The Battle of the Baskets: Trademark Distinctiveness in Businesses

In February 2021, online grocery shopping giant BIgBasket sent a cease and desist notice to a Coimbatore based competitor DailyBasket, the latter being a startup founded in 2020. The demands include stopping the usage of the mark and paying 2 lakhs as compensation to BigBasket. The founders of DailyBasket, lacking the same degree of legal clout and resources as BigBasket, has turned online to present its case, detailing the many ways in which their logos, websites and apps differ from that of BigBasket.

It must be admitted that the websites and apps for the two competitors looks largely similar, but only insofar as most online retailers have similar layouts. The question of likelihood of confusion over the name is, as it’s the case with most things connected to legality, somewhat more complicated.

cash inside a tiny shopping cart

Bigbasket alleges infringement by DailyBasket in connection with its’ “registered trademarks” bigbasket and bbdaily in a tweet. This is not strictly accurate- BigBasket does have a staggering number of trademarks but bbdaily is not one of them. They are, however, currently trading under the name. Given the sheer number of grocery delivery organization with the word “Basket” in their Trademarks, it does seem a little like BigBasket is grasping at straws.

Organizations naturally try to have as firm a hold on their trademarks as possible. A distinctive brand and the associated goodwill has been in some way part of businesses for centuries. The world’s first known trademark law was a proto-certification mark passed in 1266 to combat bread fraud. With the sheer number of competitors any good or service has in the market today, trademarks are now something organizations take very seriously. One of the reasons for this is endurance- other forms of IP tend to lapse or weaken over time. Trademarks arguably only grow stronger, shoring up customer bases and markets till the reputation of the organization alone, tied to the mark, is worth millions. Apple and Disney are prime examples of this.

It is, therefore, not unsurprising or unexpected that BigBasket files opposition notices against competitors in the same field who dare to put the word ‘Basket’ on their own trademarks. Part of this is valid- BigBasket has likely spent a lot more on advertising (and, ergo, recognition) than the competitors. The ability of a customer to keep combing back to a brand depends on both their loyalty to the brand and the “sophistication” of their tastes. An business service for the delivery of generic groceries is unlikely to inspire the same level of loyalty as ones who, for example, manufacture and sell electronic goods. BigBasket’s fierce defense of its’ domain makes far more sense once you take into account how the combination of interchangeable services (BigBasket is not, at the end of the day, offering many goods other competitors cannot) and a descriptive mark can threaten to dilute the brand.

A 1976 US trademark case set down the spectrum of distinctiveness of words on a scale of generic (cannot be trademarked unless secondary distinction is acquired) to fanciful (invented word; can be trademarked). This scale is oft-cited and is often very useful, but there are frequent arguments about what qualifies as generic, descriptive or suggestive. Basket and Daily are both words that fall into this complicated spectrum in ways that can affect how the case plays out. It’s interesting, for example, to note that despite having a multiplicity of related trademarks, ‘bbdaily’ is not a registered trademark for BigBasket’s owners. In fact, the trademark application was filed on 11 March 2021, as opposed to DailyBasket, which was filed on 24 Feb 2017. This does seem a lot like the grocery shopping giant scrambling to keep up with an attack it did not see coming.

Daily and Basket are both common words which don’t provide all that much trademark protection by themselves. One of the more common tactics of getting trademarks for common words involve associating it with a visual device- a combination of a logo and fonts that will only be ever used in combination. While this technically qualifies the good or service for distinctiveness, it may result in a plurality of problems down the line, particularly if the organization gains a large following. At this point, the device mark ends up being treated like a word mark in daily life- which is great for advertising and recognisability, but a liability because now you need to defend your mark not as device but as a word in order to prevent brand dilution.

Most organizations and trademarks do not reach a point where this becomes a consideration, but the ones who do might end up cursing themselves for associating their powerful brand with a comparatively easily toppled mark. Legal realities and financial prowess might mean that BigBasket will win this matter, or at the very least damage DailyBasket badly enough to make an impact. Regardless, none of this would have been likely to happen if their mark has been more unassailably distinctive.

Author: Varsha Valsaraj, Legal Associate at PA Legal.

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