Appears To Be Dishonest Adoption Of Plaintiff's Trademark: Delhi High Court Grants Interim Protection To Owner Of "Baazi" Games

In a case concerning alleged trademarks infringement, the Delhi High Court granted an ad-interim injunction against the Defendants under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 unjustifiably using the trademarked word "Baazi" for its gaming services. Adjudicating on the argument of the Defendant regarding the descriptive nature of the word "Baazi" as non-violative of the Petitioner's trademark, Justice Asha Menon observed as follows: "To sum up, no reason for such adoption of the same word "Baazi" has been offered by the defendants except to claim that "Baazi" is a descriptive word. After all, the trademark of the defendants is WinZo. Where was the need to borrow the word used by the Plaintiff along with its registered trademark, if it was not for benefitting from the goodwill of the plaintiff's trademark?" Holding that dishonest use of trademark "Baazi" or a similar word by a competitor of the registered proprietor of the trademark would suffice to restrain such user, the Court allowed the application of the Plaintiff/the registered proprietor for ad-interim injunction till the disposal of the suit. Background Plaintiff made a case for the mark "Baazi" being a "well-known mark" as Plaintiff's services had attained worldwide recognition. Plaintiff, claiming to be a part of the Baazi Group of Companies and a leader in the gaming industry, was the registered proprietor of several marks with the word "Baazi." By way of Assignment Agreements with Baazi Networks Pvt. Ltd. and SDN Gaming Network Pvt. Ltd., Plaintiff obtained rights for the trademarks "BAAZI, POKER BAAZI, RUMMYBAAZI, BAAZI GAMES, BALLEBAAZI and associated trademarks (device). Plaintiff adduced the registration details of all associated marks. Plaintiff alleged that the Defendants had dishonestly adopted "Baazi" regarding gaming services. Therefore, they were passing off the goodwill and reputation of Plaintiff in its services. To establish that Defendant was the direct competitor of Plaintiff, Plaintiff evidenced that the Director of the Defendant company had been a customer of Plaintiff, knowing full well of its reputation in the industry. Specifically, the use of the word "Baazi" along with Defendant's mark "WinZo" was alleged to cause confusion in public. Therefore, the Plaintiffs prayed for restraining the Defendants from using the mark "Baazi" in their services. Application of Section 28 Section 28 of the Trademarks Act, 1999 vests the registered proprietor of the trademark the exclusive rights to using such marks about the goods or services for which the mark is registered. A prima facie case of validity or registered mark per Section 31 of the Act was established in this preliminary stage. The Court noted that Defendant had not challenged the validity of the registration by filing rectification proceedings before the Trademarks Registry. Application of Section 29 Section 29 of the Trademarks Act, 1999, provides for the infringement of trademarks. Assessing the credentials of the Petitioner's gaming services, the Court found a thriving business boasting of revenues touching Rs. 72 crores while expenditures being at nearly Rs. 32 crores. Thus, prima facie, the word "Baazi" had attained a brand distinctly associated with Plaintiff. On the other hand, Defendant had adopted the word "Baazi" in a subsequent period while launching its App "WinZo Baazi." The usage of the mark in the trademark sense, and not in the descriptive sense, as alleged by Defendant, was established as the Defendant had adopted the word "Baazi" only after some time of operation of the Defendant's platform, in dishonest conjunction with its original mark "WinZo." Defendant's creator had clearly intended to ride on the Plaintiff's goodwill, having once enjoyed its services as a customer of Plaintiff. The defendant had alleged that the word "Baazi," being descriptive, could not be registered as a trademark. Deliberating on the nuances of the word, the Court interpreted the Hindu/Urdu word as indicating "skill" or "strength" in a game. However, the same could not be apt to describe gaming or wagering services online or as a mobile App. There was nothing to establish that "Baazi" is commonly used in the industry. Thus, Plaintiff had creatively used "Baazi" for its trademark. Given the similarity of services of the Defendant and the Plaintiff, coupled with apparent infringement of the mark "Baazi" by Defendant, the Court applying Section 29(2)(c) read with Section 29(3), presumed that confusion would arise in the mind of a player as to the origin of services. Case for Injunction As the Court established prima facie infringement under Section 29 of the Act, the Court found granting the injunction to the Plaintiff in order. The Court following the Supreme Court in Renaissance Hotel Holdings INC versus B. Vijaya Sai (2022),...

Appears To Be Dishonest Adoption Of Plaintiff's Trademark: Delhi High Court Grants Interim Protection To Owner Of "Baazi" Games

Prateek Chakraverty

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