May 02, 2018

India: Grace Sports injuncted from using the mark ‘IPL’

European-Court-of-Justice

Source: www.bombayhighcourt.nic.in


Introduction

Board of Control for Cricket in India (hereinafter referred to as ‘the Plaintiff’) is the apex governing body for cricket in India. Grace India Sports Private Limited (hereinafter referred to as ‘the defendant’) claims to be organizing cricket talent hunts/camps and cricket tournaments. It was alleged by the Plaintiff that the services of the Defendant are identical/similar to those provided by the Plaintiff.

The notice of motion was taken out in an infringement and passing off suit filed by the Plaintiff. In the order dated January 16, 2018, passed by the Bombay High Court, reference was made to the order dated December 14, 2017, which was passed by the Learned Single Judge, S.C. Gupte, upon the ad-interim application also dated December 14, 2017 instituted by the Plaintiff against the Defendant, wherein the Defendant, who was absent at the said hearing was given one more opportunity to show cause in the matter. The order further stated that in case the Defendant refused to accept service or failed to appear at the next hearing, the matter would be heard ex parte, and appropriate ad-interim orders would be passed.

Plaintiff’s Contentions

The timeline of the submissions, regarding the events related to the suit of the Plaintiff are as follows:

Date

Event

2007

Plaintiff designed and adopted logos comprising a batsman swinging a bat as if hitting a ball along with the expressions “IPL”, “Indian Premier League”, and “Twenty 20”.

Plaintiff has since been using the trademarks “IPL”, “Indian Premier League”, “IPLT20” and “IPLTwenty20” in relation to a unique concept cricket tournament and goods and services associated therewith.

The abovementioned logos as a whole and in their entirety are unique, novel, catchy and attractive.

Plaintiff has also duly registered the trademarks “IPL”, “Indian Premier League”, “Indian Premier League Twenty 20” and “IPL Twenty 20” in classes 09, 16, 18, 22, 25, 28, 32, 35, 37, 39, 41 and 42.

2008

Plaintiff hosted the first Indian Premier League Twenty20 tournament, popularly known as “IPLT20” and/or “IPL” featuring cricket matches with 20 overs a side.

However, the Plaintiff had commenced promoting and publicising the said event much before, through wide and extensive advertising, in India as well as abroad. Plaintiff spent several crores of rupees in the process.

By the time the tournament started in India, the aforesaid trademarks had already gained popularity as indicating the cricket matches organized by the Plaintiff and are till date associated exclusively with the Plaintiff and its good and services.

Plaintiff is also operating a domain name/website at www.iplt20.com.

August 24, 2016

Defendant sent a letter to the Plaintiff communicating its intention to conduct a cricket tournament for junior players under the name/mark “Indian Junior Players League Twenty 20”/ “IJPL T20”.

September 15, 2016

Article in Times of India titled ‘Gambhir Unveils Indian Junior Players League’ wherein it was inter-alia reported that ‘Star batsman Gautam Gambhir unveiled the Indian Junior Players League Twenty 20 (IJPL T20), a talent hunt for boys aged 14 to 18 years’. The said article confirmed that Gautam Gambhir, a member of the Indian Cricket Team is associated with the Defendant and its proposed junior cricket league.

October, 2016

Plaintiff came to know about the Defendant’s domain names: www.ijplt20.com and www.juniorsipl.com.

November 11, 2016

Plaintiff issued cease and desist notice through its advocates upon the Defendant, inter alia calling upon it to cease use of the name/mark “IJPL” and the aforementioned domain names.

December 01, 2016

Plaintiff learned of the Defendant’s continuing activities vide newspaper article in Dainik Bhaskar (Jaipur Edition).

December 08, 2016

Plaintiff issued letter to all subordinate State Associations informing them about the IJPL tournament organized by the Defendant and further informing them that the said tournament has not been approved or authorized by the Plaintiff.

December 09, 2016

The Saurashtra Cricket Association sent a copy of e-mail that it had received from the Defendant inviting young students to participate in the IJPL. The e-mail stated that the selection will be done by Ranji Trophy players and coaches, and that the event will culminate into a National Tournament of day-night matches which will be held in Mumbai.

December 13, 2016

Correspondence between the Defendant and Plaintiff wherein the Defendant refuted the allegations put forward in the Plaintiff’s cease and desist notice, and the Plaintiff responded by saying that as the Plaintiff is the governing body for cricket in India, all tournaments need prior approval of the Plaintiff; that no such approval had been given to the tournament being organized by the Defendant; and that players participating in non-approved tournaments cannot be a part of the Plaintiff’s future activities.

December 14, 2016

Defendant sought a meeting with the Plaintiff to resolve the issue, however, no such meeting was held and the Plaintiff did not give any approval for the tournament.

August, 2017

Plaintiff learned that the Defendant was planning to hold a cricket tournament under the name/mark IJPL T20 in Dubai from September 19- September 30, 2017, whereas it had so far (since December 2016) been under the bona fide belief that the Defendant had indeed ceased use of the name/mark “IJPL” in compliance with its demands.

Plaintiff additionally learned that Defendant was no longer using the domain www.juniorsipl.com, however was using the domains www.ijplt20.com and www.ijplth.com.

September 09, 2017

Plaintiff published a media advisory on its website against IJPL and its domain names.

September 10, 2017

Plaintiff sent an email to all its affiliate State cricket units informing that IJPL did not have due authorization from it and to dissociate from it.

October 11, 2017

Plaintiff sent a second cease and desist notice to the Defendant.

Thereafter, the Plaintiff learned upon visiting the Defendant’s website that it has now started the registration process for IJPL T20 Season 2, thereby initiating the present suit.

January 3 and 4, 2018

The aforesaid order dated January 16, 2018 was duly served upon the Defendant vide email and courier respectively.

January 12 and 15, 2018

Notice of the present ad-interim application proceedings was further served on the Defendant vide emails.

Based on the above sequence of events, the Plaintiff contended that:

  • The Defendants are using the impugned trade mark IJPL and IJPL T20 and the impugned domain names www.ijplt20.com , www.juniorsipl.com and www.ijplth.com  which are visually, structurally, phonetically, aurally, closely and deceptively similar to the Plaintiff’s trademarks.

  • The Plaintiff’s mark has earned the status of well-known mark in India.

  • There is real and actual confusion in the minds of consumer between the Plaintiff’s trademark and Defendants mark.

  • The Plaintiff’s are likely to suffer irreparable injury due to infringement of its mark by the Defendant.

Court’s Analysis

  • Since the Defendant did not appear on the date of the hearing, and therefore, as per the previous order passed by the Learned Single Judge, Hon’ble Justice S.J. Kathawalla., heard the Plaintiff’s submissions and passed an ex parte order upon the Defendant.

  • Hon’ble Justice Kathawalla., upon due consideration of the facts and circumstances of the case and evidence as tendered by the Plaintiff in the matter, was pleased to pass order in favour of the Plaintiff.

  • According to the order, dated January 16, 2018, strong prima facie case was made out by the Plaintiff that the rival trademarks of the Defendant were found to be deceptively similar and for identical/similar services/activities.

  • In so far as passing off was concerned, the Judge also found real and actual confusion had already taken place as several news articles had referred to the Defendant’s tournament as “Youth IPL” and “Indian Junior Premier League”.

  • Therefore, the Defendant was permanently injuncted from infringing the Plaintiff’s trademarks “IPL” and “IPLTwenty20” by using “IJPL” or “IJPL T20” in respect of its activities/services and also the impugned domain names www.ijplt20.com , www.juniorsipl.com  and www.ijplth.com .

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