India: Second Time Also Not Myshow!!

Last Updated: 5 September 2019
Article by LexOrbis  

Over the years, laws relating to Intellectual Property Rights in India have witnessed rapid growth and significant development. One such paradigm shift and development in the branch of Trade Mark law relates to the Indian judiciary system becoming more stringent in granting protection to trademarks consisting of descriptive terms. Earlier this year, the Delhi High Court in the case of Bigtree Entertainment Pvt Ltd v. D Sharma & Anr. reiterated the principles laid down in various judgements to ascertain the scope of registrability of descriptive marks. The court in this case dealt with the issue relating to whether the prefix "BOOKMY" is a descriptive phrase or an invented term and whether the plaintiff has acquired inherent distinctiveness with the continuous and long use of its registered mark “BOOKMYSHOW” and “BOOKMY”?

In the instant case the plaintiff, Bigtree Entertainment Pvt. Ltd. operated a highly successful online ticketing venture through its website and mobile application "BOOKMYSHOW" since the year 1999. According to the plaintiff, due to continuous & extensive use, the trademark "BOOKMYSHOW" and subsequently the term "BOOKMY" had acquired a secondary meaning and had come to be exclusively associated with its business and services provided thereunder. In view of safeguarding its interest and rights the plaintiff obtained several trademark registrations under Classes 41 and 42 for "BOOKMYSHOW" word marks and logos.

As per the plaintiff, in the year 2014, it was made aware about the defendants unauthorised adoption of the trade name and style along with the brand "BOOKMYEVENT" for the same line of business as that of the plaintiff's. Further, it was also discovered that the defendant operated its business under a website which was a replica of the plaintiff's website. In view thereof the plaintiff had pleaded that the defendant with a mala fide intention of deceiving the purchasing public as well as the concerned members of trade had adopted the infringing mark under Class 41 which is phonetically, visually and structurally similar to the plaintiff's registered marks.

The present infringement and passing off suit was filed by the plaintiff seeking for a permanent injunction against the defendants so as to restrain them from using the mark "BOOKMYEVENT" or the prefix "BOOKMY" in any manner with respect to services relating to online ticketing or any similar services so as to infringe upon the rights of the plaintiff.

Contrariwise, the defendant in their written submissions pleaded that the plaintiff had falsely stated that the cause of action arose in the year 2014 and that plaintiff and the defendants had been ticketing and promotional partners for several events/concerts, etc. The brand name and logo of the defendants and the plaintiff had appeared on various promotional contents, newspapers, pamphlets, sale tickets, etc. side by side. That the plaintiff in the said partnership was the online ticketing partner and the defendants were the online promotional partners. It was also pleaded that "BOOKMY" being a generic term and used substantially in the entertainment industry cannot be monopolized as subject matter of any trade mark. The features of the mark and colour combination used are entirely different from the plaintiff's mark. Thus, the question of likelihood of confusion or any deception does not arise.

The court while deciding the issue relating to the phrase “BOOKMY” being a descriptive or invented term examined various judgements and especially placed reliance on the case J.R. Kapoor v. Micronix India. 1994 (14) PTC SC 260 wherein it was held that ‘a word which is descriptive of the industry or market in which the concerned party operates cannot be deemed to be invented’ and on F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd, 1970 C 2062 wherein the Supreme Court applied the principle of using the characteristics of the market in which a party operates as a test to determine descriptiveness or inventiveness. Thus, the court noted that the phrase "BOOKMY" was descriptive of the services offered by the Plaintiff and plaintiff’s trademark “BOOKMYSHOW” has not acquired a distinctive meaning and was a generic English lexicon and had agreed with a previous judgment of this court in Bigtree Entertainment Pvt. Ltd. v. Brain Seeds Sportainment Pvt. Ltd. 2018 (73) PTC 115 (Del) that prefix "BOOKMY" was not an invented word. In fact, it was an apt description of a business involved, namely in, booking tickets for shows, events, films, etc.

The court took a prima facie view pending the trial and held that both the rival marks as a whole were dissimilar and on an overall comparison the visual effect of both Trade Marks will not be perceived as same in the minds of the buyers that the font used by the defendant are entirely different thus, eliminating the likelihood of confusion or deception among the relevant public and member of trades.

It was finally concluded that the Plaintiff had failed to make a prima facie case for an injunction and thus the applications of the plaintiff were disposed off. Thus, this defeat for the plaintiff that too two times in a row has got the attention of the trademark users trying to keep a monopoly over their alleged exclusive marks. Therefore it has become important to keep a note that when one is applying for or adopting a mark; he should probably consider coining or inventing a word or select a word which is arbitrary in nature.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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