In the present case of Sporta Technologies Pvt. Ltd. & Anr. v. Roberta Gaming Pvt. Ltd. & Anr., C.S. (Comm.) 560/2021, the High Court of Delhi elucidates the importance of a trademark for a brand’s goodwill and how the same should be protected from unlawful infringement.
Sporta Technologies Private Limited is an Indian subsidiary of Dream Sports Inc. (hereinafter jointly referred to as the Plaintiff), a United States-based company. The Plaintiff registered the domain name ‘www.dream11.com’ in 2008 and thereafter launched its online gaming platform after four years, in 2012. The Plaintiff named the said gaming platform ‘Dream11’, which got registered as a trademark in India, in several forms of logos.
Since then, the Plaintiff has been the official fantasy sports partner of the International Council of Cricket, Vivo Indian Premier League, National Basketball Association, and many other renowned sports leagues and organizations. Besides, the Plaintiff also acquired the official partner rights of the Board of Control for Cricket in India, for international and domestic matches since the year 2019. Over time, the Plaintiff’s brand has been represented by several eminent sportsmen.
Recently, in September 2021, the Plaintiff came across two websites- ‘www.fandream11.in’ and ‘www.fandream11.com’ which were deceptively similar to the domain name of the Plaintiff’s website. The former website claimed that ‘Fandream11’ is a product of Roberta Gaming Private Limited (hereinafter, Defendant No. 1) and the latter website was said to be owned by the Defendant No. 2 (hereinafter jointly, Defendant), disguised as a fantasy sports operator under the same trademark of ‘Fandream11’.
The Plaintiff claimed that the Defendant had made unauthorized use of the Plaintiff’s trademark ‘Dream11’ and that they cannot be exonerated of their liability arising out of such infringement, by the mere addition of a prefix to the registered trademark name.
The Plaintiff filed the aforementioned suit before the High Court of Delhi (hereinafter, the Court) under Order 39, Rule 1 and 2 read with Section 151 of The Code of Civil Procedure, 1908, seeking permanent injunction to restrain the infringement of the Plaintiff’s registered trademarks, passing off, delivery up, damages, rendition of accounts, etc.
ISSUE BEFORE THE HIGH COURT
Whether the Defendant’s mark ‘Fandream11’ has infringed the Plaintiff’s trademark of ‘Dream11’ under Section 29(2)(b) of the Trade Marks Act, 1999 (hereinafter, the Act)?
CONTENTIONS OF THE PARTIES
The Plaintiff contended that the Defendant No. 1’s website used the mark ‘Fandream11’ and also in an unauthorized way used the trademarks and logos of IPL teams and the images of exclusive Brand Ambassadors of the Plaintiff. The Plaintiff also drew attention to the fact that the said platform also indulges in the facilitation of illegal practices like betting across several sports, including cricket and football, by redirecting the users to the website ‘www.uwin55.in’ when they click on certain tabs such as “Cricket”, “Olympics” or “Offers”. Furthermore, the Defendant No.2’s website logo was also deceptively similar to the Plaintiff’s logo.
The Plaintiff claimed that the aforementioned acts amount to trademark infringement under Section 29(2)(b) of the Act which stipulates that a registered trademark is infringed when a non-registered proprietor uses a similar trademark and due to such similarity to the registered trademark, and/or because of engagement in a similar service, such unregistered usage is likely to cause confusion in the minds of the public or gives an impression of association with the registered trademark.
The Plaintiff asserted that the Defendant has added the term ‘Fan’ as a mere prefix to their marks ‘Fandream11’, which essentially shows resemblance to the Plaintiff’s trademark ‘Dream11’ and therefore infringes the same.
Owing to the similarity of the names, it can be considered that the public will assume these impugned websites of the Defendant to be associated with the Plaintiff’s brand, thereby tarnishing the Plaintiff’s reputation and image, and consequently, the brand’s trademark. Therefore, in the light of the same, the Plaintiff strongly contended that such prefix cannot absolve the Defendant of their liabilities arising out of a trademark infringement.
DECISION AND FINDINGS
The Court passed an interim order restraining the Defendant from using the impugned mark ‘Fandream11’ or a similar variant of the same in any manner, including on any social media platforms and email which would, in turn, infringe the Plaintiff’s ‘Dream11’ trademark or would result in passing off the Defendant’s services as that of the Plaintiff.
The Court also directed the leading internet domain registrar GoDaddy.com to suspend the domain name registrations of www.fandream11.com and www.fandream.11.in of the Defendant.
The Section 28(1) of the Act confers the registered proprietor with the exclusive right to use the trademark and to obtain relief in the event of a trademark infringement. In the present matter, the similarity between the trademarks was such that not restraining the impugned websites would amount to violating the trademark rights of the Plaintiff.
Previously, there have been several matters concerning the Plaintiff wherein “Dream11” was subjected to trademark infringement, primarily due to the brand’s significance in the sports industry. The Court’s decision of granting the injunction, in this case, aids the Plaintiff’s reputation and goodwill from stooping as low as being associated with illicit gambling.
When illegitimate websites express a false association with well-known trademarks like ‘Dream11’, they make immense profits in a short period of time. Therefore, restraining such websites and brands as early as possible is crucial to limit and prevent further harm which may be caused to the other party.
–Team AMLEGALS assisted by Ms. Vandana Shrivastava (Intern)
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