Delhi High Court - Orders
Sporta Technologies Pvt Ltd & Anr vs Banti Kumar Sharma & Ors on 19 April, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~41
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 227/2023
SPORTA TECHNOLOGIES PVT LTD & ANR. ..... Plaintiffs
Through: Ms. Shwetasree Majumder, Mr.
Prithvi Singh, Mr. Rohan Krishna Seth
and Mr. Varun Anand, Advocates.
versus
BANTI KUMAR SHARMA & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 19.04.2023 I.A. 7297/2023 (seeking exemption from filing originals, clear copies and documents with proper margins)
1. Exemption is granted, subject to all just exceptions.
2. Applicant shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Disposed of.
I.A. 7296/2023 (seeking leave to file additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
5. Applicant, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
6. Disposed of.
Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 1 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05I.A. 7295/2023 (u/ Section 151 of CPC for exemption from instituting pre- litigation mediation)
7. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.
8. Disposed of.
I.A. 7327/2023 (u/ Section 151 of CPC for exemption from advance service upon defendants)
9. Although Plaintiffs have sought an exemption from advance service of paper book on Defendants, nonetheless, service was effected on Defendants through email dated 18th April, 2023 and the date of listing of the present matter was also intimated. In fact, a response to the said email was received by Plaintiff from Defendants No. 1 to 3, copy whereof along with index dated 19th April, 2023 has been handed across the board and is taken on record. Accordingly, the present application is rendered infructuous.
10. Dismissed.
CS(COMM) 227/2023
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to Defendants by all permissible modes. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
1DHC Neutral Citation: 2022/DHC/004454.
Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 2 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:0513. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 20 th July, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues on 21st September, 2023. I.A. 7294/2023 (under Order XXXIX Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908)
16. The instant law suit concerns infringement and passing off of Plaintiffs' trademarks DREAM11, and [hereinafter "DREAM11 mark(s)"].
17. The case set out in the plaint is as follows: -
17.1. Plaintiff No. 1, is an Indian company engaged in operating an online fantasy sports platform under the DREAM11 marks since 2012. Plaintiff No.1 is a wholly owned subsidiary of Plaintiff No. 2, a U.S. based company. 17.2. Plaintiffs' fantasy sports platform, under the DREAM11 marks, is a hugely popular online multi-player game which involves the drafting of virtual teams comprising of real players of a professional sport. Points are earned basis performance of the players in real life matches and for each Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 3 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05 match, multiple contests are held for fantasy players to join. Thereafter, players with top teams are rewarded monetarily. The DREAM11 marks are registered in India across several classes. Details of registration of Plaintiffs' marks have been set out in paragraph 9 and 10 of the plaint. 17.3. Plaintiffs have been the 'official fantasy sports partner' of the International Cricket Council as also various sporting tournaments such as Indian Premier League [hereinafter "IPL"], KFC Big Bash League, Pro Kabaddi League and Indian Super League, among others. Plaintiffs also have a long-term deal with the ICC for its tournaments as the official fantasy sports partner. Television advertisements for DREAM11 were also broadcasted during the live telecast of all World Cup 2019 matches. 17.4. Plaintiffs signed a 'central sponsorship' contract with the Board of Control for Cricket in India [hereinafter "BCCI"] for the IPL from 2019 for a duration of four years and also acquired 'official partner rights' of BCCI for international and domestic markets in 2019. Plaintiffs were the title sponsors of IPL 2020, during which event, DREAM11 marks were promoted on player jerseys and tournament venues which were captured in the live coverage of matches. Television advertisements of DREAM11 were also broadcast throughout the IPL seasons of 2019, 2020 and 2021.
17.5. Plaintiffs have appointed various well-known cricketing personalities as part of their marketing and promotion campaigns, and some of the prominent cricketers playing in the IPL are Plaintiffs' official brand ambassadors.
17.6. As on date, Plaintiffs' mobile and online platform have over 15 crore users playing fantasy cricket, football, hockey, kabaddi, baseball, etc. and more than 1000 contests are organised on a daily basis.Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 4 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05
17.7. Defendants No. 1 to 3 adopted and are using the marks/ logos i.e., DEEP11/ DEEP11 FANTASY / [hereinafter collectively referred to as "impugned marks"] on their website, domain name, trade name and mobile application etc. Defendants No. 1 to 3's mobile application viz. "Deep11 Fantasy" [hereinafter "impugned mobile application"] is available for download from their website "www.deep11fantasy.com" [hereinafter "impugned website"] for Android users. Said application provides the identical service of fantasy sports as that of Plaintiffs. Copies of extracts of the impugned website and mobile application have been filed along with the plaint.
17.8. The Plaintiffs came across social media accounts of Defendant No. 2 on Facebook, Instagram, Twitter and YouTube which contain the impugned marks. The earliest posts/content on the said social media handles are as recent as February, 2022. Copies of extracts of said social media accounts are also filed along with the plaint
18. Ms. Shwetasree Majumder, counsel for Plaintiffs, states that the Plaintiff came across the impugned website in April 2023 and thereafter, when a search was conducted on the Trademark Registry website, they came across the registrations of impugned marks ' ' and 'DEEP11' (details of which have been provided at paragraph 29 of the plaint). Plaintiffs have already initiated cancellation proceedings against the registration of aforesaid Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 5 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05 marks which are pending adjudication.
19. She further submits that the adoption of impugned marks by Defendants No. 1 to 3 is completely dishonest and mala fide. Plaintiffs' DREAM11 marks have acquired substantial goodwill over the last decade whereas Defendants No. 1 to 3 are recent entrants in the market. Through their impugned website and mobile application, Defendants No. 1 to 3 are providing the identical services as that of Plaintiffs. The impugned marks are structurally, conceptually and phonetically similar to Plaintiffs' DREAM11 marks. Defendants No. 1 to 3's use of the impugned marks would inevitably cause confusion and divert customers to the impugned website and mobile application, and also create an impression of association with the Plaintiffs.
This would cause grave commercial harm to Plaintiffs especially since the IPL 2023 tournament has just begun resulting in an increased participation in fantasy sports. Impugned marks were evidently adopted by Defendants No. 1 to 3 with the intention to pass off their services as that of Plaintiffs' services and, to ride upon the reputation and goodwill acquired by Plaintiffs' DREAM11 marks. Notwithstanding, the registration of the two aforementioned impugned marks, Defendants No. 1 to 3 should be restrained from using the impugned marks.
20. The Court has considered the aforenoted submissions. Defendants No. 1 to 3 were served with an advance copy of the paper book and were duly informed of the hearing in the present suit but they have chosen not to join the present proceedings. Plaintiffs have acted with due consideration to ensure that Defendants No. 1 to 3 gets an opportunity to put forth their stand before the Court. By remaining absent, Defendant No. 1 to 3 have waived their right to contest the issuance of summons and the ex-parte injunction.
Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 6 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:0521. 'DEEP11' forms the dominant part of the impugned marks. The minor differences are inconsequential. This renders the impugned marks prima facie deceptively similar to that of Plaintiffs' DREAM11 marks. It is apparent that Defendants No. 1 to 3 through their adoption of impugned marks are attempting to come as close as possible to Plaintiffs' DREAM11 marks. The impugned marks are being utilised for providing services which are identical to that of Plaintiffs. The use of such marks is only to pass off their services and products as that of the Plaintiffs. Thus, in the opinion of this Court, such similarity can lead to confusion amongst the public at large, which would cause grave prejudice, irreparable loss and immense commercial harm to Plaintiffs, especially in light of the ongoing IPL tournament which piques the interest of audiences towards fantasy sports platforms. In view of the above, Court is satisfied that Plaintiff has made out a prima facie case. Balance of convenience also lies in the favour of Plaintiffs.
22. Considering the above, till the next date of hearing, the following directions are issued: -
(i) Defendants No. 1 to 3, their employees, representatives and/or others acting for and on their behalf are restrained from using the mark 'DEEP11', 'DEEP11 FANTASY'/ or any other mark which is deceptively similar to Plaintiffs' DREAM11 marks, as a trademark, tradename, domain name or on social media, email addresses or in any other manner.
(ii) Defendants No. 1 to 3 are directed to take down all their social media pages including but not limited to Facebook, Instagram, Twitter and YouTube Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 7 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05 where they are using the impugned marks.
(iii) Defendants No. 1 to 3 are also directed to take-down and/ or remove the impugned mobile application, 'Deep11 Fantasy'.
(iv) Defendant No. 4 [GoDaddy.com LLC] is directed to suspend access to the domain name, "www.deep11fantasy.com" and maintain status quo with respect to the ownership of the said domain name.
23. Compliance of Order XXXIX Rule 3 of CPC be done within three days from today.
24. List before the Court on 21st September, 2023.
SANJEEV NARULA, J APRIL 19, 2023 nk Signature Not Verified Digitally Signed CS(COMM) 227/2023 Page 8 of 8 By:SAPNA SETHI Signing Date:20.04.2023 16:13:05