One of India’s largest online grocery startups, BigBasket, has sent a cease and desist notice to DailyBasket, an online grocery store currently only operational in Coimbatore, over the use of the term “basket” in the smaller entity’s brand name. BigBasket demanded that DailyBasket stop using any domain name or logo which has the term “basket” as its prominent feature. “Your use of the word ‘daily’ along with ‘basket’ does not make your name distinctive”, the cease and desist notice said, and accused DailyBasket of “dishonestly” adopting a name and mark “confusingly” similar to BigBasket’s. Trademark law experts called BigBasket’s move as “aggressive”, and “bullying”.
The company asked DailyBasket to discontinue its “deceptively” similar domain dailybasket.com, and to cease and and desist from selling products carrying the logo of DailyBasket, or any other mark containing “basket” as its prominent feature, among other things. MediaNama has seen a copy of the cease and desist notice. The Tata Group is expected to buy a majority stake in BigBasket.
“We are a 9 months old bootstrapped startup,” Ramesh Kumar Velusamy, founder of DailyBasket told MediNama. The company, which started operations in August 2020, is signing up with a law firm and will send a legal response to BigBasket soon, he told us. DailyBasket also created a website called bbisabully.com, offering a rebuttal to each of BigBasket’s claims.
“It’s a do or die situation honestly. What do you think we can do in this position? It’s a Goliath vs David all over again. They are intimidating to shut down our shop and freely give away the domains to them. We can’t fight them alone, that’s why we went public with it.” — Ramesh Kumar Velusamy, founder of DailyBasket, told MediaNama.
Velusamy said that DailyBasket was gearing up to launch a smart store in the next two days, but the notice has meant that the company isn’t able to do anything productive right now. “We are about to open our first smart store on 25th [February] and suddenly we are fighting this instead filling missing inventory, fixing our in store self checkout apps and doing anything productive that will help the company grow,” Velusamy told MediaNama.
“Though we have a word ‘basket’ in our brand and we do deliver online groceries, it doesn’t mean we copied their trademarks or unethically copied their website & apps. We never misuse BigBasket’s brand in any way as they claimed in the cease and desist letter.” — DailyBasket said in response to BigBasket’s notice.
What BigBasket’s cease and desist notice says
BigBasket alleged DailyBasket of “offering identical products and services” through a “conflicting” similar domain name, dailybasket.com, while using a logo “deceptively” similar to that of BigBasket. It alleged that DailyBasket has “deliberately copied” the layout and getup of BigBasket’s website to “mischievously associate” itself with the company.
DailyBasket’s mobile app, though which the company offers its services, is also “extremely similar” to BigBasket’s app, the notice alleged. “By using the said mobile App, you are malafidely trying to create an impression that you are associated with BigBasket for Coimbatore, which in fact, is not the case,” it added.
The notice, which BigBasket sent on February 17, asked DailyBasket to comply with the following within 15 days:
- Stop using the name, mark, and logo of “dailybasket” or any other mark which has the word “basket” as its prominent feature.
- Discontinue the use of the domain dailybasket.com, and its similarly named mobile application since it is “deceptively” similar to BigBasket’s domain name. In fact, BigBasket asked for transferring the domain dailybasket.com to itself at no extra costs.
- Remove all references of DailyBasket’s name and mark from third-party websites like Facebook.
- Remove all signs, seals, stationery, catalogues, promotional and packaging material, flyers, brochures, packets, bags and pouches (in the offline medium) containing the DailyBasket mark.
- Make a payment of Rs 200,000 to cover legal costs.
‘That’s a blatant lie’: DailyBasket’s response to BigBasket’s notice
Except for the word ‘basket’, there are no similarities or trademark violations in the brand logo, DailyBasket said. It added that the colours, font, and graphics used in its logo were different than BigBasket’s. “Last time we checked no one has monopoly in the word ‘basket’ or having the word ‘basket’ and selling groceries online. NaturesBasket.com was actually started in 2005, way before bigbasket,” the company added. Here’s a side-by-side comparison of the two companies’ logo:
The company also put up a screenshot comparing the home screens of the two websites, and showed that they did not resemble in any significant way. “Common things are searchbar, category menu and product visuals. But it’s the same everywhere, go look at Grofers, JioMart, Amazon, Flipkart or any one for that matter. It’s an online ecommerce portal for god’s sake,” it added. Similarly, by means of a screenshot, it showed the difference in the two companies’ mobile apps.
“We bet each app has all these exactly same features like searching for groceries, adding product to cart, showing offers, placing orders and making payment. Or do you still think you only own these features? and no one with “basket” in their names are not allowed to use?” — DailyBasket said in response to BigBasket’s notice.
‘Classic case of trademark bullying’
Arul George Scaria, co-director of the Centre for Innovation, Intellectual Property and Competition at NLU Delhi, called BigBasket’s actions “trademark bullying”. He said that ‘basket’ is a term that should ideally be available for every company in this space.
“BigBasket’s move is clearly aggressive and excessive. ‘Basket’ is a generic and descriptive mark and commonly used by various players in the grocery retail industry. Thus, we see multiple trademarks with ‘Basket’ in the prefix or suffix,” Abhilasha Bhatnagar, who is an IP lawyer, currently partner in a boutique IP firm in Gurugram, told MediaNama.
In fact, Scaria said, BigBasket itself is a very descriptive term, and should have never been granted a trademark. However, even still, the company should remember the limitations that come along with having a descriptive trademark, Scaria said. He directed us to the following section of the Trade Mark Act, 1999, which places certain restrictions on the effect of registered trade mark:
Section 30 of the Trade Mark Act, 1999: Limits on effect of registered trade mark.—(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use—
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
It is not that generic terms cannot be trademarked, Bhatnagar said, but it is settled in law that “the burden of proof on the person claiming distinctness in favour of a generic or descriptive mark is much higher. The Plaintiff not only would have to show that the mark adopted by the Plaintiff, because of its extensive use has acquired distinctness and is identifiable only with the goods of the Plaintiff but also that the adoption of the mark by the Defendants is identical and deceptively similar to the mark of the Plaintiff”, she said, quoting from a 2018 Delhi High Court judgement.