Delhi High Court: In a suit filed by the plaintiff seeking to prevent the defendant from releasing any sequels of Aashiqui, in particular, the third part tentatively titled “Aashiqui 3” / “Tu Hi Aashiqui” / “Tu Hi Aashiqui Hai”, without the plaintiff’s express consent, Sanjeev Narula, J., stated that permitting the defendant to use a deceptively similar title, especially given the existing public anticipation of a third instalment of the Aashiqui Franchise, would infringe the plaintiff’s trade mark rights by misleading consumers and diluting the brand identity of the Aashiqui Franchise.
Thus, the Court granted interim injunction in the plaintiff’s favour, restraining the defendant, and/or anybody acting on their behalf, from using the title “Tu Hi Aashiqui” / “Tu Hi Aashiqui Hai” and/or any other name / title which uses the mark “Aashiqui”, in respect of their proposed film.
Background
Vishesh Films Private Limited, the plaintiff, was an Indian film production house, under the leadership of Mukesh Bhatt, and they were known for producing commercially successful films with popular music. Further, Super Cassettes Industries Limited, the defendant was founded by Late Gulshan Kumar in 1983 and was popularly known to be doing business as ‘T-Series’, an Indian music record label and film production company. After the demise of Mr. Gulshan Kumar, the company has been taken over by his son, Mr. Bhushan Kumar. Over the years, they were in the business of acquiring soundtracks and publishing them on various online, digital, television and other platforms, in addition to producing movies.
On 01-01-1990, the plaintiff entered into an agreement with the defendant for co-production of the first instalment of the Aashiqui Franchise. The said agreement had various clauses dealt with joint ownership of all rights in the film between the parties, except music. Thereafter, a success of Aashiqui, the parties entered into another agreement dated 21-12-2011 (‘2011 Agreement’) to jointly produce another film titled Aashiqui 2. Upon its release on 26-04-2013, this second instalment also achieved considerable commercial success, earning over INR 100 crores.
In view of the agreements, the first two films in the Aashiqui Franchise were jointly owned, credited and produced between the plaintiff and defendant. These agreements continued to govern the relationship between the parties in respect of any film associated with the Aashiqui Franchise, including any prequel, sequel or re-make, as provided in the 2011 Agreement.
Plaintiff alleged that their proprietary rights in the film franchise ‘Aashiqui’ were being violated by the defendant, despite the existence of joint ownership under the agreements executed between the parties. The plaintiff asserted their rights over the trade marks “Aashiqui” and “Aashiqui Ke Liye”, was registered under the Trade Marks Act, 1999 (‘the TM Act’), with usage claimed since 1990 and 2014, respectively. Based on these rights, the plaintiff sought to prevent the defendant from releasing any sequels, in particular, the third instalment tentatively titled “Aashiqui 3”/ “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai”, without their express consent.
The defendant admitted joint ownership over the Aashiqui Franchise, but categorically denied any intention to produce another instalment of the Aashiqui Franchise or create any derivative works based on the cinematographic films Aashiqui and Aashiqui 2. The defendant asserted that the title of their proposed movie “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” was not similar to the plaintiff’s registered trade mark or a sequential title. Therefore, there was no possibility of public confusion. The defendant further undertook that their film would be entirely distinct from the films in the Aashiqui Franchise, and it should have no sequential linkage and not be a continuation/ adaptation/ derivative of the previous films.
Analysis, Law, and Decision
Regarding the defendant’s challenge to the rights asserted by the plaintiff in their trade mark “Aashiqui” on the grounds that it was both generic and common to trade within the film industry, the Court stated that a generic term could not function as a trademark because it did not distinguish the source of the goods or services. However, unlike generic terms, a term that was common to trade might still acquire distinctiveness if it was closely associated with a particular source and had not become so diluted that it lost its ability to identify that source.
The Court stated that a word like “Aashiqui”, might suggest a theme of romance, but it could not be said to exhaustively describe the full spectrum of a film’s narrative, which might include love, violence, hatred, and a myriad of other human emotions and experiences. In trademark law, a mere suggestive term could still function as a valid trade mark. Therefore, “Aashiqui” was prima facie not a mere descriptive term but rather a distinctive mark that suggested a specific brand of romantic films, capable of being protected under trade mark law.
Additionally, the title “Aashiqui” had been used consistently by the plaintiff, in collaboration with the defendant, in connection with their series of successful films. Consequently, the word “Aashiqui” had prima facie acquired strong reputation and goodwill which was closely associated with a particular brand of romantic cinema produced by the parties jointly. Therefore, even if the question of whether “Aashiqui” had acquired secondary meaning was to be determined at the stage of trial, the Court prima facie opined that “Aashiqui” was not generic, as it did not describe a general category of goods but rather served as a distinctive identifier of the Aashiqui Franchise.
The Court stated that the fact that the plaintiff had not sued every third-party who had used the term “Aashiqui” in some form would not in itself diminish the strength or validity of their trademark. The plaintiff’s decision to prioritize action against the defendant, who was using the term in a way that directly impacted the plaintiff’s established brand, was both strategic and legally sound. Therefore, the Court opined that the title “Aashiqui” was neither generic nor common to trade. It was a suggestive mark that had acquired distinctiveness and goodwill through its association with the successful Aashiqui Franchise.
Regarding the issue that whether there was a likelihood of confusion among the public regarding defendant’s proposed film and plaintiff’s Aashiqui franchise, the Court stated that the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” prominently featured the word “Aashiqui” as its dominant and most distinctive element. The word “Aashiqui”, in the title of a film, was immediately recognizable to the public as being associated with the highly successful romantic film series. This association was not incidental and was built through years of significant commercial success. Further, the addition of the words “Tu Hi” and “Hai” did not significantly alter the overall impression of the title, particularly when viewed through the lens of imperfect recollection.
The Court prima facie opined that the phonetic and conceptual similarities in the marks, combined with the likelihood of confusion among the target audience, supported the conclusion that the defendant’s use of the title infringed upon the plaintiff’s trade mark rights. Therefore, it was evident that “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” was deceptively similar to “Aashiqui”. Thus, the Court stated that the plaintiff’s case would be covered under Section 29(1) read with Section 29(2)(b) of the TM Act. Even if it was assumed that there was no confusion as to the source of service, at the very least, there was likelihood of confusion regarding association, sponsorship, endorsement etc. Therefore, the plaintiff’s claim of deceptive similarity was well-founded, and the defendant’s title should be restrained to protect the Plaintiff’s established brand.
The Court stated that the disclaimer and the undertaking would not serve any purpose considering the strong public association already established with the “Aashiqui” title. The Court noted the defendant’s contention that the plaintiff had acquired the term “Aashiqui” by not taking action against the film ‘Chandigarh Kare Aashiqui’, which was produced by the Defendant, and stated that the trade mark owners were not obligated to take action against every possible infringement, especially when the risk of confusion was minimal or when the title in question contains distinctive elements that clearly differentiated it from the protected mark. The Court stated that the plaintiff and the defendant the as assumed joint owners would still have the obligation to ensure that the trade mark “Aashiqui” was used in a way that maintains its integrity and did not lead to public confusion.
The Court stated that permitting the defendant to use a deceptively similar title, especially given the existing public anticipation of a third instalment of the Aashiqui Franchise, would infringe the plaintiff’s trade mark rights by misleading consumers and diluting the brand identity of the Aashiqui Franchise. Thus, the Court granted interim injunction in the plaintiff’s favour, restraining the defendant, and/or anybody acting on their behalf, from using the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” and/or any other name/ title which uses the mark “Aashiqui”, in respect of their proposed film.
The matter would next be listed on 03-10-2024.
[Vishesh Films (P) Ltd. v. Super Cassettes Industries Ltd., 2024 SCC OnLine Del 6117, decided on 02-09-2024]
Advocates who appeared in this case :
For the Plaintiff: Sandeep Sethi, Senior Advocate with Pravin Anand, Dhruv Anand, Udit Patro, Sampurna Sanyal, Nimrat Singh and Dhananjay Khanna, Advocates.
For the Defendant: Amit Sibal, Senior Advocate with Harsh Kaushik, Shumi Wasandi and Sachin Akhoury, Advocates.
Buy Trade Marks Act, 1999 HERE
