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The concept of trademark and its legality in modern pop culture of India

September 23, 2021

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Trademark — Image Source: https://bit.ly/2Nu3QAH

This article is written by Rishika Rathore, B.A., L.L.B. student, from the School of Law, Jagran Lakecity University. It deals with the discussion on trademark laws in India and briefs over its implications on Indian modern pop culture, along with the study of case laws.

Introduction

“Value of a trademark is directly proportional to your aggression and risk ratio” is a famous quote by Kalyan C. Kankanala, the author of the book named “ Fun IP” which is based on the study of intellectual properties. This quote can be used as a tool for generating the essence behind the importance of trademarks. Trademarks are unique symbols or words that are used to represent a business, product, brand, or even any kind of art.

Once a trademark for any symbol gets registered, such symbol or series of words cannot be used by any other person, company, organization, etc. till the time its trademark remains in use within the official papers and fees are being paid regularly. So in case, a person does something extraordinary, he or she can get that thing marked under the law. In this article, a brief study has been done on the concept of the trademark in modern pop culture and Indian trademark laws, along with various case laws that roam around the term “trademark”.

Trademark

Trademarks can be seen everywhere in our day-to-day life. The consumers of particular brands use trademarks to identify those products or services and associate the trademarks of such products with a certain reputation. For instance, the Apple logo, the McDonalds ‘M’, or Nike’s ‘tick’ are some famous trademarks that people generally get to see.

A trademark is an intellectual property right that highlights the differences between the goods and services of one company from those of another, along with permitting the people to maintain ownership rights of their unique products and creative services. A trademark is nothing but the words, slogans, logos, shapes, colours, sounds, and signs that differentiate one brand from another. For example, the tagline of the Red Bull energy drink is “Red Bull Gives You Wings”. The basic difference between a brand and a trademark is that brands can be a symbol or logo, but trademarks are unique logos that indicate the distinct nature of a particular brand, having wider implications than brands. The symbol of a trademark is “™”, when the trademark gets registered, the symbol changes to “Ⓡ”.

Indian trademark laws

In India, trademarks are regulated by the Indian Trademark Act, 1999. In the 1940s, there were no specific laws regarding trademarks. Thus, the infringement cases of registered and unregistered trademarks were used to be heard under Section 54 of the Indian Specific Relief Act, 1877. Moreover, the registration was determined under the Indian Registration Act, 1908. Later, the Trademark and Merchandise Act, 1958 was introduced to provide better protection of trademarks and to prevent the fraudulent acts of misusing marks on merchandise. The registration of a trademark was also provided under this Act to enable legal aid for the owners of the trademark.

The Government of India replaced the Trademark and Merchandise Act, 1958 with the Indian Trademark Act, 1999 (1999 Act) by complying with the obligations of the Trade-Related Aspects of Intellectual Property Rights agreement (TRIPS), which was recommended by the World Trade Organization. Under the 1999 Act, exclusive rights were given to police to make arrests in cases of trademark infringements, also providing the provisions regarding punishments and penalties for the offenders. It also increased the time duration of registration and registration of a non-traditional trademark. The motive behind the Trademark Act is to grant protection to the users of trademark and regulate the provisions on the property along with providing legal remedies for the implementation of trademark rights.

Pre-release trademarks

Section 9(1) of the Trademark Act, 1999 states that the pre-release publicity, promotions of the title of the film is sufficient for trademark protection. Thus, trademark registration can be granted to a well-known mark or a mark that carries a distinctive character, even before the movie gets officially released in theatres.

Initial interest confusion

The doctrine of initial interest confusion originated in the United States. It is an easy-to-use principle when it comes to the determination of infringement. It says, in the cases of trademark infringements, the plaintiff is liable to prove that the activities performed by the defendant have confused the consumer’s attention over a product or service, even if the primary interest was rectified at the time of purchase. Whatever confusion about the similarity has happened, it should relate to the origin of the product or service for the requirement of the fact that similarity of title has amounted to confusion, as stated in Section 29(1) of the Trademark Act, 1999. For instance, if a film confuses the audience that it has been extracted from another film that has been registered its trademark, then it is not essential to prove the source of confusion at the time of purchase. It simply means that a mere commission of infringement of a known mark is sufficient under the doctrine of initial interest confusion.

Trade name mixtures

Under Section 29(7) and Section 27(2), it has been prohibited to make unfair representations of a trade by a trademark owner. If a producer dilutes a well-known trademark, intending to conceive commercial profits and increasing his business reputation, then it will amount to clear infringement. If the trademark holders establish that the title has contributed to their commercial gain or has affected their reputation, the movie makers could be liable. For instance, if a brand named “sky blue” gains commercial profit from a movie, deliberately named “sky blue”, then the movie maker has to face its consequences or vice versa.

Modern pop culture

The term “pop culture” was coined in the mid-19th century to highlight the cultural traditions of the people, in contrast to the state culture of governing classes. Popular culture or pop culture generally refers to the traditions and substantial culture of a particular society. In modern terms, pop culture refers to cultural activities like music, art, literature, fashion, dance, film, internet culture, television, and radio that are consumed by the majority of a society’s population. After the end of World War II, a notable shift in the history of pop culture took place.

The definition of pop culture began to emerge with the growing manufacturers for mass consumption. With the growing capitalism, the need to generate more profits took the path of marketing by distinctive modes, like advertising, media, music, taglines, slogans, etc. Pop culture has multiple origins like pop music, movies, series, radio, video games, publishing of books, internet, comics, websites, etc. These industries make a profit by inventing and promulgating cultural material that has become a principal source. Also, cyberspace has advanced the strength of popular culture by providing a new channel for transmission.

Trademarks in modern pop culture

The concept of trademark and its registration is treated as synonymous in pop culture and social media. In pop culture, trademarks are given for symbols, slogans, slang, or names that are specifically used by any artist. Film studios make use of the trademarks to protect their principal characters and movie segments like Shaktiman, Harry Potter, Spiderman, James Bond, etc. Trademark law makes it easy for people to recognize the source of a product or service accurately so that there is no possibility of confusion. A trademark must be used following the use or selling of products or services. According to Section 2(1)(e) of the Indian Trademarks Act, 1999, a certification trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Trademarks do not end as long as the trademark continues to be used in commerce by the owners.

In the United States, under Section 2(a) of the Lanham Act (also known as Trademark Act of 1946), it has been allowed by the U.S. Patent and Trademark Office (USPTO) to deny or cancel a trademark if it is “downgrading” any person, institution or national symbol. Trademark registration of iconic movie or webtoon characters opens a door for money-making deals that support the mitigation of movie production and promotion costs. Hollywood’s major production house, Walt Disney was perhaps the first to showcase the huge earning potential from films as well as popular characters. For example, Mickey Mouse, globally the most famous iconic cartoon character, was registered as a trademark far back in 1928. By 2018, the iconic Disney mascot had clocked up global retail sales worth US$12 billion and continues to show strong growth potential.

Trademarks in Indian pop culture

The moviemakers around the world try to take supreme care when it comes to choosing an exclusively unique title or name for their film to make it a blockbuster hit among the audience of all classes. This uniqueness catches the eyes of viewers and brings them to watch the film in theatres. Under the Indian Trademark Act, 1999, the title or name of a film can be registered and protected in Class 41st of the fourth schedule of Trademark Rules, 2001 (goods and services are classified into 45 Classes of a trademark under the trademark registration process). Series of movie titles are easy to get under trademark protection and registration as compared to the single movie title. For example, the Singham franchise, i.e., Singham, Singham II, and Singham III, or Golmaal franchise, i.e., Golmaal Fun Unlimited, Golmaal Returns, Golmaal 3, and Golmaal Again are a series of film titles that got trademarked. Moreover, celebrities in India like Shah Rukh Khan, Ajay Devgan, Kajol, Sunny Leone, etc. have registered their names as trademarks.

Trademarking of song titles

Kolaveri di

The very first song title that acquired a trademark in India was a blockbuster song, “Why this Kolaveri di” that went viral all over the world. It was a mixed song in Tamil-English sung by Dhanush, a South-Indian actor. This Tamil-English mix song became an international hit on YouTube, Facebook, and Twitter as it gained 4.10 million views in just 4 days of its official release. One of the biggest music companies of India, Sony Music Entertainment, recorded this song and filed for registration of a trademark “Why this Kolaveri di”. An application for a trademark was requested for the protection of song lyrics. Through this step, Sony was allowed the launch of various products such as compact disks, cassettes, and SD Cards including film and non-film entertainment content, and the discovery of talented programs with the brand name “Why this Kolaveri di” and also restricted others from using it.

Jai Ho

Jai ho is a very popular song composed by A.R. Rahman in the movie Slumdog Millionaire which was directed by Danny Boyle. In 2014, Salmaan Khan’s film “Jai ho” got released and gave birth to legal issues for its film’s title. This issue made A.R. Rahman trademark the title of his song “Jai ho” for which he won an Oscar and Grammy award for the best song composition. Here, the basic principle of the trademark was established, which says that the first person to file for registration of the title of the song is entitled to trademark registration and protection under the Indian Trademark Act, 1999.

Duniya Sharma Jayegi

In a recent case of 2020, a song came out on YouTube with the title “Beyonce Sharma Jayegi”, of the movie “Khali Peeli” starring Ananya Panday and Ishaan Khatter. “Beyonce” is a globally-renowned and reputed trademark of an American singer Beyonce Knowles, who registered a trademark for ‘Beyonce’ in India. But, the movie’s producers did not seek her permission to use the trademark. Therefore, the song title was changed to “Beyonse Sharma Jayegi.” But this was not enough as it has been clearly stated in Section 29(9) of the Trademarks Act, 1999 that the spoken words are just as important as the look of the mark. It was argued that changing a single letter will not cancel it from getting infringed if the word or sentence sounds phonetically the same. Eventually, the song title was changed to “Duniya Sharma Jaayegi”.

Trademarking of movie titles

In India, leading production houses apply for registration for titles and labels of their movies. Phir Hera Pheri, Munnabhai M.B.B.S, and Dhoom franchises are examples of movie series where the producers have applied for registration of movie titles and labels. Some of the movies that caught into the controversy of trademark wars are:

Shortkut

The famous Indian actor and producer Mr. Anil Kapoor had registered the title “Shortcut”, with the Indian Motion Picture Producers’ Association (IMPPA), for his movie starring Akshay Khanna, Arshad Warsi, and Amrita Rao. On this, an objection was raised by a producer, Bikramheet Singh Bhullar saying that such a title had already been registered by him before it got registered by Anil Kapoor. In this chaos, Anil Kapoor finally terminated the registration and changed the title to “Shortkut – the con is on” (Bikramjeet Singh v. Anil Kapoor, 2008).

Thoda Pyaar Thoda Magic

The title “Thoda Pyaar Thoda Magic” of Yash Raj Films production came under dispute when it was opposed by actor cum producer Saahil Chadda, saying that the title of his film “Thoda Life Thoda Magic” has been already registered with the Indian Motion Picture Producers Association. The director of “Thoda Pyaar Thoda Magic”, Kunal Kolhi argued that the title of his movie has been registered with the Film and Television Producers’ Guild of India. But later, Saahil filed a complaint with IMPPA. Eventually, both the movies got released without any alteration in their respective titles.

Kabhi Alvida Naa Kehna

In the case Biswaroop Roy Choudhary v. Karan Johar (2006), an interim injunction was imposed in 2006 on Biswaroop Roy Choudhry, an Indian author for using the film’s title “Kabhi Alvida Na Kehna”. This 2006 movie was written and directed by Karan Johar and produced by Dharma Productions, although the film was never registered to get a trademark. The plaintiff used the title and registered it with the registrar of trademarks to restrain (Karan Johar) the defendant from using the title “Kabhi Alvida Naa Kehna” for their movie. But the Delhi High Court held that even though the defendant did not register the title he was the actual user of the trademark. The court further stated that the actual use of the trademark was always a relevant factor that would deter the court from granting the injunction as a relief. Hence, the court ordered a denial to the plaintiff about the interim relief and held that the plaintiff approached the court in a delayed manner. The court further stated that Kabhi Alvida Naa Kehna was a common phrase, it cannot be used exclusively.

Harri Puttar

In the case of Warner Bros Entertainment Inc v. Harinder Kohli (2008), some claims by Warner Bros, stating that its trademark rights in the Harry Potter series were infringed by a Hindi movie “Harri Puttar- A Comedy of Terrors”. The matter knocked on the door of the Delhi High Court. The court ruled that infringement has been done because if it analyzes the two titles both an unlearned (probably watch Harri Putter) as well as a cinephile (probably Harry Potter) has certain chances of getting confused about the title of the movies with each other, even though there is no much difference between the structural or phonetic similarity.

Trademark of names

Kajol Twitter controversy

In 2010, some derogatory remarks appeared on Twitter, from a Twitter handle named “Kajol Nysa”. After this, many news channels caused chaos by reporting that the said tweet was posted by actress Kajol, by assuming and believing this due to the name of the Twitter handle. Seeing the news, Kajol clarified that she does not own any Twitter account and said tweets had been made by some other person. Following this incident, Kajol initiated several applications to trademark authority in her name, in various business categories, to check the misuse of her name.

Sanjeev Kapoor story

A shocking incident was revealed by famous Chef Sanjeev Kapoor, when he witnessed his name on a book called “Khazana of Chinese Recipes” with his photo on the book’s cover page while waiting at a traffic signal. At that time, Sanjeev had written only one book called “Khazana of Indian Recipes”. Following this incident, he has filed many trademark applications of his name to protect his name from misuse.

Misuse of celebrity trademarks around the world

Paramount Pictures Corporation v. Pete Gilchrist (2007)

In this case, the Court of the United States of America uniformly provided standard trademark protection to literary titles of single works only after proving the secondary meaning, even when the contents of the work were so little illustrative of the title. As per the facts of this case, the defendant (Pete Gilchrist of Brooklyn, New York) had taken an unfair advantage of the (Paramount Pictures Corporation of Los Angeles, California) plaintiff’s rights in the trademark to use the domain name of the plaintiff’s company. The WIPO Arbitration and Mediation Center observed that the movie title attained a secondary meaning and thus the use of the plaintiff’s trademark is confusingly similar and it does not account for a legitimate non-commercial or fair use of the domain names. Following these observations, the defendant was restrained from using the disputed domain name.

Warner Brothers Entertainment v. The Global Asylum (2012)

In the case, Warner Bros Entertainment (plaintiff) filed a suit against Global Asylum (defendant) for trademark infringement of the word “Hobbit”, seeking a temporary restraining order against the distribution of the defendant’s film “Age of Hobbits”. The US District Court established four-factor tests for injunctive relief, that is, the possibility of success on the standards, the possibility of irreversible harm to the plaintiff if the injunction was not provided, a balance between sufferings in favour of plaintiffs, and that an injunction would benefit the people at large.

The plaintiff was asked to satisfy this four-factor test, following which, the Court found that the plaintiff has a guarding interest in the “Hobbit” mark and the defendant’s action of using such a mark can probably confuse the minds of people. Moreover, the Court observed that the “Hobbit” mark has obtained secondary meaning in the markets. Thus, the Court concluded that Warner Bros Entertainment has substantially used the word “Hobbit”, including in three prior series of “Lord of the Rings” films that acted as additional evidence of secondary meaning. The Court found the balance of sufferings also inclined towards the favour of the plaintiff, and therefore rejected the defendant’s contention and granted an injunction on the basis of public interest.

Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar (2001)

In this case, Celine Dion, a Canadian singer, and her company owned the domain name ‘celinedion.com’ that was registered with Network Solutions of Herndon, Virginia, USA, on March 6, 1995. Jeff Burgar (defendant) started to run and carry on business with the name ‘CelineDionClub.com’. The World Intellectual Property Organization ruled that the defendant’s domain name was creating confusion and was quite similar to the domain name owned by Celine Dion and the company.

Robyn Rihanna Fenty v. Arcadia Group Brands Ltd. (2013)

In this case, Rihana, a famous pop star and style icon, issued proceedings against the defendant who was a well-known high street fashion retailer, for selling a t-shirt carrying her image. The image portrayed on the t-shirt had been photographed by an independent photographer during the video shoot for a single from her 2011 “Talk That Talk” album. The defendant had a license from the photographer but he had not taken any license from Rihana. Thus, she claimed that selling such a t-shirt, without her consent has infringed her rights because the public shall make assumptions that she had licensed the use of her image to the defendant. The defendants argued that customers would buy the shirt because of their liking towards the product and the image for its qualities while stating that there was nothing on the t-shirt which represented it as a product of Rihana’s merchandise. The London Court of Appeal observed that a considerable number of purchasers can probably get deceived while buying the said t-shirt by believing that it had been permitted by Rihana, and such instances can damage Rihana’s goodwill.

Chorion Rights Limited v. Ishan Apparel (2010)

In this case, the defendants used the name of a popular fictional character, “Noddy” to advertise its product, which as per the claims of the plaintiff, was violating their trademark that had been registered firstly by them and also has been in use long before the defendant started using it. Due to lack of evidence from the plaintiff’s side, the Delhi High Court established that the defendants were the first party to get it trademarked.

Conclusion

The emergence of Indian modern pop culture can be seen in the Indian film industry which combines multilingual Cinemas like Telugu, Kannada, Bengali, Hindi, etc., and continues to remain the most enormous among all entertainment worlds. The abstraction of music tunes, ideas, themes, and scripts has become a constant process for Indian cinemas and this process has given rise to several questions upon creativity and the originality that every artist tries to demonstrate. This omnipresence, usage, and implementation of emerging digital technologies like the internet have shaped the industrial and artistic talents of Indian pop culture and hence brought out the requirement of protection with the accomplice of intellectual property rights like the Indian Trademark Act, 1999.

References

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