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MOONSHINE TECHNOLOGY (P) LTD. V. TICTOK SKILL GAMES (P) LTD.

Any person who trespasses the rights conferred by registration of a trademark infringes the registered trademark for example by adopting identical or deceptively similar trademark. An infringement should constitute the infringing mark i.e., it must be either identical with or deceptively similar to the registered trade mark and due to that infringement, some injury has occurred to the Trademark owner.

Facts of the case.

The suit was filed in order to obtain a perpetual and mandatory injunction prohibiting the defendants from infringing on the plaintiff’s registered trademarks, passing off, unfair practices, and so on, as well as costs, damages, and delivery up.

The plaintiff is a part of the Baazi Group of Companies (for short, “Baazi Group”) and is a leading and pioneering name in the Indian gaming industry and have been in the gaming industry since 2014. Baazi group increased the standards in the gaming industry by offereing quality gaming accessories and user experiences to its customers under its trademarks inter alia BAAZI, BAAZI GAMES, POKER BAAZI, RUMMYBAAZI, BALLEBAAZI, BAAZI MOBILE GAMING, etc. Over the period of time the brand was respected by its customer who approved the quality of gaming services. The plaintiff has attained worldwide popularity and reputation. The plaintiff bonafidely adopted “Baazi” as its trademark which shall represent its business and should be distinctive to the marks already present on the Record. The mark underwent a number of variations between the year 2014 till 2020, these changes became the trading identity, corporate and domain names of “Baazi Group”

The plaintiff claimed that the defendant deceptively began using the term “Baazi” for its services, passing them off as the plaintiff’s. Because the plaintiff’s venture was successful, the defendant started his own business by combining the plaintiff’s trademark “Baazi” with his registered trademark “Winzo,” i.e., “Winzo Baazi.” As a result, the defendant was the plaintiff’s competitor.

Questions of Law

1.      Whether there is prima facie case of infringement and unfair trade practices?

2.      Whether the plaintiff will suffer irreparable loss or injury if the court does not grant a mandatory or perpetual injunction against the defendant?

Arguments by Plaintiff and Defendent

According to the plaintiff, the first defendant (TickTock Skill Games Pvt. Ltd.) began using ‘Baazi’ in relation to the services that they were providing and thus misrepresented their services as those of the plaintiff. It was on account of the success of the plaintiff’s venture that the second defendant (Director of the first defendant company) began his own business called ‘WinZo Games’ in India and began to use the trademark ‘Baazi’ along with ‘WinZo’, branding its services on its website as well as its mobile app as ‘WinZo Baazi’. Plaintiff also argued that the defendants were only using ‘Baazi’ as a descriptive word for wagering/betting, it could not be accepted that the use of ‘Baazi’ was genuine. Moreover, plaintiff argued that because the word ‘Baazi’ could not be associated with a Gaming App, particularly on a mobile phone, it was clearly not descriptive of the defendants’ services.

Defendants claimed they used “Baazi” as a descriptive word in “WinZo Baazi,” and that it is a generic word that means “game” in Urdu. Defendants also contended that if the proprietor of a trademark develops a secondary meaning for a common word, the registered trademark act should be protected. Moreover, defendants contended that the plaintiff was using the term “Baazi” to describe a web-based gaming application that involved betting, and that the term “Baazi” simply described their services. According to the counsel, such a descriptive term used in relation to gaming services could not be monopolised by anyone.

Judgment

The Hon’ble Delhi High court was of opinion that the plaintiff’s business was growing and they have acquired distinctiveness as a web gaming platform. The Court began by noting that the Plaintiff had been running a popular and growing online gaming business since 2014, and the term “Baazi” had become synonymous with the services it offered. Despite the fact that it is an Urdu word, the Plaintiff cleverly used it, and it is not 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 noted that the Defendant used the exact word that the Plaintiff had trademarked and provided identical services.

The Court determined that a prima facie case of infringement had been established under Section 29(2)(c) which is read as “its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark” read with Section 29(3) which is read as “In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public” of the Trademarks Act, 1999. By referring above mentioned provisions court assumed that there will be likelihood of confusion among consumers if injunction is not granted against the defendant’s mark. The Court also rejected the Defendant’s claims under Sections 30 and 35 of the Act, finding that it had failed to demonstrate that it was using the term “Baazi” honestly in commercial matters or as a descriptive word.

Defendants claimed that the plaintiff filed the law suit in delay. Plaintiff’s counsel responded by citing Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr, in which the court stated that delay was not fatal in a case of infringement and passing off because consumers’ interests needed to be protected.

The Court stated in Midas Hygiene Industries (P) Limited and Others v Sudhir Bhatia and Other that mere delay in filing a suit was insufficient to deny relief to the plaintiff in a trade mark act infringement case, and that an injunction is required if a mark is dishonestly adopted.

The Court determined that passing off and infringement had been established. The Hon’ble Court then observed that, because the Plaintiff had built a growing business around the “Baazi” trademark, allowing the Defendant to dishonestly adopt it would almost certainly result in irreparable loss and injury to the Plaintiff. As a result, the Hon’ble Court issued an interim injunction prohibiting the Defendant from using the Plaintiff’s trademarks “POKER BAAZI” and “BALLEBAAZI.” “RummyBaazi and others, until the suit is resolved.