Delhi High Court: Explaining the significance of a trademark, Asha Menon, J., observed that,
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.
Present suit was filed to seek a perpetual and mandatory injunction restraining the defendants from infringement of plaintiff’s registered trademarks, passing off, unfair practices, etc.
In the instant matter, the plaintiff claimed to be a part of the “Baazi Group” and a leading and pioneering name in the Indian gaming industry. The said group has attained worldwide popularity and reputation.
Further, the plaintiff claimed that it had honestly and originally adopted “Baazi” as its trademark, registering several variations between 2014 and 2020 which were still valid, and had become the trading identity, corporate name and domain names of the “Baazi Group”.
Plaintiff even filed the registration certificates.
Senior Counsel, Chander M. Lall submitted that 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.
Defendant 1 had dishonestly started using “Baazi” in respect of the services that they were providing and thus passing off their services as those of the plaintiff.
Further, it was argued that in view of the success of the plaintiff’s venture defendant 2 began his own business called “WinZo Games” in India. Hence, defendant 1 was the competitor of the plaintiff.
Further, it was contended that under Section 29(3) of the Trade Marks Act, 1999, in view of the identity of the registered trademark of the plaintiff and that copied by defendants, the Court had to presume that confusion would be caused to the public as also within the trade circle. Therefore, the Court had to restrain the defendants from using the word “Baazi” in respect of the services they were providing.
Analysis, Law and Discussion
High Court noted that the plaintiff was the registered proprietor of the trademarked word “BAAZI” under class 41, class 9 and the trademarked word “Baazi Games” under class 28 and other trademarks, both words, devices and domain names in the same classes of gaming services.
Further, not just the combined words such as “POKER BAAZI”, “RUMMY BAAZI”, “BALLE BAAZI” were registered in the name of the plaintiff, in fact the word “BAAZI” was also registered.
On the other hand, it was noted that the defendants did not claim that they too have registered trademarks in their names with the word “BAAZI”, in fact, they did not insist that they were not even using “BAAZI” in the trademark sense. Though, their argument was that righ to use trademarks under Section 28 would be available only if the trademarks were validly registered and which Baazi had not been since it was only a descriptive word.
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.
The Bench observed that prima facie the plaintiff had 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 disclosed a case.
The Court elaborated stating that, 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.
Delay and Acquiescence
Bench referred to the Supreme Court’s decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90,
“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.”
High Court remarked that if the adoption of the word “Baazi” appeared to be dishonest and intended to take unfair advantage of the reputation of or the distinctive use of the word by the plaintiff, the delay would not come in the way.
Another significant point that was noted was that even after filing the present suit, the defendants copied the word “Team Baazi” from the website of the plaintiff.
Interest of the Consumers
Bench proceeded to make another significant observation that the interests of the consumers cannot be overlooked and would 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.
In the instant case, the online players may be led into believing that “WinZo Baazi” was another service offered by the plaintiff, therefore in order to protect such unwary customers, it would be necessary to protect the plaintiff’s rights to its registered trademark.
Bench held that 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 manner in which “Baazi” was written and projected, and used in a mobile App in 2021, and the adoption of “Team Baazi”, while the suit itself was pending, reinforced the plaintiff’s grievance that the defendants were trying to pass off their services as probably originating from the plaintiff.
Hence, the plaintiff disclosed a prima facie case for interim injunction for infringement of trademark as well as for passing off.
“…the continued use of the word “Baazi” by the defendant 1 would impact the reputation and goodwill of the plaintiff, which clearly cannot be compensated in terms of money.”
Bench found no reason from the defendants for the adoption of the word “Baazi” except to claim that it is a descriptive word.
After all, the trademark of the defendants is WinZo. Where was the need to borrow the word used by the plaintiff along with its registered trademark, if it was not for benefitting from the goodwill of the plaintiff‟s trademark? There are several words that could have been used to describe the gaming services and App of the defendant instead of “Baazi” and which are indicative of gaming /wagering/competing.
User of a similar word by a competitor coupled with dishonest intention and bad faith would suffice to restrain such user and misuser, to do equitable justice to the plaintiff.
High Court allowed the application and restraining the defendants from using or attempting to use the plaintiff’s well-known brand and registered mark “Baazi”, “Baazi Games”, “PokerBaazi”, “BalleBaazi”, et al., or any other mark or trade indicia, which is confusingly similar to the Plaintiff‟s said trademarks, in any form or manner, whatsoever, including as Winzo Baazi / WinzoBaazi, in respect to any product and service for which the plaintiff has obtained registration including inter alia gaming services, which use amounts to infringement or passing off its products/ services as that of the plaintiff.
Lastly, the defendants were directed to remove/delete/omit or withdraw any and all references or use of the plaintiff’s well-known brand and registered mark “Baazi” in any form which amounts to a violation of the plaintiff’s intellectual property rights. [Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd., 2022 SCC OnLine Del 296, decided on 31-1-2022]
Advocates before the Court:
For the plaintiff:
Mr. Chander M. Lall, Senior Advocate with Ms. Ananya Chug, Mr. Subhash Bhutoria & Mr. Amit Panigrahi, Advocates
For the defendants:
Mr. Abhishek Malhotra, Ms. Shilpa Gamnani and Ms. Sanya Sehgal Advocates