In FAO (COMM) 201 of 2021- DEL HC- ‘Once trademark is registered it is truly entitled to all statutory protection recognised and available under Trade Mark Act’: Delhi High Court while granting relief to the joint venture under the trademark ‘VISTARA’
Justice Manmohan and Justice Saurabh Banerjee [31-05-2023]

Read Order: Tata Sia Airlines Limited v Vistara Home Appliances Private Limited

Simran Singh

New Delhi, June 1, 2023- The Delhi High Court has set aside the impugned order dated 28-10- 2021 of the Trial Court which had dismissed the application filed by the appellant under Order XXXIX rules 1 & 2 read with Section 151 of Code of Civil Procedure, 1908 (CPC) in a suit for infringement of trademark and passing off against the respondents.

The Division Bench of Justice Manmohan and Justice Saurabh Banerjee stated that “Tainted adoption of the impugned mark VISTARA by respondents, under suspicious circumstances, is a discerning factor playing a dominant role throughout which leaves no doubt in the mind of this Court that the interim application of appellant deserves to be allowed.”

It was further stated that “Having once adopted the impugned mark ‘VISTARA’ with their eyes and ears open, there is no scope left for the respondents to take refuge of the usage or projected loss of customers, trade channels and industry of operation as it is already too late in the day and when much water has flown under the bridge since then.”

In the matter at hand, the appellant was a joint venture between TATA Sons Private Limited and Singapore Airlines Limited operating a full-fledged service airline under its trademark ‘VISTARA’ which is a ‘well-known trademark’ as per Section 2(1)(zg) of The Trade Marks Act, 1999 (TM Act) and was entitled to a higher degree of protection under law. In India, the appellant has since obtained registration of the trademark ‘VISTARA’ logo in Classes 12, 39, 16, 21, 25, 27, 28, 18, 9, 35, 39, 43 and 45 from time to time, the earliest being in Classes 12 and 39 on 02-06-2014. A third party had also became the owner of the same trademark ‘VISTARA’ in Class 39 subsequently, however, the same had since been assigned with goodwill to the appellant on 11-02-2016.

The appellant came to know in September 2020 that respondents 1 had been using its trademark ‘VISTARA’ as its corporate name ‘Vistara Home Appliances Private Limited’; as its domain name 'www.vistarahome.com' and as its device marks, without any authorisation. The respondents were also found selling and offering home appliances like LED TV, OTG, fans and coolers under the impugned mark VISTARA (device) on its website and on third party websites and was active on social media platforms, like Facebook and YouTube since their adoption in December 2018, also without any authorisation from the appellant.

The appellant, vide its Legal Notice dated 09-09-2020 followed by a reminder notice dated 16-03-2021, called upon the respondents to cease and desist their acts of infringing and passing off the trademark ‘VISTARA’. Non receipt of response to either of them by respondents despite due receipts led to institution of a suit for infringement of trademark, passing off by the appellant in May 2021 seeking a decree of permanent injunction from infringing and/ or passing off by advertising, directly or indirectly offering any goods or services, using or registering corporate names, domain names or in any other manner using the trademark VISTARA before the Trial Court.

The respondent contended that they had applied for registration of the impugned mark VISTARA (device) in Classes 7, 9 and 11 and the appellant was neither using the trademark ‘VISTARA’ nor had applied for registration for products falling in the said Classes. Further, there could be no confusion as VISTARA was a dictionary word and the respondent 1, since existence as a Company from 2015, had entered into various contracts and established very deep trade channels and business networks and also built a reputation and made extensive investments. Therefore, if the respondents were restricted from using the mark, it would be catastrophic for them. As per respondents, the trademark ‘VISTARA’ of appellant was not a ‘well-known mark’ when respondent 1 commenced using the impugned mark VISTARA (device). They also claimed to be very very cautious that they do not have their mark be confused with that of appellants which was why they had represented their mark in a completely different manner by choosing a different colour combination, font, style of writing, structure and overall representation. As per respondents, they were dealing in goods totally unrelated to those of the appellant and they were not unauthorised users as per Section 29 of the TM Act.

The Trial Court agreed with the contention of the appellant qua its adoption and uninterrupted extensive use of the trademark ‘VISTARA’ since 2014 and qua it being arbitrary and inherently distinctive with respect to travel services even though it was a Sanskrit word ‘Vistaar’. The Trial Court stated that both the marks were used in different classes of goods and catered to different customers thus granted no injunction against respondents, as there were remote chances of respondents encashing upon the goodwill and reputation of the appellant.

The Trial Court extended no benefit to the appellant as the subsequent registration by respondents prima facie was neither invalid nor cancelled, as neither any objection to the applications for registration of the impugned mark VISTARA (device) of respondent 1 in Classes 7, 9 and 11 nor objection to use of the website ‘www.vistarahome.com' of respondents since 2018 was filed and as the respondents were using the said impugned mark for unrelated goods. Thus dismissed the interim application of the appellant.

The Bench noted that the appellant was incorporated in the year 2013, i.e. prior to the formation of the respondent 1 and the appellant was already using the trademark ‘VISTARA’ prior to the respondents. However, the respondents had not given any plausible basis or reason for adopting the impugned mark VISTARA at any stage. Thus, was of the view that this was a sufficient reasons for the Trial Court to allow the interim application of appellant.

“The respondents subsequently adopted an already existing registered trademark ‘VISTARA’ of the appellant firstly as its corporate name ‘Vistara Home Appliances Private Limited’ in the year 2015, secondly as a (device) mark in the year 2016 and thirdly as its domain name ‘www.vistarahome.com' in the year 2018.”

It was stated that the respondents were always well-aware of the appellant and its registered trademark ‘VISTARA’, both while adopting and while filing for registration of the impugned mark VISTARA which was apparent from their own reply to the interim application wherein they pleaded that they were very cautious and they their mark be not confused with that of the appellants. Thus, both adoption and usage of the impugned mark VISTARA by respondents were per se, dishonest since inception.

The Bench disagreed with the contention that the impugned mark VISTARA was a common dictionary word having a meaning in different languages including Sanskrit stated that it was an invented word having no meaning, especially as it was distinct, unconnected, arbitrary and neither synonymous nor related to a particular class of services/ goods of any kind whatsoever and which was bona fidely and genuinely adopted by it. The said trademark ‘VISTARA’ of appellant was thus arbitrary and distinctive.

“It would not be wrong to infer that the respondent no.1 mala fidely chose to apply for registration of a (device) mark instead of a (word) mark simply to circumvent the hurdles in the way qua the appellant and its registered trademark ‘VISTARA’.”

The Bench was of the view that the impugned mark VISTARA (device) of respondents would always be referred visibly, seen and called by the general public as the word VISTARA, it was highly improbable that a man of average intelligence and normal recall would be able to differentiate the said mark with the registered trademark ‘VISTARA’ of appellant which in all likelihood would lead to confusion.

The Bench stated that there was no occasion for the Trial Court to deny the relief of injunction merely because the respondents adopted and used the impugned mark VISTARA in different Classes/ products, more so, whence the adoption was itself tainted and was not backed by any material particulars.

The Bench was of the view that there was no proof qua the contention of the respondents that they had entered into various contracts, established deep trade channels, business networks and industry of operations, and that they had many dependent employees and an injunction would result in their loss of customers. Thus stated that the Section 12 of TM Act could not come to the aid of the respondents under suspicious circumstances.

“It is a settled principle in trademark law that ‘adoption’ takes precedence over ‘usage’ and any subsequent usage after wrongful adoption of a mark cannot/ ought not be given any credence.” The Court opined that undue importance had erroneously been given to the wrongful adoption and unwarranted usage of the impugned mark VISTARA by the respondents as the same was dissimulating without any explanation from them.

The Bench was of the view that the Trial Court neglected to give due weightage to its association, existence and popularity with the appellant as those were certainly relevant factors worthy of consideration for any mark to be declared as such, more so, when the legislature in its wisdom had knowingly recognised and accorded a better protection than to an already existing registered trademark.

“It is reiterated that once a trademark is registered it is well and truly entitled to all the statutory protection recognized and available under the TM Act. This is why, as per the Statute (TM Act) when a word is adopted under Section 2(m) as a ‘mark’ under the TM Act it can not only qualify to become a trade mark as per Section 2(p) of TM Act but can also, with the passage of the time, certainly progress and qualify to become a ‘well-known mark’ as per Section 2(zg) of TM Act.”

The Bench stated that the existence of third parties apart from the respondent 1, who were either using VISTARA as their corporate name or using it as a mark, was immaterial and of no relevance for the purposes of adjudication of the present dispute.

“A registered proprietor was a master of its own ring and is not expected to be on its toes always to chase each and every infringer passing off its trademark and is free to initiate appropriate actions, if any, against any infringing party of its choice, on its own volition.”

The Bench noted that the appellant was vigilant in pursuing its concern with the respondents as on becoming aware of the adoption of the impugned mark VISTARA by respondents, it issued a legal notice followed up with a reminder thereto, both of which were never replied despite due service, and had instituted the suit before the Trial Court.

It was of the view that the Trial Court had erred in overlooking the fact that the respondents had, admittedly, not initiated any proceedings against the appellant, either before the Trade Mark Registry or before any Court of law in all the time while the interim application was being heard till passing of the impugned order.

“Therefore, it would not be wrong for this Court to conclude that the defenses raised by the respondents are after-thoughts and the learned Trial Court ought to have ignored them while passing the impugned order.”

The Court found that impugned order was contrary to the settled principles of law, which did not concur with either the reasonings or the findings given by the Trial Court.