- This article is written by Sparsha Pai pursuing Diploma in Intellectual Property, Media, and Entertainment Laws from LawSikho.com.
Name and title act as a unique identifier of the work. In the entertainment, industry name plays a vital role for the viewers to associate with the producers. Due to this filmmakers all over the world chose peculiar names for their movies. So, can the title of cinematographic films be protected, does it fall under the ambit of trademark protection? If yes, then registration of the title is a requisite for every producer.
Ideally, the titles are registered with societies and associations such as the Indian Motion Pictures Producers Association (IMPPA), the Association of Motion Pictures and Television Programme Producers (AMPTPP), the Film and Television Producers Guild of India, and the Western India Film Producers Association (WIFPA). The association registers a title only after thorough scrutiny with other associations to check if the same or deceptively similar title has been registered with any other associations. Though this looks uncomplicated, the catch is that registration with societies and associations does not have legal validity. Such registration only creates first preference in the adoption of the title of Motion Pictures and authorship of the script.
Protecting title under intellectual property laws
In India, the title of a Motion Picture alone cannot be guarded under copyright law. Thus copying of the title alone, and not the story, song, characters, dialogues, etc. is not covered under the ambit of the copyright law. Indian copyright law protects original literary work, musical and artistic work, sound recording but not titles alone. Thus, the legal protection of a title identifying a Motion Picture lies is through Trademark Law.
Protection of the movie title under the Indian Trademark Act, 1999
Movie titles are protected under the Trademark act, 1999. In India, filmmakers can register the movie title as service marks under class 41. Class 41 elucidates registration of the trademark of numerous services including entertainment. However, registration of a movie title under the Trademark Act is possible only under two important conditions.
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Film titles can be divided into two categories
Title of series of films
The title, of the series of films or series, acts as a trademark hinting that each part comes from the same origin as others and can be registered as a trademark. These titles of series savor the same protection as a usual trademark. For Example Housefull Franchise i.e. Housefull 1 to Housefull 4.
Title of single films
The title of a single film cannot be registered under the Trademark Act unless the second condition is complied with.
Secondary meaning title of single literary work
According to this condition, the trademark protection for movie titles is granted only when the title obtains a secondary meaning. The secondary meaning helps the audience to associate the title with the production house, origin, etc. While determining the secondary meaning, the court may analyze the following elements:
- The duration of use
- The extent of advertisement and money spent
- The sales figures on purchases or admissions and the number of people who bought or viewed the work
- The closeness of geographical and product markets of the claimant and the defendant
Can trademarks be granted for the cinematography work titles if they refer to the name of a place
Geographical names are used to denote a particular locality, country and cannot be registered as trademarks. However, a geographical name not used in a geographical sense but used in an arbitrary and fanciful way, to specify its origin may be a valid trademark. Section 9 of the Trademark Act, the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 which is an absolute ground for refusal. Thus, usage of geographical names and monopolizing the use would not be allowed and it cannot be registered as a trademark. Let us throw some light on this topic by discussing relevant case laws.
Significant case laws
Imperial Tobacco Company v. Registrar of Trademark
In this case, the Imperial Tobacco Company applied to register the label of their tobacco product. It consisted of snow-clad hills with ‘SIMLA’ written all over the label. The court opined that registration of a geographical name is not permitted unless it is established that the mark has captured distinctiveness because of its use.
Marble Private Ltd. v. Bharat Tiles Manufacturing Co
The court, in this case, established that merely because a trade name is geographically descriptive, it does not entail that an action for passing off cannot be sustained only if the plaintiff can cater the requisite grounds of deceit by use of a similar name.
Geepee Ceval Proteins and Investment Private Limited v. Saroj Oil Industry
In this case, the plaintiff was selling edible oils in the name of ‘Chambal’ since 1997. The plaintiff came to know that the defendant also started selling edible oils with the name ‘Chambal Deep’ having exact packaging and label. The court adhered that although ‘Chambal’ is a geographical name it is competent of becoming a trademark and an action of passing off is sustainable. The court further opined that the word ‘Chambal’ used by the plaintiff and the word ‘Chambal Deep’ used by the defendant are deceptively similar and can cause chaos in the mind of the consumers.
Bharat Movie Controversy
A Public Interest Litigation was filed claiming an interim relief against the movie Salman Khan starred Movie Bharat as the name violated Section 3 of Emblems and Names Act, 1950. According to the petitioner the name ‘Bharat’ cannot be used for commercial purposes. The court observed that the plea was a trick to draw mileage from the movie and held it was a premature plea, as the petitioner did not watch the film.
The judicial position after discussing various judgments is that generally geographical names are incapable of trademark registration. Using geographical names might be generic and monopolizing the generic word might cause problems and in few instances like movie titles, it might even hurt the religious sentiments of a community of people. The rule is however eased in respect of small and insignificant places or where there is no geographical significance of the mark. Sometimes the addition of an English suffix is not plentiful to grant a trademark.
Trademark registration for the title of the series ‘Mirzapur’
Let us now consider the title of an OTT series ‘Mirzapur’. Ordinarily geographical names are not permitted for trademark registration; Mirzapur is a small village in Uttar Pradesh known for its carpets. Prima facie, the registration of Mirzapur title looks faded as it is a name of a place. But, only because of the geographical name would it be possible not to consider the title for a trademark. If we consider, what kind of Movie titles are registrable, the Mirzapur series qualifies the conditions for getting a trademark registration as it is a title of series and people can easily associate it with the producer, actors, etc. The title Mirzapur is assumed to have a secondary meaning as the story is based on an influential family in Mirzapur is also a good ground for registration of the trademark.
However, if the trademark was granted, the word Mirzapur would be monopolized and this would be unacceptable, as there might be many businesspersons, artisans, craftsmen who are not in the entertainment business who want to use this word for geographical significance. The Mirzapur title may have gained popularity and people might associate it with the OTT series easily but is it, filmmakers required to register it, as a trademark is a question?
As of now, the Mirzapur title is not trademarked and there might be various reasons for the same. However, in the future, if the same is applied for trademark registration, the above-mentioned factors might have to be considered by the judiciary.
Movies are remembered for decades by their “title”. It also helps the viewers gestate about the film. Registration of titles by the producers and writers is essential to guard their commercial rights and interests in the movies. However, when the question arises if a geographical name as a movie title were registered as a trademark. Registering a geographical name in itself is an absolute ground for refusal of a trademark under section 9 of the Trademark Act. But, there are few exceptions for the same. There are many titles associated with movies based on geographical name and granting a trademark would monopolize the use which is not a necessity. Because geographical names are generic and everyone has the right to use them. For the protection of these titles, the law of passing them off is always available. Thus, to grant trademark registration for a geographical name as a movie title is completely dependent on the judiciary and its interpretation.
- https://www.mondaq.com/india/trademark/455412/film-titles-and-their-protection?type=mondaq score=82
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