In the world of intellectual property, the trademarking of common phrases often sparks curiosity and debate. One notable example is the phrase “Jai Ho,” which gained international fame through A.R. Rahman’s Oscar-winning composition for the film “Slumdog Millionaire.” This blog explores how a seemingly common phrase in a language like Hindi can be trademarked, the legal principles involved under Canadian law, and the broader implications for trademark law.
Background: The Rise of “Jai Ho”
“Jai Ho,” which translates to “let there be victory” in Hindi, became globally recognized after its inclusion in the 2008 film “Slumdog Millionaire.” The song’s success, crowned by an Academy Award for Best Original Song, catapulted A.R. Rahman and the phrase into the international spotlight.
Recognizing the commercial potential and the unique association the phrase had garnered, A.R. Rahman decided to trademark “Jai Ho.” This move was not merely about protecting a song title—which is generally difficult to do under copyright law alone—but about securing the commercial and brand value associated with the phrase.
The Trademark Process
A.R. Rahman filed for the “Jai Ho” trademark in multiple jurisdictions, including Canada and India. The registration covered various categories, such as:
- Entertainment Services: Including ongoing television and radio programs, concerts, and theatrical performances.
- Pre-recorded Media: Such as CDs, DVDs, and other digital storage media featuring music and films.
- Printed Matter: Including newsletters, books, and brochures in the field of music and entertainment.
- Clothing and Headgear: Such as t-shirts, hats, and caps.
In Canada, the application was assigned the number 1436759 by the Canadian Intellectual Property Office (CIPO), and the registration was published on March 15, 2011.
How Can a Common Phrase Be Trademarked?
Trademarking a common phrase is possible in Canada under specific conditions:
- Use as a Source Identifier: The fundamental requirement for a trademark in Canada is that it must be used to distinguish the goods or services of one person from those of others. Rahman used “Jai Ho” not just as a lyric, but as a brand to identify his specific merchandise and entertainment services.
- Acquired Distinctiveness (Secondary Meaning): While common phrases can be considered “clearly descriptive” (which usually bars registration under Section 12(1)(b) of the Trademarks Act), a mark can still be registered if it has acquired distinctiveness. This means that through extensive use and marketing, the Canadian public has come to associate the phrase “Jai Ho” specifically with A.R. Rahman’s brand, rather than just its dictionary definition.
- Non-Generic Nature: The phrase must not be the name of the goods themselves (e.g., you cannot trademark the word “Music” to sell music). “Jai Ho” was distinctive enough in its commercial application to qualify for protection.
Authorship Controversy and Legal Realities
Recently, filmmaker Ram Gopal Varma asserted that singer Sukhwinder Singh, not A.R. Rahman, actually created the melody for “Jai Ho.” While this sparks a fascinating debate about artistic credit, from a Canadian legal standpoint, the implications are different than one might assume:
- Copyright vs. Trademark Distinction: It is vital to distinguish between the song and the brand. If Sukhwinder Singh composed the music, he may have a claim to the Copyright (ownership of the artistic work). However, Trademark rights in Canada are based on use in commerce, not artistic creation. Even if Singh wrote the song, if Rahman was the entity who commercialized the phrase “Jai Ho” to sell clothing and concert tickets, Rahman is the valid trademark owner.
- Bad Faith Arguments: A potential challenge to the trademark would not be based on “who wrote the song,” but rather on whether the application was filed in “bad faith” (Section 18(1)(e) of the Trademarks Act). If it could be proven that Rahman applied for the mark knowing that Singh had already been using “Jai Ho” as a brand for similar goods, the registration could be vulnerable.
- Personality Rights: Unlike the US “Right of Publicity,” Canada recognizes “Personality Rights” (often through the tort of misappropriation of personality). If the phrase “Jai Ho” became so intrinsically linked to Sukhwinder Singh’s persona that Rahman’s use of it implied Singh’s endorsement, Singh might have a claim. However, this is a high bar to clear for a phrase, as opposed to a name or image.
- Validity of the Registration: A trademark registration can be expunged if the applicant was not the person entitled to secure the registration. However, this entitlement is usually determined by who used the mark first as a brand, not who invented the word or melody.
- Reputation and Goodwill: While the legal grounds for trademark invalidation based solely on authorship are slim, the dispute could impact the value of the brand. If the public feels the “source” of the brand is not genuine, the goodwill associated with the trademark may diminish.
This controversy underscores that owning the copyright to a song does not automatically grant you the trademark rights to its title. It highlights the importance of clear agreements regarding both artistic credit (Copyright) and merchandising rights (Trademark) at the outset of any project.
Comparisons and Controversies
The trademarking of “Jai Ho” is not without precedent. Similar cases include:
- Taylor Swift: Her attempts to trademark phrases like “This Sick Beat” in the US.
- Paris Hilton: Her trademark of “That’s Hot,” which led to litigation.
In Canada, these cases remind us that while you can trademark a phrase, you generally cannot stop others from using it in a non-commercial, descriptive way (e.g., using “That’s Hot” to describe the weather). The protection is limited to the specific goods and services listed in the registration.
Enforcement and Challenges
While the “Jai Ho” trademark is registered, enforcement has limitations:
- Non-Commercial Use: The trademark prevents competitors from using “Jai Ho” to sell similar goods (like music DVDs or t-shirts). It does not prevent the public from saying the phrase, or using it in cultural or religious celebrations, as this is not “use as a trademark.”
- Political Use: In 2014, the Bharatiya Janata Party (BJP) in India used “Jai Ho” as a slogan. In a Canadian context, using a trademark in political discourse is often defended under freedom of expression, provided it does not mislead the public into thinking the artist has endorsed the political party.
Legal and Commercial Implications
The trademarking of “Jai Ho” underscores the importance of protecting intellectual property assets. By securing a trademark, A.R. Rahman ensured that the phrase could not be used commercially by others to sell rival merchandise. This protection safeguards the commercial value derived from the song’s success, separate from the royalties earned from the music composition itself.
Concluding Remarks
The case of “Jai Ho” highlights how a common phrase can be transformed into a powerful trademark through strategic commercial use. It also illustrates the complex distinction between being the author of a work and being the owner of a brand.
For creators and businesses, this serves as a reminder: Copyright protects what you create; Trademark protects what you sell. Securing both requires different strategies and clear documentation.
Additional Considerations
This authorship dispute emphasizes the need for thorough due diligence. For businesses and individuals involved in collaborative projects, this case highlights the importance of:
- Distinguishing Rights: Understanding the difference between owning the song (Copyright) and owning the merchandise brand (Trademark).
- Waivers and Assignments: Obtaining clear written agreements where contributors assign rights or waive “Moral Rights” to avoid future disputes over how a work is used or branded.
- First-to-Use: In Canada, trademark rights are heavily reliant on who used the mark first. Documenting the date of first commercial use is critical.
At Soundmark Law, we assist with trademark registration and help navigate the intersection of copyright and trademark law. Our expertise extends to resolving disputes and negotiating agreements to ensure your intellectual property rights—whether artistic or commercial—are secured on a solid legal foundation. If you’re facing similar challenges, contact us for a comprehensive intellectual property strategy.
