Sholay (1975) directed by Ramesh Sippy, is perhaps the most reviewed film in the history of Hindi mainstream cinema and a film that transcends all generations. The creative and commercial rights of the iconic film vest with Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd.
Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. came across a magazine released in December, 2000 titled "IT-Information Technology", and learnt that Mr. Yogesh Patel and others (infringers) had registered the domain name
www.sholay.com and also had filed an application for trademark registration dated 11th February 1999 for the mark 'SHOLAY' at the United States Patent and Trademark Office (USPTO) as well the Indian Trade Mark Registry. The infringers were also selling merchandise, using scenes and names from the motion picture as well as using the name ‘SHOLAY’ as a Meta tag in the source code. (Meta tags are snippets of code which tell the search engines important information about the web page, such as how the same should be displayed the search results.)
Consequently, the Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. approached the Delhi High Court to permanently restrain the infringement of their registered trademark 'SHOLAY' claiming passing off, damages, rendition of accounts, delivery up, etc. Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. claimed that the unauthorized use of their registered mark by the infringers constituted infringement, passing off, dilution and tarnishment.
The Court observed that certain films cross the boundaries of being just ordinary words and 'SHOLAY' was one of them. The Court further observed that, titles and films are capable of being recognized under trademark law and in India and ‘SHOLAY’ was a classic example of such a case. The Court noted that, 'SHOLAY', which is a registered trademark, had been recognised as a “well-known” trademark by Courts in favour of Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. in the ruling of Sholay Media and Entertainment Pvt. Ltd. and Anr. v. Parag Sanghavi and Ors., 2015.
The Court further noted that the use of the word ‘SHOLAY’ by the infringers, was not descriptive, but a clear indication to suggest an association with the film, especially using identical domain names, as well as offering merchandise for sale and thereby such adoption, was mala fide and dishonest and merely placing earlier trademark applications on record or use of the title as part of a corporate domain name would not vest any prior rights in favour of the infringers.
Since, Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. had already registered the mark "SHOLAY" in various other trademark classes, the Court said that, “the content is no longer merely restricted to theatrical screening, but also to online platforms and other electronic platforms. Furthermore, the Court commented upon the internet, now being accessed by billions of users across the world has become a medium/platform for dissemination, communication and empowerment to the common man. Thus, on account of dishonest use of the mark by the infringers, the Court restrained the infringers from using the name 'SHOLAY' in respect of any goods and services, using the domain name 'Sholay.com' and making any reference to the movie 'SHOLAY' or using any imagery or clippings from the movie, as also from selling merchandise related to the cinematographic film and decreed the suit for a sum of INR 25,00,000/- as costs and damages.
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