As reported by Bar and Bench here, publishing house Amar Chitra Katha (ACK) has filed a suit before the Bombay High Court against film producer SK Lawrence and others for using ACK’s registered trademark ‘Shikari Shambu’ as a title of their Malayalam film ‘Shikkari Shambu’.
The plaintiff claimed that subsequent to the legal notice exchanged with the defendants, the defendants had entered into talks with the plaintiff for license to use the trademark as a title of the defendants’ film and had assured the plaintiff that the film would be released between February and April, 2018. However, the talks were nothing more than an eyewash to lull the plaintiff into a false sense of security. The Plaintiff claimed that the final act of deception was when the defendant released the film on January 20, 2018. The plaintiff has sought for damages to the extent of INR 15 Lacs from the defendants for infringement and passing off their mark.
However, the matter has been settled between the parties subsequent to the defendants agreeing to pay INR 10 lacs to the plaintiff. Edit: Read order here.
As mentioned in my post here, there have been several judicial precedents where courts have restrained film makers from using registered trademarks as a title of their film.
Few examples:
- Rubiks Brand Ltd & Anr v/s Mahesh Vaman Manjrekar & Ors (Rubiks Cube)- Rubiks Brand Limited had filed a suit in the Bombay High Court against Mr. Mahesh Manjrekar for using the term ‘Rubik’s Cube’ for his film. The court held that an irreparable harm would be caused to Rubiks Brand Ltd if the injunction was not granted and thereby restrained Mr. Manjrekar from working on any film or other material bearing the title ‘Rubik’s Cube’ or the term ‘Rubik’ therein. (Read order here)
- Nokia Corporation and Ors vs Movieexpress and Ors- The Plaintiff has sought a decree of permanent injunction restraining the defendants, their directors, partners, proprietors, distributors, agents etc. from advertising, airing songs, publishing, publicizing, offering for viewing, the impugned movie under the title Mr.NOKIA and/or Mr. NO.KEYIA and/or Mr. NA-VKIA and/or offering the songs containing the reference to the mark NOKIA and/or NO.KEYIA and/or any other identical or deceptively similar to the Plaintiffs registered trade mark ‘NOKIA’ amounting to infringement or amounting to passing off their services as for the services of the plaintiff or amounting to dilution thereof. The Delhi High Court recently in its judgement pronounced on November 3, 2017 decreed in favour of the plaintiff. The interim order and final judgement can be read here and here.
- Bajaj Auto Limited and Anr V/s JA Entertainment Private Limited and Anr (Hamara Bajaj)- Bajaj Auto had filed a suit against J.A. Entertainment Pvt. Ltd over the alleged infringement of their trademark “Hamara Bajaj” following the announcement of the film’s title. The Bombay High Court ruled in favour of Bajaj and granted injunction against J.A. Entertainment. (Read order here)
- Sholay Media and Entertainment Pvt. Ltd and Anr v/s Parag Sanghavi And Ors (Ram Gopal Verma Ki Sholay)- The Plaintiffs had filed a suit before the Delhi High Court against director Ram Gopal Verma and others in respect of the film ‘Ram Gopal Verma ki Sholay’, alleging infringement of trademark, copyright, passing off, damage, rendition of accounts, etc. The Plaintiff alleged breach of its proprietary rights in its registered trademark, Sholay, Gabbar and Gabbar Singh. The Court held in favour of the plaintiffs and further granted a sum of Rs. 10 Lacs as punitive damages against the defendants. (Read order here)
- PepsiCo vs. MSM Motion Pictures & Ors (Youngistaan)- Pepsico filed a suit in the Delhi High Court against the producers of ‘Youngistaan’ seeking a permanent injunction against the release of the movie and preventing the defendants from blatantly imitating PepsiCo’s registered trademark “Youngistaan” as a part of their movie title. The Parties however eventually agreed to settle the matter with the Defendants agreeing to provide a disclaimer to the effect that the movie was not related/ associated with/ sponsored or promoted by Pepsi’s Youngistaan campaign. (Read order here)
- Zandu Balm had issued a notice with respect to use of its brand name in the song ‘Munni Badnam Hui’ in the film Dabangg. The matter was eventually settled. [ Source: here]
- UK based Murphy Radiosued UTV over its production, Barfi, for depicting their mark ‘Murphy’ in poor light. [Source: here]
Image source: here
