Two notable trademark decisions out of the Delhi High Court today — Bigtree Entertainment v. Brain Seed Sportainment (by the proprietors of BookMyShow.com) and MakeMyTrip India v. Orbit Corporate Leisure Travels (by the proprietors of MakeMyTrip.com).
Remarkably, Ms Justice Gupta has found both Claimants unworthy of interim injunctions in cases that otherwise easily sail past the casual observer’s standard for deceptive similarity: BookMyShow against BookMy Sports and MakeMyTrip against GetMyTrip.
The latter case is a bit black against the Claimants for suppressing prior dealings with the Defendants and acquiescing to the Defendants running their website since 2011.
As such, a finding denying an interim injunction is defensible. What Ms Justice Gupta also endorses, however, is a position that compels a Claimant to take legal action against an infringer with a “substantial” and “not insignificant” market share in order to defend against acquiescence. This is a dangerous line to endorse in such general terms, and one that distracts significantly from the principal questions in an interim injunction inquiry.
The BookMyShow outcome, however, is genuinely difficult to justify.
It is based on the findings that the Claimant was not the first to adopt the words ‘bookmy’ as part of its domain, that trademarks are to be protected as a whole only, that the prefix ‘bookmy’ (which does not have a standalone meaning, of course) as part of ‘BookMyShow’ is “not an arbitrary coupling of English words” but is descriptive of online booking services, and that the Claimant’s BookMyShow trademark has not acquired distinctiveness.
Each of these findings is remarkable not only for how open they are to being factually contestable prima facie but how they are framed in a manner that almost certainly militates against a positive finding in favour of the Claimant in the absence of evidence. To highlight just a few possible lines to the contrary: why is the first port of call not a full deceptive similarity inquiry? If the Claimant’s trademark is to be protected as a whole only, what is the need to split the rival trademarks into prefixes and suffixes? Why, to revisit a grudge I’ve long held against running a straight comparative in such cases, is it relevant what other parties in the market are using as their trademarks? (And further, if it is indeed relevant, to what degree is it relevant?)
To find, therefore, as Ms Justice Gupta does, that there is insufficient material to support an interim injunction for the Claimant on the questions that have been framed only begs the question of whether the questions that have been framed for the purpose of entering this order can be answered in the form of a prima facie determination at all.
If they can be so answered, it leaves the considerable difficulty of ignoring, for reasons that are not clear, numerous other ways of framing the same inquiry which are more proximate to a regulation deceptive similarity inquiry. If they cannot be so answered, surely that is disloyal to the purpose of an interim injunction hearing.
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