Acknowledgement.
I have taken efforts in the time-bound and plagiarism-free competition of this project.
However, it would not have been possible without the kind support and help of a number of
individuals that are part of the National Law Institute University, Bhopal.
I am greatly indebted to Ghayur Sir for his able guidance and constant supervision towards
this project as well as for imparting the knowledge required for the same. I would also like to
express my gratitude towards all staff members of the National Law Institute University,
Bhopal for their kind cooperation and for providing us all with the resources required to make
this project.
My gratitude and appreciation also goes out to my colleagues who helped me in developing
this paper and to people who have willingly helped me out with their abilities. Thank you.
Appellant: Bigtree Entertainment Pvt. Ltd
v.
Respondent: D Sharma & Anr
Forum: High Court of Delhi
Date of Judgment: January 21, 2019
Bench: Justice Jayant Nath
Case No: CS (COMM) 609/2016
Author: Justice Jayant Nath
Legislation under consideration: Trade Marks Act, 1999
Issue under consideration: Trademarks and exclusivity.
1. Introduction
Over the years, laws relating to Intellectual Property Rights in India have witnessed rapid
growth and significant development. One such paradigm shift and development in the branch
of Trade Mark law relates to the Indian judiciary system becoming more stringent in granting
protection to trademarks consisting of descriptive terms. The most important thing for
running a business is the trademark of the company. People mostly buy the things which they
see in the advertisement or hear the name from any other person. Trademarks play an
important role for the company to sell their product to the customers. There are many new
companies who enter the market and try to gain profit in the name of the other company and
such cases are increasing day by day due to new start-ups. Similar trademarks of the company
might affect the business of the other company badly.
The same situation happened in the present case the very known company Bookmyshow
claims the exclusive right over the prefix ”BOOKMY”. The Delhi High Court in the case
of Bigtree Entertainment Pvt Ltd v. D Sharma & Anr. reiterated the principles laid down in
various judgements to ascertain the scope of registrability of descriptive marks. The court in
this case dealt with the issue relating to whether the prefix “BOOKMY” is a descriptive
phrase or an invented term and whether the plaintiff has acquired inherent distinctiveness
with the continuous and long use of its registered mark "BOOKMYSHOW" and
"BOOKMY"?
1.1. Research Objectives
The aim of this project is to look at the Bookmyshow judgement passed by the honourable
High Court of Delhi. Thereby analyzing the various concepts in Trademark Law, including
but not limited to exclusivity of a mark.
1.2. Scope and Limitations
The project limits itself to studying of the Bookmyshow judgment by the Hon’ble High Court
of Delhi. It also observes other judgments on the issue that have been cited in the judgment of
the Delhi High Court.
1.3. Hypothesis
1. The prefix “BOOKMY” has distinctive meaning.
2.The plaintiff, Bigtree Entertainment Pvt. Ltd can claim an exclusive right over the
abovementioned term.
2. Brief Background & Material Facts
Parties
The plaintiff, Bigtree Entertainment, is a private limited company incorporated in the year
1999, having its registered office in Juhu, Mumbai. The company is the holding company
which owns the largest Online Ticketing portal in India known as “BookMyShow”. It was
launched in the year 2007, and started its business through its online website
“www.bookmyshow.com” and mobile based application namely, BookMyShow, The
company is in the business of facilitating a wide range of online ticketing services, including
for mega sporting events like the IPL, cinematographic films, live theatre, plays also for large
scale concerts like the Sunburn, who are all the official partners of the company.
The defendant, D. Sharma, is the owner of a customized portal known as “BOOKMYEVENT”
which is involved in providing online ticketing for live music concerts, Dramas, Standup
Comedy Shows, musical nights, movies, corporate seminars, plays, theatre, etc.
Factual matrix
In the present case, plaintiff is a highly successful company in an online ticket venture
named BOOKMYSHOW which was started in 2007. It is a leading entertainment booking
company in the country and has a significant market share with approximately 500 people
working in the company.
The company has received extensive media coverage in domestic as well as international
because of ticket partners in major events such as “Sunburn” music festival,” F1 race” and
the company has a 5-year deal as an online ticket partner for famous PVR cinemas.
The total revenue of the company is more than 150 crores per year. As per the company they
acquired the right over the prefix ”BOOKMY” and have acquired the trademark
“BOOKMY” which become a prefix associated exclusively with the plaintiff. The company
has acquired this due to its use of this over a long period of time and continues use.
It is stated by the company that the prefix ”BOOKMY” is an essential part of running their
business. They also stated that the application to consolidate its right in “BOOKMYSHOW”
and “BOOKMY” trademarks is pending and the company has already secured the trademark
registration for BOOKMYSHOW trademark under class 41 and 42. Under the class 41,
education; providing of training; entertainment; sporting and cultural activities comes
whereas class 42 includes services provided by persons, individually or collectively.
It was pleaded by the plaintiff that the “Book my event” brand is the same as related to
“BOOKMYSHOW” company stated that phonetically, visually and even their structure is
similar to the “Bookmyshow” and “BOOKMY” trademark. By 2012 plaintiff acquired
substantial goodwill and reputation.
The plaintiff filed a suit seeking an order of permanent injunction to restrain the defendant
company using the term “BOOKMYEVENT” OR prefix ”BOOKMY” as a trademark in the
corporate name, trading name while booking an online ticket or in any other services which
the companies provide to the customers.
The present matter dealt with the Plaintiff’s application for Temporary Injunction and
Defendant`s application for Vacation of Ex-parte order of Temporary Injunction.
3. Provisions under Consideration
Section 17 of the Trade Marks Act, 1999 which lays down the effect of registration of
parts of a mark.
The provision states the effect of registration of parts of a mark and states the general
proposition that registration confers on the proprietor exclusive right to the use of the
trademark taken as a whole.
(1) When a trade mark consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark—
(a) contains any part—
(i) which is not the subject of a separate application by the proprietor for registration as a
trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive
character, the registration thereof shall not confer any exclusive right in the matter
forming only a part of the whole of the trade mark so registered.
4. Issues before the Supreme Court
1. Whether the prefix ”BOOKMY” is a general term or has a distinctive meaning.
2. Whether the prefix “BOOKMY” had attained exclusivity owing to the prolonged use
of its registered mark “BOOKMYSHOW”.
The issues before the High Court of Delhi are factual in nature and there are no questions of
law involved.
5. Contentions (Arguments) Advanced
On behalf of the Plaintiff
1. The Plaintiff contended that they have acquired full rights to the words
“BOOKMYSHOW” and due to continuous and extensive use of it over the years the
prefix “BOOKMY” has obtained a secondary meaning and therefore by its extension
the prefix must also be independently protected as it is closely associated with the
business services and is also an indispensable part of the registered trademark.
2. The Plaintiff claimed that the Defendant had with a mala fide intention to deceive the
public used a mark which was very similar to that of the plaintiff’s, and thereby taken
undue advantage of the plaintiff’s goodwill both being involved in the same business
line.
3. Further, the plaintiff also claimed that the defendant`s website “BookmyEvent.in” was
a replica of his business site and therefore had adopted the infringing mark under
Class 41 which is perceivably similar to the plaintiff`s registered marks.
On behalf of the Respondant
1. The Defendant maintained that the words “BOOKMY” were universal in nature,
therefore is commonly used within the industry and hence cannot be regarded as a
subject matter of any trade mark.
2. He listed on record a number of domain names consisting of the words- “BOOKMY”
which were registered even before the petitioner`s domain name and he also presented
a list of existing domain names in conjunction with the Applicant`s domain name. The
Respondent further alleged that the complainant had falsely stated that the cause of
the action had arisen in 2014 and that the complainant and the respondents had in fact
previously been associated together within the capacity of ticket partners and
promoters at multiple events, concerts, etc. The brand name and logo of both the said
companies had previously appeared side by side on various advertising content like
hoardings and billboards television commercials, tabloids, pamphlets/brochures, sales
tickets, etc. The plaintiff and the respondent first colluded with one another for
“Sham-E- Mehfil” a live Ghazal concert in the year 2011, Ghulam Ali and Ustad
Ghulam Mustafa Khan were the star performers of the concert which took place in the
Talkatora Stadium of the National Capital. For this particular event the plaintiff
company “BOOKMYSHOW” was the online ticketing partner, while the defendant
company “BOOKMYEVENT” was the online promotional partner.
3. The Respondent also contended that the features of the mark and colour schemes used
were distinct from that of the plaintiff’s mark. Thus, the question of deceiving the
public or any malafide intention did not arise.
4. The advocate for the defendant further placed reliance on the judgment passed by a
single Judge of the same court in the matter between Bigtree Entertainment Pvt. Ltd.
v. Brain Seeds Sportainment Pvt. Ltd. & Another[1], wherein the plaintiff companies
application for injunction for the said prefix “BOOKMY” was denied and the court
held that the words “BOOKMY” were of descriptive nature and, that the registered
trademark of the plaintiff “BOOKMYSHOW” had not acquired any distinctive
meaning and therefore, the plaintiffs application was rejected. He further pleaded that
in appeal being FAO (OS) 218/2017, though the Division Bench clarified that a
Single Judges order would not be treated as conclusive and the parties involved would
continue to reserve their all rights and contentions, it is however pertinent to note that
since the facts of the case are similar in nature, the Hon`ble court will be bound to
take a similar view as that of the co-ordinate Bench.
6. Judicial Precedents under Consideration
The court analyses the case of J.R. Kapoor v. Micronix India1 where the supreme court deals
with the mark MICROTEL and MICRONIX. The appellant was not the only manufacturer of
a single item such as boosters but producing various electronic and electric apparatus in
which microchip technology is used. Even the boosters which are produced by the appellant
company are of two types, one is a transistor booster and other is an integrated circuit booster
where the plaintiff manufactured only the first type of Aerial boosters. These things are
mainly taken into consideration by the high court.
The court held that the word ”micro” is relevant in describing the product as microtechnology
is used for the production of many electronic goods, nobody can claim a monopoly in this
term. Therefore it was held by the court that the “micro” is a general term and give a
description of the product and while dealing with the question whether the suffix “nix” and
“tel” will not misguide, the public the court stated that both word phonetically sounds
dissimilar and not going to create any confusion.
In the case of Living Media Limited v. Alpha Dealcom Pvt. Ltd & Ors. 2, the court ruled in
favor of the plaintiff where they stated the trademark name “TODAY” acquired the
distinctive name. In the present case, plaintiff was the owner of several registered trademarks
such as music today, business today, India today travel plus, design today and most
prominent among these INDIA TODAY which has been a weekly magazine since 1975. It
acquired the two trademarks under classes 16 and 35. The plaintiff asked for the injunction
that TODAY has gained a secondary meaning in the news and other sectors and they also
confirm it by giving evidence of sales figures. The court ruled in favour of the plaintiff and
stated that the word “TODAY” is a common word but has acquired distinctiveness.
There is not any straightforward process that is used to determine whether a phrase is
invented or descriptive.
1
1994 (3) SCC 215.
2
2016 (66) PTC 200 (Del) (DB).
In the case of P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd 3, the court observed in this
case that if prefix is already used by the other companies then it cannot be distinctive rather it
will be the descriptive word. In this case, the plaintiff was claiming the trademark “PP” but
the defendant shows to the court that there are numerous companies that use the same
trademark “PP” as prefix and therefore it is not distinctive about the letter. Hence, it is the
general term.
Similarly, the court analysed the judgment of F. Hoffman La Roche & Co. Ltd. v. Geoffrey
Manners & Co Pvt. Ltd4. The issue has arisen in this particular case where the court has to
decide whether “Dropovit” and ”Protovit” is a similar word. The court ruled out that the
suffix “VIT” which is commonly used as an indicator of vitamin and used by many other
companies in their product hence it is a common word and the letters “D‟ and “P‟ in
“Dropovit” and the corresponding letters P and T in “Protovit” cannot possibly be slurred
over in pronunciation and the words are so dissimilar that there is no reasonable probability
of confusion between the words either from the visual or phonetic point of view.”
By analyzing all these judgments, the court came to the conclusion that the “BOOKMY” is a
generic term and the company cannot claim extensive claim over this prefix.
3
2010 ILR 2 Del 165.
4
1970 SCR (2) 213.
7. Judgment
The court took a prima facie view pending the trial and held that both the rival marks as a
whole were dissimilar and on an overall comparison the visual effect of both Trade Marks
will not be perceived as same in the minds of the buyers that the font used by the defendant
are entirely different thus, eliminating the likelihood of confusion or deception among the
relevant public and member of trades.
The Court ruled that though the plaintiff was the sole owner of its registered trademark
“BOOKMYSHOW” the mark had not attained any exclusivity. The prefix “BOOKMY” was
not an invented word but instead used in common parlance in the English language. In fact,
the prefix was an apt description of the business services which were provided by both the
petitioner as well as the respondent, namely booking of tickets for films, events, etc.
It was also held that on a closer look at both the marks, it can be prima facie said that to a
customer the visual effects such as the font used and colour schemes adopted by both of the
rival marks were dissimilar to one another and therefore, it was unlikely that he would be
confused or misguided by the said trade names or marks.
The Court also noted the fact as submitted by the respondent that there were multiple domain
names beginning with the words “BOOKMY”, the existence of some of which could be traced
even before the Plaintiff`s website. Therefore, the prefix cannot be held as descriptive.
It was finally concluded that the Plaintiff had failed to make a prima facie case for an
injunction and thus the applications of the plaintiff were disposed off. Thus, this defeat for
the plaintiff that too two times in a row has got the attention of the trademark users trying to
keep a monopoly over their alleged exclusive marks. Therefore it has become important to
keep a note that when one is applying for or adopting a mark; he should probably consider
coining or inventing a word or select a word which is arbitrary in nature.
‘BOOK MY’ is a common English term. Its link with booking for shows, events, films etc. It
is a common general term descriptive of the services which are sought to be provided,
namely, booking of a show, event, movie etc. That apart a closer look at the mark shows that
prima facie the visual effect of both Trade Marks is not the same.
Prefix BOOKMY is not an invented word. In fact, it is an apt description of a business that is
involved, namely, booking of tickets for shows, events, films, etc. The fact as to whether this
prefix BOOKMY has been accorded a secondary meaning and distinctiveness can only be
established after the parties have led their evidence.
Accordingly, Plaintiff’s application for Temporary Injunction was dismissed and Defendants’
application for vacation of ex-parte order was allowed.
8. Conclusion
While looking at these kinds of cases, courts should apply their mind in the very depth of the
issue while deciding the case. In the present case, we are aware of the fact that the
website www.bookmyshow.com which is commonly used for booking tickets by many of us
across the country. The website www.bookmyevent.com might create confusion among the
public. They might think that it is a sub-part of the parent company. Although the reasoning
given in judgment is sufficient for not giving the right over the term “bookmy” and is not an
invented word but still the court should ponder upon the cases while giving a decision where
one is more popular among the people instead of another. In our daily life while we are
booking a ticket we mostly use the website www.bookmyshow.com. If we will come across
the same prefix it’s definitely going to create confusion because of the popularity of the
name.
A company can not claim its trademark rights over the term which is common to the general
public unless and until the company is able to prove that the prefix or suffix that they are
using has only associated with the mind of the public with that company and not with any
other company. There are many such examples at present such as CORTI which is a
commonly used prefix in the pharmaceutical industry, MICRO which is commonly used in
technology-related things hence nobody can claim trademark right over the generic terms. To
get an injunction from using that particular prefix the company has to show that the mark was
popular and had acquired a distinct identity in the eyes of the people which in the present
case bookmyshow failed to provide.
The laws relating to Intellectual Property Rights in India have over the years seen notable
growth and significant development. One such reason for this dramatic change towards the
development of the Trade Mark law branch is the Indian judicial setup becoming more
stringent in providing protection to trademarks consisting of descriptive terms. The High
Court of Delhi in the case of Bigtree Entertainment Pvt Ltd v. D Sharma & Anr reiterated the
propositions set out in various judgments to determine the scope of registrability of
descriptive marks. The court while dealing with the exclusivity of the prefix “BOOKMY”
took a prima facie view and held that the Plaintiff had failed to make a case for an injunction
as both the marks of the competing brands were visually different on comparison and the
customer would not be confused between the two. Therefore the plaintiff’s application was
disposed off. As a result of these two consecutive defeats for the plaintiff, the attention of the
trademark users trying to retain their sovereignty over their alleged “exclusive marks” has
shifted. Therefore it has become important to note that when a person is applying for or
receiving a mark, he should consider coining, inventing or choosing a word which is arbitrary
in nature.
