Trademark case: Delhi HC restrains persons using title of film 'Sholay' on website
May 26, 2022
New Delhi [India], May 26 : The Delhi High Court while dealing with a twenty years old trademark case restrained persons who were using the title of the Hindi film 'Sholay'. The suit was filed by the makers of 'Sholay'.
The High Court also awarded damages of Rs. 25 lakh to the maker of the movie - Sholay Media and Entertainment Pvt. Ltd. and Sippy Films Pvt. Ltd. They had approached the court against the use of the title on the website www.sholay.com and in the name of the company of the defendants.
Justice Pratibha M. Singh said that titles and films are capable of being recognised under the trademark law. 'Sholay' is the title of an iconic film which, as a mark, cannot be held to be devoid of protection. Certain films like Sholay cross the boundaries of just being ordinary words.
If there is one film that transcends generations of Indians, it is 'Sholay'. The said film, its characters, dialogues, settings, and 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, the high court observed in the order of May 9, 2022.
The present suit was filed by the makers of the movie against Yogesh Patel and others in the year 2002.
The High court restrained defendants, their directors, partners and anyone acting for and on behalf 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.
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, the high court order reads.
The bench noted that 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, and selling of the DVD of the film Sholay on the defendants' website.
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 lakh as costs and damages. Defendants shall pay the said amount within three months, failing which, the Plaintiff is permitted to avail of its remedies in accordance with law for the execution of the decree.
Advocate Pravin Anand and Dhruv Anand of the law firm Anand and Anand had filed the lawsuit against the makers of the movie against the defendants for registering the domain name sholay.com, publishing a magazine using the mark Sholay and selling merchandise using scenes and names from the movie Sholay.
On the other hand, the other party had argued that the film titles are not entitled to protection, there is no probability of confusion on the internet, and that Sholay is a dictionary word.
