CS (COMM) 889/2018, I.As. 6896/2018 and 8837/2018
This case was filed by the plaintiff to seek a permanent injunction to stop the defendant from using the trademark/name ‘Make My Travel’ and the tagline ‘Dreams Unlimited’ (collectively called ‘MakeMyTrip Marks’). The plaintiff was incorporated in the year 2000 and started its business initially with airline ticket bookings and is today one of the largest travel companies in the country having a presence in various countries around the world. Plaintiff was originally incorporated on 13th April 2000, with the trade name ‘Travel by Web Private Limited’ and subsequently changed its trade name to ‘Makemytrip.com Pvt. Ltd’. Thereafter, on 28 June 2002, another change was affected and that remains its current and present name, i.e., ‘MakeMyTrip (India) Pvt. Ltd.’. Presently, the Plaintiff, through its primary website, www.makemytrip.com and other technology-enhanced platforms including application-based mobile platforms, etc., offers an extensive range of travel services and products, both in India and abroad. After changing its trade name to include the words “MakeMyTrip” on 2nd August 2000, the Plaintiff has continuously and uninterruptedly used the trade marks MakeMyTrip and MMT, the MakeMyTrip Word Mark as well as the MMT Letter Mark. The tagline “Memories Unlimited” and “Hotels Unlimited”, have also been continuously and uninterruptedly used by the Plaintiff for its business activities since the day they were conceived. The MakeMyTrip Marks, including the MakeMyTrip Word Mark, MMT Letter Mark and Plaintiffs Tag Lines are invented terms, and have earned immense reputation and goodwill on account of extensive and continuous use by the Plaintiff. The domain was registered way back on 8th May 2000 and stands in the name of the founder of the Plaintiff Company, namely, Mr. Deep Kalra. Plaintiff has been hosting an interactive website on the said domain name, since 2001. Due to extensive use, now spanning almost seventeen (17) years, the MakeMyTrip Word Mark is synonymous with high standards of quality in respect of services provided by the Plaintiff. In order to add further distinctiveness and brand recall to its MakeMyTrip Word Mark, the Plaintiff, over the years, has conceived, adopted and used various catchy and stylized logos, all of which contain the MakeMyTrip Word Mark, as their essential feature.
Sometime in the month of December 2017, while browsing through the Internet, the Plaintiff came to know about the Defendant and its Infringing Marks. Plaintiff carried out further investigation and came across the website of the Defendant, https://www.makemytravelindia.com being hosted on the impugned Domain Name, wherein the Defendant was offering information pertaining to travel tours and packages, which services are identical to that of the Plaintiff. Being aggrieved by the adoption and use of the Infringing Mark and Infringing Domain Name, the Plaintiff, through its Counsel, issued a cease and desist notice requisitioning the Defendant to, inter alia, cease all use of the Infringing Marks and Infringing Domain Name.
The infringement and passing off of Plaintiffs marks is proved by following factors:
- a) Phonetically, visually, structurally and conceptually the competing marks are identical and/or deceptively similar.
- b) Identity of idea: The mark MakeMyTravel and MakeMyTrip are combination of three words, where the first two words are identical and last word ‘travel’ and ‘trip’ convey the same meaning, idea and concept.
- c) Nature of goods and services in respect of which the trademarks are being used are identical.
- d) Class of purchasers likely to use the services of the Plaintiffs and the Defendants are the same.
Defendants pleaded that the suit is barred by Section 33 of the Trade Marks Act 1999 as Plaintiff and its officials were aware that Defendant had incorporated a company by name of Make My Travel (India) Private Limited and is doing business under the name of Make My Travel (India) Private Limited, since the year 2010–2011. There have been several email exchanges between the officials of Plaintiff and officials of Defendant during the period 2011 to 2017. Plaintiff and Defendant are members of various associations where in the list of members, their name appears alongside each other. In the years 2011 to 2017, Plaintiff and Defendant had entered into business transactions and on occasions, money was transferred from the account of Defendant to Plaintiff. Plaintiff despite being aware of the use of the name ‘Make My Travel (India) Private Limited’ by the Defendant has not objected to the same. Plaintiff has also acquiesced to the use of trademark/trade name Make My Travel, MMT and tagline DREAMS UNLIMITED and make my travel logo for a continuous period of five years and more and it cannot object to the use thereof. Since the very beginning, Defendant company was using the letter marks MMT in all its email accounts and other communication, this fact was known to the Plaintiff and its officials since the year 2011. Plaintiff company has adopted the letter mark MMT much later i.e. in and around the year 2015 and 2016.
The main relief sought in the suit is for a permanent injunction restraining infringement of trademarks and passing off. As noted above, the interim injunction was continuing and the court had been called upon to deliberate upon the question whether the same should be confirmed or vacated. The Supreme Court in several decisions has laid down the test which is to be applied while evaluating the question regarding the infringement. In view of the law laid down by the Supreme Court in the aforegoing judgments and having regard to the facts of the case, there cannot be any doubt that the Plaintiff had a strong prima facie case and the balance of convenience also lies in its favour. In case the Defendant is permitted to continue to use infringing marks, grave and serious prejudice is likely to be caused to the Plaintiff. it cannot go unnoticed that the adoption of the mark by the Defendants is without any cogent explanation, and it prima facie appears to be dishonest. It cannot be accepted that the Plaintiff has acquiesced the use of the infringing mark by the Defendant. The correspondence with the booking customer care executive of the Plaintiff who apparently did not have knowledge of the intellectual property rights of the Plaintiff, cannot be considered as positive acts of encouragement towards the Defendant to do business under Infringing/Impugned Marks.
Defendant had no justification or defense for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require a further and deeper scrutiny and examination during the course of trial. Thus, having regard to the aforesaid facts, the Court was of the considered opinion that Plaintiff has a prima facie case and the balance of convenience also lies in favour of the Plaintiff. Irreparable loss would be caused to the Plaintiff if the Defendant is not restrained from using the impugned marks. Accordingly, the injunction order dated 17th May 2018 is made absolute and shall continue to operate during the pendency of the present suit.
Authored by Nischay Kamal