The Delhi High Court on 13th December 2017 in the case of Bigtree Entertainment Pvt Ltd V. Brain Seed Sportainment Pvt Ltd & Anr. while examining on the issue of acquired distinctiveness decided that ‘BOOKMYSHOW’ has not acquired any distinctiveness.
- The Plaintiff in the case ‘Bigtree Entertainment Pvt. Ltd’ is a company established in 1999. It provides ticketing solutions through its website “www.bookmyshow.com” and mobile app BOOKMYSHOW.
- The Defendant in the case ‘Brain Seed Sportainment Pvt Ltd’ is a corporate entity established on May 15, 2017. It provides for booking sports facilities through an online platform www.bookmysports.co.
- The 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.
- The Plaintiff in December 2015, through one of its employees came to know about the Defendant. A media article on the Internet detailing the Defendant’s launch was found.
- The Plaintiff claimed that the Defendant’s trademark “Book My Sports” was deceptively similar to the Plaintiff’s trademark and could mislead prospective clients into associating the Defendant’s domain with that of the Plaintiff’s.
- Thus, Plaintiff filed an infringement and passing off suit before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction against the Defendant, its partners, proprietors, or as the case may be, assignees in business franchise licensees, distributors, dealers and agents from in any manner using the mark “BOOKMYSPORTS”, or using the prefix “BOOKMY”.
- Whether the Defendant infringed or committed an act of passing off by using the prefix ‘BOOKMY’?
- Whether the prefix ‘BOOKMY’ is a descriptive phrase or an invented term?
- It stated that it has developed itself to be a prominent player in the market since the launch of its website in 2007.
- It stated that it is the official ticketing partner for major sports events and cinema houses and has a substantial presence in the Indian and International market.
- It claimed that it is the registered proprietor of the word marks and logos BOOKMYSHOW in Classes 41 and 42 and has filed applications for numerous other BOOKMYSHOW and BOOKMY trademarks as well.
- It submitted that the BOOKMYSHOW trademark has acquired a secondary meaning being associated with the Plaintiff owing to its performance in the ticketing industry and wide publicity.
- It further claimed that the prefix BOOKMY has also acquired a distinctiveness over a period of time and is exclusively associated with the Plaintiff. In addition, the prefix forms an essential part of its registered trademark.
- It submitted that the domain name www.bookmysports.co., of the Defendant, remained parked from March 6, 2010 to May 15, 2015 on the World Wide Web with no activity.
- It argued that the Defendant’s trademark is deceptively similar to the Plaintiff’s and can mislead prospective clients into associating the Defendant’s domain with the Plaintiff’s due to the substantial goodwill and publicity acquired by Plaintiff.
- It acknowledged that it does not possess trademark on the prefix BOOKMY but averred that it is not the words BOOK, MY, and SHOW in isolation, but the interplay of these words which give the trademark distinctiveness.
- It stated that the Plaintiff has specifically, but falsely pleaded to be the exclusive user and adopter of the mark BOOKMY and BOOKMYSHOW. In addition, the Plaintiff has also concealed third party use and registrations, oppositions and rectifications filed against its trademark ‘BOOKMY’ and ‘BOOKMYSHOW’ and has misrepresented qua cause of action.
- It also stated 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.
- It claimed 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.
- It further claimed that the prefix BOOKMY is not an invented phrase meriting legal protection, but a descriptive one that is common to the particular business being run. In support of this, details of several domain names using the prefix “BOOKMY” was placed on record. Therefore, the alleged claim of the Plaintiff that its use of the prefix conveys distinctiveness toward the Plaintiff’s brand is defeated.
- It is submitted that its trademark is visually, structurally, and conceptually different from the Plaintiff’s and is not likely to cause deception or confusion.
- The Court observed that the Plaintiff owns a trademark for its domain name, www.bookmyshow.com.
- To decide on the question of a phrase being descriptive or invented the court examined the judgment given by Honorable Supreme Court in the case of J.R. Kapoor v. Micronix India wherein 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’ and F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd wherein the 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.
- Referring to P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd. it held that ‘existence of other companies bearing the prefix in question in itself may suggest that the word is descriptive rather than distinctive.’
- The Court took note of the fact that there are several pages of domain names beginning with "BOOKMY", that have existed both before and subsequent to the Plaintiff's website. Therefore, it held that the prefix is a descriptive one.