The Delhi High Court in a trademark-related dispute has denied an application preferred by Venus Worldwide Entertainment Private Limited against Popular Entertainment Network (PEN) Private Limited for using the word ‘KHILADI’ in its Telugu film.

The Court said that the plot of the Telugu movie and cast is different from that of the Bollywood one and hence, the word ‘KHILADI’ is not deceiving or confusing to the people.

A Single Bench of Justice Jyoti Singh held, “Plaintiff has been unable to make out a case for passing off. The plot of the two movies, the lead cast, difference in the language leading to a different class of viewers etc. are distinguishing factors and it is difficult to accept that merely on account of commonality of the word ‘KHILADI’, the moviegoers are likely to be deceived or confused. Confusion and deception caused by misrepresentation are vital elements in a passing off action. As rightly canvassed by the Defendants, Plaintiff has not made a movie with the title ‘KHILADI’ post 1994 and nor it is the case of the Plaintiff that it intends to do so in the near future.”

The Bench agreed with the fact that the plaintiff’s movie is out of theatres and is only on the OTT/Satellite platforms and any viewer would first carefully look through the entire poster of the film, including actors, film title, storyline, director, etc. before making a choice to watch the film and in this context, the pictures of the actors would be enough to enable the viewer to make a choice and understand that the defendants’ film has no relation to the plaintiff’s ‘KHILADI’.

Advocate Pravin Anand appeared for the plaintiff while Senior Advocate Darpan Wadhwa appeared for the defendants.

Factual Background -

The plaintiff sought the interim injunction restraining the defendants from infringing its registered ‘KHILADI’ trademark in relation to cinematographic films/movies/motion pictures, including the release of the film bearing an identical or deceptively similar title/name KHILADI in any format i.e., cinema hall, DVD/VCD, OTT Platforms, etc. The plaintiff was a large production house engaged in producing and distributing cinematographic films/movies across India. The first film produced by the plaintiff was the one titled ‘KHILADI’ in 1992 which was the first hit movie of Akshay Kumar giving him the epithet ‘Khiladi’ and the same triggered a series of films bearing the word ‘Khiladi’ in some form or manner.

The defendant was an Indian Film and Distribution Company involved in production and distribution of cinematographic films in Hindi, Telugu, and Tamil languages and its Telugu film ‘Khiladi’ was releasing in the theatres. Hence, a suit was filed by the plaintiff against the forthcoming release of the said Telugu film. It was contended by the plaintiff that the word ‘KHILADI’ as a film title was inherently distinctive having no discernible meaning being arbitrary and worthy of high degree of protection without even proof of secondary meaning.

The High Court after hearing the arguments of both parties said, “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’. Additionally, it is not the case of the Plaintiff that the storyline or the plot of the movie of the Defendants is similar to the Plaintiff’s film ‘KHILADI’. The lead cast in the two movies is different and while the Plaintiff’s movie was in Hindi language, the movie of the Defendants is in Telugu as well as a Hindi-dubbed version of Telugu.”

The Court noted that the viewership of a Telugu film will be substantially different and perhaps lesser as compared to a Hindi movie. It further noted that 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.

“No doubt that the movie ‘KHILADI’ was a huge success and also gave a pedestal to the lead actor and earned him the sobriquet of ‘Khiladi Kumar’, as rightly stated by the Plaintiff, but it is settled that whether or not a trademark has acquired a secondary meaning is a matter of trial and secondly, this factor cannot give monopoly to the Plaintiff over the word ‘KHILADI’ for the purpose of claiming infringement, in the absence of registration in the word ‘KHILADI’, which the Plaintiff was entitled to apply for, but consciously chose not to do so, perhaps in view of the non-distinctive nature of the said word”, also observed the Court.

The Court said that the plaintiff has failed to make out a prima facie case in its favour and balance of convenience also does not lie in its favour.

“The judgments in Shambhu Nath & Brothers & Ors. (supra) and Ramdev Food Products (P) Ltd. (supra) also do not help the Plaintiff, as in both the cases the Courts had come to a conclusion that the words ‘Toofan’ and ‘Ramdev’ respectively were essential/ dominant part of the Plaintiffs’ registered marks. … 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”, added the Court.

Accordingly, the High Court dismissed the application.

Cause Title- Venus Worldwide Entertainment Private Limited v. Popular Entertainment Network (PEN) Private Limited & Anr. (Neutral Citation: 2023:DHC:5804)

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