the sale of products related to the film.Appearing on behalf of the plaintiffs, advocates Pravin Anand and Dhruv Anand of the law firm Anand & Anand, contended that the defendants had registered the domain name 'sholay.com' and were indulging in infringing activities like passing off, dilution and tarnishment of the well-known, registered trademark 'Sholay'.They had also published a magazine using the mark 'Sholay' and were selling merchandise using names and scenes from the movie.On the other hand, the defendants argued that ‘Sholay.com’ is a website on the internet which is used by educated persons and would consequently lead to lesser likelihood of confusion.The defendants also claimed that film titles cannot be trademarks and that the goods and services offered by the Plaintiffs and Defendants are different, unrelated and not overlapping. However, the Court rejected the claims made by the defendants and said that in this day and age, the internet has become a platform for dissemination, communication and empowerment to the common man. Thus, the contention that the internet is only being used by educated persons is unacceptable. "It would be easy for any person, not just educated individuals, to establish a connection between the Plaintiffs’ film and the Defendants’ website. The use of identical logos, marks and names originating from the movie ‘SHOLAY’ further confound the issue," the Court said.The Court also reasoned that the goods and services being offered on the website could be considered as off-shoots emanating from the plaintiffs and that film titles are very well under the purview of trademark protection..[Read Judgment]