By Nihit Nagpal and Manmeet Singh Marwah
In Moonshine Technology Pvt Ltd v Tictok Skill Games Pvt Ltd[1], the Hon’ble Delhi High Court vide its Order dated January 31, 2022 adjudicated upon the issue relating to trademark infringement and passing off where registered trademarks of the Baazi Group of Companies such as Baazi, Baazi Games, Poker Baazi, Rummybaazi, Ballebaazi, Baazi Mobile Gaming, etc. had been knowingly used by an industry competitor providing similar services with the name of WinZo Baazi. The Hon’ble Court rejected the contentions of the Defendant of delay and acquiescence and descriptive word and restrained the Defendants till the disposal of the suit from using or attempting to use the Plaintiff’s well-known brand and registered marks.
Brief Facts of the case- Moonshine Technology Pvt Ltd v Tictok Skill Games Pvt Ltd
Moonshine Technology Pvt Ltd (“the Plaintiff”) is part of the Baazi Group, and has been a leading provider of gaming services in India since 2014. Tictok Skill Games Pvt Ltd (“the Defendant”), has been operating WinZo Games since 2018, directly competing with the Plaintiff. The founder of WinZo Games was a former customer of the Plaintiff.
The Plaintiff had registered several variations of the word “Baazi” as trademarks, both as a standalone word and in conjunction with other words like “PokerBaazi”, “RummyBaazi”, etc. The Defendant, Tictok had started using the word “Baazi” in conjunction with its own brand name “WinZo”, branding its services as “WinZo Baazi”. Therefore, the Plaintiff filed this suit for infringement and passing off, seeking an injunction restraining Tictok from using the trademarked word “Baazi”, as well as costs, damages, and delivery up.
The Plaintiff raised the following contentions:
- Tictok had used a mark identical with the Plaintiff’s registered trademark, and both parties offered similar goods and services. Therefore, as per Section 29(3) of the Trademarks Act, 1999, the Court should presume that confusion would be caused amongst the public[2].
- The Defendant used the same font and colour for the word “Baazi” as it did for “WinZo”, therefore, “Baazi” was used as a trademark, and not as a descriptive word.
- Even if “Baazi” was considered a descriptive word, it would have to be afforded protection from infringement as it acted as a source identifier for the Plaintiff.
- The Plaintiff’s business was worth 1.2 billion INR, and Tictok continued use of the word “Baazi” would dilute the Plaintiff’s trademark into a common word.
The Defendant raised the following contentions:
- The Plaintiff had failed to make out the existence of the prerequisites for grant of interim injunction: Existence of prima facie case, balance of convenience being in its favour, or that it would suffer irreparable loss or injury if injunction were not granted.
- “Baazi” is merely an Urdu word meaning betting, therefore, it was used by the Defendant to describe its services, and not as a trademark.
- Several other entities, such as E-bay, ESPN, and Times Internet Ltd were using the word “Baazi” in their trademarks.
- The Defendant was using the word “Baazi” to highlight the intended use of its website and to describe the services rendered by it, which are permitted uses of a registered trademark according to Sections 30(2)(a) and 35 of the Trademarks Act, 1999.
- The Plaintiff had failed to prove the existence of all three ingredients of the trinity test for passing off, namely, (1) that the Plaintiff had acquired a reputation or goodwill in his services, (2) That the Defendant committed an act of misrepresentation by using the Plaintiff’s trademark, (3) the Plaintiff had suffered damage or was likely to do so due to the Defendant’s act.
- The Plaintiff had known about the Defendant’s use of the word, “Baazi” for 3 years before filing this suit. Therefore, it was precluded from obtaining an injunction by the doctrines of inordinate delay, laches, and acquiescence.
Order passed by the Delhi High Court
The Hon’ble High Court first noted that the Plaintiff had been operating a popular and thriving online gaming business since 2014, and the word “Baazi” had become synonymous with the services it provided. Even though it is an Urdu word, it had been cleverly used by the Plaintiff, and it is not otherwise commonly used in the industry. Further, the Defendant had already built its brand under the name “WinZo”, and had only later started using the word “Baazi”. The Hon’ble Court also observed that the Defendant had used the exact word that had been trademarked by the Plaintiff, and offered identical services. Therefore, the Court held that a prima facie case of infringement had been made out under Section 29(2)(c) read with Section 29(3) of the Trademarks Act, 1999. The Court presumed that confusion would occur amongst the public, and an injunction was required accordingly. The Court also rejected the defences put up under Sections 30 and 35 of the Act, as the Defendant had failed to satisfy it that it was using the word “Baazi” honestly in commercial matters or as a descriptive word.
The Hon’ble Court next decided the issue which had arisen due to the Plaintiff’s alleged delay in filing the suit. The Court first noted that the Defendant had not adequately proved that it had been using the word “Baazi” since 2018. However, even granting that a delay had been occasioned, the Court held that a mere delay in filing suit is not sufficient to refuse the Plaintiff’s prayer for injunction. In this regard, the Hon’ble Court relied on Midas Hygiene Industries Pvt Ltd v Sudhir Bhatia[3], where the Hon’ble Supreme Court held that if a mark has been adopted dishonestly, an injunction must necessarily be granted, irrespective of the delay occasioned in filing the suit. In the present case, the Defendant was aware of the Plaintiff’s trademark and had seemingly been using the word “Baazi” to take unfair advantage of the Plaintiff’s reputation. Therefore, the Court rejected the defence of inordinate delay. Next, referring to Hindustan Pencils Pvt Ltd v M/s India Stationery Products Co. [4], the Hon’ble Court observed that the Defendant could not successfully employ the doctrine of acquiescence, because there had been no positive act of encouragement on the part of the Plaintiff.
As none of the Defendant’s contentions withstood the Court’s scrutiny, the Court held that passing off and infringement had been established. The Hon’ble Court then observed that as the Plaintiff had established a thriving business around the “Baazi” trademark, allowing the Defendant to dishonestly adopt it would be likely to cause irreparable loss and injury to the Plaintiff. Also, the Defendant did not really need to use “Baazi” in its branding, as it had already established itself as “WinZo Games”. Therefore, the balance of convenience tilted in the favour of the Plaintiff. Hence, the Hon’ble Court granted an interim injunction restraining the Defendant from using the Plaintiff’s trademark being “POKER BAAZI” and “BALLEBAAZI” and “RummyBaazi” and et al., until the disposal of the suit.
Conclusion
Defences such as laches and acquiescence and descriptive word are based on the rationale of protecting the interest of a person who has built a reputation around a mark adopted in good faith. In this order, the Hon’ble Delhi High Court has rightly rejected these defences in a case where the infringer was acting dishonestly.
[1] CS(COMM) 331/2022.
[2] The Trademarks Act, 1999, No. 47 of 1999, §29(3).
[3] (2004) 3 SCC 90.
[4] 1989 SCC OnLine Del 34
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