In a recent decision, the Delhi High Court in Bigtree Entertainment v Brain Seed Sportainment, recently denied the Plaintiffs (www.bookmyshow.com), an interim injunction against the Defendant’s use of the domain bookmysports.com.
The Plaintiff company was established in 1999. Through its website “www.bookmyshow.com” and mobile app BOOKMYSHOW, Plaintiff provides a range of ticketing solutions, including for sport events, through call centers, Internet ticketing, kiosk and a mobile ticketing platform. Since launching of its website in 2007, Plaintiff has emerged as a prominent player in the ticketing industry and has established its presence in 26 states in India. It has also secured registration in BOOKMYSHOW word marks and logos under classes 41 (education, entertainment and training) and 42 (technology and software services). The Plaintiff however, does not separately possess any registration, as yet, of the words BOOKMY.
The Defendant company was incorporated in May 2015. Through its website “www.bookmysports.com”, the Defendant provides an online platform for booking sports facilities. The domain name “www.bookmysports.com” was created in 2010.
The Plaintiff contended that the Defendant’s mark is deceptively similar to its own, and the same will lead to confusion and deception amongst the members of public and trade. The Plaintiff also contended that the Defendant is trying to take advantage and ride piggyback on the goodwill and reputation created by the Plaintiff.Further, the Plaintiff contends that the words BOOKMY has acquired secondary meaning due to the registration and extensive use of the mark BOOKMYSHOW and therefore contends that the words BOOKMY also merit independent protection.
The Defendant countered the Plaintiff contentions by firstly, challenging the bona fides of the Plaintiff’s claim by alleging concealment of contrary stand taken up by the Plaintiff in other proceedings. Secondly, it claimed that the words BOOKMY were not distinctive, but were merely descriptive. The defendant has placed on record a list of domain names containing the prefix- BOOKMY that have been registered prior to plaintiff’s domain name as well as a list of domain names which are co-existing with the Plaintiff’s domain name.
The key question that the Court focussed on is whether the prefix BOOKMY is a descriptive term or invented term and reached the conclusion that the existence of numerous domain names containing the prefix BOOKMY shows that the Plaintiff and the Defendant are not the sole users of the prefix and therefore found the prefix BOOKMY as descriptive. The Court also held that the words that were descriptive of a particular industry cannot be said to be invented (relying on J.R. Kapoor v. Micronics India and F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd). Further, it seems that the Plaintiffs failed to provide any evidence to show that BOOKMY is only associated with the Plaintiff’s trademark and that the prefix had obtained distinctiveness or a secondary meaning, in order to accord it protection.
There are some concerns with this approach in determining infringement and passing off between two marks by focussing on the prefix BOOKMY, instead of comparing the marks as a whole to check for deceptive similarity. As held in numerous occasions,marks should be compared as a whole and not be broken down into fragments in order to establish similarity. Moreover, and as applied in a significant recent decision of Justice Endlaw (Gillette Company LLC vs. Tigaksha Metallics Private Ltd), consumer psychology, associative thinking and memory are the determinants on whether the idea conveyed by the mark is similar, and therefore likely to cause confusion. To further emphasise this point, Justice Endlaw cites a survey conducted in which –
“The study revealed that, when five brands of the same type of product: ‘Orange Juice’, were named on the basis of a shared conceptual background (all five being named after different islands in the Caribbean: ‘Bahamas’, ‘Bermuda’, ‘Aruba’, ‘Dominica’ and ‘Barbuda’), the consumers’ ability to distinguish the various brand names was found to be poorer due to this shared conceptual background.”
Both BOOKMYSHOW and BOOKMYSPORT offer conceptually similar services and the chances of consumer confusion cannot be ruled out. Moreover, it is unclear on what basis the “bookmyshow” mark was found to not have acquired distinctiveness and secondary meaning.
While the outcome of an appeal may clarify some of these issues, in the meantime, the decision creates some uncertainty on the scope of interim injunctions for trademark cases in India.