Case Analysis

Case Analysis of Bookmyshow.com Case

/ / Case Analysis of Bookmyshow.com Case

Case Name: Bigtree Entertainment Pvt. Ltd. against Brain Seed Sportainment Pvt. Ltd. & Anr.

Date of judgment:- 13th December, 2017

Case Number:- CS (Comm.) 327/2016

Introduction

For the past couple of years there has been a tremendous rise in the number of new companies being incorporated. Even the government of India is supporting the start up eco-system by providing quick clearances and other services. As per one study over 1000 new start ups were incorporated in 2017 and the number is sure to rise multi fold in the coming. Due to cut throat competition, such companies are doing everything they can to stay ahead of the game. Due the rise in number of companies even the courts are coming across such issues which were seldom raised before the boom of the start-up culture. One such issue that the High Court of Delhi dealt with was, if a phrase was inventive or descriptive.

Brief facts of the case

The plaintiffs operate an online ticketing platform bookmyshow.com. They also have an offline presence where they sell tickets through their own establishments as well as through third party vendors. The Plaintiffs are registered owner of the word mark bookmyshow under classes 41 and 42 (software and technology). The Plaintiff had at present applied for the registration of the mark “bookmy”, however they don’t currently possess any right over them.

The defendants operate an online booking platform bookmysports which helps consumers to book tickets for sporting events throughout the country.

The plaintiffs had filed the case against the owners of www.bookmysports.com alleging infringement and passing off of their trademark and prayed for an permanent injunction against them using the mark www.bookmysports.com

Contentions raised by the counsels:

The plaintiffs stated that their company www.bookmyshow.com was a dominant player in the e-ticketing domain. They stated that the plaintiff company deals with all sorts of events which include movies, plays, concerts, and other activities. According to the plaintiffs, the defendants are trying to take advantage of the goodwill created by them and pass off their site as that of the plaintiffs.

The defendants, in their written statement, countered the contentions raised by the plaintiffs by stating that that their domain of operation was different from that of the plaintiff, they also alleged concealment of facts by the plaintiffs as they never mentioned in the plaint that they were not the sole user of the prefix ‘book my’ and that there were several websites active on the internet which use the same name. The defendants also stated that the use of the phrase ‘book my’ was not descriptive but inventive. Defendant further stated that its trademark was visually, structurally, and conceptually different from the plaintiff’s and was not likely to cause deception or confusion with the plaintiff’s mark.

The defendants relied on several case laws to bolster up their case. Some of those cases and their brief facts have been explained below:

  1. S.K Sachdeva v/s Shri Educare Ltd.; 2016 (65) PTC 614 (Del)

The appellants in the above mentioned matter had filed the appeal the impugned order which restrained them from using ‘Shri Ram’ as part of their domain name. The respondents in the present suit had alleged that the appellants were using the name Shri Ram, which is the name of hindu god. According to the respondents, the appellants can you the said mark as it is the name of a deity and no one can claim monopoly over it.

The defendants stated that there are various schools and colleges with the same name as part of their official name and that there were never any disputes. Schools and colleges have been using it since at least 1923. It was alternatively contended that the layout, getup, trade dress and the style and use of the mark by the respondents and the appellants are completely different and there was no likelihood of any confusion.

The Hon’ble Judges were of the view that Shri Ram was a popular name. They also stated that ‘Shri Ram’ was also a popular trade name. Lastly, the bench was also of the view that there were several educational institutions with the same name and that appellants cant be singled out. Therefore, the impugned order was set aside.

To download the full copy of the judgement, please click here.

  1. J .R Kapoor v. Micronix India 1994 Supp (3) SCC 215

In this case, the main contention was the use of the word ‘Micro’ in the name of both the companies. After going through all the arguments the court decided that the word ‘Micro’ was common nomenclature in the technology sector and in the businesses where microchips were used.

To download the full copy of the judgement, please click here.

Some of the cases relied on by the Plaintiffs were:

  1. Reddy’s Laboratories Ltd. vs. M/s. Reddy Pharmaceutical Limited and Registrar of Trademarks.

In this case the plaintiffs alleged that the defendants were deliberately using the word ‘Reddy’ to market their medicines so that they can take advantage of the goodwill plaintiff.’

The defendant stated that the name of the company was based on the name of the Managing Director Mr. Konda Raghu Rami Reddi and so they also have the right to use it.

However, the court opined that Reddy Pharmaceutical Ltd deliberately adopted the impugned mark, ‘Reddy’, to deceive the public, and is in every way a willful misrepresentation to the customer.

So, the court decided that the name of the defendant company should be struck off from the trademark register.

To download the full copy of the judgement, please click here.

  1. Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.

The plaintiff had filed the matter in the Hon’ble Supreme Court after failing to get favorable order from Karnataka High Court.

The plaintiff alleged that the defendants have started using the word ‘siffy’ in their dealing and domains so that they can confuse consumers and take advantage of the plaintiffs good standing in the market.

The Hon’ble Supreme Court ,after going through all the contentions was of the opinion that the use of phrase ‘Siffy’ is likely to confuse the general public and will also do great damage to the plaintiff, who have spend a considerable sum to market their brand. The court restrained the defendants from using the disputed mark.

To download the full copy of the judgement, please click here.

Issue raised

The main issue raised before the Court was that whether the phrase ‘book my’ was a descriptive term or an inventive term.

Decision of the Court

The main question posed before the court was whether the phrase used by the defendants was a descriptive phrase or an inventive phrase. To determine that the court referred to three judgment.

1) Hon’ble Supreme Court in J.R. Kapoor v/s Micronix India 1994 Supp (3) SCC 215 considered the question of a phrase being a descriptive or inventive in great depth.

The Court, after going through all the averments came to the conclusion that the term ‘Micro’ was not product or industry specific so no person can claim monopoly over it. The end part of the phrase specific to the companies i.e ‘nix and ‘tel’ are phonetically different so it cannot be said that the intension was of passing off . The court also took into consideration the fact that act and style of both the marks was also different.

To download the full copy of the judgement, please click here.

2) In F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd. (1969) 2 SCC 716 the Supreme Court took a novel approach and applied the principle of using the characteristic of a market to determine descriptiveness or inventiness and held that the words which are descriptive of an industry cannot be considered inventive. The operating part of the judgment is reproduced below for the benefit of the reader.

To download the full copy of the judgement, please click here.

“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 CS(COMM) 327/2016 Page 9 of 12 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 trademarks 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.”

3) The court also referred to P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd. (2010) ILR 2 Del 165 In this case the Court observed that existence of other companies bearing the same prefix suggests that the word is descriptive not inventive.

Plaintiff filed the suit against the defendant stating that the phrase ‘PP’ used by defendant infringed on their mark. The Court ,after going through various cases and contentions came to the conclusion that the phrase used by the plaintiffs was generic in nature and there were quite a few companies which used the phrase ‘PP’ ,as part of their trade name. The Court also pointed out that even in Class 37 ,there quite a few companies which used the phrase ‘PP’.

To download the full copy of the judgement, please click here.

The Court also referred to Reliance Industries Ltd. v. Reliance Polycrete Ltd., 1997 PTC (17) 581 to settle the issue that whether defendant company was trying to take advantage of the good will of the plaintiff company. The court decided that as the phrase ‘Reliance ’was used by quite a few companies ,the plaintiffs can’t claim goodwill and exclusivity.

After going through numerous laws ,statues and cases the Court concluded that the plaintiffs mark ‘BOOKMYSHOW’ was descriptive in nature. According to the Hon’ble Judge ,the plaintiffs were not able to prove that their mark was distinctive or whether it had any secondary meaning in the mind of the public. As a result the judgment allowed the defendants to use the phrase ‘BOOKMY’ as part of their trademark.

To download the full copy of the judgement, please click here.

Conclusion

What makes this case unique is that the Court had to deal with the question of determining whether the mark was descriptive or inventive. The case will act more like a test to assess the descriptiveness or inventiveness of the mark.

To get an injunction against the defendant, the plaintiffs only had to prove that their mark was popular and had acquired a distinct identity in the eyes of the people. However, the plaintiffs were unable to prove that they had a secondary meaning.

The fact, that the plaintiffs never took any action against other companies, also worked against them. The lack of prosecution of other companies using the same phrase, tilted the scales in the favour of the defendants. This case lays down the importance of prosecuting every distinctively similar mark published in the trademark journal to ensure that none of them ever gets registered.

 

WRITTEN BY

Shivendra Mishra

Similar Posts

Leave a Reply

Your email address will not be published.