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Delhi HC dismisses plea filed by MakeMyTrip for trademark infringement

A Delhi High Court single judge bench comprising of Justice Mukta Gupta on Wednesday dismissed the petition filed in a Trade Mark case by Makemytrip (India) Private Limited praying for a decree of permanent injunction restraining the defendants – Orbit Corporate Leisure Travels Private Limited, from using the trademark GETMYTRIP thereby infringing the plaintiff’s trademark MakeMyTrip.

The petition was filed by MakeMyTrip contending that the defendant was also engaged in the identical business of travel related services. In April 2017, the plaintiff came to know through the trademarks journal that the defendant had filed application for registration of the trademark GETMYTRIP and infringing the plaintiff’s trademark and logo. The plaintiff thereafter filed objections to the same in April, 2017 and carried out further investigation on its own and then came across the defendant’s website namely www.getmytrip.com and agent.getmytrip.com. It was alleged that the trademark and logo of the defendant “GETMYTRIP” was deceptively and phonetically similar to the plaintiff’s word mark “MakeMyTrip”, thus infringing the plaintiff’s trademark and violating its rights under the Copyright Act as well.

MakeMyTrip is a private limited company registered under the Companies Act, 1956 incorporated in the year 2000 having started its business initially with airline ticket booking, however is now one of the largest travel companies in India. Initially it was incorporated with the trade name “Travel by Web Private Limited” and later on 28th June, 2002 it changed its name to the current name i.e. MakeMyTrip India Pvt. Ltd. The domain name makemytrip.com was registered on 8th May, 2000 in the name of the founder of the plaintiff company Shri Deep Kalra.

The High Court vide its order on 25th September, 2017 had restrained the defendants, its partners, directors, shareholders, assignees and travel agents from selling, offering for sale, advertising, directly or indirectly dealing in any of the services under the mark GETMYTRIP or any other deceptively similar mark to that of the plaintiff’s registered trade names/marks and also further restrained them from using the domain name getmytrip.com as well.

However the defendants argued that the plaintiff had concealed material facts i.e. they had prior knowledge of the predecessor-in-interest of the defendant using the trademark GETMYTRIP and plaintiff had been doing business with the predecessor-in-interest of the defendant being Hermes I Tickets Private Limited under the mark GETMYTRIP since 2011. The plaintiff had also used the services of the defendant under the mark GETMYTRIP. The plaintiff was in fact a subscriber of the defendant’s service on its website www.getmytrip.com. It was alleged that the plaintiff operated in business to consumer (B2C Model) whereas the defendant operates in business to business (B2B Model), thus there existed no scope of confusion.

Thus the defendant claimed to be the successor-in-interest of Hermes which was using the mark/ name/ brand GETMYTRIP and the domain name www.getmytrip.com and that they were in business with the plaintiff which the plaintiff could not deny at least from 21st September, 2011 when Hermes and the plaintiff entered into an API agreement wherein Hermes was using the platform GETMYTRIP.

Decision:

The High Court laid down, “No doubt, defendant claimed user in the application since 2016, however the fact remains that plaintiff with the same trademark and domain name i.e. GETMYTRIP and www.getmytrip.com respectively had been dealing with the Hermes which is the predecessor-in-interest of the defendant at least since 2011, thus had knowledge of this trademark and domain name being used.”

However the court while reiterating the judgment of Midas Hygiene Industries (P) Ltd & Anr. Vs. Sudhir Bhatia & Ors. (2004) 3 SCC 90 stated that the Courts would be entirely wrong in refusing the relief of injunction merely on the basis of delay and latches.

“In the present case the issue is not of delay and latches only but of acquiescence where the plaintiff to its knowledge permitted continued user by Hermes of the trademark GETMYTRIP and domain name www.getmytrip.com, however now to its transferee-in-interest i.e. the plaintiff has objection to it on the sole ground that Hermes never operated in B2C domain but in B2B domain “ court added.

The High Court settled the point of law on acquiescence by citing the Supreme Court decision in Power Control Appliances v. Sumeet Machines (P) Ltd (1994) 2 SCC 448.

The Court mentioned that inaction against an infringer who has lot of business competing with that of the plaintiff would not amount to acquiescence. In the present case, Hermes was holding a substantial share in the market place therefore it could not be said that Hermes was an insignificant infringer. Hermes too was working in B2C space thus competing with plaintiff’s business.

Thus the Court finally summed up by observing that

“Sufficient at this stage would be to note that in view of the conduct of the plaintiff suppressing material facts, in the cause of action the grievance of the plaintiff being qua use of the infringing mark and not the party using it, the plaintiff’s claim of injunction being not only against the defendant but also its franchisees, agents etc., and having permitted Hermes to use the trademark GETMYTRIP for a long time, this Court finds that no case for grant of interim injunction in favour of plaintiff pending the suit is made out. “

The Court consequently vacated the interim order dated 25th September, 2017 against the defendants. However, to protect the interests of the plaintiff , it ordered the defendant to maintain its account statements and submit the same in sealed cover after every six months.

Read the judgment below:

MUG13122017SC6432017-watermark

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