JURISDICTION REPORT: INDIA
TRADEMARK CONFUSION IN THE ENTERTAINMENT INDUSTRY
Manisha Singh Nair
Lex Orbis
A trademark denotes exclusivity and is part of a business’s goodwill. It identifies the products or services of that business. It is also a mark of quality of the product or service offered. For manufacturers dealing in similar goods or services, adoption of the same or a confusingly similar mark threatens the reputation of the mark and gives rise to liabilities of infringement and dilution. Te law of trademarks protects this exclusivity and provides for remedies in case of infringement.
Te impression of association of a new mark with a registered trademark creates confusion about the source or origin. Even if a person incorporates the whole or part of a registered trademark in an inconspicuous fashion, the addition of other elements does not make the new mark distinctive.
Trademarks in the media and entertainment industries are important tools for advertising and promotion, and require extensive expenditure. Businesses therefore make every effort to protect their market share. Te importance of technology in this industry cannot be overlooked.
Te direct to home (DTH) broadcast segment has been buzzing with recent activity, as a number of players have launched services. With intense competition and an increasing customer base, a new controversy has arisen over the trademark ‘Dish TV’. Reliance ADAG, an up-and-coming player in DTH, which already has a market reputation as ‘Big TV’, applied for trademark registration of its DTH services as ‘Big Dish TV’ and ‘Reliance Dish TV’. Dish TV is already registered and has a huge reputation as the largest DTH operator in India. Te proprietors of Dish TV objected to the new registration when the mark was advertised in the Trade Marks Journal. Dish TV proprietors alleged a mala fide intention to ride on their established reputation, as well as the creation of confusion in customers’ minds regarding the association or origin of services.
According to the procedure specified in the Trade Marks Act 1999, any person may give written notice of opposition to the registration within three months of publication (extendable by one month by the registrar). ‘Any person’ need not be a trader or a proprietor of a trademark, or a person aggrieved. Aſter the filing of the opposition notice, the registrar is required to serve a copy of the opposition notice to the applicant. In turn, the applicant submits a counterstatement of the grounds on which the application relies. Aſter receiving the opposition notice, the applicant has two months to file its counterstatement. If this time period elapses, the registration application will be deemed abandoned. A copy of the counterstatement must be served on the opponent. All evidence must be submitted in the prescribed manner before the registrar. Aſter hearing the parties’ arguments and passing a verbal order stating all reasons for imposing any conditions or limitations, the registrar will decide whether
58 World Intellectual Property Review May/June 2010
registration is to be permitted. Te registrar is entitled to take into account any grounds of objection, even those not relied on by the opponent.
Reliance is reported to have earlier applied for registration of the trademark ‘Reliance Dish TV’ in 2006, on a ‘proposed to be used’ basis, but did not use it. It recently applied again for registration of Big Dish TV and Reliance Dish TV for use in its communications. According to market estimates, the DTH industry has more than 22 million subscribers shared between six private operators, with Dish TV having the largest subscriber base of 6.5 million. Reliance’s Big TV has low sales numbers in comparison to any other subscriber. It was also submitted by Dish TV proprietors that they have been using the Dish TV mark since 2003. In view of the low market share of Reliance, it was evident that the company was trying to gain benefit from the goodwill associated with the Dish TV mark. Te application should therefore be rejected. Te registrar is yet to hear the opposition and finally dispose of the case.
Te procedure of trademark opposition is significant because a deceptively or confusingly similar trademark can be prevented. Organisations with established brands and trademarks with widespread reputations must be particularly vigilant when faced with the slightest infringement or passing- off of their intellectual property.
Manisha Singh Nair is a partner at Lex Orbis. She can be contacted at:
manisha@lexorbis.com
www.worldipreview.com
“ THE IMPRESSION OF ASSOCIATION OF A NEW MARK WITH A REGISTERED TRADEMARK CREATES CONFUSION ABOUT THE SOURCE OR ORIGIN. EVEN IF A PERSON INCORPORATES THE WHOLE OR PART OF A REGISTERED TRADEMARK IN AN INCONSPICUOUS FASHION, THE ADDITION OF OTHER ELEMENTS DOES NOT MAKE THE MARK DISTINCTIVE”
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80