India: Trademark Of Similar Words- Case Analysis

IN THE CASE OF: MOONSHINE TECHNOLOGY PRIVATE vs TICTOK SKILL GAMES PRIVATE LIMITED & ORS.

FACTS

The plaintiff is a part of the Baazi Group of Companies (for short, "Baazi Group") and claims to be a leading and pioneering name in the Indian gaming industry since 2014.

Baazi Group has been offering quality gaming products and experiences to its customers under the branding and registered trademarks inter alia BAAZI, BAAZI GAMES, POKER BAAZI, RUMMYBAAZI, BALLEBAAZI, BAAZI MOBILE GAMING, etc. and it has received customer recognition and approval for these gaming services. It has also attained worldwide popularity and reputation. The plaintiff claimed that the plaintiff had honestly and originally adopted "Baazi" as its trademark, registering several variations between 2014 and 2020 which were still valid, which had become the trading identity, corporate name and domain names of the "Baazi Group".

Being the registered proprietor of the trademarks-Baazi, Baazi Games, PokerBaazi, RummyBaazi, BalleBaazi, etc., the plaintiff had the exclusive right to use the said trademarks in relation to the goods and services it was providing.

The Defendants on the other hand were using the mark "Winzo Baazi" for their games website and mobile app. The Plaintiff complained that by merely claiming that the defendants were only using "Baazi" as a descriptive word for wagering/betting, it cannot be accepted that the use of "Baazi" was bona fide. Since the word "Baazi" cannot be related to a Gaming App, particularly on the mobile phone, clearly, it was not descriptive of the services of the defendants.

ARGUMENTS

Plaintiff's argument:

The learned senior counsel for the plaintiff referred to the Supreme Court's judgment in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories¹ and submitted that what needs to be compared is what the source identifier is. The common words coul d not be removed from the infringing trademark to make comparisons and therefore, "WinZo Baazi" cannot be split into two words to claim there was no similarity. In fact, there has been a blatant copying of the word "Baazi" by the defendants as they added the same to their registered trademark, which is "WinZo".

• It was submitted that the stand taken by the defendants that "Baazi" was a descriptive word was facetious as "Baazi" is not a common descriptive word for Gaming Applications. Relying on the decision of the Supreme Court in Info Edge (India) Pvt. Ltd. v. Shailesh Gupta², the plaintiff submitted that even if "Baazi" was to be considered as a descriptive word, since it operated as a source identifier just as Naukri.com and as in that case protection against infringement of the word "Naukri" was granted even though it was used in reference to employment facilitation, in this case too, the plaintiff was entitled to seek a restraint on the defendants from infringing the trademarks of the plaintiff. Reliance has been also placed on the decisions in T.V. Venugopal v. Ushodaya Enterprises Ltd. And Anr³stating that "Honesty and fair play ought to be the basis of the policies in the world of trade and business. The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties" and Cadila Healthcare Ltd. v. Gujarat Coorperative Milk Marketing Federation Ltd⁴. Thus, it was prayed that in the light of the clear infringement of the registered trademarks of the plaintiff, the defendants be restrained from using the same.

Defendant's Argument:

The learned counsel for the defendants submitted that the word "Baazi" is a generic word, meaning "bet" or a "game" in Urdu. Therefore, since the plaintiff was using the word "Baazi" for a web-based gaming application, which involved betting, the word "Baazi" merely described their services. Thus, such a descriptive word used in relation to gaming services could not be monopolized by any person. Reliance has been placed on the decision in Marico Limited v. Agri Tech Foods Limited⁵.

Learned counsel submitted that in fact under Section 9(1)(c) of the T.M. Act, such a word could not have been registered in the first place . It was submitted that whenever the word "Baazi" was used in vernacular or colloquially, it always signifies betting in a game. If and when such a common word develops a secondary meaning, which identifies that particular product with the proprietor of the trademark, then alone could any protection be given to the registered trademarks.

Reliance has been placed on the decisions in Phonepe Pvt Ltd v. Ezy Services & Anr.⁶,; Godfrey Phillips India Ltd v. Girnar Food & Beverages Pvt Ltd.⁷; Godfrey Philips India Ltd v. Girnar Food & Beverages (P) Ltd.⁸, and Bharat Biotech International Ltd. v. Optival Health Solutions Pvt. Ltd.⁹, People Interactive (India) Private Limited v.Vivek Pahwa & Ors¹⁰ and Aegon Life Insurance Company Ltd v Aviva Life Insurance India Ltd.¹¹, in support of these contentions.

The word "Baazi" was used only to describe the services that were being provided and was descriptive of the services. It was submitted that the word has been used to disclose the intended purpose of the site and was only to highlight the characteristics of the services provided by defendant No.1 and was being done bona fidely. Therefore, statutory defences under Section 30(2)(a) and Section 35 of the T.M. Act were available to it. Therefore, no case for infringement of trademark was made out as there was no prima facie case and no injunction could be granted to the plaintiff.

With regard to passing off, placing reliance on the decision in Reckitt & Colman Products Ltd. v. Borden Inc.¹², as accepted and adopted by the Indian courts in various cases, including S. Syed Mohideen v. P Sulochana Bai¹³, and Vinodkumar Panditrao Patil v. Pradeep Panditrao Patil & Ors.¹⁴, it was contended that in order to establish passing off, the plaintiff had to pass the "classical trinity test", namely, (i) that the plaintiff had acquired a reputation or goodwill in his services, (ii) that there was misrepresentation by the defendants by using the plaintiff's mark and (iii) that the plaintiff has already suffered damage or was likely to suffer damage due to such misrepresentation.

Learned counsel submitted that the name had to be taken as a whole and the word could not be split, as held in Amritdhara Pharmacy vs. Satyadeo Gupta¹⁵. When the word was taken as a whole, it was more than evident that "WinZo Baazi" was not similar or identical with the words used by the plaintiff, namely, "Balle Baazi", "Poker Baazi", "Rummy Baazi", etc. Thus, there was no likelihood of any confusion with persons, who were accessing the services of the plaintiff and the defendants. The identities of the entities providing the services were very clear as the defendant No.1 used its registered trademark of "WinZo" to provide its services. No confusion would arise merely because of the commonality of the word "Baazi" on both the gaming sites.

OBSERVATION

Section 28, confers on the plaintiff the exclusive right to use these trademarks in relation to its services in respect of which the various trademarks have been registered, be it a word or a device or domain name as the courts have also recognized the right to protect a domain name on the same parameters¹⁶.

The word "Baazi" may be used in Hindi/Urdu to mean a test of skill or strength in a game. It may indicate wagering or betting. As observed by Lord Simon , Lord Chancellor in Yorkshire Copperworks Limited , the more apt is a word to describe the goods of a manufacturer the less apt would it be to distinguish them, but surely "Baazi" is not a word apt to describe gaming or wagering services online or as a mobile App. Thus it is a clever and creative use of a common word by the plaintiff for its services. There is nothing on record to indicate that the word "Baazi" is commonly used in the industry. Even though reference was made to several applications for trademark and domain names, the plaintiff has filed documents to show that these are not in use or are under opposition by the plaintiff. Of course, the parties will be entitled to lead evidence in this regard as also the acquisition of secondary meaning.

Nevertheless, on a prima facie view, the plaintiff has disclosed a case for protection of its rights as a registered proprietor, which is assured to it under Section 28 of the T.M. Act. Even under Section 29 of the T.M. Act, the plaintiff has disclosed a case, inasmuch as the use by the defendants is of the exact word i.e., the registered trademark of the plaintiff. Even the conjunctive use of "Baazi" with "WinZo" is similar to the use by the plaintiff of "Baazi" with "Poker", "Rummy", "Balle", etc. The services provided are identical and therefore, in the light of such identity under Section 29(2)(c) read with Section 29(3) of the T.M. Act, the court will necessarily presume that confusion would arise in the mind of a player as to the origin of the services and accordingly, injunction would have to be issued.

This view gains strength from the view taken by the Supreme Court in Renaissance Hotel Holdings INC versus B. Vijaya Sai and Ors¹⁷. In that case, the defendants' use of "Sai Renaissance" was found to be identical or similar to the registered trademark of the plaintiffs namely, "Renaissance" and was found being used in relation to similar goods and services.

It was observed:

"54. In these circumstances, we are of the considered view that it was not open for the High Court to have entered into the discussion as to whether the appellant – plaintiff's trade mark had a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. We find that the High Court has erred in entering into the discussion as to whether the respondents- defendants and the appellant-plaintiff cater to different classes of customers and as to whether there was likely to be confusion in the minds of consumers with regard to the hotel of the respondents defendants belonging to the same group as of the appellant-plaintiff's. As held by this Court in the case of Ruston & Hornsby Limited (supra), in an action for infringement, once it is found that the defendant's trade mark was identical with the plaintiff's registered trade mark, the Court could not have gone into an enquiry whether the infringement is such as is likely to deceive or cause confusion. In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trade mark of the plaintiff."

The defendants have failed to establish that the use of the word "Baazi" was in accordance with honest practices in industrial or commercial matters and was not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark of the plaintiff.

As held by the Supreme Court in Midas Hygiene Industries (P) Limited and Another v Sudhir Bhatia and others¹⁸:

"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."

HELD

It cannot be overlooked that the interests of the consumers would also need to be protected, as it is for the benefit of consumers that a trademark is used by a manufacturer or service provider to distinguish his products from those of competitors, so that on the basis of the quality provided the purchaser may make an informed and considered selection of the products in the market. The trademark signifies the origin of the product. When people are satisfied with the products supplied by a manufacturer or service provider, they buy them on the basis of the trade mark and over time it becomes popular and well known. Thus, the use of a similar or identical trademark by a competitor in the same product would lead unwary customers to believe that it originates from the same source. In the present case, online players may be led into believing that "WinZo Baazi" was another service offered by the plaintiff. Thus, in order to protect such unwary customers, it would be necessary to protect the plaintiff‟s rights to its registered trademark.

In the facts of the present case, neither delay nor acquiescence is made out. Furthermore, the defence of delay and acquiescence are defences in equity and in the present case, the defendants do not appear to be fair and honest in adopting "Baazi" along with their registered trademark "WinZo". The balance of convenience‟ clearly tilts in favour of the plaintiff.

In light of the above, the Court granted an injunction in favour of the Plaintiff and restrained the Defendants from using the mark 'Winzo Baazi' or any other mark comprising 'Baazi' in relation to online gaming services by way of preliminary injunction until the final decision in the suit.

Footnotes

1. AIR 1965 SC 980

2. 2002 SCC OnLine Del 239

3. (2011) 4 SCC 85

4. 2009 SCC OnLine Del 2786

5. 2010 SCC Online Del 3806

6. 2021 SCC OnLine Del 2635

7. 1997 SCC Online Del 533

8. (2004) 5 SCC 257

9. 2020 SCC OnLine Del 852

10. 2016 SCC Online Bom 7351

11. 2019 SCC Online Bom 1612

12. [1990] 1 AII E.R. 873

13. (2016) 2 SCC 683

14. 2017 SCC OnLine Bom 8877

15. AIR 1963 SC 449

16. Yahoo.com vs Akash Arora 1999 (19) PTC201

17. Civil Appeal No. 404 of 2022 (arising out of SLP (C) No.21428 of 2019) dated 19th January, 2022

18. (2004) 3 SCC 90

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