VISHESH FILMS PRIVATE LIMITED VS SUPER CASSETTES INDUSTRIES LIMITED, 2024 SCC ONLINE DEL 611

CASE NAME	Vishesh Films (P) Ltd. v. Super Cassettes Industries Ltd.
CITATION	2024 SCC OnLine Del 6117
COURT	Delhi High Court
PETITIONER	Vishesh Films (P) Ltd.
RESPONDENTS	Super Cassettes Industries Ltd.
DECIDED ON	2 September, 2024

INTRODUCTION

The case was centered on claims of trademark infringement along with the disputed ownership of the very popular movie franchise “Aashiqui.” Vishesh Films alleged that T-Series was attempting to improperly utilize the name of the franchise, most likely resulting in confusion with the public. The court was supposed to address a number of issues such as the joint ownership in the underlying intellectual property, validity of the trademarks, and whether the new title of the film that T-Series had announced would create confusion that it was part of the Aashiqui film series. This case revolves around the protection of trademark rights in the entertainment industry, focusing on the popular film franchise “Aashiqui.” Vishesh Films alleged that T-Series’ proposed film title “Tu Hi Aashiqui” infringed on its trademark and would likely confuse the public about the origin of the film. The dispute also raised issues about joint ownership agreements and the proper use of franchise titles. The court had to consider whether the franchise’s goodwill and the distinctiveness of the title justified protecting it against unauthorized use. This case highlights the importance of safeguarding intellectual property in the film industry and ensuring clarity for audiences.

FACTS

1. Parties Involved:
   • Plaintiff: Vishesh Films Private Limited is a leading film producer company in India, especially recognized for its successful filmmaking in a commercial genre where the romantic segment of the Bollywood audience has always supported.
   • Defendant: Super Cassettes Industries Limited (more popularly known as T-Series): is a leading music record label and film producer in India.
2. Background of Aashiqui Franchise: The Aashiqui franchise consists of two famous films: Aashiqui (1990) and Aashiqui 2 where both films experienced extreme commercial success in the history of Indian cinema as a whole; and especially recognized for their music, romance, and storyline in the Indian context.
3. Joint Ownership Contracts: In 1990, Vishesh Films and T-Series entered into a co-production agreement of the first Aashiqui film, which established ownership of the movie and the associated rights jointly. This agreement included clauses regarding sharing profits and joint use of the Aashiqui title. A 2011 agreement reaffirmed the joint ownership for Aashiqui 2, further developing the collaborative interest between the two parties in regards to the franchise.
4. Trademark Applications: Vishesh Films claims to possess trademark protection for the phrases “Aashiqui” and “Aashiqui Ke Liye.” These were registered under Section 23 of the Trade Marks Act, 1999. Vishesh Films contends that their prior use of these phrases in conjunction with the films and associated products is sufficient for the trademark protection being claimed.
5. Film Title Dispute: The film title dispute arose during T-Series’ announcement of a film called, temporarily, “Tu Hi Aashiqui” or “Tu Hi Aashiqui Hai.” The plaintiff argued that the title infringes on their rights in the franchise and creates confusion that connects the film to the previous films.
6. Petition: Vishesh Films filed the petition requesting an interlocutory injunction preventing T-Series from using the title “Tu Hi Aashiqui,” alleging trademark infringement and passing off. The plaintiff claims that due to the connection of “Aashiqui” to the earlier films in the franchise, it is highly likely to confuse the public.

ISSUES

1. Trademark Infringement: Whether the title “Tu Hi Aashiqui” or “Tu Hi Aashiqui Hai” infringes on Vishesh Films’ registered trademark rights in the title “Aashiqui”?
2. Confusion for the Public: Would the current title of the movie be confusing to the audience in determining what if any relationship the new movie has with the prior Aashiqui movies?
3. Joint Ownership Rights: Given the agreements between the parties, what did it mean regarding joint ownership in the Aashiqui series and whether it was important to Vishesh Film’s ability to sick the court to restrain the defendant from using the title?
4. Validity of Trademark Registration: Is the registration of the trademark for Aashiqui valid registration for the plaintiff to have standing for injunctive relief?
5. Remedies to Protect Rights: What legal remedies may exist for Vishesh Film to vindicate its rights in the Aashiqui series which could include a court reaching conclusions based upon discretion?

CONTENTIONS

PLAINTIFF’S CONTENTIONS

1. Claims of Rights in the Aashiqui Series: The plaintiff claims they own proprietary rights in the Aashiqui series because they were one of the original producers of the film and they hold certain trademarks. They explain that “Aashiqui” is unique (has acquired distinctiveness) and that goodwill has developed over the years, therefore it should be a great asset entitled to protection.
2. The Possibility of Audience Confusion: The plaintiff argues that the title “Tu Hi Aashiqui” would confuse audiences with regard to whether the film is a continuation of the Aashiqui series, stressing the close association audiences have with the term “Aashiqui” from its previous films over the last years.
3. Historical Joint Venture: The plaintiff points out that both parties have publicly claimed to co-own and have collaborated with others in the Aashiqui brand. The previous agreements stated that to produce future films or adaptations involving the Aashiqui name, the parties had to mutually agree that each new project was sanctioned, which the plaintiff states the defendant has violated.
4. Trademark Application: The plaintiff contends that the registrations for “Aashiqui” and “Aashiqui Ke Liye” should stand enforced. The plaintiff asserts that the defendant infringed on the registered marks by using the title “Aashiqui” in the film.
5. Public Reception and Media Coverage: The plaintiff refers to statements from various sources like media, public, etc., that associate the film with the Aashiqui series. The plaintiff states this creates a narrative suggesting the film has an established past and then uses that to justify a need for an injunction.

DEFENDANT’S CONTENTIONS

1. Acknowledgment of Joint Ownership: The defendant accepts that the Aashiqui franchise has joint ownership but maintains that there has been no infringement. The defendant points out that the film being proposed was never meant to be a sequel or derivative work from Aashiqui.
2. No Public Misleading: The defendant states that they have no intent to mislead the public. The defendant maintains, again, that their film is not meant to be a sequel to Aashiqui, and they have taken steps to inform the public of that by way of public statements and disclaimers.
3. Generic Meaning of “Aashiqui”: The defendant insists the term “Aashiqui” is generic and therefore cannot be owned by the plaintiff. The defendant also argues that “Aashiqui” is a commonly used term in connecting stories in the film industry and does not possess the requisite distinctiveness to provide trademark protection.
4. No Public Confusion: The defendant asserts that “Tu Hi Aashiqui” is so different from “Aashiqui,” that there is no confusion. In addition, the presence of multiple words in the title itself provides a different identity and character from Aashiqui.
5. Acquiescence on the part of the Plaintiff: The defendant argues the Plaintiff has acquiesced and accepted use of the word “Aashiqui” in other forms, including but not limited to, “Chandigarh Kare Aashiqui” and thus cannot profess exclusivity over the word at this time.

JUDGMENT

1. Trademark Rights Affirmed: The High Court affirmed the Plaintiff’s trademark rights around “Aashiqui.” The court went on to state the word has acquired distinctiveness due to the fact that both parties have produced successful films with the title.
2. Deceptive Similarity Established: The court also held “Tu Hi Aashiqui” was deceptively similar to “Aashiqui.” The word ‘Aashiqui” in the title created a strong possibility of confusion among consumers especially in light of the historical connotation of the Aashiqui franchise.
3. Joint Ownership Agreement: The court analyzed the joint ownership agreements between the parties concluding no further adaptations and/or productions with the Aashiqui name could be developed without both parties consent. The defendant unilaterally undertook to violate the joint ownership agreements.
4. Generic Claim Invalidated: The Defendant’s contention that “Aashiqui” is a generic term was dismissed by the court. Although the term suggests romance, the court observed that it does not describe the films and, as a result, maintains its distinctive characteristics.
5. Injunction Granted: The court granted an interim injunction for the plaintiff which restrains the defendant from using “Tu Hi Aashiqui” or any other title that may infringe the plaintiff’s rights as a trademark.
6. No Acquiescence Found: The court found no lack of evidence on the part of the plaintiff in regard to its use of “Aashiqui” but in the activity taken, the plaintiff was appropriate and justified in protecting its trademark.

CONCLUSION

This ruling ties into the legal frameworks surrounding trademark rights and protection pertaining to film franchises in India. The Court highlighted the need to protect intellectual property in the entertainment industry and with respect to a very popular or recognizable title that has developed goodwill with the viewing public.
This decision also contributes to the complicated and legal issues in respect of joint ownership arrangements and the significance of clear communication and consent in relation to different uses, adaptations, spin-offs etc. in relation to film titles and franchises. The courts’ decision makes clear that trademark registrations are not merely a formal process; the courts will take them seriously and provide meaningful protection for creators and producers in the film industry landscape.

With the entertainment industry adapting with successive films and stories, this case highlights the importance for filmmakers and production partners to be protective of their rights, all the while enjoying the collaboration that is sometimes necessary. 

The case is ultimately significant in that it may have implications for future cases regarding trademark issue (i.e., infringement, passing off etc.) – there will be an impact on future decisions around infringement, or passing off, in terms of navigation/judicial approach towards legal issues and questions moving forward.

‘This article has been written by Tamanna Jain from University Five Year Law College, University of Rajasthan.’