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February 28, 2019

A Descriptive Part Of Even A Registered Mark Cannot Acquire Distinctiveness Through Use Of The Mark Only As A Whole

In interlocutory applications in the commercial suit titled Bigtree Entertainment Pvt Ltd v. D Sharma & Anr. [I.A. 1345/2015 & 12014/2016 in CS(COMM) 609/2016], the Delhi High Court, (Nath, J.) vide its order dated 2019.1.21, has dealt with the issue of granting exclusivity over the prefix part of a registered mark. The suit for infringement and passing off had been filed by the plaintiff for protection of its mark ‘BOOKMYSHOW’ registered as of 2007.4.12, and also for protection of the unregistered prefix part thereof, viz. ‘BOOKMY’, seeking an order of permanent injunction against the defendant’s use of the unregistered mark ‘BOOKMYEVENT’, or of any other mark with the prefix ‘BOOKMY’; both parties’ marks being used in respect of online ticket reservation services. Though it had earlier granted an ex parte interim injunction, the court allowed the defendant’s interlocutory application for vacating it and dismissed the plaintiff’s application for an interim injunction pending disposal of the suit.

The plaintiff asserted that since its launch in 2007, its ‘BOOKMYSHOW’ venture had grown into a leading entertainment event reservation portal in India, as a result of which not just its mark as a whole but also its prefix ‘BOOKMY’ had acquired distinctiveness and both had come to be associated exclusively with the plaintiff. The plaintiff contended that the defendant’s mark ‘BOOKMYEVENT’ was deceptively similar. The plaintiff further contended that ‘BOOKMY’ was an essential part of its registered mark, and thus warranted protection. The defendant claiming use by it of its mark since 2011, which it denied as being deceptively similar, also countered that no exclusivity can be granted in a part of a mark especially when such part is descriptive.

The court did not prima facie find deceptive similarity between the marks and noting that the BOOKMY prefix part was neither coined nor invented, it prima facie found it not to be distinctive but instead descriptive for the concerned services. In light of Section 17 negativing any exclusivity to a part of a registered mark if the part comprises matter of a non-distinctive character, the plaintiff’s contention that the prefix part has acquired distinctiveness under the Proviso to Section 9(1) from use since adoption, came to the fore. The defendant’s objection that this is legally impossible owing to the prefix part admittedly never having been used independently by itself led the court to the statutory-interpretational issue of whether “use” of a mark under the Proviso to Section 9(1) of the Trade Marks Act only includes its use independently by itself or also its use only as part of a larger mark. The Proviso to Section 9(1) states that a mark can acquire a distinctive character as a result of its use, so an expansive interpretation thereof that “use” also means use only as part of a larger mark, would then render the question of acquired distinctiveness of the prefix part a question of fact for a prima facie view required to be taken thereon. The plaintiff urged this approach arguing that a part of a registered mark did warrant the expansive interpretation.

The court stated that “The plaintiff is using the mark ‘BOOK MY SHOW’ and claims that the plaintiff has earned a strong reputation in the market. Based on this, it has been pleaded that the prefix ‘BOOKMY’ has attained exclusive meaning under which only the plaintiff can claim rights. As noted in the above judgment it cannot be forgotten that ‘BOOK MY’ is a common English term. Its link with booking for shows, events, films etc is but obvious. It is a common general term descriptive of the services which are sought to be provided, namely, booking of a show, event, movie etc.”

The court appears thus to have taken the position at the pre-trial stage that “use” in the Proviso to Section 9(1) means use of the mark independently and does not also mean use as part of a larger mark; and that this is so even when the larger mark is a registered one. In other words, the court appears thus to have proceeded on a prima facie view at the interim stage pending trial that a descriptive part of a mark cannot acquire secondary meaning and distinctive character through its use only as part of the mark as a whole, and that this position does not change even if the larger mark is a registered one.  The court noted its earlier 2017 order on the same plaintiff’s similar interim injunction application in its another earlier suit [Brain Seed case] in which its same prefix ‘BOOKMY’ had been found prima facie pending trial to be descriptive initially and not having acquired distinctiveness from use of the larger mark since, and therefore no exclusivity had been granted over the same at the interim stage. The court also found applicable its earlier 2016 decision [Living Media case] wherein the plaintiff had claimed exclusive rights in the mark ‘TODAY’ on the ground of its continuous use, with variants, since 1975, but the court had held after trial that continuous use of the mark only as a whole could not result in a part thereof, being a common/dictionary word, acquiring distinctiveness. In the instant interlocutory applications, apart from dealing with the question of exclusivity over a part of a registered mark, the court had to also make a prima facie determination of overall deceptive similarity between the two marks which had the common prefix ‘BOOKMY’.

The court took a prima facie view pending trial that the defendant’s mark as a whole was dissimilar to the plaintiff’s mark as a whole, on an overall comparison – “Prima facie the colour scheme, the font used by the defendant are entirely different and people are unlikely to be misguided or confused by the said trade names and looks of the defendant’s trade mark. I agree with the judgment of this court in Bigtree Entertainment Pvt. Ltd. vs. Brain Seeds Sportainment Pvt. Ltd. (supra) that 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.”.

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