This article is written by Sharad Yadav from Institute of Law, Nirma University. This article deals with the issue when a company can claim a certain word as prefix or suffix as a trademark.
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”.
Brief facts of the case
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.
- Whether the prefix ”BOOKMY” is a general term or has a distinctive meaning.
- Whether the plaintiff can claim an exclusive right over the term “BOOKMY” word.
Contentions by the parties
Arguments from the plaintiff side
In the present case, Bookmyshow pleaded that its prefix has acquired a distinctive character due to long period and its continued use, and the prefix “bookmy” has now become an essential part of the business and has an exclusive right over this. The plaintiff also stated that its trademarks “BOOKMYSHOW” is registered.
Section 17 of trademarks act talks about the effect of registration of parts of a mark.
- When a trademark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trademark taken as a whole.
- Notwithstanding anything contained in sub-section (1), when a trademark-
(a) contains any part-
- which is not the subject of a separate application by the proprietor for registration as a trademark;
- which is not separately registered by the proprietor as a trademark; 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 trademark is registered.” Also, they stated that they had secured trademark registration for BOOKMYSHOW trademark in class 41 and 42.
Arguments from the defendant side
Whereas Bookmyevent pleaded that it is a generic term and used by many of the companies. It even produces evidence of such companies and states that it can not be the subject matter of any trademark when it is used by many companies. It also stated that the plaintiff and defendants both companies have been doing the ticketing and promotion of various events and concerts. Both company brand and logo appeared in various newspapers, pamphlets sell tickets side by side. The first concert was also held in the year 2011 where the plaintiff was the ticketing partner and the defendant company were online promotional partners. The same situation has happened in 2013 where there was the event of formula-1 which was organized by the Jaypee sports international limited similar situation happened in the Sufiana rang in which they are featuring the Sabri brother which was held in the year 2014. Hence, the plaintiff can not claim it as exclusively right over the prefix ”BOOKMY” trademark.
The court basically relied upon the judgments given below:
The court analyses the case of J.R.Kapoor vs. Micronix India 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.
Living Media Limited vs. Alpha Dealcom Pvt. Ltd. & Ors. 2016(66) PTC 200 (Del) (DB)- In this case, 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 favor 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.
In the case of P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd, the court observed in this case that if prefix is already used by the other companies then it can not 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. vs.Geoffrey Manners & Co Pvt. Ltd. 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 can not claim extensive claim over this prefix.
In the present case, the court ruled out that the defendant placed numerous examples of companies that are using the same prefix “BOOKMY” in their business. While the plaintiff failed to provide any of the data which proves that the prefix “BOOKMY” is only associated in the minds of the public and it has acquired the secondary meaning and distinctness.
The court ruled that “BOOKMY” is not an invented term and has a common term which links with the bookings of shows, events, movies, and other such kinds of activities. The court also states that while looking closely at trademarks of “BOOKMYSHOW” and “BOOKMYEVENT” we can see clearly that the visual representation of both the trademarks is different and not the same in the minds of buyers. Prima facie, the font used by both of the companies is entirely different and the people are unlikely going to get confused or misguided by the name.
Hence, considering the facts, the court stated that the trademark “BOOKMY” is descriptive in nature and ruled out that the plaintiff trademark ”BOOKMYSHOW” has not acquired the distinctive meaning.
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.
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