SpicyIP Tidbits: Bollywood survives TM attempts in US & Germany

SpicyIP reader Shivani Kochhar draws our attention to a recent decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trade Mark Office, which refused to allow an application for the mark THE BOLLYWOOD REPORTER for entertainment-related publications. You can download and read the decision here: In re Nielsen Business Media, Inc., 93 USPQ2d 1545 (TTAB 2010).

The TTAB, in its precedential decision, held that Nielsen Media (the Applicant) could not rely on its registrations for the mark THE HOLLYWOOD REPORTER (see logo) to establish rights of acquired distinctiveness over the Bollywood Reporter. In a practice known as “tacking on”, the applicant claimed it could transfer distinctiveness to the new mark by virtue of its rights in the previously registered marks.

The original Trademark Examining Attorney (equivalent to the Indian TM Examiner) had held that THE BOLLYWOOD REPORTER was neither same nor legally equivalent to the THE HOLLYWOOD REPORTER.

The applicants appealed against this decision to the TTAB, arguing there was only “an inconsequential difference” between the two marks, that of a “B” instead of an “H”, and contended that “the term Bollywood would not exist if it were not for the well-known use of the word Hollywood”.

The TTAB refused to entertain these arguments, and pointed out that the marks were not legal equivalents:

“The marks at issue are not legal equivalents because they have different meanings and engender different commercial impressions. “Bollywood” is “the extravagantly theatrical Indian motion picture industry.” “Hollywood” is “the center of the American motion picture industry located in Hollywood, California.” THE BOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the Indian movie industry while THE HOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the American movie industry.”

You can read more about the order at the TTABlog here.

Happiness in Germany too!

Elsewhere, and a little further back in time, via the Marques blog, the German Federal Patent Court kicked out an attempt to register the mark “Bollywood macht glücklich!” (tr: Bollywood makes you happy!), for reasons that the “slogan-type” mark was not distinctive enough to qualify for protection for film works and TV entertainment.

The Court held that the mark was only a laudatory promotional statement and did not indicate a specific trade origin. At best, consumers would understand the statement as an advertisement that the goods and services offered under the mark related to the Indian film industry, and contributed to feeling a sense of happiness.

Here, the applicants tried to argue that the mark was short, concise and not ambiguous, and that the stylization was distinctive, but were entirely unsuccessful. You can read more about the decision, which my three semesters of university German doesn’t at all allow me to translate, here.

Bollywood, thou art truly original!

So, the Bombay, sorry Mumbai, Hindi film industry can rest assured that the name is still theirs to use in multiple avatars, including in the language of the Saxons. That said, I open this up to your thoughts, while mulling over some of mine –

It’s disturbing to imagine what awaits, entertainment-wise, if this nomenclature is to be considered a measure of the industry’s capacity for originality. Despite quality-control issues, that an international media house should attempt to register a mark for publications presumably intended for reportage on Bollywood is surely a sign that the Hindi film industry has come of age, and may actually be a threat to Hollywood?. (There is, interestingly enough, already a website by that name, and that’s perhaps why this application was made?). I wonder, though, what of the Kollywoods, Mollywoods, Tollywoods, etc., of this world? Are they sufficiently distinctive too?