Ruling in favour of Subhash Chandra-promoted ASC Enterprises, the Delhi high court has dismissed a petition filed by Twentieth Century Fox Film Corporation over use of the mark ‘FX’. ASC had launched its first direct-to-home (DTH) broadcasting platform last year. Its bouquet includes channels from the Zee stable, Smile TV, Trendz, and ‘FX’, among others.
Twentieth Century Fox had filed a petition restraining ASC from using the mark ‘FX.’ It had claimed proprietary rights over the mark as it was the name of the channel the company had launched in the UK and the US in June 1994. In response, ASC had agreed to change the mark to MX with Zee logo prominently displayed but the petitioner had refused to accept the alteration.
Dismissing the contention of the petitioner, Justice Mukul Mudgal said, “There is no reasonable possibility of confusion or deception of a possible viewer. ..This suit is mainly about a mark seen on the visual media. Such a change offered to be made is sufficient to redress the grievance averred by the plaintiff.”
According to Rajiv Nayyar, counsel for ASC Enterprises, neither is the mark ‘FX’ a descriptive word nor has it acquired any goodwill or reputation in India. “FX has not acquired the secondary meaning of distinctiveness in favour of Twentieth Century. The mere fact of advertisements in foreign magazine does not confer rights on the plaintiff,” he said.
Counsel CM Lall, on behalf of the petitioner, on the other hand contended that the ‘FX’ channel and its programmes had become synonymous with Twentieth Century. “The ‘FX’ channel has been extensively advertised and has had extensive media coverage in several well circulated magazines and journals,” he said.
The court has now allowed Zee to use the logo as having Zee letters in white imposed upon the letter Z in brown and letters M with a staggered X.
“... Once such a mark is used and the channel identified clearly to demonstrate that ‘MX’ belongs to Zee Network and is being marked as ‘MX’, there is no reasonable possibility of confusion or deception...,” Justice Mudgal said.