Dream11 v Dreamz 11- Delhi High Court Grants Permanent Injunction To Plaintiff Against Defendant’s Use Of Dreamz 11 In Trademark Infringement Suit
|The Delhi High Court granted a permanent injunction to Plaintiff- Dream 11 against the use of Mark Dreamz11 on the ground that Defendant’s website and mobile application were, deliberately and intentionally, similar to that of Plaintiff.
The Court allowed the Petition filed by Plaintiff against the website and mobile app of Defendant which were eerily similar. The Court noted that both the Pianotist test and the triple identity test were satisfied and therefore, the Court held that Defendants were liable for infringement under Section 29(2)(b) of the Trade Marks Act 1999 (Act).
Justice C. Hari Shankar observed, “In view of the similarities between the plaintiffs’ and defendants’ marks, the fact that they are used for providing identical services and the consequent likelihood of confusion on the part of the consumer, a clear case of infringement within the meaning of Section 29(2)(b) of the Trade Marks Act 1999 is made out”.
“If we apply the aforesaid test, given the fact that the plaintiffs’ and defendants’ services are both accessed by persons who want to participate in fantasy games, there is every likelihood of confusion, in the mind of such persons, between the marks “dream11.com” and “dreamz11.com”, the only difference the two marks being the terminal “z”. The website are even more confusing, being www.dream11.com and www.dreamz11.com”, the Court noted.
Advocate Rohan Seth appeared for the Plaintiff and Advocate Tanya Choudhary appeared for the Defendants.
The First and Second Plaintiffs were the registered owners of the "Dream11" trademark and provided access to fantasy games through their website. The Defendants also provided the services of fantasy games through their website, which was allegedly similar to that of the Plaintiffs. The Defendants' use of the trademark "Dreamz11" and a similar website design has led to allegations of trademark infringement. The Plaintiffs had sent notices to the defendants, calling on them to desist from infringing their registered trademark, but received no response.
Aggrieved, the Plaintiffs approached the Court by way of a Commercial Civil Suit seeking a permanent injunction against the Defendants from using the trademark Dreamz11 across all online platforms.
The Court referred to the case of Re: Pianotist Application [(1906) 23 RPC 774] and noted that the facts of the case satisfy the Pianotist test. The Court reiterated that while applying the test, the appearance and sound of the trademark must be considered, along with the specific goods it will be used for and the nature of the customer likely to purchase those goods. The Court further reiterated that the surrounding circumstances must also be taken into account, including the likelihood of confusion in the mind of the public if similar trademarks are used for similar goods. Furthermore, the Court also applied the triple identity test and held that the facts also satisfy the ingredients of the test.
Additionally, the Court held that the confusion between the two websites and mobile apps was exacerbated by the look and feel of the Defendants’ website which, obviously, deliberately, and intentionally, had been made to copy the Plaintiffs’ website. The Court, therefore, held that there was a clear and transparent intent, on the part of the Defendants, to imitate the Plaintiffs.
“In view of the similarities between the plaintiffs’ and defendants’ marks, the fact that they are used for providing identical services and the consequent likelihood of confusion on the part of the consumer, a clear case of infringement within the meaning of Section 29(2)(b)4 of the Trade Marks Act 1999 is made out”, the Court observed.
Furthermore, the Court noted that the Defendants, despite the issuance of notices, failed to submit a written statement, and therefore, the right of the Defendants to file written statements was depleted. The Court held that the Plaintiffs were entitled to be compensated and hence listed the matter before the Taxation Officer of the Court on November 10 for the Plaintiffs to submit statements of costs.
The Court observed, “In these circumstances, let the matter be listed before the concerned Taxation Officer of this Court on 10 November 2023, before whom the plaintiffs would appear and provide the statement of costs. The taxation officer would compute the actual costs incurred by the plaintiffs, to which the plaintiffs would be entitled from the Defendants 1 and 2... Costs as computed by the Taxation Officer would be paid within a period of four weeks of computation”.
Accordingly, the Court allowed the Petition and the prayer for a permanent injunction against the Defendants.
Cause Title: Sporta Technologies Pvt. Ltd. And Anr. v Dreamz11 And Anr. (2023:DHC:7811)