Recently, the Delhi High Court has restrained Super Cassettes Industries Limited (“Defendant”) from using the film title “Tu Hi Aashiqui”/“Tu Hi Aashiqui Hai”, based on Vishesh Films Private Limited’s (“Plaintiff”) rights in the mark “Aashiqui”.
The Plaintiff and the Defendant had, in 1990 and 2011, entered into agreements to co-produce films for the Aashiqui franchise. It is the Plaintiff’s case that, the Plaintiff and the Defendant, in September 2022, had jointly announced the production of the third instalment of the Aashiqui franchise, i.e., Aashiqui 3. Thereafter, on December 29, 2023 the Defendant went ahead to apply for the registration of the mark “Tu Hi Aashiqui”. Therefore, the Plaintiff has alleged that the Defendant cannot be permitted to adopt the name, and create an adaptation of the Aashiqui franchise, without the Plaintiff’s express consent.
The Defendant, on the other hand, has argued that the Plaintiff unilaterally owns trade mark registrations for the word “Aashiqui”, without the Defendant’s name included in the registrations. Further, as per the Defendant, the term “Aashiqui” is generic, has been used in various film titles and that the rival marks are dissimilar when looked at as a whole. The Defendant even claims that the Plaintiff has, in its response to Examination Report, differentiated its mark with other Aashiqui marks. Therefore, it is estopped from taking action against the Defendant.
Firstly, the court, while analysing generic terms, stated that the term “Aashiqui” does not describe the goods/ services it is being used on and in relation to and merely suggests the theme/ genre of the films produced by the Plaintiff. The court stated that for a film title to function as a trade mark, one needs to consider the, (i) level of recognition, (ii) secondary meaning, and (iii) goodwill acquired through extensive use and public recognition, and the title “Aashiqui” fulfils all these criteria based on the evidence submitted by the Plaintiff. Secondly, the court was of the view that the marks “Aashiqui” and “Tu Hi Aashiqui” are deceptively similar and the prior business relationship between the Plaintiff and the Defendant accentuates the association of “Tu Hi Aashiqui” with the Aashiqui franchise. Thirdly, as regards estoppel, the court was of the view that the statement made by the Plaintiff was in context of other third-party marks and not the Defendant’s mark. Therefore, based on this, the Plaintiff is not estopped from taking action against other parties with similar marks.
In view of the above, the court passed an interim injunction in favour of the Plaintiff, retraining the Defendant from using the title “Tu Hi Aashiqui”/“Tu Hi Aashiqui Hai” and/or any other mark/ title similar to the Plaintiff’s mark “Aashiqui” in relation to the proposed film.
It is pertinent to note that Division Bench dismissed an appeal filed by the Defendant against this judgment, and refused to interfere with the interim injunction as it was not patently erroneous.
Vishesh Films Pvt. Ltd. v. Super Cassettes Industries Ltd., CS(COMM) 68/2024, judgment dated September 2, 2024 and Super Cassettes Industries Ltd. v. Vishesh Films Pvt. Ltd., FAO(OS)(COMM) 218/2024, order dated September 25, 2024.
Comments