Moonshine Technology (P) Ltd. V. Tictok Skill Games (P) Ltd.: Position Of “Descriptive Words”, “Delay” And Protection Of Consumers ’ Interests In A Trade Marks Act Infringement Case

Introduction

Trademark infringement, defined under Section 29 of the Trade Marks Act, 1999[i] (hereinafter, referred to as ‘Act’) is the unauthorized use of a mark that is identical or deceptively similar to a registered trade mark and may cause confusion about the source of the goods or services.

In the recent Trad emark act infringement case of Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd. the Delhi high court has discussed a few significant aspects, which will be discussed elaborately in this blog.

Along with discussion about the effectiveness of ‘Delay’ in filing an infringement suit, Court has also discussed “Descriptive marks” and Protection of consumers’ interests if a similar trademark was used dishonestly.

Background of the case

The plaintiff is a part of the “Baazi Group”, a famous name in the gaming industry in India that offers several registered variations of games like “PokerBaazi”, “RummyBaazi” etc. under its registered trademark “Baazi.” As a registered proprietor of those trademarks, Plaintiff claimed that it has an exclusive right over them.

The plaintiff alleged that the defendant dishonestly started using the word “Baazi” for its services and thus passing off their services as those of the plaintiff. Because of the success of the plaintiff’s venture, the defendant began his own business by adding the plaintiff’s trademark “Baazi” to his registered trademark “Winzo” i.e., “Winzo Baazi.” Hence, the defendant was a competitor of the plaintiff.

Plaintiff’s counsel contended that under Section 29(3) of the act, copying of plaintiff’s word “Baazi” by the defendant creates confusion in the public’s mind and therefore the defendants be restrained from infringement by interim injunction.

Question of Law

Whether defendants used the plaintiff’s registered trademark “Baazi” dishonestly and with an unfair advantage of reputation?

Analyzing the term “Descriptive words”

Defendants claimed that they had used “Baazi” as a descriptive word in “WinZo Baazi” and argued it is a generic word, meaning “game” in Urdu. Defendants also contended that if a trademark’s proprietor develops a secondary meaning to a common word, then the registered trade marks act be protected. Contending bonafide intention, defendants pleaded statutory defences under Sections 30(2)(a)[ii] and 35[iii] of the act.

Plaintiff claimed that the word “Baazi” was not a descriptive one as it can’t be related to a Gaming App. Furthermore, copying of the plaintiff’s mark “TeamBaazi” by the defendant during the pendency of suit indicates the dishonest intention of the defendant to use “Baazi” for branding itself. As per them, because of many registered users on the plaintiff’s online games platform, “Baazi” had acquired a ‘secondary meaning’ and the defendant’s act was to cash in on that reputation.

On observing the plaintiff’s online gaming platform, the court has stated that prima facie it does appear that “Baazi” is a brand indicating the service provider’s name i.e., the plaintiff. The court further stated that the defendant’s website reveals his intention to use “Baazi” to brand its app, but not as a descriptive word and the defendant’s adoption of “Team Baazi” also amounts to continuous acts of infringement.

The court stated that the word “Baazi” may mean “betting” in Urdu but by referring to Yorkshire Copperworks Limited v. Registrar of Trademarks[iv], it was observed that the more apt is a word to describe the manufacturer’s goods the less apt would it be to distinguish them, but that “Baazi” is not a word apt to describe gaming services.

The court has noted that no record indicates “Baazi” as a common word and thus it is a word with a secondary meaning.

Defence of ‘Delay’ in filing a suit in Trade mark act Infringement case

Defendants claimed that the plaintiff had filed the suit with delay. To this, Plaintiff’s counsel referred Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr. in which the court observed that delay was not fatal to a case of infringement and passing off, as consumers’ interests need to be protected.

Relying on Midas Hygiene Industries (P) Limited and Another v Sudhir Bhatia and others, the Court has stated that mere delay in filing a suit was insufficient to deny relief to the plaintiff in a trade mark act infringement case and injunction becomes necessary if a mark is dishonestly adopted.

Confusion among consumers

Plaintiff’s counsel reiterated that under Sections 29(1), 29(2)(c) and 29(3) of the Act, identical use  of the word “Baazi” for gaming services will confuse consumers and because of lack of bona fide, defendants can’t claim defence under Sections 30 and 35 of the Act

Aligning with the plaintiff’s contention, the Court referred to Renaissance Hotel Holdings INC v. B. Vijaya Sai and Ors and Ruston & Hornsby Limited and noted that if the defendant’s trademark was identical to that of the plaintiff’s, the Court without any enquiry as to whether the infringement confuses consumers, must issue an injunction to disallow such use of a trademark.

The Court has observed that consumers’ interests need to be protected, who rely on trademarks to distinguish the products and services to purchase. As the trademark signifies the product’s origin, usage of a similar or identical trademark by a competitor in the same product category would lead unwary customers off track. Thus, it would be necessary to protect the plaintiff’s rights to its registered trademark.

The decision of the Delhi High Court

Relying on Yahoo.com v. Akash Arora[v], the Court has stated that under Section 28 of the Act[vi], the plaintiff acquires exclusive right to use the registered trademark of “Baazi” and its variations.

The Court stated that given the defendants’ failure to establish that the usage of the word “Baazi” was honest and was a descriptive word, statutory defences under Sections 30 and 35 of the Act are inapplicable.

The Court stated that the plaintiff’s thriving business will suffer ‘irreparable loss and injury’ because of the defendant’s act and the identical gaming app of “WinZo Baazi” by the defendants confused the players, which would impact the plaintiff’s reputation. Also, it was observed that other than claiming “Baazi” as a descriptive word, no other reason for adopting such a word was given by the defendants, which reveals its unfair advantage.

Thus, the court stated that the plaintiff has disclosed a prima facie case for interim injunction for trademark infringement and for passing off. The application is allowed, restraining defendants from using the plaintiff’s brand till the disposal of the suit.

Conclusion

This case has ruled on the importance of protection of consumers’ interests and the confusion caused to a consumer in identifying and recognizing a trademark. This case also added to various other cases in holding that mere ‘delay’ in filing a suit can’t be an exception to grant an injunction because an injunction is important to protect consumers’ interests and to act against such dishonest manufacturers. Court has also elaborately discussed “Descriptive Trademarks” and concluded that if a word is not commonly used in the industry, it can be treated as a word of secondary meaning.

Author: Chidige Sai Varshitha – a student of  Damodaram Sanjivayya National Law University (Visakhapatnam), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References:

[i] Trade Marks Act, 1999, No. 47, § 29

[ii] Trade Marks Act, 1999, No. 47, § 30(2)(a)

[iii] Trade Marks Act, 1999, No. 47, § 35

[iv] Yorkshire Copper works Limited v. Registrar of Trademarks [1954] UKHL J0225- 2

[v] Yahoo.com v. Akash Arora 1999 (19) PTC201

[vi] Trade Marks Act, 1999, No. 47, § 28

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