INDIAN TRADEMARK LAW ON PROTECTION OF MOVIE TITLE – Part 1
The name or title is undoubtedly one of the most important aspects of a movie which creates a distinct identity for it among audience. Around the globe, the movie makers give a lot of thought and importance in choosing a unique distinct title or name for their film so that the movie could prove to be popular and a blockbuster hit among all classes of audience. This association of title to a film brings the interested audience to watch the film in theatres as well as associate it with producers which makes it commercially viable. While choosing a title for a film, it must be chosen with utmost care, caution, and deliberate choice of intention which should be connected with the minds, taste and interest of the audience. It is interesting to know that for protection related to movie titles, movie titles cannot be copyrighted. In that case, protection under trademark law is the resort to which the film makers look to. Having said that, achieving such protection is not that simple. Since it cannot be denied that a “Title” plays an important role in the recognition of any cinematographic work, it is pertinent that ownership and validity of titles be registered with the Trademark Registry. Registration grants exclusive right to the person who registers it to use the title and prevent others from the unauthorized use or adoption or infringement of the same. The Indian Film Industry also popularly called the Bollywood has witnessed stupendous growth in the past years in terms of revenue collection as it has offered one of the highest grossing movies of the recent times and is moving ahead steadily with a current growth rate of 20% per year. It has transformed into one of the largest producers of world class films. In 2001, the Government of India granted the status of “Industry” to Bollywood which has only helped it to attract certain high prolific global investors to invest in the Indian Film Industry including 20th Century Fox, Viacom Motion Pictures, Warner Brothers etc. With plethora of movies releasing every year, a lot of controversies keep on surfacing related to movie titles. In such situations, protection of different aspects of a movie through Intellectual Property proves to be beneficial for them.
Under the Indian Trademark Act, 1999, the title of a film can be registered and protected under Class 41 of the Fourth Schedule of Trademark Rules, 2001. In India, major production houses apply for registration of movie titles and labels in Class 41 that embrace a number of services including “entertainment”. On the other hand, , these applications are also filed in Class 9 as movies can also viewed on storage devices like DVDs that provides for, among other goods, “apparatus for recording, transmission or reproduction of sound or images…”
It is to be noted that the title of a cinematographic film is protected in Trademark Law under two conditions: –
1) Series of Film Title – This series of film title can get easy trademark protection and registration when compared to the single film title. Examples of Series of Film Title include Dhoom franchise viz. Dhoom, Dhoom 2, Dhoom 3.
2) Single Film Title –A single film title has to pass certain qualifications in order to acquire trademark protection and registration.
- To acquire trademark protection for a single film title, a secondary meaning of the title must have been obtained. Secondary meaning means, “The association of the title of the film with certain source, production house etc. by the movie goer or audience.” Before a movie is released in theatres, it goes through the pre-release publicity and other promotional activities which is sufficient for trademark protection under the proviso clause stated under clause (1) of Section 9 of the Trademark Act, 1999 which specifically gives Trademark registration to a well-known mark or a mark which has acquired distinctive character as a result of the use made of it.
- The court may consider certain factors while deciding the secondary meaning of the title of the movie which are as follows: Continued Use and its Duration; Expenditure on advertisement & promotion; Number of viewers; Revenue collection of the movie; Plaintiff and Defendant’s closeness of the geographical and product markets.
Under the Indian Trademarks Act, 1999 (Trademarks Act), film titles qualify as ‘service marks’ instead of trademarks. It is always advisable to register a movie title as a service mark for acquiring exclusive rights and protection over the title. The registration of a trademark constitutes prima facie validity of the same in legal proceedings.