Appears To Be Dishonest Adoption Of Plaintiff's Trademark: Delhi High Court Grants Interim Protection To Owner Of "Baazi" Games

Adjudicating on the argument of the Defendant regarding the descriptive nature of the word "Baazi" as non-violative of the Petitioner's trademark, Justice Asha Menon observed as follows:

"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?"

Holding that dishonest use of trademark "Baazi" or a similar word by a competitor of the registered proprietor of the trademark would suffice to restrain such user, the Court allowed the application of the Plaintiff/the registered proprietor for ad-interim injunction till the disposal of the suit.

Background

Plaintiff made a case for the mark "Baazi" being a "well-known mark" as Plaintiff's services had attained worldwide recognition. Plaintiff, claiming to be a part of the Baazi Group of Companies and a leader in the gaming industry, was the registered proprietor of several marks with the word "Baazi." By way of Assignment Agreements with Baazi Networks Pvt. Ltd. and SDN Gaming Network Pvt. Ltd., Plaintiff obtained rights for the trademarks "BAAZI, POKER BAAZI, RUMMYBAAZI, BAAZI GAMES, BALLEBAAZI and associated trademarks (device). Plaintiff adduced the registration details of all associated marks.

Plaintiff alleged that the Defendants had dishonestly adopted "Baazi" regarding gaming services. Therefore, they were passing off the goodwill and reputation of Plaintiff in its services. To establish that Defendant was the direct competitor of Plaintiff, Plaintiff evidenced that the Director of the Defendant company had been a customer of Plaintiff, knowing full well of its reputation in the industry. Specifically, the use of the word "Baazi" along with Defendant's mark "WinZo" was alleged to cause confusion in public. Therefore, the Plaintiffs prayed for restraining the Defendants from using the mark "Baazi" in their services.

Application of Section 28

Section 28 of the Trademarks Act, 1999 vests the registered proprietor of the trademark the exclusive rights to using such marks about the goods or services for which the mark is registered. A prima facie case of validity or registered mark per Section 31 of the Act was established in this preliminary stage. The Court noted that Defendant had not challenged the validity of the registration by filing rectification proceedings before the Trademarks Registry.

Application of Section 29

Section 29 of the Trademarks Act, 1999, provides for the infringement of trademarks. Assessing the credentials of the Petitioner's gaming services, the Court found a thriving business boasting of revenues touching Rs. 72 crores while expenditures being at nearly Rs. 32 crores. Thus, prima facie, the word "Baazi" had attained a brand distinctly associated with Plaintiff.

On the other hand, Defendant had adopted the word "Baazi" in a subsequent period while launching its App "WinZo Baazi." The usage of the mark in the trademark sense, and not in the descriptive sense, as alleged by Defendant, was established as the Defendant had adopted the word "Baazi" only after some time of operation of the Defendant's platform, in dishonest conjunction with its original mark "WinZo." Defendant's creator had clearly intended to ride on the Plaintiff's goodwill, having once enjoyed its services as a customer of Plaintiff. The defendant had alleged that the word "Baazi," being descriptive, could not be registered as a trademark.

Deliberating on the nuances of the word, the Court interpreted the Hindu/Urdu word as indicating "skill" or "strength" in a game. However, the same could not be apt to describe gaming or wagering services online or as a mobile App. There was nothing to establish that "Baazi" is commonly used in the industry. Thus, Plaintiff had creatively used "Baazi" for its trademark. Given the similarity of services of the Defendant and the Plaintiff, coupled with apparent infringement of the mark "Baazi" by Defendant, the Court applying Section 29(2)(c) read with Section 29(3), presumed that confusion would arise in the mind of a player as to the origin of services.

Case for Injunction

As the Court established prima facie infringement under Section 29 of the Act, the Court found granting the injunction to the Plaintiff in order. The Court following the Supreme Court in Renaissance Hotel Holdings INC versus B. Vijaya Sai (2022), quoting:

"As held by this Court in the case of Ruston & Hornsby Limited (supra), in action for infringement, once it is found that the defendant‟s trade mark was identical with the plaintiff‟s registered trade mark, the Court could not have gone into an enquiry whether the infringement is such as is likely to deceive or cause confusion. In an infringement action, an injunction would be issued as soon as it is proved that the Defendant is improperly using the trade mark of the plaintiff"

Apart from establishing infringement and consequent action for an injunction against Defendant, the Court also ruled that a case of passing off services had been made since portraying the word "Baazi" and the phrase "Team Baazi" by Defendant was similar to the Plaintiff. Thus, a prima facie case of infringement and passing off was established.

The element of "irreparable injury" for granting an injunction under Order 39 Rules 1 and 2 of the CPC fell in place, as the Court had already established the thriving revenues and associated goodwill of the Plaintiff. For "balance of convenience," the Court found that the Defendant having a registered trademark of their own, "WinZo," could easily continue their business without obstruction. At the same time, if Defendant employed the word "Baazi," Plaintiff would certainly suffer injury. Thus, "balance of convenience" was tilted in favor of Plaintiff.

Final Order

In its final order allowing the application for an ad-interim injunction, the Court held that:

"The application is accordingly allowed and the defendants are restrained, till the disposal of the suit, from using or attempting to use the plaintiff‟s well-known brand and registered mark "Baazi", "Baazi Games", "PokerBaazi", "BalleBaazi", et al., or any other mark or trade indicia, which is confusingly similar to the Plaintiff's said trademarks, in any form or manner, whatsoever, including as Winzo Baazi / WinzoBaazi, in respect to any product and service for which the Plaintiff has obtained registration including inter alia gaming services, which use amounts to infringement or passing off its products/ services as that of the Plaintiff. 51.

The defendants are also directed to remove/delete/omit or withdraw any and all references or use of the plaintiff's well-known brand and registered mark, "Baazi", in any form or manner, including inter alia from its mobile gaming application, promotional and marketing material, keywords, hashtags, metatags, domain name etc., which use amounts to violation of the plaintiff's intellectual property rights."

Case Name: MOONSHINE TECHNOLOGY PRIVATE LIMITED versus TICTOK SKILL GAMES PRIVATE LIMITED & ORS.

Citation: 2022 LiveLaw (Del) 72

Case No.: CS(COMM) 331/2021

Date of Judgment: 31st January, 2022

Coram: JUSTICE ASHA MENON

Click Here To Read/Download Order