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Written by Ronsiya Roy, Legal Intern, and Verified by Sunil Jose, Managing Attorney, Suns Legal
CASE TITLE: VISHESH FILMS PRIVATE LIMITED V. SUPER CASSETTES INDUSTRIES LIMITED
C.S. (COMM) 68/2024, I.A. 1797/2024, I.A. 3979/ 2024
Movies are often involved in copyright infringement cases, but a recent dispute in the Delhi High Court (HC) witnessed a trademark dispute between two renowned Indian film production houses. The case arose when Vishesh Films Private Limited (hereinafter referred to as the plaintiff) alleged that their proprietary rights associated with the film franchise “Aashiqui” were being violated by Super Cassettes Industries Limited, popularly known as T-Series (hereinafter referred to as the defendant).
The plaintiff and defendant produced two iconic films titled ‘Aashiqui’ and its sequel ‘Aashiqui 2’ in 1990 and 2013, respectively. Both films achieved significant box office success and are widely regarded as synonymous with romantic cinema in India. The plaintiff holds registered trademarks for ‘Aashiqui’ and ‘Aashiqui Ke Liye’ under classes 9, 16, and 41, with claimed usage dating back to 1990 and 2014 respectively. Based on these trademark rights, the plaintiff has initiated the present suit to enjoin the defendant from releasing any sequels to ‘Aashiqui 2’ without their express consent or from producing any films using the term ‘Aashiqui’ that may potentially mislead the public into believing they are sequels to the aforementioned film.
The plaintiff contended that after the parties collaborated on the previous two movies in 1990 and 2013, around 2022, the plaintiff and defendant (hereinafter referred to as “the parties”) began discussing the possibility of co-producing a third sequel, ‘Aashiqui 3’. They agreed on casting lead actors, directors, and co-producers. This agreement was announced and published media. Subsequently, on 29th December 2023, the defendant applied to register a Hindi feature film titled ‘Tu Hi Aashiqui’. The film, registered by the defendant in 2023, features the same actor and music from the Aashiqui Franchise Films. The defendant’s actions following the joint announcement in 2022 about a potential sequel to ‘Aashiqui 2’ misrepresent the defendant’s film as the proposed sequel.
Contrary to the plaintiff’s submissions, the defendant alleged that the Delhi High Court lacks jurisdiction to try the present suit due to the two agreements entered into by the parties regarding the 1990 and 2013 films, which vest exclusive jurisdiction with the Mumbai High Court. The defendant further contended that the term ‘Aashiqui’ (hereinafter referred to as the impugned term) is generic and common to trade, having been used in several other films, and thus has not achieved a secondary meaning specifically associated with the 1990 and 2013 films. In the newly registered films of the defendant, titled ‘Tu Hi Aashiqui’ and ‘Tu Hi Aashiqui Hai’, the added terms ‘Tu Hi’ and ‘Hai’ render them distinct from the previous films. Therefore, there is no case of deceptive similarity.
The court held that, since the suit includes tortious matters, the case can be tried where a part of the cause of action arises or where the defendant resides or carries on business. Hence, the jurisdiction clause in the agreements entered into by the parties does not prevent other courts with rightful jurisdiction from deciding the matter. The impugned term is derived from the Hindi/Urdu language and translates to “romance or love,” and is used by the parties as titles for two movies that have acquired a strong reputation and goodwill. Furthermore, the defendant could not provide sufficient evidence to support the claim that the impugned term is common to trade. Therefore, the court held that “Aashiqui” is not a generic term but a distinctive term that distinguishes the movies of the Aashiqui Franchise.
The Delhi High Court relied on the case of Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, which established principles for determining the deceptive similarity of two marks. In that case, the court held that it must consider the overall impressions the marks create in the minds of the public and evaluate any phonetic, visual, and conceptual similarities that might cause confusion among the public.
The Delhi High Court held that the public recognizes the impugned term in association with the 1990 and 2013 films, which were built through years of commercial success. The mere additions of terms like “Tu Hi” and “Hai” do not alter the impression the impugned term has created in the minds of the public. The joint announcement made by both parties in 2022 about the possibility of a new sequel to “Aashiqui” further contributes to the confusion caused. Therefore, the phonetic and conceptual similarities between the registered trademark of the plaintiff and the new film announced by the defendant, combined with the likelihood of confusion among the public, conclude that the defendant has infringed the plaintiff’s trademark rights and would be covered under Section 29(1) and 29(2)(b) of the Trademark Act. Thus, the court held that the plaintiff suffered irreparable harm and was entitled to an injunction.
Comments
Currently, films are not just a means of entertainment but also serve as open forums for numerous legal disputes regarding copyright violations and trademark infringement. This case highlights one such instance of a trademark dispute between two film production companies in India that have collaborated to form the Aashiqui Franchise, which has released two films and plans to make a third sequel. The case shows the strong reputation several films have created and how the public recognizes certain terms or songs associated with a particular film. The term “Aashiqui” appears generic but has acquired distinctiveness over the years. Thus, the court aimed to avoid any likelihood of confusion that may arise or dilute the goodwill established by the Aashiqui Franchise.