By R. Parthasarathy & Abhishek Yadav
The question whether a mark is descriptive or invented, has always been a contentious one. The Supreme Court in 1994 dealt with this issue in J.R. Kapoor v. Micronix India. In the said judgement, the marks in question were MICROTEL and MICRONIX. Apart from other differences, the SC noted that the word micro was indicative of the micro-chip technology being used in both products and hence the prefix micro was descriptive of the technology and no one can claim monopoly to micro and hence anyone using ‘micro-chip’ technology in its products is free to use ‘micro’ as prefix in the trade name.
Recently, the Delhi High Court dealt with two cases that involved major online booking portals fighting for exclusive rights with respect to their trademarks. The High Court dismissed the plea of infringement in a dispute between ‘book my show’ and ‘book my event’. However, in an exparte order, it decreed in favour of plaintiff using the mark ‘make my trip’ and held that defendant’s mark ‘make my happy journey’ infringed the plaintiff’s mark. These decisions by different Single Judges of the same High Court seem, at first glance, to be contrary to each other, as both the cases revolved around the use of a similar prefix forming part of a word mark. However, the differences as discussed in this article are relevant and need to be considered.
Contending trademark phrase is unique
In Bigtree Entertainment (P) Ltd v. D Sharma[Endnote 1], BOOKMYSHOW went to the High Court seeking permanent injunction to restrain defendant from using BOOKMYEVENT which it pleaded was deceptively similar and that too in respect of similar services - online ticketing services. The court refused to grant injunction and observed that the prefix BOOKMY is an apt description of a business involved in booking and the said phrase is profusely used in the market. It was held that the defendant’s adoption and application of the prefix ‘book my’ to describe its activities as a booking domain was prima facie the decision in concert with other players in the booking industry.
The Court however, in the case of MakeMyTrip v. MakeMyHappyJourney[Endnote 2], granted permanent injunction against MAKEMYHAPPYJOURNEY holding that the defendant had no scope of defending itself against the allegation of passing off and infringement. It may be noted that this decision was an ex-parte decision with only plaintiff pleading that defendant’s mark ‘MakeMyHappyJourney’ is phonetically, visually, structurally and conceptually similar to the plaintiff’s registered mark ‘MakeMyTrip’. It also stated that the defendant’s logo had a similar colour scheme and emphasis on ‘My’ was also similar.
The plaintiff in this case was a registered proprietor of at least 15 MakeMyTrip marks under various classes of the Trade Marks Act, 1999 and, curiously enough, had registered the term ‘MAKEMY’ during pendency of the present suit. It was assertively contended that the phrase MAKEMYTRIP was unique to plaintiff with ‘My’ being highlighted in a particular way inall its logos. The petitioner had contended that the impugned mark MAKEMYHAPPYJOURNEY was chosen specifically with the intention of creating a deceptively and confusingly similar mark. In the absence of any plea by the defendant, the court decreed against MAKEMYHAPPYJOURNEY with costs.
On the other hand, in the former case of Bookmyshow v. Bookmyevent, the defendant was able to turn the tables around in its favour by mounting substantial pleadings in its protection. The defendant in BOOKMYEVENT pleaded that in the past, the plaintiff and defendants have been partners for many online ticketing and promotional events thereby stressing on its simultaneous presence in the market with the plaintiff. BOOKMYEVENT furthered its argument by placing on record examples of numerous companies using the same domain prefix and pleaded that BOOKMY is a generic term used substantially in the industry and cannot be exclusive to any particular person. It also referred to a previous case involving plaintiff where plaintiff was refused injunction and observed that the phrase BOOKMY is a common term widely used in the context of booking shows, events, and movies.
Trademark’s association in the minds of people
Evidently the court expects the plaintiff, seeking permanent injunction in its favour, to establish that there is an exclusive association of its trademark, in the mind of the public, with its business. This is difficult to prove in cases where a phrase is used as part of a Trademark and is also generic [Refer Section 17(2)(b) of the Trademarks Act]. The concern with the use of a generic term is that it deviates from the primary utility of a Trademark, which is identification.
The Court of Justice of the European Union (CJEU) prescribes that a trademark should not confuse the public by creating associations uncalled for and is rather supposed to create an exclusive outlet for the product in the market. Google was recently denied Trademark registration for the mark STREAMS by CJEU [Endnote 3] which held that it is too generic and that medical professionals, for whom the application with the name STREAMS was created, may not be able to separate its meaning from what is commonly understood as data streaming with respect to internet. In another case referred to CJEU[Endnote 4], the term CYSTUS, in the category of food supplements, was denied trademark registration because of its resemblance to plant ‘Cistus’ where it was ruled that although the said plant forms part of the ingredient of the product, the public has to distinguish the product commercially.
Conceivably because people are less likely to remember invented names, and more adept at remembering terms they find relatable, in the past decade there has been a visible shift towards registration of common words, names and phrases.
Phrases which are part of cultural idiom commonly have an easier recall value as people are habitually using them on a day to day basis. Off-late proprietors have been trying to seek registration for catchy phrases that could be associated with their products and services and could easily become popular with the target audiences. This has led to frequent registrations of short phrases comprising descriptive terms in trademark which though in vogue, is not in conformity with the trademark laws.
However, the court always evaluates as to whether the trademark is distinct enough to be easily identified and distinguished from other marks present in the market as well as from descriptive terms of common usage. Needless to say, that where a common term or phrase is opted as a Trademark, the best defence might be to detach it from its conventional meaning and form new connotations.
[The authors are respectively, Principal Partner, IPR Practice and Senior Executive, Knowledge Management, Lakshmikumaran & Sridharan]
Endnotes:
- Judgement dated 21-1-2019 in CS(COMM) 609/2016, Delhi High Court.
- Judgement dated 8-2-2019 in CS(COMM) 1211/2018, Delhi High Court.
- DeepMind Technologies Ltd. v. EUIPO – Judgement dated 31-1-2019 in Case T‑97/18, CJEU.
- Georgid Pandalis v. EUIPO – Judgement dated 31-1-2019 in Case C‑194/17 P, CJEU.