SHOLAY MEDIA ENTRTAINMENT Vs. YOGESH PATEL

JUDGEMENT

(1.) This order will dispose off an application IA 12828/2009 whereby the defendants seek dismissal of this suit for injunction, on the ground that this Court lacks territorial jurisdiction.

(2.) The plaintiffs in this suit seek permanent injunction to restrain the defendants or their representatives from using selling, soliciting, exporting, displaying, or advertising their goods and the services under the mark "SHOLAY", which the plaintiffs owns. The plaintiffs company is engaged in film production, and avers to being one of the foremost concerns in that regard. The suit speaks of the plaintiffs extensive reputation, and production of prominent and well- known films. It is alleged that the plaintiffs produced the blockbuster "SHOLAY" in 1975, which became one of the most successful and renowned films ever. The plaintiffs allege that "SHOLAY" and its appeal has transcended films, and it has cut across barriers of geography, language, ideology and class. It also alludes to studies conducted on the impact of the movie, which is a crowd puller, revealing that the term SHOLAY has acquired distinctiveness and remains so several decades after its release, and has become part of the popular lore. The plaintiffs claim that SHOLAY is so powerful a mark that it is a marketable commodity; the suit also alludes to several articles and books written about the movie, the word and its universal and timeless appeal amongst the general public. It is further alleged that the plaintiffs conceived the SHOLAY II project, in 1997, and were even asked to consider the feasibility of establishing an entertainment or theme park, with the name in the forefront.

(3.) The plaintiffs say that in order to protect SHOLAY from unwarranted appropriation, and secure suitable protection, as a mark, it applied for trademark registration, in several classes, including Class 9 (video films, tapes, cassettes, etc.) and other classes with a view to use the mark for merchandising purposes. It is also stated that with a view to capitalize on the brand value of the merchandizing potential inherent in the SHOLAY trademark, the plaintiffs incorporated a company, in September, 2000. The plaintiffs also mention about registration of domain names with SHOLAY, such as ESHOLAY.COM; ESHOLAY.NET; SHOLAYNET.COM; and SHOLAYTWO COM. The plaintiffs say that others attempts to use SHOLAY in their domain names or websites had previously been contested promptly. It is alleged that in these circumstances, when the defendants website www.sholay.com was made known by the latter in January 2000, with the proposal that the SHOLAY sequel under the plaintiffs contemplation, may be jointly promoted, in that website, it (the plaintiffs) declined the offer. The plaintiffs allege that till that time, it was unaware about the defendants web presence; it also conducted a search, and discovered that a company by the name Sholay.com Pvt. Ltd. was incorporated by the defendants in December, 1999. That company is fourth defendant, in the suit. The plaintiffs allude to proceedings initiated by it before the Registrar of Companies, and an order by the latter, in Chennai, dated 20th December, 2000, directing the second defendant to delete SHOLAY from the existing name. That order, say the plaintiffs, has been impugned by the defendants before the Madras High Court, at Chennai.