1. Home
  2. / Subject
  3. /Information Technology Law

BIG TREE ENTERTAINMENT V. SATURDAY SUNDAY MEDIA INTERNET, CS (COMM) NOS. 53/2015 AND 54/2015 (DEL)

BIG TREE ENTERTAINMENT V. SATURDAY SUNDAY MEDIA INTERNET, CS (COMM) NOS. 53/2015 AND 54/2015 (DEL)

FACTS

  • The plaintiff, "BOOKMYSHOW," is a prominent online ticket booking platform in India.
  • "BOOKMYSHOW" holds trademarks.
  • The company has gained significant market presence and reputation.
  • It has partnered with major events such as the Sunburn music festival in Goa, F1 races, and PVR Cinemas.
  • In October 2014, the plaintiff's employees discovered a website named "BOOKMYEVENT," operated by the defendant.
  • The plaintiff claimed that "BOOKMYEVENT" was too similar to "BOOKMYSHOW."
  • The plaintiff approached the court seeking a permanent injunction to stop the defendant from using "BOOKMYEVENT" or the prefix "BOOKMY" in their business name or website.

 

ISSUES

  1. Whether the prefix "BOOKMY" is a general term or has a distinctive meaning.
  2. Whether the plaintiff can claim an exclusive right over the term "BOOKMY."

 

CONTENTIONS

Plaintiff's Arguments:

  • The prefix "BOOKMY" has acquired distinctiveness and an exclusive right due to long-term use.
  • Bookmyshow has secured trademark registration for "BOOKMYSHOW" under classes 41 and 42.
  • Under Section 17 of the Trade Marks Act, the plaintiff argued that the trademark's registration confers exclusive rights to the use of the trademark as a whole, including its parts.

 

Defendant's Arguments:

  • The term "BOOKMY" is generic and used by many companies.
  • Evidence of various companies using similar prefixes was presented.
  • Both companies had worked together in events, indicating the non-distinctiveness of the term.

 

COURT REASONINGS

The court noted that a search report showing the use of "PP" by numerous companies indicates it is descriptive, not distinctive. Similarly, "BOOKMY" describes the business of booking tickets and is not distinctive.

  • Referencing, the court stated that despite the reputation, the term "BOOKMY" remains descriptive of the business and has not acquired a secondary meaning.
  • The court ruled that descriptive words relevant to the business cannot be considered invented. "BOOKMY" is generic and not an invented term.
  • As per Section 17 of the Trademark Act, the court compared the visual and phonetic elements of "BOOKMYSHOW" and "BOOKMYEVENT" and found them different enough to avoid confusion.
  • The court concluded that the plaintiff failed to make a prima facie case for an injunction.

 

JUDGEMENT

  • The court ruled that "BOOKMY" is a generic term and cannot be monopolized by the plaintiff.
  • The visual representation and phonetic elements of "BOOKMYSHOW" and "BOOKMYEVENT" are different enough to avoid consumer confusion.
  • The plaintiff's claim for an exclusive right over the prefix "BOOKMY" was denied, and the applications for an injunction were dismissed.