The Bombay High Court vide its order dated January 16, 2018 restrained Grace India Sports Pvt. Ltd (GISPL) from using BCCI’s registered trademark ‘IPL’ and ‘IPLTwenty20’. [Read order here].
The Board of Control for Cricket in India (BCCI) had filed a suit and an application for urgent interim reliefs against GISPL in November last year, saying that it had sent a “cease and desist” notice to GISPL in 2016 itself, after which they had stopped their activities. However, the BCCI contended that in August last year, it came to know about GISPL’s efforts to renew the league. The Plaintiff learnt that the Defendant was using the domain name www.ijplth.com to advertise and promote their tournament under the trade mark IJPL T20. The Plaintiff submitted that while the Defendant was no longer using the impugned domain name www.juniorsipl.com and/or that the impugned domain name www.juniorsipl.com and that though the Defendant was now using the aforesaid domain name www.ijplth.com, the domain name www.ijplt20.com was still active and that on visiting the domain name www.ijplt20.com, the Plaintiff was directed to the domain name www.ijplth.com and on being directed to the said domain name www.ijplth.com. Further, the Defendant continued to refer to its tournament as IJPL T20.
The Plaintiff submitted that the Defendant’s impugned trade mark IJPL/ IJPL T20 and the impugned domain names www.ijplt20.com, www.juniorsipl.com and www.ijplth.com are visually, structurally, phonetically, aurally, closely and deceptively similar to the Plaintiff’s trade mark IPL bearing Registration No. 1656216 in Classes 16, 18, 22, 25, 28, 32, 35, 37, 39, 41 and 42, and Registration No. 1760385 in Class 09, and the Plaintiff’s trade mark IPLTwenty20 bearing Registration Nos. 1760386 and 1760387, both in Class 09; The Plaintiff further alleged that the impugned trade mark and the impugned domain names, both contain the whole of the Plaintiff’s registered trade mark IPL and that the Defendant is using the impugned trade mark and impugned domain names in respect of identical/ similar services/ goods as those in respect of which the Plaintiff is using its well-known trade marks IPL/ IPLTwenty20 and in respect of which the Plaintiff has secured registration of its IPL trade marks. The Plaintiff submitted that, the Defendant has infringed and is continuing to infringe the Plaintiff’s trade mark IPL.
Justice S.J. Kathawalla was of the view that the Plaintiff had satisfied the ingredients required for an interim injunction i.e. prima facie case for grant of reliefs for infringement of trademark and passing off, irreparable injury and balance of convenience and accordingly granted the injunction in favour of BCCI
Operative part of the order reads:
“(a) That the Defendant by itself, its directors, employees, servants, agents, dealers, distributors and all persons claiming under it be restrained by a permanent order and injunction of this Hon’ble Court from infringing the Plaintiff’s said registered trade mark IPL bearing Registration No. 1656216 in Classes 16, 18, 22, 25, 28, 32, 35, 37, 39, 41 and 42 and Registration No. 1760385 in Class 09, and the Plaintiff’s said registered trade mark IPLTwenty20 bearing Registration Nos. 1760386 and 1760387,
both in Class 09 by the use of the impugned trade mark IJPL/ IJPL T20 and the impugned domain names/ websites www.ijplt20.com, www.juniorsipl.com and www.ijplth.com and/or any other trade mark and/or domain name/ website containing the Plaintiff’s said trade mark IPL or any other trade
mark identical with and/or deceptively similar to the Plaintiff’s registered trade marks IPL/ IPLTwenty20 in respect of the same/similar services and/or goods as those in respect of which the Plaintiff has secured the aforesaid registrations or in any other manner whatsoever;
(b) That the Defendant by itself, its directors, employees, servants, agents, dealers, distributors and all persons claiming under it be restrained by a permanent order and injunction of this Hon’ble Court from rendering, offering, promoting or advertising the impugned services and/or the impugned goods and/or the like services and/or goods under the impugned trade mark IJPL/ IJPL T20 in any medium, including (but not limited to) through the impugned domain names/ websites www.ijplt20.com, www.juniorsipl.com and www.ijplth.com and/ or any other trade mark and/ or domain name/ website containing the Plaintiff’s said well-known trade marks IPL/ IPL Twenty20/ IPLT20 or any other trade mark identical with and/or deceptively similar to the Plaintiff’s said well-known IPL trade marks so as to pass off or enable others to pass off the impugned services, goods and/or business as and for the well-known services and/or activities of the Plaintiff or in any other manner whatsoever”.
Image source: here
