Delhi High Court - Orders
Head Digital Works Private Limited vs Tictok Skill Games Pvt Ltd on 6 September, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~9 & 30
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 301/2022 & I.A. 7251/2022
HEAD DIGITAL WORKS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Himanshu Vij, Advocate.
(M-99106000266)
versus
TICTOK SKILL GAMES PVT LTD ..... Defendant
Through: Ms. Anjali Tiwari & Mr. Rommel
Khan, Advocate.
30 AND
+ CS(COMM) 613/2021 & I.A. 15715/2021, 15716/2021, 15718/2021,
15719/2021
TICTOK SKILL GAMES PVT LTD ..... Plaintiff
Through: Ms. Anjali Tiwari & Mr. Rommel
Khan, Advocate.
versus
HEAD DIGITAL WORKS PRIVATE LIMITED ..... Defendant
Through: Mr. Himanshu Vij, Advocate.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 06.09.2022
1. This hearing has been done through hybrid mode.
2. The present suit seeking permanent and mandatory injunction has been filed by the Plaintiff- Head Digital Works Pvt. Ltd. (hereinafter "Head Digital") against the Defendant- TickTock Skill Games Pvt. Ltd. (hereinafter "TickTock") in respect of Head Digital's marks 'Ace2three', 'A23' and related marks. A cross suit between these parties being CS(COMM) 613/2021 titled TickTock Skill Games Pvt. Ltd. v. Head Digital Works Pvt. Ltd., in respect of TickTock's marks 'WinZO' and 'WinZO Games', is also pending before this Court. These suits relate to the use by Head Digital and TickTock Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 301/2022 & CS(COMM) 613/2021 Page 1 of 5 Signing Date:07.09.2022 16:11:43 of each other's respective trademarks as 'keywords' on online platforms, including in AdWord programs on search engines and IOS application store.
3. In CS(COMM) 301/2022, Head Digital is engaged in the business of designing and developing software related to games of skill, deploying and maintaining an online gaming website and a mobile application via the internet. It operates and provides the said services through its website www.a23.com and its mobile application 'A23'. This suit has been filed by Head Digital to protect its marks 'Ace2three', 'A23', and related marks which are registered as trademarks under classes 9, 18, 28, 35, 36, 38, 41, and 42, since 2006. It is the case of Head Digital that in February, 2022, it came to its knowledge that TickTock was using Head Digital's marks 'A23' and 'Ace2three' as 'keywords' as keywords by TickTock on the Apple Application Store.
4. In CS(COMM) 613/2022, TickTock is a digital gaming and technology company, which operates an online digital gaming platform under its mark and brand name 'WINZO'. TickTock is stated to be a pioneer in the online gaming industry, being the first company to provide a platform where users can play games of skill and win real tangible prizes. Tick Tock's marks 'WINZO', 'WINZO GAMES', and related marks are registered under Classes 38, 41, and 42, since 2017. It is the case of TickTock, that in November, 2021, it came to its knowledge that Head Digital was using TickTock's mark as 'keywords' on the Google search engine.
5. In CS(COMM) 613/2022, vide order dated 30th November, 2021, Head Digital was restrained from using TickTock's marks on its websites/ web advertisements/ etc. The said order reads as under:
"12. In view of the submissions made and the documents Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 301/2022 & CS(COMM) 613/2021 Page 2 of 5 Signing Date:07.09.2022 16:11:43 placed on the record, this Court is of the view that the plaintiff has disclosed a prima facie case in its favour as admittedly, the defendant has its own brand called "A23"
whereas in the advertisements, the words that are first used are "WinZo" and "WinZo Games" leading to an impression that they are conneeted to the plaintiffh. If despite the Cease and Desist Notiee, the defendant has only split the word "WinZo" into "Win Zo" it would also refleet that they are still gaining from this misrepresentation, obviously at the eost of the plaintiff.
13. In these eireumstances, till the next date of hearing, the defendant is restrained from using the word "WinZo" and "WinZo Games" or its variants, on its website or web advertisements as seen in the doeuments and extracts in the plaint plaeed on the reeord by the plaintiff."
6. In CS(COMM) 301 of 2022, as recorded in order dated 10th May, 2022, TickTock agreed to abide by its statement to not use Head Digital's marks as AdWords/keyword/metatags/etc. Vide the same order, this Court had considered the history of litigation between the parties and had directed that the parties ought to explore amicable resolution of disputes. The said order reads as under:
"10. There would, in fact, be no difference in the use of trade marks as a keyword on search engines as opposed to use as a keyword on App store searches. So long as the key words are being used for promoting a business, using a competitor's trade mark, the same would be violative of the rights of the trade mark owner.
11. Considering the history of litigation between the parties as also the order in MakeMyTrip (supra), the invisible use of the Plaintiffs mark as an 'adword' or 'keyword' on any online platforms by the Defendant would be violative of the Plaintiffs rights in the marks.
12. Since, the Defendant states that it is not using and does Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 301/2022 & CS(COMM) 613/2021 Page 3 of 5 Signing Date:07.09.2022 16:11:43 not intend to use the said marks as 'adword' or 'keyword', it is directed that the Defendant shall abide by the said stand and not use the marks 'A23' and 'Ace2three' or any other variants/formative mark thereof as an adword, keyword, meta tag, or domain name, with or without space on any of the online search engines or application-based search platforms including Apple Application Store etc."
7. Today, the parties submit that the disputes in both the suits have been settled vide settlement agreement dated 10th August, 2022, entered into between the parties under the aegis of the Delhi High Court Mediation and Conciliation Centre and the settlement agreement is on record.
8. At the outset, it is brought to the Court's notice that CS(COMM) 613/2022 is listed before the ld. Joint Registrar today. In view of the settlement, the said matter has been called to be listed before this Court today along with the present matter.
9. The terms of settlement as per the agreement entered into between the parties are as under:
"1. The Parties hereby agree as follows:
i. The First Party undertakes to comply with the Order dated 30.11.2021 passed by the Hon'ble High Court in TSG Suit. The First Party agrees that the First Party will not, whether directly or indirectly, through any related person or entity, use TSG's Trademarks in any manner whatsoever.
ii. Similarly, the Second Party undertakes to comply with the Order dated 10.05,2022 passed by the Hon'ble High Court in HDW Suit. The Second Party agrees that the Second Party will not, whether directly or indirectly, through any related person or entity, use HDW's Trademarks Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 301/2022 & CS(COMM) 613/2021 Page 4 of 5 Signing Date:07.09.2022 16:11:43 in any manner whatsoever.
2. The First Party and Second Party have agreed that the Parties will file applications seeking withdrawal of the TSG Suit and HDW Suit in terms of the settlement arrived at between them."
10. In terms of the settlement extracted above, the parties have agreed to abide by the interim orders dated 30th November, 2021 and 10th May, 2022 passed in the respective suits. paragraphs 1 & 2 of the settlement agreement, both parties have agreed not to claim any damages/cost/legal fee.
11. The Court has perused the terms of the said settlement and the same are lawful. The settlement agreement has been signed by the authorized representatives for the parties. The mediation report informing of the settlement is also signed by the counsels for the parties and the ld. Mediator.
12. In view of the settlement agreement and the report of the Mediation Centre, binding the parties to the terms of settlement recorded above both suits are dismissed as withdrawn. All parties and all others acting for or on behalf of the parties shall be bound by the terms of the agreement.
13. All pending applications, in both the suits are also disposed of.
PRATHIBA M. SINGH, J SEPTEMBER 6, 2022 HK/MS Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 301/2022 & CS(COMM) 613/2021 Page 5 of 5 Signing Date:07.09.2022 16:11:43