Delhi HC restrains MakeMytravel from using similar trade name as that of MakeMyTrip

Make My Trip (India) Private Limited (Plaintiff), incorporated in the year 2000 and one of the largest travel companies in the country sought permanent injunction restraining Make My Travel (India) Private Limited (Defendant) from adopting and using the similar trade name, tag line, and the MakeMyTravel Logo including their domain name makemytravelindia.com (collectively “Impugned Marks”).

The Plaintiff submitted that it is the registered proprietor of the MakeMyTrip Word Mark and MakeMyTrip Logo Marks. The Plaintiff came to know about the defendant and its Infringing Marks in the year 2017. On further investigation, the plaintiff found out that the defendant was also in the business of travel tours and packages and was offering services identical to that of the Plaintiff.

According to the Plaintiff, due to extensive use spanning almost 17 years, the MakeMyTrip Word Mark is synonymous with high standards of quality in respect of services provided by the Plaintiff.

The case had first come up for hearing before the Delhi High Court on 17th May 2018. The Court had granted temporary ad-interim injunction in favour of the Plaintiff restraining the Defendant from using the identical trademark/trade name, logo, tag line. After certain compromise proposals, on 10th October 2018, it was submitted that an amicable resolution could not be arrived at and the proceedings have continued since then.

In the present case, the Defendant submitted that the suit is barred by Section 33 of the Trade Marks Act, 1999. The Defendant also alleged that between the years 2011 to 2017, the Plaintiff and Defendant had entered into business transactions and money was transferred from the account of Defendant to that of the Plaintiff on many occasions.

Further the Defendant alleged that the Plaintiff was aware of the fact that the Defendant was using the name ‘Make My Travel (India) Private Limited’, but had not objected to the same. The Defendant submitted that Plaintiff had also acquiesced to the use of trade mark/trade name Make My Travel, MMT and tag line DREAMS UNLIMITED and make my travel logo for a continuous period of five years and more, and therefore such use cannot be objected.

In this case before the Delhi High Court, MakeMyTrip sought for permanent injunction restraining infringement of trademarks and passing off.

The Defendant set up the plea of acquiescencence, alleging that since the Plaintiff had previously not objected to the use of the name MakeMyTravel (India) Pvt. Ltd by the Defendant, it cannot now be permitted to object to the use of the said name. It had been further contended that Plaintiff and its officials were aware of the use of the letter mark MMT and the tagline ‘Dreams Unlimited’ and MakeMyTravel Logo by the Defendants since the year 2011 and thus the Plaintiff has acquiesced to the use of trademark/trade name MakeMyTravel, MMT and tagline ‘Dreams Unlimited’ and MakeMyTravel Logo for a continuous period of five years and cannot object to the use of the said marks.

The Delhi High Court ruled that on comparison of the Defendant’s marks with those of the Plaintiff, one can easily notice that the same are phonetically, visually, structurally and conceptually identical/deceptively similar to the Plaintiffs MakeMyTrip Marks. The Defendant has not offered any plausible explanation for adoption of the infringing marks. The mark MakeMyTrip and MakeMyTravel are combination of three words where the two words are identical and the last word travel and trip convey the same meaning, idea and concept.

The Court referring to its earlier judgment in Amritdhara Pharmacy v. Satyadev Gupta AIR 1963 SC 449, held that for deceptive resemblance, two important questions that need to be answered are

(i) who are the persons that the resemblance must be likely to deceive or confuse and

(ii) what rules of comparison are to be adopted in judging whether such resemblance exists. It was further held that confusion is perhaps an appropriate description of the state of mind of a consumer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether the impression is not due to imperfect recollection.

The Court also cited the case of Shree Nath Heritage Liquor Pvt. Ltd. v Allied Blender & Distillers Pvt. Ltd where it was held that “marks containing words with the same sense relation (or falling in the same semantic field, or conveying the same or similar idea in the mind) as that of previously existing marks are likely to be considered so similar as to be refused registration or deemed to constitute infringement of the previously existing trademark.”

The High Court observed that in the present case also, while the first two words of the marks MakeMyTrip and MakeMyTravel are identical, the last words, TRIP and TRAVEL are similar and convey the same idea. Similarly, the Defendant’s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiff’s taglines HOTELS UNLIMITED and MEMORIES UNLIMITED. While the second word in the tag lines is identical, the first words DREAMS, MEMORIES and HOTELS, when considered in the context of travel and holiday related services, may be used in the same context or idea.

The Court was of the opinion that in case the Defendant is permitted to continue to use infringing marks, grave and serious prejudice is likely to be caused to the Plaintiff. Further, the adoption of the mark by the Defendants did not have any cogent explanation, and prima facie appeared to be dishonest. Therefore, it the Court was not ready to accept that the Plaintiff had acquiescenced the use of the infringing mark by the Defendant.

Further, the Court held that acquiescence is sitting by when another invades your rights and spends money in the doing of it. It is conduct incompatible with claims of exclusivity, but it requires positive acts, not mere silence or inaction. Acquiescence is not mere negligence or oversight. There must be the abandonment of the right to exclusivity.

The High Court thus allowed the petition and upheld the injunction order dated 17th May 2018.

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