In Vishesh Films Private Limited v. Super Cassettes Industries Limited,[i] the Delhi High Court has restrained film production company T-Series from using titles “Tu Hi Aashiqui”, “Tu Hi Aashiqui Hai” and “Aashiqui” in respect of an upcoming film.
The court said that Vishesh Films’ mark “Aashiqui” is registered under the Trade Marks Act, 1999 and that it is crucial to protect titles of expressive works that become part of a series and have the potential of acquiring distinctiveness. The court said that “The “Aashiqui” title is not just an instance of isolated use, but rather, has become part of a recognised film series, with two successful instalments released in 1990 and 2013.”
We will look at the various factors that Court kept in mind while coming to this conclusion. This observation is important considering the commercial value of sequels and prequels of various films has increased, taking the example of the recent movie “Stree 2”, which generated huge box office revenue partly due to its associations with the original film and title.
Background
Plaintiff, Vishesh Films Private Limited is a well-known Indian film production house led by Mr. Mukesh Bhatt, has produced several hit films such as the Murder, Raaz, and Jannatfranchises. The Defendant, Super Cassettes Industries Private Limited, is also known as T-Series.
The Plaintiff and Defendant had previously co-produced the films Aashiqui (1990) and Aashiqui 2 (2013). On 1st January 1990, the Plaintiff and Defendant entered into an agreement to co-produce the first Aashiqui film. This agreement established joint ownership of all rights related to the film, excluding music. Released on 23rd July 1990, Aashiqui became a box office hit and its music gained widespread popularity.
In December 2011, after 21 years, the parties signed another agreement to co-produce Aashiqui 2, maintaining joint ownership of the film and its underlying rights. The Plaintiff was primarily responsible for creative aspects, while key clauses in the agreement governed sequel rights, copyright, profit-sharing, and credits. Aashiqui 2 was released on 26th April 2013, earning significant commercial success, crossing INR 100 crores.
As per these agreements, the Plaintiff and Defendant jointly own the rights to both Aashiqui films, and any future films, prequels, or sequels related to the franchise must be governed by their agreements, specifically the one from 2011.
The Plaintiff also holds trademarks for “Aashiqui” and “Aashiqui Ke Liye,” which were registered under the Trade Marks Act, 1999.
Plaintiff’s Contentions
The Plaintiff, Vishesh Films, claimed that their proprietary rights in the well-known Aashiqui film franchise were being violated by the Defendant. The Plaintiff sought to prevent the Defendant from releasing a third instalment, tentatively titled “Aashiqui 3 / Tu Hi Aashiqui Hai”, without their consent, asserting that such a release would infringe upon their trademark rights.
The Defendant acknowledged joint ownership of the Aashiqui franchise but denied any intention to produce another instalment. They argued that their proposed film, titled Tu Hi Aashiqui or Tu Hi Aashiqui Hai, was not related to the franchise and would not cause confusion with the Plaintiff’s trademarks. They further maintained that their film was entirely distinct from the franchise and was not a derivative or continuation of it in any manner.
However, the Plaintiff pointed out that discussions for a third installment had taken place, and the Defendant had publicly implied that their new film was the third in the franchise. The Plaintiff argued that the Defendant’s actions, including applying to register the title Tu Hi Aashiqui, created a public perception that the new film was part of the franchise, leading to inevitable confusion and a violation of their trademark rights.
Discussions for Aashiqui 3
In 2022, the Plaintiff and Defendant began discussions regarding the co-production of a third installment in the Aashiqui franchise, titled Aashiqui 3. The involvement of key personnel, including Mr. Pritam Chakraborty as music director, Mr. Anurag Basu as director, and Mr. Kartik Aryan as lead actor, was jointly announced in a Variety magazine interview on 4th September 2022. The Plaintiff further publicized this partnership on their Instagram page, emphasizing their 32-year collaboration with the Defendant.
The Defendant further applied to register the title “Tu Hi Aashiqui” in December 2023 with the Indian Film & TV Producers Council, heightening the Plaintiff’s claims that the Defendant was misrepresenting their project as part of the Aashiqui franchise. The Plaintiff argues that the use of similar personnel, music, and titles would create public confusion, excluding them from the production and harming their rights to the franchise.
The Plaintiff highlighted the joint ownership of the Aashiqui franchise, as established by previous agreements, and claimed that the Defendant cannot independently produce any sequels, remakes, or adaptations without their express consent. They further asserted that the Defendant’s use of the title “Aashiqui” without permission infringes upon their trademark rights, as the term “Aashiqui” is a strong, non-generic trademark associated with the franchise.
The Plaintiff also dismisses the Defendant’s argument that “Aashiqui” is common in the industry, stating that of the 26 films cited by the Defendant, only a few contain the word “Aashiqui,” with most using variants such as “Aashiq.” Additionally, the Plaintiff emphasizes that the Defendant’s use of “Tu Hi Aashiqui” is common to many songs in the previous films, and appears to deliberately reference the original Aashiqui film, further misleading the public.
Defendant’s Contentions
The Defendant argued that the Court lacked jurisdiction as per the agreements, which placed exclusive jurisdiction in Mumbai. The Defendant also publicly clarified they were not making Aashiqui 3 and had undertaken not to produce the film without the Plaintiff’s involvement, thus negating the Plaintiff’s copyright infringement claims.
Defendant alleged that the Plaintiff’s trademark registration of the word “Aashiqui” violated prior agreements which distributed intellectual property equally. The term was also generic and common to trade, making it non-registrable. Defendant argued that even if valid, the Plaintiff’s trademark would only receive minimal protection since the term “Aashiqui” means romance, and the Defendant’s proposed titles, Tu Hi Aashiqui or Tu Hi Aashiqui Hai, were sufficiently distinct from the franchise.
Additionally, the Defendant’s use of a different title, plot, and visual elements meant there was no likelihood of confusion between their film and the Aashiqui franchise. The Defendant had also registered the title Tu Hi Aashiqui Hai in 2020, further distancing it from Aashiqui 3. Lastly, Defendants dismissed the Plaintiff’s claims about confusion based on song lyrics as irrelevant. It was not originally raised by the Plaintiff, and therefore considered to have been subsequently argued as an afterthought.
Analysis of the Court
The Court noted the contentions and observed that in the modern cinematic landscape, film titles have evolved from mere labels to significant symbols with immense commercial value. Titles of film franchises, which span multiple installments, acquire secondary meaning and substantial goodwill over time. This evolution transforms titles into assets worthy of legal protection.
The Court held that under the Trademark Act, a trademark is any mark that distinguishes goods or services of one entity from another. When a film title becomes synonymous with a particular series or producer due to widespread recognition and association, it functions as a trademark. Such titles, having acquired distinctiveness and secondary meaning, are entitled to protection under trademark law. The continuity and connection maintained through these titles are crucial in branding and are protected to ensure that they retain their value and recognition.
Challenge to the Jurisdiction
The Defendant challenged the jurisdiction of this Court based on clauses in the agreements that designate exclusive jurisdiction to the courts of Bombay. However, the Court said it was a settled principle of law that while parties can agree to a specific forum, such clauses do not exclude the jurisdiction of other courts that would otherwise have the jurisdiction to hear the matter.
The Court held that the Plaintiff’s claims in this suit, namely trademark infringement, passing off, and breach of intellectual property rights, were tortious rather than purely contractual. Such claims can be filed in any court where a part of the cause of action arises or where the defendant resides or carries on business.
Are the Terms Generic and Common to Trade?
The Court said that the Defendant challenged the Plaintiff’s trademark rights in “Aashiqui,” arguing it is generic and common to trade within the film industry, and thus lacks distinctiveness. To address this, the Court explained the legal concepts of “generic” and “common to trade.”
The Court held that a generic term is a common name for a product or service and cannot function as a trademark because it does not distinguish the source. Generic terms, such as “soap” for a cleaning product, are not eligible for trademark protection. “Common to trade,” however, refers to terms used widely within an industry but not necessarily descriptive of the goods themselves. Such terms might acquire distinctiveness if it is closely associated with a particular source and has not become so diluted that it loses its ability to identify that source.
The Court said that the title “Aashiqui” is derived from Hindi/Urdu, translating to “romance” or “love.” While it suggests the theme of romance, it does not exhaustively describe the film’s narrative. The Court observed that “Aashiqui” is suggestive rather than descriptive, meaning it evokes characteristics of the film without directly describing them. Therefore, “Aashiqui” is considered a distinctive mark capable of trademark protection.
The Court noted that the term “Aashiqui” acquired substantial reputation and goodwill due to its consistent use in successful films produced by the Plaintiff and Defendant. The commercial success of films like “Aashiqui 2” reinforces the mark’s distinctiveness. Although the question of secondary meaning may be determined at trial, the Court found that the term “Aashiqui” is not generic and functions as a distinctive identifier of the Aashiqui Franchise.
The Defendant argued “Aashiqui” is common to trade, implying widespread use by various entities. However, the Court found this argument lacking merit. The Plaintiff provided evidence of strong brand identity and success, while the Defendant’s evidence of 26 instances of use included only isolated cases, with only eight instances of films using “Aashiqui,” two of which were part of the Aashiqui Franchise. The Court referenced the case of Pankaj Goel v. Dabur India,[ii] where it was held that to establish a plea of common to trade, the defendant must show that the use is substantial. Mere isolated use without significant threat to the mark’s distinctiveness is insufficient to undermine Plaintiff’s right over its marks. The Court also observed that trademark law does not require a trademark owner to pursue legal action against every instance of potential infringement, especially when those instances are isolated, minor, or do not pose a significant threat to the brand’s identity.[iii]
The Court concluded that, prima facie, the title “Aashiqui” is neither generic nor common to trade. The Plaintiff’s trademark registrations for “Aashiqui” and “Aashiqui Ke Liye” were also presumed valid and distinctive, thus deserving protection under trademark law.
Deceptive Similarity
The Court noted that the concept of deceptive similarity involves evaluating whether the disputed mark is so similar to the protected mark that it is likely to confuse or deceive the public. Deceptive similarity must be assessed not only by comparing the marks side-by-side but also considering how an ordinary person with imperfect recollection would perceive the marks when encountered separately.[iv]
The Defendant’s proposed title includes the word “Aashiqui,” which is central to the Plaintiff’s trademark. The Defendant argued that the Plaintiff’s trademarks are registered as device marks with specific fonts and styles, suggesting no deceptive similarity. However, the Court found this argument unconvincing, stating that despite being a device mark, the term “Aashiqui” remains the primary identifier of the Plaintiff’s brand. The Court emphasized that the focus is on the word “Aashiqui” itself, not the stylization, and that the protection granted extends to the term regardless of presentation.
The Court further noted that both the Plaintiff’s and Defendant’s products cinematographic films are identical. The Court observed that despite the addition of “Tu Hi” and “Hai,” the overall impression of the title is likely to lead to confusion, as the term “Aashiqui” is closely associated with the Plaintiff’s successful film series.
The Court also considered the history of collaboration between the parties and the public’s likely perception. Given that the same director and lead actor were involved in past Aashiqui projects and that media reports have linked the Defendant’s film to the Aashiqui Franchise, there is a heightened risk of confusion. Additionally, the proposed title references a song from the original Aashiqui film, further suggesting a connection.
The Court concluded that the Defendant’s proposed title “Tu Hi Aashiqui Hai” is deceptively similar to the Plaintiff’s trademark “Aashiqui.” The phonetic and conceptual similarities, combined with the identical nature of the goods and the public’s likely confusion, support the Plaintiff’s claim. Therefore, the Court held that the Defendant’s proposed title should be restrained to protect the Plaintiff’s established brand.
Disclaimer of non-association
The Defendant argued that adding a disclaimer to their film, stating that it is not a sequel or derivative of the “Aashiqui” films, would be sufficient to address any potential public confusion or misperception. However, the Court did not find this argument compelling.
Disclaimers may sometimes help clarify misunderstandings, but in this case, the Court deemed that they would not be sufficient to address the strong public association created by the title “Aashiqui.” The Court noted that the dominant and distinctive element of the title is “Aashiqui,” which is likely to be the primary influence on the public’s perception.
Therefore, the Court concluded that the disclaimer would not effectively prevent public misperception. To avoid confusion and potential harm to the Plaintiff’s brand, the Defendant would need to use a different title that does not include “Aashiqui.”
There was no Objection when Defendant had used the title “Chandigarh Kare Aashiqui”
The Defendant argued that the Plaintiff’s failure to challenge the film titled “Chandigarh Kare Aashiqui” indicated acquiescence, which would weaken their claim to the term “Aashiqui.” However, the Plaintiff countered that “Chandigarh Kare Aashiqui” is distinct from the Aashiqui Franchise due to its inclusion of the term “Chandigarh,” which differentiates it and reduces the likelihood of confusion.
The Court concluded that the Plaintiff’s inaction regarding “Chandigarh Kare Aashiqui” does not constitute acquiescence. Trademark owners are not obliged to act against every instance of potential infringement, especially when the risk of confusion is minimal or the title is sufficiently distinctive. Therefore, the Plaintiff’s rights over the “Aashiqui” trademark are not diminished by their failure to challenge the title of this other film.
Whether the trademark “Aashiqui” and Defendant’s joint ownership of the film prohibits the Plaintiff from suing the Defendant ?
The Court found that the Plaintiff’s unilateral registration of the “Aashiqui” trademark does not bar them from suing the Defendant under Section 28(3) of the Trademarks Act, 1999. The Defendant’s argument that they are a joint owner of the trademark due to their involvement in the franchise was rejected. The Plaintiff offered to amend the registration to include the Defendant as a co-owner, showing goodwill. Even if both were joint owners, Section 28(3) does not prevent one from suing the other if confusion arises from the use of similar marks.
Judgement
The Court held that the Defendant’s proposed film title, which incorporates “Aashiqui,” could mislead the public into believing it is related to the established franchise, causing potential harm and brand dilution. Even if the Defendant’s film ultimately shows no direct link to the franchise, the initial confusion and potential harm to the Aashiqui brand are significant.
The Court said that “…trademark law is particularly concerned with the initial likelihood of confusion, whereby the public might be misled into believing there is an association between the Defendant’s film and the well- established Aashiqui Franchise. This confusion, even if temporary, can cause significant harm by diluting the “Aashiqui” brand…”.
Therefore, the Court granted an interim injunction restraining the Defendant 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.
Conclusion
There was a recent case touching over this topic, of Venus Worldwide Entertainment v. Popular Entertainment Network (PEN),[v] related to the movie ‘Khiladi’. The Delhi High Court had ruled that the mark “Khiladi” pertaining to the 1992 Akshay Kumar starrer Bollywood movie and the mark “Khiladi” of a Telugu action thriller film which was released later were not prima facie similar. Noting that the plaintiff production house does not have any registration in the word “Khiladi” and that most of its registered trademarks are “device marks”, the court said: “Since the Plaintiff has registrations only in the device marks, it cannot claim exclusivity or monopoly over the word ‘KHILADI’”.
But the facts and circumstances of that case were differentiated here. The Court pointed out that in Venus Worldwide Entertainment, the Court ruled that the plaintiff could not claim exclusivity over just the word “KHILADI” due to the use of a composite mark containing multiple elements. In contrast, the current case deals with the word “Aashiqui” as a standalone mark, making the anti-dissection principle inapplicable. Additionally, the Venus case was filed late after significant investments, while the present case was a timely and early action to prevent future harm.
The Court’s observations on the exclusivity of jurisdiction clauses in contracts are worth noting. While these clauses are not disregarded, the Court clarified that points of law which are not strictly contractual, such as tort law, may be heard in courts where the plaintiff resides or conducts business. This principle, though well-established, was reaffirmed in this judgment.
Another significant aspect of the ruling was the prevention of misuse of the petitioner’s efforts and resources. The Court has essentially created a hurdle to any practice (not strictly suggesting that it was done here) of promising a co-produced sequel, but later producing it alone, under a title implying connection to that sequel, in order to avoid sharing profits. The Court held that titles of well-known movies cannot be copied to create a confusion, meaning that, legally, the titles of content will also have to be reviewed carefully.
This article was first published on IPRMENTLAW