Introduction
BigBasket served a ‘cease and desist’ notice to a nascent startup Daily Basket operating in the same space. They have alleged Daily Basket for trademark infringement-cum-passing off as well as misuse and violation of trade dress. They have claimed in their notice that their sub-brand and logos have received recognition. Also, the reference to the word “basket” in any form for any e-commerce business may be perceived and understood by the consumers that it is associated with the brand BigBasket/BigBasket.com. They also alleged that Daily Basket has copied their website layout and mobile app (with insignificant minor changes). In reply to this, Daily Basket responded by creating a website bbisabully.com and publicly discarding their claims.
Infringement-Cum-Passing Off?
Trademark law recognizes both common law rights as well as statutory rights. The trademark owner can exercise statutory rights for infringement of a registered trademark and common law rights for passing off an unregistered mark.
Thus, a trademark has to be registered for infringement otherwise the owner can file an action for “passing off” only. The trademark of BigBasket is registered in various classes. Therefore, there can be an action for infringement-cum-passing off.
Infringement
The hallmark of a trademark infringement action is consumer confusion, which is to be judged from the eyes of an average intelligent consumer. Section 29 of The Trademarks Act, 1999 allows for action on infringement of the registered trademark.
When an identical/deceptively similar trademark is used in relation to identical goods having an identical trade channel then there is an infringement of a trademark. This is called the Triple Identity Test. The main element here is to identify the similarity between the marks as both the trademarks are used in relation to identical goods, i.e., grocery and also have identical trade channel, i.e., website and apps.
Anti–Dissection Rule and Identification of Dominant Mark Rule
As BigBasket has claimed infringement with reference to the word basket which is a component of their composite trademark, it is imperative to know that a part of a trademark can be infringed or not. These rules have been discussed in the case of M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr.
A composite mark has more than one element. The anti-dissection rule means that the trademark would have to be considered in its entirety as an indivisible mark. It shouldn’t be truncated or dissected into its component for making a comparison with the corresponding parts of a rival mark.
Next, to consider the marks independently the rule of identification of the dominant part is also applied. If the dominant part is similar, then it would amount to infringement otherwise not. However, it is considered that it is a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark.
The law clearly states that one cannot dissect the trademark to determine the likelihood of confusion. Therefore, BigBasket cannot allege Daily Basket for infringement of trademark of the word basket as they have to consider the word in its entirety. Also, even after applying the identification of the dominant mark rule their claim would fail. Basket is a commonly used term that cannot be said to be the dominant word for considering infringement.
What are Deceptively and/or Confusingly Similar Marks?
The next question which arises is how to identify deceptive similarity in a passing-off action. In Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, the Supreme Court identified few factors as relevant for deciding this question. The nature of the marks, degree of resemblance including phonetical similarity, nature of goods, class of purchasers, mode of purchasing the goods or placing orders for the goods and relevant surrounding circumstances, etc. The court concluded stating that the aforesaid factors are subjective in nature.
The marks are word marks, both of them have the last word common (basket) and they include a generic term in their mark (big and daily). The logo of both the mark doesn’t seem similar to the colour, style of writing, image, graphics, and the word used is visibly different.
However, the nature of the goods sold, the mode of purchasing is similar. Also, Daily Basket is Coimbatore based on nascent startup delivering only in Coimbatore whereas BigBasket has spread across PAN India.
The Supreme Court in the case of F. Hoffmann-La Roche & Co. Ltd v. Geoffrey Manners & Co. Pvt. Ltd held that the word DROPOVIT is not deceptively similar to the word PROTOVIT. It was stated that there is no reasonable probability of confusion, whether from a visual or phonetic point of view. The terminal syllable ‘-vit’ in the two marks was both descriptive and common to the trade, but the letters ‘D’ and ‘P’ in DROPO and the corresponding ‘P’ and ‘T’ in PROTO, which could not possibly be confused in pronunciation, made the words sufficiently dissimilar.
In the present case both the term contains the word “basket” which is common to trade and there’s no similarity with respect to the initial words (Daily and Big). Therefore, we can conclude that the word Daily Basket is not similar to the word BigBasket.
Descriptive Use of a Trademark
The words which are descriptive in nature have to acquire secondary meaning to qualify for protection. The court in the case of Cadila Healthcare Ltd. v. Gujrat Co-Operative Milk Marketing Federation Ltd & Ors. held that the use of a descriptive expression such as SUGAR-FREE as a trademark by a trader does not entitle such trader from precluding others from using the said expression for the purposes of describing the characteristic features of their products.
Also, in the case of Marico Ltd. v. Agrotech Foods Ltd., it was held that the expression LOW-ABSORB is a combination of two popular English words which are descriptive of the nature of the product insofar. Further, it was stated that those who adopt such descriptive terms as trademarks must be discouraged from appropriating such terms and claiming exclusive rights over the same.
There is no second thought that the mark BigBasket/BigBasket.com has acquired a reputation in the market in the past 10 years. The main question that arises here is whether BigBasket has acquired goodwill over the word “basket”? The word “basket” is a commonly used word having a descriptive nature. Also, this word in the Indian market was first used by Nature’s Basket, a retail venture set up by the Godrej Group in the year 2005. This proves that it was used way before BigBasket even existed and for similar goods through a similar trade channel. The word BigBasket in itself is a generic and descriptive term, thus questioning the word’s distinctiveness.
Copying of the Website?
BigBasket not only alleged trademark infringement but also alleged copying their website’s trade dress. They throughout the cease and desist notice have claimed that Daily Basket has copied the layout and getup of their website.
In The Himalaya Drug Company v. Sumit, the Delhi High Court provided trade dress protection to protect the Plaintiff’s website. It was decided because the database was unique and distinctive and if the same appeared elsewhere, it would lead to confusion in the minds of the consumers. The aggrieved party can sue for passing-off.
Also, in BlueNile, Inc. v. Ice.com, Inc, the court suggested that the look and feel of websites can be protected as trade dress under the trademark law. In India generally trade dress is restricted for the protection of products.
The element of a computer program through which users interact with various other features called a Graphical User Interface (“GUI”). The look and feel of GUI can also be protected under the Copyrights.
In the case of R.G. Anand v. Delux Films, the Supreme Court provided the clearest exposition of the test of substantial similarity. They stated that infringement depends upon factors such as similarities in fundamental or substantial aspects of the mode of expression and the similarities must be substantial and material.
In this case, the effect test was adopted. The importance was given to the effect of the copying on the spectator, viewer, or reader. The question was whether such a person form an impression that Defendant has copied Plaintiff’s work? Thus, introducing a significant amount of subjectivity in the test.
Daily Basket in the website bbisabully.com has done side by side graphical comparison of both the websites and app interface. A cursory glance of these comparative images and after meticulously scrutinizing these images, it can be said that the interfaces are not similar. There are minor similarities that can be seen in other apps performing similar functions such as Grofers, Amazon Pantry, Jiomart, etc. The text used, the arrangement of various features are quite different.
Conclusion
In light of the above analysis, we can conclude that the claims of BigBasket are not so strong. If the matter goes to trial then BigBasket will have a hard time proving their claims. This is not the first time that BigBasket has done such opposition. The act of BigBasket of not allowing small companies to use such generic and descriptive term resembles trademark bullying. Also, this word has been used by Nature’s Basket of Godrej before BigBasket. The website and the interface of both the apps are distinguishable, therefore the claims of copying of the website are not sufficient.
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