VENUS WORLDWIDE ENTERTAINMENT PRIVATE LIMITED VERSUS POPULAR ENTERTAINMENT NETWORK(PEN) PRIVATE LIMITED & ANR.

FACTS:

The plaintiff, "Venus Worldwide Entertainment," is a company incorporated in 1988 under the Companies Act, 1956. The company is engaged in producing and distributing films/movies across India. The first film produced by the Plaintiff was "KHILADI" in the year 1992, starring Akshay Kumar. This film became highly popular among the public and led to Akshay Kumar being titled 'KHILADI'.

Here, the Plaintiff is seeking an interim injunction against the Defendants, restraining them from using the word 'KHILADI' in their Telugu film.

Contentions on behalf of Plaintiff:

• The Plaintiff is the registered owner and proprietor of the trademark 'KHILADI' as well as other 'KHILADI' formative trademarks in relation to films, motion pictures, etc.
• Present case satisfies under the triple identity test: (a) competing marks are identical; (b) products/services with which the trademark is associated i.e. films and entertainment services, are identical; and (c) territory is identical i.e. India.
• It is obligatory for the defendants to conduct a trademark search before adopting an identical mark/name for a film. And if they had conducted the search, they would have found that the plaintiff had already registered this name under multiple classes i.e., 9 and 41.

Contentions on behalf of Defendants:

• The plaintiff has no registration for the word mark 'KHILADI'. They only have registration for a device mark, which is a movie poster containing several features, with the word 'KHILADI' written over it.
• The plaintiff has itself claimed exclusivity and distinctiveness in the device mark only; therefore, it is not open for them to claim distinctiveness for the word 'KHILADI'.
• The word 'KHILADI' is a generic term, translated as 'Player' in English. It has been extensively used in numerous films and shows within the Indian film industry. More than 40 films and shows in various languages have been produced with the title 'KHILADI', with only two belonging to the Plaintiff.

Courts Observations and Analysis:

Justice Jyoti Singh dismissed the plaintiff's application for interim relief, and made several observations:

• The court agreed that the plaintiff’s movie ‘KHILADI’ from 1992 was indeed a success in numbers and it resulted in giving Akshay Kumar the title ‘KHILADI KUMAR’. However, the court pointed out that the mere success of a commercial film does not grant exclusive rights over a common or generic word.
• The court highlighted the fact that the acquisition of secondary meaning by a trademark is a matter for trial. Plaintiff had only registered for a device mark of a movie poster in which ‘KHILADI’ is written and not for a word mark of ‘KHILADI’.
• The court emphasized that trademark infringement action can only succeed if there is a prima facie case of deceptive similarity and confusion between the marks. In this case, the court determined that the word 'KHILADI' is generic and lacks distinctiveness. Additionally, there were substantial differences in the storylines of both films, as well as differences in languages and cast.
• The court stated that there have been multiple films that have used the word 'KHILADI' in their titles. Therefore, the plaintiff's exclusive claim over the term does not seem appropriate, as only two out of the 40 produced films and shows are attributed to them.