Single title may sustain passing off action

In Kanungo Media (P) Ltd v RGV Film Factory (Case IA 1979/2007 in CS (OS) 324/2007, February 27 2007), the Delhi High Court has for the first time in India held that the title of a single literary or entertainment work (eg, a film) may sustain a passing off action if the plaintiff establishes that such a title has acquired secondary meaning. This differs from the rules in place for series of literary works or entertainment works, which enjoy the same protection as trademarks and may sustain a passing off action without having to prove secondary meaning.

In the case at hand, Kanungo Media (P) Ltd produced a Bengali documentary under the title Nisshabd (which means 'wordless') in reference to the central theme of the film - silence, whether occasioned by unspoken words, wordlessness or the absence of sound. Nisshabd attracted extensive pre-release publicity, featured at various film festivals and won several film awards. However, it had not been commercially released. RGV Films subsequently produced a Hindi feature film under the title Nishabd with a totally different theme. Kanungo initiated a passing off action several months after the release of RGV's film, seeking an interlocutory injunction to restrain RGV from using the title Nishabd.

The Delhi Court rejected Kanungo's application for an interlocutory injunction on grounds of delay and held as follows:

• A single film title, such as Nisshabd, can sustain a passing off action if the author is able to establish secondary meaning in respect thereof, that is, whether in the minds of a significant number of people the title in question is associated with a single source.
  
  
• Even without commercial release, a sufficient amount of pre-release publicity of the title may be enough to establish secondary meaning so as to justify protection by the grant of an interlocutory injunction.
  
  
• However, in the present case Kanungo was not entitled to interlocutory injunction since it had notice of RGV's title Nishabd since at least May 2006 and it initiated court action only in January 2007, by which time RGV's title had also acquired substantial pre-release publicity and Kanungo had lost its rights due to acquiescence.
  
  
• In previous passing off cases, the Supreme Court held that once a prima facie passing off/infringement case is established, an interlocutory injunction should normally follow and delay would not be a ground for refusing such an injunction. However, in the Kanungo Case the court held that there was a distinction between previous passing off cases decided by the Supreme Court which related to goods and the present action which related to passing off in respect of an entertainment work/film. In the former type of case, one product competing with another justifies an injunction in spite of delay, whereas in relation to entertainment works/literary works of this nature, each work would be an 'economic market' by itself and would not be in competition with other works. Thus, there can be no justification for an interlocutory injunction when there is considerable delay on the part of the plaintiff in initiating the action.

Mustafa Safiyuddin, DSK Legal, Mumbai