Most of the Trademark companies time and again just focus on per se availability search without considering the other Trademark rules pertaining to Trademark name selection. One such recent case is bookmyshow Trademark, where the Court said “BOOKMYSHOW” Has No Trademark Protection as It is said to be Descriptive:-
The High Court of Delhi has dismissed the application made by the trademark owner of “BOOK MY SHOW” and also refused to grant interim injunction leading to restrain in the use of prefix being ”BOOK MY” by “BOOKMYSPORT”. Basically, the application for injunction was made by Big tree entertainment private limited, being the registered owner of the trademark “BOOK MY SHOW”. It offers a platform of online portal called as www.bookmyshow.com, for booking e-ticket for movies; entertainment shows sports events and any other seasonal events.
This online portal was launched in the year 2010 and the plaintiff has secured various trademarks under the class 41 for BOOKMYSHOW word marks and logos, whereas the Brain Seed Sportainment Pvt. Ltd, herein referred to as ‘defendant’, was a corporate entity incorporated on 15th May,2015. Defendant’s website being- www.bookmysport.com,is an online flat form for booking sports facilities under the class 42, the plaintiff further stated that the trademark was deceptively similar to the plaintiff and can mislead their clients and hamper the goodwill of the established trademark , whereas the defendant stated that that their domain of activity being booking sports facilities is absolutely different from the plaintiffs domain except they both are engaged in facilitating online bookings and further stated that his trademark is visually, structurally, and conceptually different from plaintiff and is not likely to cause confusion or decevement.
The question whether a phrase is descriptive or invented was considered in great depth by the Supreme Court JR Kapoor vs. Micronix India 1994 Supp (3) SCC 215 had laid down the test for determining that whether a term was invented or been only descriptive. Exclusivity or monopoly cannot be claimed over a term which is descriptive of the activity in an industry and also we can say that the words which are descriptive of a particular industry cannot be said to be invented.
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In (1969) 2 SCC 716 F.Hoffmann-La Roche and Company limited vs. Geoffrey Manners and Co. Private Limited The supreme Court of India applied the principle of using the characteristics of the market in which the party operates as a test to determine the descriptiveness or inventiveness and also held that the words which are being descriptive of a particular industry cannot be said to be invented.
Now turning back to the present case, after the examination of the market in which the prefix is abundant and it further gives an impression that the prefix is not invented but a description of the type of the business. The phrase “BOOKMY” is a description of business that is involved in booking of the activities.
After considering the above principles, it was decided by Justice Mukta Gupta, as hereunder:- The defendant has placed on record many examples of other companies that operate with either same or similar domain prefix, and the plaintiff has to put on record evidence suggesting that the prefix being “BOOKMY” is only associated in the minds of the public with the plaintiff’s business. After considering the fact that the words “BOOKMY” are descriptive in Nature and plaintiffs trademark “BOOKMYSHOW” has not acquired a distinctive meaning therefore in no case for grant of injunction pending hearing of the suit is made out.
We hope now the concept of descriptive nature is clear, let us also further make it clear by way of few easy examples:
Word -Neer- will be considered descriptive for mineral water per se as Neer in hindi which is a vernacular language means water itself.
Word- Super Saree- will will be considered descriptive for sarees as it is a superlative term and is directly describing the quality of the related product.
So, always take an expert advice with proper Trademark search report not just a direct search before investing in your brand.
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