Delhi High Court: Sanjeev Narula, J. while addressing a matter in respect to trademark infringement and in lieu of that seeking a permanent injunction, discussed the concept of “acquiescence” by relying on ample of cases.
In the present case, the plaintiff sought a permanent injunction restraining the defendant from adopting and using:
- Trademark/trade name ‘Make My travel’, MMT (letter mark) and the tag line ‘Dreams Unlimited (Impugned ‘wordmarks’);
- The MakeMyTravel Logo, which includes the infringing word marks namely, MMT and Dreams Unlimited
- Their domain name <makemytravelindia.com>;
The above are all stated to be violative of the plaintiff’s statutory and common law rights in its own trademarks –
- The tag lines MEMORIES UNLIMITED and HOTELS UNLIMITED.
The case of the plaintiff is that, it has presence all across India and several other countries around the world including in the United States of America, the United Arab Emirates and Mauritius. Over the years, the plaintiff has expanded its range of products and services beyond online travel bookings.
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 August, 2, 2000, plaintiff has been continuously and uninterruptedly using the trademarks MakeMyTrip and MMT, the MakeMyTrip Word Mark as well as the MMT letter mark. Tag Line “Memories Unlimited” and “Hotels Unlimited”, have also been continuously and uninterruptedly used by the plaintiff.
Plaintiff has earned immense reputation and goodwill on account of extensive and continuous use by the plaintiff. In order to add further distinctiveness and brand recall to its MakeMyTrip Word Mark, plaintiff has conceived, adopted and used various catchy and stylized logos, all of which contain the MakeMyTrip Word Mark, as their essential feature.
Hence, any unauthorized use of the MakeMyTrip Marks and/or any other deceptively similar mark would violate the Plaintiff?s statutory and common law rights and an effort to ride upon the immense reputation and goodwill garnered by the Plaintiff in its MakeMyTrip Marks.
Thus, 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.
It was further submitted that, infringement and passing off of plaintiff’s marks is proved by the following factors:
- Phonetically, visually, structurally and conceptually the competing marks are identical and/or deceptively similar.
- Identity of the 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
- Nature of goods and services in respect of which the trademarks are being used are identical.
- Class of purchasers likely to use services of the Plaintiffs and the Defendants is the same.
Defendant’s submissions were as follows:
Plaintiff and its officials were aware that defendant had incorporated a company by name of Make My Travel (India) Private Limited since the year 2010-2011.
During the years 2011-2017, plaintiff and defendant entered into business transactions and on occasions, money was transferred from the account of defendant to that of the plaintiff, thus plaintiff despite being aware of the same did not raise any objection.
Further adding to the above, it has been stated that, since the very beginning. The defendant company was using the letter marks MMT in all its email accounts and other communication and the plaintiff along with its officials was aware of the same.
On May, 17th, 2018, a temporary ad-interim injunction was granted in favour of the plaintiff, according to which the following would be applied on the defendants:
“restraining the Defendant from using in any manner whatsoever, selling, offering for sale, advertising directly or indirectly dealing in any products or services under the infringing marks, namely Make My Travel (word per se), MMT (letter mark). Dreams unlimited (tag line), www.makemytravelindia.com and Make My Travel logos or any other trademark/trade name/trade dress or logo/device, which is identical to and/or deceptively similar to and/or plaintiffs MakeMyTrip logo marks, namely, MakeMyTrip (word mark), MMT (letter mark) and Memories Unlimited and Hotels Unlimited (tag line).”
Decision of the Court and its Analysis
The main relief sought in the above view was of permanent injunction and the Court has been thus called upon to deliberate the question as to whether the same should be confirmed or vacated.
While deciding the application at the preliminary stage, plaintiff under Order 39 Rule 1 & 2 as also the application of the Defendant under Order 39 Rule 4, the court has to keep in mind the well-settled principles governing the grant of injunction viz. prima facie case; balance of convenience and the harm or injury likely to be caused on account of the impugned acts of the Defendant.
High Court while taking reliance on several Supreme Court decisions, laid down the test which is to be applied while evaluating the question regarding the infringement. In F. Hoffman La Roche v. Geofferey Manners, (1969) 2 SCC 716, Supreme Court held that,
“True test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.”
Referring to the decision in the case of, Amritdhara Pharmacy v. Satyadev Gupta, AIR 1963 SC 449, Court held that for deceptive resemblance, two important questions that need to be kept in mind are:
- who are the persons that the resemblance must be likely to deceive or confuse and
- what rules of comparison are to be adopted in judging whether such resemblance exists;
In the above-stated case of the Supreme Court, it was 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.”
Court while dealing with the present matter stated that while the first two words of the marks MakeMyTrip and MakeMyTravel are identical, last words, TRIP and TRAVEL are similar and convey the same idea.
Defendant’s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiff’s taglines HOTELS UNLIMITED and MEMORIES UNLIMITED 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.
In view of the above-stated decisions, Court stated that the plaintiff has 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.
Court added to its observation that, the adoption of the mark by the defendant is without any cogent explanation and it prima facie appears to be dishonest.
On perusal of the orders passed by the Court in the case of MakeMyTrip (India) Pvt. Ltd. v. Orbit Corporate Leisure Travels (I) Private Limited, Court stated that in the said case, there was an agreement between the defendant’s predecessor-in-interest and the plaintiff, and this crucial factor prevailed upon the Court to accept the plea of acquiescence. In the present case, there is no such agreement on record, the plea of acquiescence is premised merely on the basis of email communications exchanged with booking customer care executives.
In Dr Reddy’s Laboratory Ltd. v. Reddy Pharmaceuticals Ltd., 2013 SCC OnLine Del 3626, the Court took note of the fact that the owners of trademarks or copyrights cannot be expected to run after every infringer and thereby remain involved in litigation at the cost of their business time, but can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.
Concept of “Acquiescence”
Acquiescence is a species of estoppels, a rule in enquiry and a rule of evidence and it is essential to the Acquiescence Doctrine that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator.
Thus, the Court held that defendant has no justification for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require further and deeper scrutiny and examination during the course of the trial.
“Irreparable loss would be caused to the plaintiff if the defendant is not restrained from using the impugned marks.”
Hence, injunction order dated 17-05-2018 is made absolute and shall continue to operate during the pendency of the present suit. [Make My Trip (INDIA) (P) Ltd. v. Make My Travel (INDIA) (P) Ltd., 2019 SCC OnLine Del 10638, decided on 18-10-2019]