Zee Entertainment agrees not to use "Comedy Factory" after trademark infringement suit filed in Bombay High Court

Zee Entertainment Enterprises Ltd, has agreed to not use the words "Comedy Factory" in any form in a trademark infringement suit filed in Bombay High Court by a sole proprietorship firm owning the trademark - 'The Comedy Factory'..The sole proprietorship, TCF Entertainment Pvt. Ltd., had approached the Court seeking an order restraining Zee from infringing the registered trademark "The Comedy Factory" registered with TCF. .The submissions in the matter was heard for over a day by Justice KR Shriram and the matter was closed for orders. It was at this point that Advocate Hiren Kamod appearing for Zee made the following statement that - "Without accepting plaintiff's (TCF's) case or conceding to plaintiffs case, 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.".Vidya Desai, the owner of the registered trademark submitted that TCF had been using the trademark name since 2011 and had it registered under the Trademark Act in 2014.Desai claimed that since Zee had a professional relationship with her and her husband, Manan Desai, who was a stand-up comedian, Zee was always aware of the mark used by them and its popularity. .In May 2021, Desai was informed by a fan that Zee was intending to host a stand-up comedy show under the mark. To amicably settle the matter, Manan Desai immediately contacted Optimystix Entertainment India Pvt. Ltd. (another defendant in the suit) which was producing the show and both defendants thereafter agreed to change the title to 'Zee Comedy Factory'. .However, TCF refused to accept this proposed change as it seemed that the change was just an eyewash and Zee seemed to piggyback on their goodwill.In June 2021, OEI informed Manan that the Indian Film and TV Producers Council had granted registration of the title 'The Comedy Factory' to Zee.TCF also discovered that Zee had applied for registration of the marks - 'Comedy ki Factory' and 'Zee Comedy Factory' respectively which was pending as on date..After this, TCF sent a legal notice to Zee calling upon them to cease and desist from using the mark. Zee responded to the notice stating - the use of 'Zee' in the name dissociated it from TCF's mark hence there was no possibility of confusion. Aggrieved by the actions of Zee, TCF moved the High Court with an infringement suit. .After Kamod's statement, Senior Advocate Birendra Saraf appearing for TCF pointed out that during the course of hearing Senior Advocate Ravi Kadam appearing for Zee had also made a statement during his submissions that defendants will not pursue their registration application for "Comedy ki Factory" Kamod further added that the applications with the Trade Mark Registry for both “Comedy Ki Factory” and “Zee Comedy Factory” would be withdrawn..Saraf also prayed for a costs to be imposed for having spent substantial judicial time of the Court. Accordingly, Zee was directed to pay a sum of Rs. 2 lakh as costs to the plaintiff within two weeks. .On Thursday, Zee moved an urgent precipice seeking permission from the Court to change the name of the show from “Zee Comedy Club” to “Zee Comedy Show”. Since TCF did not object to the same, the Court recorded this change in the order..Saraf was briefed by team of Advocates Bhuvan Singh, Ayush Agarwala, Suvaaankoor Das and Arushi Kaulaskar from Krishnamurthy and Co. Kadam and Kamod appeared with Advocates Hetal Thakore, Kunal Parekh and Nirali Shah instructed by Dua Associates AOR Mumbai..[Read orders]