Won't use "Comedy Factory", Zee says after trademark infringement suit

Won't use "Comedy Factory", Zee says after trademark infringement suit

In a trademark infringement suit filed in the Bombay High Court by a sole proprietorship firm, TCF Entertainment Pvt. Ltd. which owns the trademark, "The Comedy Factory", Zee Entertainment Enterprises Ltd has agreed not to use those words.

TCF Entertainment Pvt. Ltd. had approached the Court to restrain Zee from infringing "The Comedy Factory", a registered trademark registered with TCF.

For more than a day, Justice KR Shriram heard submissions in the matter which was closed for orders. Advocate Hiren Kamod, appearing for Zee, at this point stated,

"Without accepting the plaintiff's (TCF's) case or conceding to it, his instructions are that defendants (Zee) will change the name of their show from 'Zee Comedy Factory' to 'Zee Comedy Club' and defendants will not used the words 'Comedy Factory' in any form now or later."

The owner of the registered trademark, Vidya Desai, submitted that TCF had been using the trademark name since 2011 and had it registered under in 2014 under the Trademark Act in 2014.

As Zee had a professional relationship with her and her husband and stand-up comedian, Manan Desai, Zee was always aware of the mark used by them and its popularity.

A fan informed Desai in May 2021 that Zee was going to host a stand-up comedy show under the mark.

Manan Desai immediately contacted Optimystix Entertainment Pvt. Ltd. (another defendant in the suit that was producing the show) to amicably settle the matter and thereafter, both defendants agreed to change the title to 'Zee Comedy Factory'.

This proposed change was however refused to be accepted by TCF since the change appeared just an eyewash and Zee seemed to piggyback on their goodwill.

The Indian Film and TV Producers Council had granted registration of the title 'The Comedy Factory' to Zee in June 2021, Optimystix Entertainment Pvt. Ltd. informed Manan in June 2021.

Zee had applied for registration of the marks – 'Comedy Ki Factory' and 'Zee Comedy Factory' respectively which was pending as on date, TCF also discovered.

Zee was then sent legal notice by TCF and called to cease and desist from using the mark.

Responding to the notice, Zee stated that the use of "Zee" in the name dissociated it from TCF's mark so there was no possibility of confusion. TCF moved the HC with an infringement suit, upset by the actions of Zee.

Senior Advocate Birendra Saraf appearing for TCF after Kamod's statement pointed out that during the course of hearing, Senior Advocate Ravi Kadam appearing for Zee had also stated during his submissions that their registration application for "Comedy Ki Factory" will not be pursued by the defendants.

The applications with the Trade Mark Registry for both "Comedy Ki Factory" and "Zee Comedy Factory" would be withdrawn, Kamod further added.

A cost should be imposed for having wasted a substantial judicial time of the court, Saraf also prayed.

Zee was accordingly directed to pay a sum of Rs. 2 lakh as costs to the plaintiff within two weeks.

Zee on Thursday moved an urgent precipice seeking permission from the Court to change the name of the show from "Zee Comedy Club" to "Zee Comedy Show".

The court recorded this change in order as TCF did not object to the same.

A team of Advocates Bhuvan Singh, Ayush Agarwala, Suvaaankoor Das and Arushi Kaulaskar from Krishnamurthy and Co briefed Saraf. Advocates Hetal Thakore, Kunal Parekh and Nirali Shah instructed by Dua Associates AOR Mumbai appeared for Kadam and Kamod.