The Comedy Factory was a sole proprietorship firm and was the registered proprietor of the mark ‘’. The Comedy Factory, a Gujarati YouTube Channel, was conceptualized by Manan Desai and his wife Vidya Desai. In 2019 they incorporated the company viz. - TCF ENTERTAINMENT PRIVATE LIMITED. The mark bearing no. 2815546 registered since 2014 and claiming use since August 2011, was assigned from the sole proprietorship firm to the company TCF ENTERTAINMENT PRIVATE LIMITED (hereinafter referred to as TCF). TCF is also the proprietor of the domain name: https://www.thecomedyfactory.in/#home since at least May, 2012. The mark is also prominently used on the above referred webpage. Manan Desai is a popular Indian actor and comedian and has worked in the industry with several popular production houses including Zee Entertainment.
In 2021, the Desai couple were informed by a fan that Zee Entertainment was intending to launch a show under their mark ‘The Comedy Factory’ in collaboration with the production house - Optimystix Entertainment India Pvt. Ltd. (hereinafter Optimystix). Manan Desai, the co-founder and director of TCF approached Optimystix in an attempt to amicably settle the matter. Zee and Optimystix both proposed changing the name of the proposed show to ‘Zee Comedy Factory’. However, this was not acceptable to TCF, since their mark as a whole was still being used and the fans in all probability will associate Zee’s show with TCF, thereby permitting Zee to piggyback on the goodwill garnered by TCF.
TCF then sent a legal notice to Zee to cease and desist henceforth from the using TCF’s marks. However, Zee allegedly responded to the notice stating that the use of the prefix ‘ZEE’ ensured that the mark is distinct from that of TCF’s. Meanwhile, TCF observed that Zee had filed several trademark applications starting June, 2021, for the mark ‘Zee Comedy Factory’ (bearing application no. 5011529), (bearing application no. 5019635) and (bearing application no. 5019637).
TCF then decided to take the matter to Court, and approached the Hon’ble High Court of Bombay claiming infringement of their mark ‘THE COMEDY FACTORY’. During the hearing, the Defendant (Zee), proposed that they will not use the mark ‘Comedy Factory’ or ‘Comedy ki Factory’ and have decided to change their show’s name to ‘Zee Comedy Show’. Zee also has been asked to submit an affidavit stating the above. TCF had no objection to the proposed name: ‘Zee Comedy Show’.
The primary takeaway from this case is that, if there exists a popular trademark which has acquired distinctiveness and is associated solely with a particular entity (e.g.: The Comedy Factory), merely adding a prefix to such a mark ‘Zee Comedy Factory’ does not change the infringing nature of the act.