Trademark confusion in the entertainment industry

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. The law of trademarks protects this exclusivity and provides for remedies in case of infringement.

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 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. The importance of technology in this industry cannot be overlooked.

The 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. The 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. After 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.

"The impression of association of a new mark with a registered mark creates confusion about the source or origin."

After 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.

After hearing the parties’ arguments and passing a verbal order stating all reasons for imposing any conditions or limitations, the registrar will decide whether registration is to be permitted. The 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. The application should therefore be rejected. The registrar is yet to hear the opposition and finally dispose of the case.

The 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 passingoff of their intellectual property.