BigBasket vs. Daily Basket
BigBasket has recently sent a ‘Cease and Desist Letter’ to Daily Basket asserting infringement of their brand name. BigBasket claims to be the biggest online food and supermarket in India while Daily Basket professes to be a little bootstrapped, Coimbatore-based, two-man start up. Daily Basket is an on-the-web/ disconnected staple startup presently just serving in Coimbatore.
The Cease and Desist Letter
BigBasket in its ‘Cease and Desist Letter’ stated that “the simple notice or reference of a name containing “basket” in word or logo structure for any internet business and related items are similar to BigBasket and hence Daily Basket should not be allowed to proceed with their business. Here most importantly, we should think about the utilization of the word “Basket” corresponding to online supermarket. The mark of the web-based business organization is to give clients an online cart in which they can add items for requesting, which would then be delivered to the clients. The word ‘Basket’ has been utilized for similar services by online supermarket Nature’s Basket since 2005, far before BigBasket even initiated its business. The utilization of “Basket” in its image or name isn’t just about as interesting and novel as BigBasket’s notice would make it appear.
What does the Act Say?
According to Section 2(1) (zb) of the Trade Marks Act, 1999, a ‘trademark’ signifies “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”
According to Section 29(2) of the Act, a registered trademark is infringed by an individual who utilizes a mark which “is likely to create confusion on the part of the general public, or which is likely to have an association with the registered trademark.” This provision aims to prevent the scope of confusion/deception with regards to the source or origin of products/services.
Keeping in mind the above provisions mentioned in the Trade Marks Act, 1999, we can safely say that there are no similarities between the BigBasket and Daily Basket marks except for the term “Basket” and also that the scope of confusion/deception with regards to source or origin of products/services is less likely.
Points of Contention
It has been held in the case of 1A Pharma GMBH v. The Joint Registrar Trade Marks by the IPAB that “while comparing marks, it is not correct to take a part of the word and compare it with a part of the other word; the entire mark must be considered as a whole and compared with the other mark as a whole”. This principle of considering the overall impression of the mark instead of the similarity/dissimilarity of one word within it applies to the case at hand since it is extremely unlikely that BigBasket and Daily Basket would either appear or sound confusingly similar to the average consumer.
It was noted by the IPAB in the case of Jones Investment Co v. Vishnupriya Hosiery Mills that size of business of the Plaintiff’s organization was irrelevant as long as the Defendant organization was able to prove that the use of their brand name would not cause confusion/deception in the minds of the public. This conveyed a clear message that trademark law ought not to be weaponised by enormous organizations to become detrimental to more modest firms.
Conclusion
Hence, while BigBasket’s size, benefits and presence throughout the nation legitimizes the assurance of its trademark rights, such right can’t be stretched out to exclusivity over words like “Basket”, which is descriptive and therefore might be joined with different words by owners to mark their own merchandise under an alternate imprint. This isn’t the first occasion where BigBasket has gone against brand names with the term ‘Basket’. It has also surprisingly gone for a trademark application for just the word ‘Basket’. It is pertinent to note that one might not be able to monopolize the term ‘Basket’ which is a common dictionary term and is not unique to any one entity.
Sajay Shrivaths
Junior Associate / IP Team