Mukta Gupta, J
IA 4462/2016 (u/O XXXIX R 1&2 CPC) and IA 6054/2016 (u/O XXXIX R 4 CPC by defendants)
1. Bigtree Entertainment Pvt. Ltd, hereafter referred to as ‘plaintiff’, in the present suit inter alia seeks permanent injunction against the
defendant, its partners, proprietors, or as the case may be, assignees in business franchisees licensees, distributors, dealers and agents from in any
manner using the mark “BOOKMYSPORTSâ€, or using the prefix “BOOKMYâ€.
2. As per the plaint, plaintiff company was established in 1999. Through its website “www.bookmyshow.com†and mobile app
BOOKMYSHOW, plaintiff provides a range of ticketing solutions through call centers, Internet ticketing, kiosk and a mobile ticketing platform. Since
launching of its website in 2007, plaintiff has emerged as a prominent player in the ticketing industry and has established its presence in 26 states in
India. Plaintiff has been the official ticketing partner inter alia for major sports events and cinema houses and has placed on record numerous extract
of news reports highlighting its extensive coverage in domestic and international markets. Plaintiff has also placed on record its sales figures from
2010-2015 and given examples of various accolades won and capital raised in light of its performance. Plaintiff has secured several trademarks under
Classes 41 and 42 for BOOKMYSHOW word marks and logos, notwithstanding filing applications for numerous other BOOKMYSHOW and
BOOKMY trademarks as well. Plaintiff has given examples of diligently safeguarding its trademark interests in the past, including against
“www.bookmysport.inâ€, who, it is noted, has no relation to defendant. Plaintiff believes that its performance in the ticketing industry and wide
publicity since associated with the plaintiff have given the BOOKMYSHOW trademark a secondary meaning associated with high standards of
service delivery and professionalism, further claiming that the prefix BOOKMY is an essential part of plaintiff’s registered trademark as it has
acquired a distinctiveness over a period of time that is exclusively associated with the plaintiff.
3. Brain Seed Sportainment Pvt. Ltd, hereinafter referred to as ‘defendant, is a corporate entity incorporated on 15th May, 2015. Defendant’s
website, “www.bookmysports.comâ€, is an online platform for booking sports facilities. The domain name “www.bookmysports.com†was
created on 6th March, 2010. The creator is unknown. During the period 6th March, 2010 to 15th May, 2015, the domain was parked on the World
Wide Web with no activity. Archival history reaffirming this was placed on record. Plaintiff claims to have been first aware of defendant’s
existence in December 2015 after one of its employees found a media article on the Internet detailing the defendant’s launch. In the plaint, the
plaintiff claims that defendant’s trademark is deceptively similar to the plaintiff’s and can mislead prospective clients into associating
defendant’s domain with the plaintiff’s due to the substantial goodwill and publicity acquired by plaintiff. Plaintiff contends that this amounts to
infringement and passing off of the plaintiff’s trademarks. Plaintiff concedes that it does not possess trademark on the prefix BOOKMY but avers
that it is not the words BOOK, MY, and SHOW in isolation, but the interplay of these words which give the trademark distinctiveness. Plaintiff claims
that continued existence of defendant’s domain name is financially highly detrimental and injurious to plaintiff’s reputation.
4. When this suit came up on 19th April 2016, this Court granted an ex-parte ad interim order of injunction as prayed for in Clause (a). This interim
order was later suspended on 20th September 2016. This order remains in abeyance till date.
5. In the written statement, defendant has taken a number of objections to averments in the plaint. In paragraph 3, defendant claims against the
plaintiff (i-iii) concealment of contrary stand in other proceedings, (iv) plaintiff has specifically but falsely pleaded to be the exclusive user and adopter
of the mark BOOKMY/BOOKMYSHOW, (v) third party prior use and registrations concealed, (vi) concealment and misrepresentation qua cause of
action, and (vii) concealment of opposition to and rectifications filed against the plaintiff’s trademark BOOKMY and BOOKMYSHOW.
Defendant claims that the plaintiff has admitted in a letter to the Registrar of Trademarks that defendant’s trademark BOOKMYSPORTS is
dissimilar and distinct from plaintiff’s trademark BOOKMYSHOW. Defendant further claims that its domain of activity being booking sports
facilities is squarely different from that of the plaintiff’s except insofar as they are both engaged in facilitating online bookings. Defendant further
claims that the prefix BOOKMY is not a invented phrase meriting legal protection, but a descriptive one that is common to the particular business
being run. To support this defendant has placed on record a list of domain names containing the prefix in question that have been registered prior to
plaintiff’s, as well as a list of domain names that have been registered since. Defendant claims that given the quantity of domain names that exist
with the prefix in question, plaintiff cannot claim its usage of the prefix conveys distinctiveness toward the plaintiff’s brand. Defendant further
submits that its trademark is visually, structurally, and conceptually different from the plaintiff’s and is not likely to cause deception or confusion
with the plaintiff’s mark. Learned counsel for the defendant relies on the judgments reported in (1898) 15 R.P.C. 465 Hodgson & Simpson v.
Kynoch Ltd; (1955) 2 SCR 252 Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd;. (2010) ILR 2 Del 165 P.P. Jewellers Pvt. Ltd v. P.P.
Buildwell Pvt. Ltd; (2010) 169 DLT 35 P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd. ; 1994 Supp (3) SCC 215 J.R. Kapoor v. Micronix India;
(1969) 2 SCC 716 F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd; .(2014) 3 HCC (Del) 248 Living Media India Ltd.
v. Alpha Dealcom (P) Ltd.; 2016 (65) PTC 614 (Del) SK Sachdeva v. Shri. Educare Limited a;nd (2010) 174 DLT 279 Marico Limited v. Agro Tech
Foods Limited.
6. In the rejoinder affidavit plaintiff sought to clarify the parameters of its suit. Plaintiff stated that one of its word marks BOOKMYSHOW was
registered in class 41 and another one was registered in class 42. Plaintiff states that as per the World Intellectual Property Organization’s
(WIPO) Nice Classification, the services that are protected under Class 41 include the very activities that defendant is engaged in, including but not
limited to 410035, providing sports facilities, and 410190, rental of sports grounds. Plaintiff also contends that defendant is guilty of dishonest adoption
as the defendant realized the goodwill of BOOKMYSHOW and the BOOKMY prefix. To support this claim plaintiff asserts that defendant has not
placed on record any information of its customer base, volume of sales, or any other details of its business activities. Plaintiff also brings to notice that
the defendant has not challenged the legal validity of the plaintiff’s mark. Plaintiff claims that this is because defendant itself wants the mark
BOOKMYSPORTS as defendant has filed a trademark application for BOOKMYSPORTS as well. Plaintiff contends that a party that wants a
monopoly on a mark cannot be heard to say that the mark cannot be registered.
7. Learned counsel for the plaintiff further claims that defendant only read to the Court Section 17(1) of the Trade Marks Act, 1999 (in short TM
Act), without reading sub-clause (2). Section 17 of the TM Act reads as under:
“17. Effect of registration of parts of a mark.â€
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark
taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade markâ€
(a) contains any partâ€
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer
any exclusive right in the matter forming only a part of the whole of the trade mark so registered.â€
8. Learned counsel for the plaintiff states that plaintiff filed a separate application for the word mark BOOKMY. Finally learned counsel for the
plaintiff disputed defendant’s claims that it has suppressed and concealed material particulars from the Court. Plaintiff does not deny its
correspondence with the Registrar of Trademarks, but states that this should be construed as a layered response rather than a legally binding ceding of
its rights. Learned counsel for the plaintiff relied on the judgments reported in (2002) 98 DLT 565 Essel Packaging Ltd. v. Sridhar Narra; (2009) 156
DLT 1 Ford Motor Company v. CR Borman ;(2004) 29 PTC 435 Dr. Reddy's Laboratories Ltd. v. Reddy Pharmaceuticals Limite d; (2004) 6 SCC
145 Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd;. (2015) 221 DLT 359 Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blenders & Distillers
Pvt. Ltd; and (1999) 77 DLT 292 Automatic Electric Ltd. v. R.K.Dhawan.
9. It is not in dispute that the plaintiff owns a trademark for its domain name, www.bookmyshow.com. Therefore determining whether the
defendant’s use of the prefix common to both trademarks, “BOOKMYâ€, amounts to infringement and/or passing off of the plaintiff’s
mark hinges on the ancillary question of whether the prefix is a descriptive phrase or an invented term.
10. The question of whether a phrase is descriptive or invented was considered in great depth by the Supreme Court in 1994 Supp (3) SCC 215 J.R.
Kapoor v. Micronix India, and 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:
“6. There are two things which impress us. Firstly, the appellant is not manufacturing any one product such as the boosters, which has
been mainly taken into consideration by the High Court. He is producing various electrical and electronic apparatus in many of which
micro-chip technology is used. Even the boosters which he manufactures and sells are of two types, viz., transistorised boosters and
integrated circuit boosters whereas the respondent-plaintiff manufactures aerial boosters only of the first type. Thus micro-chip technology
being the base of many of the products, the word ‘micro’ has much relevance in describing the products. Further, the word
‘micro’ being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no
one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro-chip technology would be
justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know
fully well and are not likely to be misguided or confused merely by, the prefix ‘micro’ in the trade name. Once, therefore, it is held
that the word ‘micro’ is a common or general name descriptive of the products which are sold or of the technology by which the
products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only
question which has to be prima facie decided at this stage is whether the words ‘tel’ and ‘nix’ in the trade names of the
appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the
other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users.
Secondly, even the visual impression of the said two trade names is different. In the first instance, the respondent's trade name
‘MICRONIX’ is in black and white in slimmer letters and they are ensconced in designs of elongated triangles both above and below
the said name. On the other hand, the appellant's trade name ‘MICROTEL’ is in thick bold letters in red colour without any design
around. As regards the logo, the respondent's logo consists of the word ‘M’ in a slim letter with ‘I’ sporting a dot on it and
drawn in the well of ‘M’. Below the letter ‘M’ in small letters is written the word ‘MICRONIX’ and all these letters and
words are written in white in a black square in north-south direction. As against this, the appellant's logo is one letter, viz., ‘M’ which
is drawn in bold broad letter with its left leg slimmer than all other parts which are in thick broad brush. The letter has also white lines
drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore, unable to see how
the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is not even
the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the
carton which merely reproduces both the trade names and the logos.â€
11. In (1969) 2 SCC 716 F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd. 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 and held that the words which are
descriptive of a particular industry cannot be deemed to be invented:
“8. In order to decide whether the word “Dropovit†is deceptively similar to the word “Protovit†each of the two words must,
therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon
part the first two are consonants, the next is the same vowel ‘O’, the next is a consonant and the fifth is again a common vowel
‘O’. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that last three letters “Vit†is a well
known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. In his affidavit, dated January 11, 1961
Frank Murdoch, has referred to the existence on the register of about 57 trade marks which have the common suffix “Vit†indicating
that the goods are vitamin preparations. It is apparent that the terminal syllable “Vit†in the two marks is both descriptive and common
to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or
confused with the other. The letters ‘D’ and ‘P’ in “Dropovit†and the corresponding letters ‘P’ and ‘T’ in
“Protovit†cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of
confusion between the words either from the visual or phonetic point of view.â€
12. There does not exist a straightforward process to determine whether a phrase is invented or descriptive. In (2010) ILR 2 Del 165 P.P. Jewellers
Pvt. Ltd v. P.P. Buildwell Pvt. Ltd. this Court observed that existence of other companies bearing the prefix in question in itself may suggest that the
word is descriptive rather than distinctive. It was held:
“20. Then there are the Trade Mark Registry search reports which have been placed on record by the Defendants to show that an
application for registration of the mark PP has been made by the Plaintiff in almost every class of goods. There are numerous other
applicants for the said letter mark. A search was also made in the office of the Registrar of Companies which showed that there are a large
number of companies registered with the letters “PP†and therefore, there is nothing distinctive about those letters. Even for the kind of
services envisaged by Class 37 i.e. building and construction industry there are several companies with the letters “PP†as part of their
corporate name. While search reports in the Trade Marks Registry or in the Office of the ROC, do not by themselves prove use of the marks,
they are relevant for determining whether the letter mark in question is distinctive or merely descriptive.â€
13. Turning to the present case, plaintiff’s domain www.bookmyshow.com and defendant’s domain www.bookmysports.com are not the sole
users of the prefix “BOOKMYâ€. In the written statement learned counsel for the defendant has submitted several pages of domain names
beginning with “BOOKMY†that have existed both before and subsequent to the plaintiff’s website. This gives the first indication that the
prefix is a descriptive one.
14. Examination of the market in which the prefix is abundant further gives the impression that the prefix is not invented but a description of the type
of business that is being run. The phrase “BOOKMY†is not an arbitrary coupling of two English words. It is instead an apt description of a
business that is involved in the booking of a particular thing for its consumers, whether it is a concert, a movie, or a sports facility. Defendant’s
adoption and application of this prefix to describe its activities as a sports facility booking domain appears prime facie to be a decision in concert with
other players in the booking industry.
15. Learned counsel for the plaintiff submits that the plaintiff’s flourishing business has accorded the prefix “BOOKMY†with a secondary
meaning. The question of whether goodwill attached to a complete trademark carries over to part of that trademark was considered by a Division
Bench in this Court in (2010) 169 DLT 35 P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd:
“21. It is to be seen as to whether the goodwill attained by the Appellants in its name “P.P. Jewellers†or “PP Tower†or “PP
Designs Estate†has entitled the Appellant to claim goodwill and exclusivity in the word mark “PP†so as to oust others from using it
even in the business of construction. As the Appellant is not the only user of this word mark “PPâ€, relying on the decision of the Hon'ble
Supreme Court in the case of Reliance Industries Ltd. v. Reliance Polycrete Ltd., 1997 PTC (17) 581, we are inclined to hold it in the
negative. The Hon'ble Supreme Court in the said decision held:
“Reliance has become synonymous with the Appellant's and their group Companies. In other words the Public or the common man
associates the word ‘Reliance’ on with the Appellants and their group Companies irrespective of what the field of activity or trade in
which it is used. Mr. Nair is quite right that apart from showing that the Appellant-Company is incorporated in 1966, very conveniently it is
not stated when the other Companies were incorporated. Very conveniently it is also not stated what activities are carried out by the other
group Companies. Even otherwise by the time the Appellant-Company was incorporated, there were already in existence at least 10 Joint
Stock Companies with the word ‘Reliance’ as their Corporate Name. Since then, there are in existence, only up to 1990, 167 Joint
Stock Companies with the name ‘Reliance’ as their Corporate Names. As pointed out by Mr. Nair the Bombay Telephone Directory
has listed 92 Companies/firms with the name ‘Reliance’. Undoubtedly the Appellant-Company is a big Company having a large
turnover. In the field of yarns and/or threads they may have acquired a distinctiveness in order to enable them to get a registered Mark in
Class-23. However, there is no material or evidence to show that the word “Reliance†is associated by the public only with the
Appellants or their group Companies in all fields of activities or trades. All the cases cited by Mr. Tulzapurkar were the cases where the
word was not a common English word but an invented word which had come to be associated with the Appellant-Company. Those cases
could therefore have no application to the present case, when the word is a common word in English language and where no material is
placed before the Court to show that in all fields of activities or trades it has come to be associated only with the Appellants or their group
Companies. In my prima facie view it does appear to be a case of too much self importance given to themselves by the Appellants. Fact that
so many Joint Stock Companies and firms, having word ‘Reliance’ as their Corporate/firm name exist belies case that public/common
man associates the word only with the Appellants or their group Companies, no matter what the field of activity.â€
16. In the present case defendant has placed on record examples of numerous other companies that operate with the same domain prefix, and the
plaintiff has yet to put on record any evidence suggesting that the prefix “BOOKMY†is only associated in the minds of the public with the
plaintiff’s business and nobody else, thus has acquired a secondary meaning and distinctiveness. Considering the fact that the words
“BOOKMY†are descriptive in nature and plaintiff’s trademark “BOOKMYSHOW†has not acquired a distinctive meaning no case for
grant of injunction pending hearing of the suit is made out.
17. In view of the discussion aforesaid IA No.4462/2016 is dismissed and IA No.6054/2016 is disposed of.
