Recently, while deciding an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (‘CPC’) in the case of Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd.[1], a Single Judge of the Delhi High Court vide an interim order dated 31 January 2022, reiterated that in a case for infringement, grant of injunction is necessary if it prima facie appears that the Defendants’ adoption of the mark was itself dishonest. The Court held that once the Plaintiff has shown that the use by the Defendants is of the exact word i.e., the registered trademark of the plaintiff and that the goods or services are identical, the Court will necessarily presume that confusion would arise in the minds of the public or consumers as to the origin of the goods or services and accordingly, an interim injunction would have to be issued.
In this case, the Plaintiff offered gaming products under the brand name ‘Baazi’ and other ‘Baazi’ comprising registered trademarks. The Plaintiff claimed that the Defendants dishonestly started using ‘Baazi’ along with the term ‘Winzo’ in respect of similar goods and services. The Defendants argued that the term ‘Baazi’ was descriptive. The Court, however, agreeing with the Plaintiff held that the Defendant’s use of the term ‘Baazi’ was dishonest. It was also observed by the Court that the Defendants failed to offer any substantial reason so as to justify their own use of the term ‘Baazi’. The Court concluded that prima facie infringement existed and that continuous use of the mark ‘Baazi’ by the Defendants would cause confusion among the players about a probable connection between the two parties, thus impacting the goodwill, reputation and distinctiveness of the registered trademark of the Plaintiff and causing irreparable loss.
Even though the law is quite clear on the fact that there will be no case of infringement in case a registered trademark is being used for descriptive purposes, proving a mark to be descriptive is not enough, a bona fide intention to use the mark for descriptive purpose will have to be additionally shown to assert a legitimate defence. It is pertinent to mention that certain marks prima facie appear to be descriptive. However, if such marks become distinct over time, the Court ensures that no one takes unfair advantage of the same. In the case of Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr.[2], the Plaintiffs used the trademark/domain name ‘Naukri.com’ to provide online classified recruitment and related services. The Plaintiffs alleged that the Defendants registered a domain name ‘Naukari.Com’ to lead innocent users, who mistakenly typed ‘Naukari.com’ instead of ‘Naukri.com’, to their website ‘Jobsourceindia.com’, which offered similar services as that of the Plaintiffs. The Defendants argued that the trademark ‘Naukri.com’ is a descriptive/generic mark and thus the Plaintiffs cannot have monopoly over the same. The Court pointed out that the Plaintiffs’ mark had attained distinctiveness with the services offered under it despite being a descriptive mark. Further, the Defendants having purchased a domain name with a slight misspelling despite having another registered domain name establishes that it was done in bad faith. Thus, the Court issued an interim order injuncting the Defendants from using the domain name in question.
The approach by the Courts when it comes to descriptive and well-known trademarks where the classes of goods of an infringing trademark has been varied. For example, in the case of T.V. Venugopal v. Ushodaya Enterprises Limited[3] the Defendant adopted the trademark ‘Ashika’s Eenadu’ for manufacturing and dealing in incense sticks in Karnataka and later in Andhra Pradesh. However, the Plaintiff in the state of Andhra Pradesh was already using the mark ‘Eanadu’ for publishing a popular newspaper and running a TV Channel and hence, sought an injunction against the Defendant. The Defendant argued that the mark ‘Eanadu’, which means ‘today’ is a descriptive/generic word, therefore, a single entity cannot have a monopoly over the same. The Court in this case pointed out that the Plaintiff’s mark has acquired distinctiveness due to an extraordinary reputation and goodwill in the state of Andhra Pradesh. Considering this, the Court further observed that permitting the Defendant to use the term ‘Eenadu’, though for different class of goods and services, will amount to subscribing to an attempt of the Defendant to dishonestly ride on the said goodwill and profit from deceiving the people to believe that the product under ‘Ashika’s Eenadu’ belongs to the Plaintiff. On the contrary, in the case of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors[4], the Plaintiff was the registered proprietor of the trademark ‘Sugar Free’, a brand for sugar substitute products. The Plaintiff instituted a suit against the Defendants for the usage of the terms ‘Sugar Free’ in their frozen dessert. To which, the Defendants contended that their use of the terms ‘Sugar Free’ was bona fide and in a descriptive sense rather than a trademark sense. The Court observed that the word Sugar-Free has attained secondary meaning in the sugar substitute market with a certain class of people. However, the Court concluded that the mark ‘Sugar Free’ cannot be construed to be distinctive or acquired secondary meaning concerning other products or with respect to a different class of people. In consideration of the above view, the Delhi High Court refused to grant an injunction against the Defendant to use the mark ‘Sugar Free’ to describe the nature of their product.
Similarly, in the case of A.D. Padmasingh Isaac and Another v. Sudali Aach Provisions[5], where the classes of goods could be said to be allied, the Court did not provide injunctive relief to the Plaintiffs. In this case, the Plaintiffs conceived, adopted, and registered the trademark ‘Aachi’ for manufacturing and marketing a variety of spices. The Plaintiffs objected to the usage of the word ‘Aachi’ in the Defendant’s trademark ‘Sudali Aachi Provision’ for running a grocery store. The Defendant argued that the word ‘Aachi’, which means grandmother in the Tamil Language is a generic/public juris mark. Thus, the Plaintiffs cannot restrain them from using the term ‘Aachi’ in their trademark. The Court siding with the Defendant held that even though ‘Aachi’ is a descriptive registered mark, the same does not entitle the Plaintiffs to use the term ‘Aachi’ as a ‘sword against anyone’ who uses said term per se or in combination with bona fide intention.
It is clear that if a descriptive trademark accrues goodwill and reputation it cannot be infringed on a mere pretext that the mark is descriptive. The use of registered descriptive marks with dishonest intention and bad faith would be a just cause for the Court to restrain the Defendants on principles of equity. Thus, particularly in matters of interim injunction, the Plaintiff, in addition to establishing a prima facie infringement in case of descriptive trademarks, will also have to show dishonesty and bad faith in the adoption of such mark by the Defendant. A Defendant on the other hand cannot seek refuge in merely claiming the mark as being descriptive but has to show bona fide adoption of such mark only for describing its goods and services.
[The authors are Senior Associate and Joint Partner in IPR Teams at Lakshmikumaran & Sridharan Attorneys in New Delhi and Bengaluru, respectively]
[1] 2022 SCC OnLine Del 296
[2] 98(2002) DLT 499
[3] (2011) 4 SCC 85
[4] 2009 (41) PTC 336 (Del.) (DB)
[5] 2022 SCC OnLine Mad 343