The case of Moonshine Technology Private Limited vs. Tictok Skill Games Private Limited and Others was decided by the Delhi High Court regarding the trademark infringement of the plaintiff's registered trademark over the word "Baazi" by another gaming company using the word Baazi as a part of the poker game's title as "WinZoBaazi". The plaintiff claimed that the use of the word "Baazi" was infringing on the exclusive right owned by the plaintiff and as the services of the gaming apps were similar, it would have created confusion between the app users and the defendant would have taken unfair advantage of the plaintiff's right. Even though the plaintiff had filed the application three years after the constructive knowledge about the existence of the defendant, the balance of convenience was decided to be titled for the plaintiff as the defendant can continue their business with the registered trademark "Winzo" however the addition of the term "Baazi" shall cause injury to the business of the plaintiff.
The judgement focused on the 'balance of convenience' and whether there would be an irreparable loss or injury to the plaintiff and there was a prima facie case against the defendant. Balance of convenience refers to the relative merits of the parties' case and the computation of loss suffered by the parties and if parties have registered the trademark before the filing of the suit. Under the Indian context, the balance of convenience is decided on a relative case to case basis, comparing which party shall suffer a greater hardship in the infringement of trademark and if the injury caused is irreparable to the business concerned. The injury in question can be monetary, influence, or occupational, etc. The parties involved have to provide with prime facie existence of a case and balance of convenience.
Balance of convenience is dependent on several facets such as the nature of business the parties are involved in and the product of which the trademark has been infringed. If the nature of the business is critical in nature, the court shall allow the use of trademark as in the case of Cutis Biotech Sole v. Serum Institute of India Pvt. Ltd.. The product in question here was the distribution of the Covishield vaccine in the state. The plaintiff and the defendant had registered for the trademark of the word "Covishield" for a dietary supplement as well as a vaccine respectively. Common law principles were used in the adjudication of the case which mentioned the different uses of the products, the importance of the vaccine to prevent further Covid-19 infection, the different administration of the products as the vaccine shall not be available as an over-the-counter medication, etc. Due to the precarity of the situation, the court decided that the balance of convenience tilted towards Serum Institute in order to prevent confusion among the common population.
The balance of convenience can also be shifted and challenge the principles elucidated in the statutes. Section 17 of the Trade Marks Act has also clarified that the exclusive right to a trademark shall be available to the whole of the trademark only. Therefore, with reference to a part of a trademark, there shall be no exclusive rights to the trademark holder. In the case of Sri Tulasi Industries vs. Sri Sapthagiri Industries and Ors., the plaintiff was engaged in manufacturing and selling edible oil and had trademarked the term "Tasty Gold". The defendant, which was also engaged in the same industry, had filed for the trademark for the term "Tasty Drops". The court in this case decided that as the plaintiff's business shall be affected by the confusion caused by the similar names of the products, and so an injunction was granted against the use of term by the defendant.
There are instances where the cross-border reputation of a company is also claimed in order to file a suit against a trademark infringement, even if the company has not registered the trademark in the territory of India. Under Indian law, trans-border reputation of companies is claimed as a valid defence for the infringement of the trademark such as the Whirlpool case. In this case, the plaintiff had filed for infringement of the trademark solely on the fact that the company was well known in several countries. This was the contention presented in the case of Milmet Oftho Industries v. Allergan Inc. in which the international character of the medicine and the widespread new coverage by Indian media was claimed to be valid for filing for the infringement of the trademark. The court held that the company had no intention to enter the Indian market and the defendant had brought a change in the name to avoid trademark infringement, therefore the suit of injunction was dismissed.
Balance of convenience is therefore subjected to the facts of the suit and requires the application of common law and natural justice principles with the application of reasonable prudence. The balance of convenience should also include other facets such as geographical location of the companies with similar trademark and the rise of online market for the consumers. These above facets create a wide difference in the perception of the consumer and can prevent wrongful assessment of the balance of convenience.
The Shifting Balance Of Convenience Under Indian Trademark Law
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