Del HC | Court rejects suit against movie “Khandani Shafakhana”, thinks it presents golden opportunity for sexologists to approach larger cross section of society

Delhi High Court: Rajiv Sahai Endlaw, J. dismissed a suit filed for refraining the makers of the movie Khandani Shafakhana from releasing the said movie on the ground that it infringes the plaintiff’s proprietary rights.

The plaintiff is an Ayurvedic Sexologist practicing in New Delhi. He claimed that his father, Hakin Hari Kishan Lal, had coined the logo/trademark/brand Khandani Shafakhana and had been in existence from as long as back as 1925. It was claimed that the same constituted plaintiff and his family’s proprietary material. It was also claimed that the Khandani Shafakhana device mark was registered with the Trade Marks Registry. On this basis, it was alleged that the makers of movie Khandani Shafakhana were infringing their proprietary rights. However, it may be noted that the said device mark was not in use for the last 18 years.

Senior Advocate Harish Malhotra, representing the plaintiff submitted that the abandonment of the said device mark was not voluntary and that it could be revived at any time. Rejecting this submission, the High Court noted that the abandonment was under an Order 33 Rule 3 CPC application, and was of plaintiff’s own violotion. It was not pleaded that there was any force or compulsion on the plaintiff to sign the application.

Discussing the proprietary rights claimed by the plaintiff, the Court observed:

“Moreover, while the use of 18 years prior to the institution of the suit, by the father of the plaintiff, of the words “Khandani Shafakhana” is in relation to his professional clinic, the use by the defendants is of the said words as a title to a film. The words “Khandani Shafakhana” singly as well as used in conjunction with each other are generic words. Both are words of Hindi / Urdu language. While the word “Khandani” connotes familial or clannish, the word “Shafakhana” means a hospital or a clinic. Used together, the words convey a family hospital or a family clinic. A bare search of the internet, discloses the word “Khandani” being used, with„Pakode Wala? for vending street food, with „Rajdhani? for a restaurant, with „Sherwani? for a clothing store.Certainly, one person even if running his medical clinic in the name and style of “Khandani Shafakhana”, cannot prevent another, from using the generic word“Khandani” or “Shafakhana” for a hospital or a medical clinic.”

A screening of the movie was arranged for the Court and the plaintiff and after watching the same, Justice Endlaw recorded in the present Judgment:

“I had risen after viewing the film thinking that it presents a golden opportunity to the plaintiff and other practitioners in the field, to, though till now found publishing their advertisements in local newspapers, approach the larger cross section of the society on the subject of need to impart sex education and for lifting the stigma and taboo attached to sexual diseases/disorder/dysfunction and treatment thereof and to commence a countrywide dialogue from the platform offered by the film.”

After discussing the principles culled out from various judicial precedents on the subject, the Court was of the view that the plaintiff was not entitled to the relief of permanent or mandatory injunction or for recovery of any damages from the defendant, as claimed. Resultantly, the suit brought by the plaintiff was dismissed.[Vijay Abbot v. Super Cassettes Industries (P) Ltd., 2019 SCC OnLine Del 9458, decided on 29-07-2019]

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