By R. Parthasarathy & Abhishek Yadav
Contending trademark phrase is unique
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]
- 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.