Delhi High court grants protection to the trademark ‘Baazi’
“To sum up, no reason for such adoption of the same word ‘Baazi’ has been offered by the defendants except to claim that ‘Baazi’ 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.”
– Delhi High Court
Intellectual Property rights have gained momentum in the digital media community, especially in game development, where rapid technological advancements have helped evolve video games. With the evolvement of online games, they also sometimes face issues in the digital competition field, thereby making it necessary to protect them from problems such as laws. The intellectual property rights of every form help save online games from unfair competition and infringement. Trademarks in the gaming industry protect the names, titles, and logos associated with the game’s product and the developer. Trademarks are used to establish the developer company’s brand and reputation and help distinguish it from other products and gaming industries. The present case of Moonshine Technology Private Limited vs. Ticktok Skill Games Private Limited & Ors. involves the dispute over the mark ‘Baazi’ between the parties.
The plaintiff, namely the Moonshine Technology Private Limited, is a subsidiary company of the Baazi Group of companies, a leading and pioneering company in the gaming industry and established in 2014. The company has offered customers quality gaming products and experiences under the already registered trademarks and branding names, i.e., BAAZI, BAAZI GAMES, POKER BAAZI RUMMYBAAZI, BALLEBAAZI, BAAZI MOBILE GAMING, etc. They have also received customer recognition and approval for the gaming services and have also at the same time attained worldwide popularity and a respectable reputation in the gaming industry. The disputes arose on the mark ‘Baazi’ when the plaintiffs found that the defendants were dishonestly using ‘WinZo Baazi’ for their services. The acts committed by the defendants aggrieved the Plaintiffs, and they filed the present commercial suit for seeking a perpetual and mandatory injunction against the defendants for infringement of their registered trademarks, passing off, unfair practices, etc., along with costs, damages, delivery up, etc.
Also read: The Tussle With Trademarks In Digital World
CONTENTIONS OF THE PARTIES
Arguments raised by the plaintiffs:
The learned counsel for the plaintiffs has proposed a set of arguments against the defendants:
- The plaintiffs have filed registration certificates issued by the Trademark Registry, which prove that the party already has 21 registered trademarks.
- The plaintiffs, the registered proprietor of the trademarks, namely trademarks- Baazi, Baazi Games, PokerBaazi, RummyBaazi, BalleBaazi, etc., have the rights of exclusivity to the registered marks.
- The defendant started using marks similar to plaintiffs because of the success, reputation, and popularity which the plaintiffs gained and committed unfair competition.
- The marks used by the defendants would cause public confusion and deceit under Section 29(1), 29(2)(c), and 29(3) of the Trademarks Act, 1999.
- The defendants used the mark ‘Baazi’ malafidely as a descriptive mark for the illegal purposes of wagering and betting.
The learned counsel then argued that the source identifier must be considered a substantial question of fact. Further, ‘WinZo Baazi’ could not be used differently to claim trademark protection as they have copied the already registered marks of the plaintiffs. The argument was made concerning the judgment of the Supreme Court in the cases of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories and Info Edge (India) Private. Limited vs. Shailesh Gupta..
Arguments raised by the defendants:
The learned counsel for the defendants presented his points of contentions against the claims raised by the plaintiffs and stated that:
- The plaintiffs have failed in demonstrating the prima facie case or balance of convenience, stating that they would suffer irreparable loss and injury. Thus, the plea for an interim injunction should not be granted.
- The defendants were using the word ‘Baazi’ in a general connotation, which merely described their services, and also, it should not be monopolized by any person. The argument was supported by relying on the judgment in Marico Limited v. Agri Tech Foods Limited..
- They further submitted that the word ‘Baazi’ is not liable for getting registered under Section 9(1)(c) of the Trademarks Act, 1990, as the term signifies betting in a game.
- Other entities have also used the word ‘Baazi’ as a part of their domain names such as E-bay- www.baazi.com; www.baazi.in; www.baazi.co.in; ESPN – Show – CricketBaazi; Times Internet Limited – Mobile App – BaaziNow; Dev Anand’sAnand’s film Baazi; Radio show of Music Broadcast Limited –Dialogue Baazi; and the Mobile App by Bennet Coleman & Co. Limited by the name of ‘BrainBaazi,’ and is thus incapable of obtaining a secondary meaning.
- They were not using the word in a trademark sense, nor has it sought registration, and it has been used as a descriptive word.
- Passing off can only be considered if the plaintiffs pass the ‘classical trinity test of passing off.’ The factors that need to be considered in this test are whether the plaintiff has acquired a goodwill/reputation in its services, defendants on using the plaintiff’s mark caused misrepresentation, and they have suffered damage due to such misrepresentation of goods/services.
- They stated that the word ‘WinZo Baazi’ should be used as a single word, as stated in Amritdhara Pharmacy vs. Satyadeo Gupta.
- They stated that the balance of convenience favoured the defendants as the plaintiffs filed the suit with inordinate delay, and it has been three years since the defendants have used the mark.
- They further stated that the plaintiff is not liable to get interim relief due to delay, laches, and acquiescence.
Also read: Classical Trinity of Passing Off
The issue between the parties is concerning the trademark ‘Baazi’. The question of law before the Court is whether the defendants are at fault for the infringement, passing off, and unfair practices of the trademark ‘Baazi’ under the Trademarks Act, 1999
The Court took into consideration the contentions presented by the parties and made the following observations:
- The plaintiffs’ documents and the evidence presented before the Court clarify that they have been registered proprietors of the trademark ‘Baazi’ respectively under class 9, class 28, and class 41.
- The plaintiffs have their marks registered both for the word ‘Baazi’ and for the other trademarks such as ‘Poker Baazi,’ ‘Rummy Baazi,’ ‘BalleBaazi,’ etc., which provides the right of exclusivity to the plaintiffs under Section 28 of the Trademarks Act,1999.
- The courts have accepted that the plaintiffs have registered the mark ‘Baazi’ appropriately, as the defendants have not moved the Trademark Registry for rectification.
- The users and revenue of the plaintiff has steadily increased since 2014.
- The defendants have failed to establish that there was no mala fide and dishonest intention for using the mark ‘Baazi’ by them.
- The plaintiffs have already established their exclusivity rights under Section 28 of the Act. The marks used by the defendants are similar to the plaintiff’s already registered trademarks and thus constitute infringement under Section 29 of the Act.
- The Court cannot accept the delay and acquiescence as they are defenses inequity, and defendants have failed in establishing the use of the trademark ‘Baazi’ with a fair, bona fide, and honest intention.
Justice Asha Menon of the Hon’ble Delhi High Court restrained the defendants from using or attempting to use the plaintiff’s registered marks or any other deceptively similar marks to the plaintiff’s said trademarks.
The defendants were allowed to use the trademark ‘WinZo’, but were barred from using the mark ‘Baazi.’ The defendants were further ordered and restricted to use the mark ‘Baazi’ and were directed to remove the mark from their mobile applications or any other services provided by them.
Thus, it can be concluded by stating that the stance of the Delhi High Court in the case of Moonshine Technology Private Limited v Ticktok Skill Games Private Limited and others, has appropriately presented the domain of intellectual property rights in the gaming industry. Intellectual Property Rights being extended to the gaming industry acts as a safeguard for the tools, contents, name, logo, and brands and protects the owners and the proprietors.
Read the order here
— Harmanpreet Kaur (Intern), Amity University, Kolkata
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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