15 Jun 2022

Head Digital Works Private Limited vs Tictok Skill Games Pvt Ltd


The plaintiff in the present suit is in the business of developing software related to online gaming and mobile applications and has filed the suit to protect its registered marks ‘Ace2three’ and ‘A23’ from being used as ‘keywords’ by the Defendant company on the Apple App Store. The Plaintiff's marks are said to represent India's first ever online rummy platform and are related to online gaming platforms managed and controlled by the Plaintiff.


The plaintiff contended that when a user searches on the App Store for 'A23' or 'Ace2three,' the top search result in the advertisement section is for the Defendant's app 'WinZO Games.' The Plaintiff relied upon Tictok Skill Games Private Limited. v. Head Digital Works Private Limited filed by the Defendant in the present suit with respect to the use of the marks ‘WinZO’, ‘WinZO Games’ as a meta tag/title tag by the Plaintiff. The court in the cited judgment had restrained the Plaintiff from using the subject mark or its variants on their website and web advertisements.


While denying the Plaintiff’s contentions, the defendant claims that Defendant “has not and does not intend to use the Plaintiff’s marks ‘A23’ or ‘Ace2three’ as an adword, keyword, or metatag”.


The Hon’ble Delhi High Court, relied on its judgment in MakeMyTrip India Private Limited v. Booking.com B.V., wherein the issue before the Court was the use of a mark as keywords on a search engine. In light of the pending suit and countersuit between the parties, the Court referred the case to the Delhi High Court Mediation and Conciliation Centre and held that,

  1. There is “no difference in the use of trademarks as a keyword on search engines as opposed to use as a keyword on App store” and the same would be violative of the trademark owner’s rights as long as the same is being used to promote the business of the competitor.
  2. The use of the mark ‘A23’ or 'Ace2three,' as an adword or keyword on any online platforms by the Defendant, would violate the rights on the Plaintiff in the abovementioned marks.
  3. The Defendant shall “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”.