21 Aug 2023 9:50 AM GMT
The Delhi High Court has ruled that the mark “Khiladi” pertaining to the 1992 Akshay Kumar starrer Bollywood movie and the mark “Khiladi” of a Telugu action thriller film which was released last year are prima facie not similar.Justice Jyoti Singh dismissed the application seeking interim injunction filed by Venus Worldwide Entertainment Private Limited, the production company...
The Delhi High Court has ruled that the mark “Khiladi” pertaining to the 1992 Akshay Kumar starrer Bollywood movie and the mark “Khiladi” of a Telugu action thriller film which was released last year are prima facie not similar.
Justice Jyoti Singh dismissed the application seeking interim injunction filed by Venus Worldwide Entertainment Private Limited, the production company which produced the 1992 movie, in its trademark infringement suit against filmmakers of the Telugu movie.
The court prima facie observed that there is a dissimilarity in the two marks and supported the stand of the defendants that an impression is created as though the plaintiff production house has a statutory enforceable right in the word “KHILADI.”
Noting that the plaintiff production house does not have any registration in the word “Khiladi” and that most of its registered trademarks are “device marks”, the court said:
“Since the Plaintiff has registrations only in the device marks, it cannot claim exclusivity or monopoly over the word ‘KHILADI’ as that would amount to achieving something indirectly which the Plaintiff was unable to achieve directly. Even otherwise, in trademark law jurisprudence, protection to a trademark depends on whether the mark is generic, descriptive, suggestive, arbitrary or fanciful.”
It added that prima facie, the mark “KHILADI” is not the dominant part of the plaintiff’s device mark, being generic and non- distinctive.
“Plaintiff does not have registration in the word KHILADI and has no exclusive right to use it except as part of device mark and when the latter is compared with the impugned mark, there is prima facie no similarity. Plaintiff’s mark contains prominently displayed pictures of the star cast i.e. Sh. Akshay Kumar, Ms. Ayesha Julka, Sh. Deepak Tijori and Ms. Sabeeha. On the other hand, mark of the Defendants is primarily the picture of Sh. Ravi Teja with the word KHILADI appearing at the bottom and applying the first impression test one cannot be confused with the other,” the court said.
It added, “The sine qua non of an action for infringement i.e. deceptive similarity and confusion is prima facie missing in the present case and sans evidence of confusion or deceptive similarity in the device marks, at this stage a finding of infringement cannot be rendered in favour of the Plaintiff, in the absence of registration in the word ‘KHILADI’.”
Justice Singh further said that the lead cast in the two movies is different and that while the 1992 movie was in Hindi language, the 2022 movie is in Telugu as well as a Hindi-dubbed version.
“It cannot be lost sight of the fact that the viewership of a Telugu film will be substantially different and perhaps lesser as compared to a Hindi movie. The two lead actors in the respective movies are well- known and celebrated actors and no confusion can possibly arise between the two, particularly looking at the fact that the posters of the movies are different on a holistic ocular comparison and the movie of the Defendants is only on OTT/Satellite platforms where a viewer is in a position to make a choice to watch the movie by first looking at the posters and the other details of the director, production house etc,” the court said.
Noting further that while there is no doubt that the 1992 movie was a huge success which gave a pedestal to Akshay Kumar and earned him the sobriquet of “Khiladi Kumar”, the court observed that the said factor cannot give monopoly to the plaintiff production company over the word “KHILADI” for claiming infringement, especially in the absence of any registration.
“Defendants have also stated that in 2013 a film was released under the Title ‘KHILADI’ in Bengali language, which is unrebutted. Plaintiff’s film ‘KHILADI’ was released in 1992 more than 30 years ago and from then till now if 40 film/shows under the name ‘KHILADI’ with or without prefix/suffix have been released, at this stage, Plaintiff cannot assert likelihood of confusion,” the court said.
Justice Singh also agreed with the stand of the defendants that the Telugu movie is out of theatres and is now only on OTT platforms and that any viewer would first carefully look through the entire poster of the film before making a choice to watch it.
The court also agreed with the submission that the pictures of the two actors would be enough to enable the viewer to make a choice and understand that Telugu film has no relation to the 1992 movie.
“For the aforesaid reasons, this Court is of the view that the Plaintiff has failed to make out a prima facie case in its favour and balance of convenience also does not lie in favour of the Plaintiff. Rather, the balance of convenience tilts in favour of the Defendants and it is the Defendants who will suffer irreparable loss and injury if the injunction is granted. The application is accordingly dismissed,” the court said.
Case Title: VENUS WORLDWIDE ENTERTAINMENT PRIVATE LIMITED v. POPULAR ENTERTAINMENT NETWORK (PEN) PRIVATE LIMITED & ANR.
Citation: 2023 LiveLaw (Del) 718
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