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Competitor’s Dishonest Intention in Using Similar Word Can Be Injuncted

07

MAR

2022

Recently, the Delhi High Court granted an interim injunction against the defendant until disposal of suit in the case of Moonshine Technology Pvt. Ltd. versus Tictok Skill Games Pvt. Ltd.

The plaintiff, Moonshine Technology is part of the Baazi Group, a known name in the Indian gaming industry. Baazi Group offers quality gaming products and experiences to its customers under brands such as BAAZI, BAAZI GAMES, POKER BAAZI, RUMMYBAAZI, BALLEBAAZI, etc. The BAAZI trademark was adopted by the plaintiff in the year 2014 and trademark registrations for BAAZI and aforementioned variants were secured across gaming-related goods and services in classes 9, 28 and 41. As per the plaintiff, the defendant started using the term “Baazi” for their services to pass off their services as those of the plaintiff. As a background, it was shared that the defendant’s Director was the plaintiff’s customer on ‘pokerbaazi.com’ since July 2015 and was well aware of the Baazi Group. Thereafter, the defendant started his own gaming business under “WinZo Games” and began using the name WinZo Baazi on his website and mobile app in 2021. The plaintiff approached the court seeking injunction against the defendant with claims of infringement and passing off against the defendant.

In its defence, the defendant claimed that the word Baazi is a generic word that means “bet” in the Urdu language. Use of the word Baazi by the plaintiff for gaming application that involved betting is descriptive of such services and no exclusive right could be given to the plaintiff in such word. The plaintiff has not shown that the word Baazi has acquired secondary meaning and that the said mark is exclusively associated with the plaintiff’s services. Several third-party examples were given where the Baazi word was being used as part of trademarks to prove that this word is not capable of obtaining secondary meaning for betting services. The defendant justified its use by stating that they were not using Baazi in form of a trademark and no registration for the standalone term was sought. It was used in conjunction with their registered WinZo mark in a purely descriptive sense. Therefore, no case of trademark infringement was made out and their bona fide use was permitted under statutory defences of Section 30(2)(a) and 35 of the Trade Marks Act (the Act). The defendant also denied passing off claims. It was also argued that mark WinZo Games was different from the plaintiff’s marks- Poker Baazi, Rummy Baazi, Balle Baazi and no confusion could arise and that there was an inordinate delay in bringing the suit considering the plaintiff became aware of WinZo Games about 3 years ago. The defendant also pleaded that the suit was brought by the plaintiff out of sheer jealousy since the defendant’s Director declined the collaboration proposal offered by the plaintiff’s Director who congratulated the former on obtaining substantial investment in 2021.

The plaintiff countered the defendant’s claim of Baazi being a descriptive word, by corroborating that on the defendant’s website, no apostrophe “s” was reflected in WinZo and font for both WinZo and Baazi were same. Thus, the Baazi part was as significant as WinZo and was being used as a trademark. That the term Baazi which means wagering/betting is not related to gaming mobile apps and hence, not descriptive of these services. The plaintiff also stated that the defendant started using Baazi to encash on the plaintiff’s reputation and the use of WinZo Baazi cannot be defended for want of bona fide intention. For third parties’ applications and domains, the plaintiff showed that these were either opposed by the plaintiff or not in use.

The court held that the plaintiff had made out a prima facie case for trademark infringement and passing off as it would suffer irreparable loss and injury to its business and balance of convenience also lay in its favour. The court concluded that the plaintiff’s registered rights in “BAAZI” are protected under Section 28 of the Act conferring it, the exclusive right to use this mark for covered goods and services. The court acknowledged that the Baazi word neither described online gaming/ wagering services nor a mobile app. It is not commonly used in the industry, and it has been creatively used by the plaintiff for its services. The court opined that the defendant’s Winzo Baazi app did not show the use of the Baazi word in a descriptive manner and was used in trademark sense as branding. Thus, statutory defence of descriptive use could not be availed. The court also noted that there was no ardent need for the defendant to use Baazi with registered Winzo mark and adoption of another term “Team Baazi” by the defendant in September 2021 which was used by the plaintiff in 2020 highlighted another dishonest act. The conjunctive use of Baazi with WinZo is similar to the use of the plaintiff’s use of BAAZI with Poker, Rummy, etc., for the same services causing infringement and mannerism of use of Baazi by the defendant facilitating passing off. The defendant’s defence of delay and acquiescence was also rejected on the ground that there was no honesty in the defendant’s act of adopting Baazi which was to ride upon the plaintiff’s reputation and goodwill, and it would not preclude the court from granting an injunction against the defendant.

This case showcases that a defendant’s intention at the time of adopting its mark is one of the key factors to ascertain merits in claims of infringement and passing off. Defendant’s dishonest intention should be axed and defence of delay in filing the suit should not come in the way of the court to grant an injunction.

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Email manisha@lexorbis.com
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