Delhi High Court permits use of the mark ‘FLY HIGHER’ by VISTARA Airlines on the ground of the mark not being used as a trademark | International Lawyers Network

The Delhi High Court (‘Court’) in its judgment (dated October 28, 2022) in the case of Frankfinn Aviation Service Private Limited v. Tata SIA Airlines Limited, [CS(COMM) 54/2022 & I.A. 1795/2022, 3651-52/2022] recently deliberated whether the exclusive rights available to a trademark owner under the Indian Trade Marks Act, 1999 (‘Act’) would restrain a third-party from use of such trademarks in a descriptive or laudatory sense.

The Plaintiff (Frankfinn Aviation Service Private Limited) – a prominent Indian training institute engaged in imparting training services in the hospitality, aviation, and travel management sectors, among others – had filed the instant suit inter-alia claiming infringement and passing-off of its trademark FLY HIGH, due to use of the deceptively similar/identical mark FLY HIGHER by the Defendant (Tata SIA Airlines Limited trading as VISTARA Airlines) in respect of similar services as those of the Plaintiff.

The Plaintiff claimed prior use of the trademark FLY HIGH in India (since 2004); and submitted that it was the registered owner of (various variants of) said trademark in respect of goods (such as stationary) in class 16 (under registrations, 2233277) and services (related to educational training)  in class 41 (under registrations 2233278, 3857360, 1535614); as well as the owner of several registered domain names (including  www.frankfinn.com) whereat it was prominently using the trademark FLY HIGH. The Plaintiff further asserted that it had gained awareness of the infringement of said trademark (by the Defendant) upon belatedly coming across an advertisement campaign (launched in 2018) that used the mark FLY HIGHER to promote Defendant’s services on various online third-party platforms/websites, and claimed that this trademark was also used on the Defendant’s website (as a hashtag).

Based on the preliminary submissions of the Plaintiff, the Court deemed fit to grant ex parte ad interim injunction in the Plaintiff’s favor and passed an order (dated January 21, 2022) (‘Order’) restraining the Defendant from using any mark deceptively similar/identical to the trademark FLY HIGH.

• Subsequently, the Defendant filed an application seeking vacation of the Order. The Defendant submitted that it was operating a full-service airline (a joint venture between Tata Sons Private Limited and Singapore Airlines Limited) under the trademark VISTARA (and other formative marks) (collectively, ‘VISTARA Mark(s)’); and the services offered by the Plaintiff and Defendant were dissimilar [since core services were offered by the Defendant (under the VISTARA Mark) in class 12 (relating to vehicles) and class 39 (concerning transport services) in relation to the airline industry]. The Defendant asserted that there was no likelihood of the mark FLY HIGHER being confused or associated with the trademark FLY HIGH – since the mark FLY HIGHER was not being used in relation to goods/services in class(es) 16 and 41 (in respect of which the Plaintiff claimed trademark registration) – and thus the Plaintiff’s claims were liable to be dismissed.
• Further, the Defendant asserted that the mark FLY HIGHER was descriptive of the Defendant’s services; and was used by the Defendant only for promotional purposes (in conjunction with the well-known VISTARA Mark) – not as a trademark. It also asserted that the Plaintiff could not claim a monopoly over the use of this mark (and the trademark FLY HIGH) since these were common and laudatory terms (within the aviation sector). Moreover, the Defendant argued that the Plaintiff had obtained the Order from the Court by suppressing and concealing material facts (such as Plaintiff’s direct awareness of the Defendant’s ad campaign at the time of its launch in 2018).

Upon analysis of the submissions of the Defendant (and the counter-submissions of the Plaintiff), the Court opined that the preliminary question pivotal to the determination of the instant suit was whether the Defendant was using the mark FLY HIGHER as a trademark.

The Court examined the evidence-on-record (of the use of the trademark FLY HIGH and mark FLY HIGHER by the Plaintiff and Defendant respectively) and perused the definitions of a ‘trademark’ and a ‘mark’ provided under the Act. The Court observed that the Act (and several previous Indian judicial decisions) categorically distinguished between the two terms.  For reference, the definitions of each of these terms under the Act have been extracted (in relevant part) and reproduced below:

• Section 2(1)(zb) of the Act provides: A ‘trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and– 
• (i)…a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and 
• (ii)…a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.” 
• Section 2(1)(m) of the Act provides: A ‘mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

While the Court observed that Plaintiff was indeed the registered proprietor of the trademark FLY HIGH [and held exclusive rights over the use of such trademark under the Act], it observed that the use of the term FLY HIGH (and other identical/similar terms) was in common parlance in the aviation sector. The Court further observed that the Defendant’s use of the mark FLY HIGHER (in its ad campaign and otherwise) was in a laudatory/descriptive manner (not as a ‘source identifier’ of its goods and services); and further, that such use was in conjunction with its well-known VISTARA Mark (and alongside other terms and phrases which were descriptive/laudatory of the Defendant’s services). The Court prima facie concurred with the submission of the Defendant (that the said mark was not used the Defendant as a trademark) and concluded that the Plaintiff’s claim of trademark infringement was without merit.

The Court also prima facie concurred with the Defendant’s submissions (as regards its use of the mark FLY HIGHER being in respect of services dissimilar to those of the Plaintiff); and opined that even if it were presumed that mark FLY HIGHER had been used by the Defendant as a trademark, an ‘important ingredient’ required to sustain an infringement action [in terms of section 29 of the Act] was the ‘likelihood of confusion and/or association amongst the intending purchasers’ – which the Plaintiff had failed to establish in the instant case. Further, the Court concluded that the Plaintiff had prima facie failed to establish its claim of passing off (due to its failure to disprove the Defendant’s submissions regarding the goodwill and reputation of its well-known VISTARA Mark).

Story originally seen here