Delhi High Court: Prathiba M. Singh, J., expressed that, the word ‘SHOLAY’, is the title of an iconic film, and consequently, as a mark having been associated with the film, cannot be held to be devoid of protection
“If there is one film that transcends generations of Indians, it is ‘SHOLAY’. The said film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, ‘SHOLAY’ is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema.”
Instant suit was filed by Sholay Media and Entertainment (P) Ltd. and Sippy Films (P) Ltd. against defendants 1 to 8.
The defendants had registered the domain name ‘www.sholay.com’, published a magazine using the mark/name Sholay and had put on sale various merchandise, using scenes and names from the movie ‘SHOLAY’.
Further, defendant 5 – Netangle.com Pvt. Ltd. a company registered by Defendants 1 to 3 as well. Defendants 6, 7, and 8 were controlling entities of the domain name ‘Sholay.com’.
Film ‘SHOLAY’ has been described as a film which is a part of India’s heritage and some of the dialogues used in the said film such as ‘Jo dar gaya, samjho mar gaya’, ‘Ai chhammia’, ‘Arre o Sambha’, Kitne aadmi the?’ are part of colloquial language in the Hindi heartland.
The mention of the word ‘SHOLAY’ immediately creates a connection with the movie ‘SHOLAY’.
The rights in the word ‘SHOLAY’ which is also a registered trademark, have been recognised by the Courts in favour of the plaintiff.
The grievance of the Plaintiffs
In the present matter, the grievance was that upon coming across a magazine released in the year 2000 titled “IT-Information Technology”, the Plaintiffs learnt that the Defendants had registered the domain name ‘www.sholay.com’. The magazine was accompanied by a free compact disk (“CD”) containing the advertisement of the website.
In the above-said advertisement, the defendants sought to create an entertainment portal having various services such as chat, e-greetings, countdowns, horoscopes kid zone, classified, matrimonial, and grocery store.
The plaintiff also learnt that the defendants had filed a trademark application for the mark SHOLAY with the United States Patent and Trademark Office, also in India.
The said application with the USPTO was filed in the name of a Company called ‘SHOLAY.COM., INC’, which was based out of Bridgewater, New Jersey. In India, the trademark application was filed by Defendant 5 Company – Netangle.com Pvt. Ltd. which was registered in Hyderabad with Mr Jayesh Patel, Ms Bhavna Patel and Mr Yogesh Patel as its directors.
Further, the defendants registered defendant 4—company by the name of Sholay.com (P) Ltd. and the same was objected by the plaintiffs under the provisions of Section 22 of the Companies Act, 2013.
Therefore, the Registrar of Companies, Chennai directed defendant 2 to delete the word ‘Sholay’ from its existing name.
To challenge the above order, the defendants had filed a petition before the Madras High Court, and the same was allowed by which the impugned order of Regional Director, Company Affairs, Southern Region, was set aside solely on the ground of violation of principles of natural justice.
The use of the mark ‘SHOLAY’ on the internet caused actual confusion and a search of the word ‘SHOLAY’ returned the defendant’s website in the list of the results on various search engines, causing actual instances of confusion.
According to the plaintiffs, such use constitutes infringement, passing off, dilution and tarnishment of the well-known mark ‘SHOLAY’. Hence, the plaintiff filed the present suit seeking permanent injunction restraining the infringement of their registered trademark ‘SHOLAY’ by the Defendants, passing off, damages, rendition of accounts, delivery up, etc.
Issue: Whether future use of the word/name/mark ‘SHOLAY’ was liable to be injuncted?
The Defendants did not dispute the following facts:
- That the Defendants have registered various domain names with the mark ‘SHOLAY’.
- That the Defendants have applied for registrations of the marks in India and in the USA.
- That the Defendants are using the word ‘SHOLAY’ as a prominent part of their corporate name.
Further, the Defendants only sought to justify their use of the Plaintiffs’ mark ‘SHOLAY’ by urging that:
- Film titles are not entitled to protection and that they have applied for registration earlier.
- There is no probability of confusion on the internet and that ‘SHOLAY’ is a dictionary word.
Analysis and Decision
i) The defendants claimed that their application was prior to the application and registration of the mark by the plaintiffs.
High Court expressed that the above-stated claim was bereft of any force, inasmuch as the film ‘SHOLAY’ of the plaintiffs was released in the year 1975, much before the application for registration and the incorporation of the company by the defendants.
“The manner of use of the word ‘SHOLAY’ by the Defendants, is not descriptive, but is a clear indication of an association with the Plaintiffs’ film.”
Bench added that the offering of the CD and DVD of the film ‘SHOLAY’ on the website of the defendants shows that the defendant’s adoption was, in fact, mala fide and dishonest. Moreover, the defendants had registered a series of domain names identical and deceptively similar to the name of the film ‘SHOLAY’, which cannot be justified.
“Their use of identical domain names is nothing but an attempt to encash the goodwill enjoyed by the blockbuster movie ‘SHOLAY’ of the Plaintiffs.”
Hence, the plaintiffs clearly had a cause of action under Section 27 of the Trademarks Act, 1999.
“The mark ‘Sholay’ enjoys continued goodwill in India.”
Bench elaborated stating that, the mark ‘SHOLAY’ has already been recognised as a well-known mark. Thus, the mere earlier trademark applications or use as part of a corporate name would not vest any prior rights in favour of the Defendants.
ii) It was noted that the plaintiffs had a large number of registrations, and the activities of the defendants would be covered by most of the said registrations.
The internet has itself created an additional market for ‘SHOLAY’, which is a film nearly 50 years old, the adoption by the defendants was with complete knowledge of the plaintiff’s film, especially considering that the defendant’s companies were being run by Indian, who were more than likely to be aware of the film ‘SHOLAY’. Hence the goods and services being offered could be considered as being off shoots emanating from the plaintiffs.
iii) Bench expressed that, Titles and films are capable of being recognised under trademark law and in India ‘SHOLAY’ would be a classic example of such a case.
On the above issue, Court cited the Supreme Court decision in Krishika Lulla v. Shyam Vithalrao Devkatta, (2016) 2 SCC 521.
iv) High Court opined that the contention that internet is only being used by educated persons was unacceptable. Hence, 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.”
v) High Court stated that, the use of the mark ‘SHOLAY’ as part of domain names and company names, etc. are completely illegal and unlawful.
Directions issued by the Court
Lastly, the High Court concluded while issuing the following directions:
i. The Defendants, their directors, partners, proprietor and anyone acting for and on their behalf are restrained from using the name ‘SHOLAY’ in respect of any goods and services and also from using the domain name ‘Sholay.com’ and making any reference to the movie ‘SHOLAY’ or using any images or clippings from the said movie, as also from selling merchandise using the name SHOLAY or any images from the said cinematographic film. The Defendants shall also stand restrained from using any variation of the mark/name ‘SHOLAY’ on the internet or otherwise including use as a metatag in the source code.
ii. The concerned domain names registrars are directed to transfer the infringing domain names to the Plaintiffs, within one week of the receipt of the present order and the details of the Plaintiffs.
iii. The statement of costs has been filed by the Plaintiffs. The same is taken on record. Though, the cost statement has been filed showing expenses to the tune of Rs 6,58,036.00/- on various accounts including court fees, miscellaneous expenses and legal fees. It is also submitted by Counsel for Plaintiffs that a substantial quantum of services were rendered even on pro bono basis. Considering the observations of the Supreme Court on the issue of costs to be awarded in commercial matters in Uflex Ltd. v. Government of Tamil Nadu [Civil Appeal Nos.4862-4863 of 2021, decided on 17th September, 2021], actual costs ought to be awarded, keeping in mind the bill of costs, including counsel fees. In the present case, the Defendants have contested this matter for over 20 years. 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 Rs 25,00,000/- as costs and damages, in terms of the relief as sought in the Plaint.
In view of the above, all the pending applications were disposed of. [Sholay Media Entertainment v. Yogesh Patel, CS (Comm) 8 of 2016, decided on 9-5-2022]
Advocates before the Court:
For the Plaintiffs:
Parvin Anand, Dhruv Anand, Udita Patro, Sampurna Sanyal, Shrawan Chopra, Achyut Tiwari, Advocates
For the Defendants: