India is a cricket loving nation, the sport has its fair share of aficionados in India and the organization basking in all this adulation is the Board of Control for Cricket in India (BCCI). The BCCI is the richest cricket boards and pursuant to launching the Indian Premier League (IPL) in 2008, the BCCI has prospered tremendously. Recently the BCCI filed a trade mark infringement suit against Grace India Sports Pvt. Ltd. for using the trade mark ‘Indian Junior Players League Twenty 20’ and the domain names www.ijplt20.com and www.juniorsipl.com.
It was stated by BCCI’s counsel that, upon learning the Defendant’s (Grace India Sports Pvt. Ltd.) use of the infringing trade mark and domain names, in December 2016 BCCI sent a Cease and Desist notice to the Defendants. The Defendant through its Executive Director replied to BCCI’s notice informing that they had no intention of misleading people about their association with BCCI. The BCCI through its representative responded that since no approval had been obtained by the Defendant prior to launching its juniors’ tournament, it could not use the deceptively similar trademarks and conduct such tournament. The Defendant’s representative sought an appointment for amicable resolution of the dispute however; there was no further meeting between the two parties.In or around August 2017, BCCI learnt that the Defendant was planning to hold a cricket tournament in Dubai from 19th September, 2017 to 30th September, 2017. Furthermore, the Defendant was now carrying out its activities under the domain name www.ijplth.com to promote its activities. The domain name www.juniorsipl.com was no longer active however the domain name www.jiplt20.com re-directed visitors to the website www.jiplth.com . BCCI sent a second cease and desist notice to the Defendant in October, 2017. It was the case of BCCI that the Defendant’s use of the trade mark ‘Indian Junior Players League’ and the domain name www.ijplth.com amounted to infringement of its registered trademarks ‘IPL’ and ‘IPLTwenty20’ since the Defendant’s trade mark contained all the elements of BCCI’s registered marks.
The Bombay High Court perused the facts of the case, compared the trademarks and even referred to newspaper clippings where the Defendant’s tournament was being referred to as ‘Indian Junior Premier League’. It was ruled that a case of real and actual confusion was established by BCCI against the Defendant’s use of the trade mark ‘Indian Junior Players League’ and therefore BCCI was entitled to relief for infringement and passing off against the Defendant; accordingly an order of injunction was passed against the Defendant and its representatives from using trademarks deceptively similar to BCCI’s registered trademarks. This case throws light on the fact that use of abbreviations which are identical to an existing mark can also result in an action for trade mark infringement irrespective of the fact that such abbreviation may, otherwise have a different full form.
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