The Appellant (original Plaintiff) was operating a full-service airline under the trademark “VISTARA” as a joint venture between Tata Sons Private Limited and Singapore Airlines. The Appellant adopted the trademark “VISTARA” on August 11, 2014, derived from the Sanskrit word “Vistaar,” meaning “limitless expanse of possibilities.” Appellant was continuously and extensively using the mark, and obtained registration for the trademark “VISTARA” (word & logo) in various classes. The Appellant, through its website and mobile app, was providing services in the Travel and Hospitality Industry, investing significant amounts in advertising and sales promotion of its trademark “VISTARA”. The Appellant’s trademark was also declared a “well-known trademark” under Section 2(1)(zg)4 of The Trade Marks Act, 1999, by the Court in Tata SIA Airlines Limited v M/s. Pilot18 Aviation Book Store & Anr.
In September 2020, the Appellant discovered that the Respondents, without any authorization, were using the trademark “VISTARA” as their corporate name (“Vistara Home Appliances Private Limited”), domain name (“www.vistarahome.com”), and device marks on their website. The Respondents were engaged in selling home appliances, such as LED TVs, OTGs, fans, and coolers, under the contested mark “VISTARA” on their website and third-party platforms. Furthermore, the Appellant alleged that the Respondents falsely claimed to have used the mark since July 2016 and additionally applied for its registration in Classes 7, 9, and 11 before the Trademark Registry. Appellant filed a suit for trademark infringement and passing off in May 2021, seeking a decree of permanent injunction from using the trademark “VISTARA”.
Arguments of both parties before the Trial Court:
Before the learned Trial Court, the parties raised the following contentions:
Contentions of the Appellant:
- The Appellant argued that the Respondents’ use of the impugned mark “VISTARA” (device) for home appliances resulted in confusion among the public and caused significant damage to the Appellant’s business and goodwill.
- The fact that Tata Sons, a 51% majority shareholder of the Appellant, is a renowned player in the industry offering FMCG products, appliances, and household goods, strengthens the Appellant’s claim.
- The adoption of the impugned mark by the Respondents lacks justification and is dishonest in nature, causing the erosion and dilution of the Appellant’s trademark “VISTARA”.
Contentions of the Respondents:
- The Respondents contested that they had taken cautious measures to ensure that their mark is distinct from the Appellant’s mark, including using different color combinations, fonts, styles of writing, and overall representation.
- “VISTARA” is not a coined or invented word but a word found in Sanskrit and other languages, generally present in several dictionaries. They pointed out that there are various other users of VISTARA marks in different classes.
- The Respondents claimed that they adopted the impugned mark “VISTARA” in good faith and have been using it concurrently with the Appellant.
- The Respondents argued that as they began using the impugned mark within one year after the Appellant, there is no passing off. They also contended that their goods are unrelated to those of the Appellant, and they are not unauthorized users under Section 29 of the Trade Marks Act.
Findings of the Trial Court:
The Trial Court held:
- The term “VISTARA” has a dictionary meaning and cannot be monopolized by the Appellant.
- The Appellant’s trademark “VISTARA” is declared a well-known mark but is deemed irrelevant as it was declared so after the registration of the Respondents’ mark.
- The Respondents are entitled to use the mark “VISTARA” for goods in Classes 7, 9, and 11, as the customers, trade channels, and industries of both parties are different and easily distinguishable.
- It is too early to conclude that the Respondents adopted the mark “VISTARA” to encash on the Appellant’s reputation or engage in passing off.
Thus, the learned Trial Court dismissed the interim application of the Appellant.
The matter before the High Court:
Aggrieved by the decision of the learned Trial Court, the Appellant challenged the order of the learned Trial Court on similar grounds.
Arguments of the Appellant:
- The adoption of the impugned mark “VISTARA” by the Respondents and its subsequent registration is mala fide, as there is no connection with the Appellant’s trademark.
- The registration of the impugned mark was invalidly obtained under Sections 9 and 11 of the Trademarks Act, granting the Court the power to issue interlocutory orders restraining the Respondents.
- The Appellant is the prior adopter and user of the trademark “VISTARA,” which has been declared a well-known mark, and the competing marks are phonetically similar.
- There was no delay, laches, or acquiescence by the Appellant in approaching the Trial Court.
Contentions of the Respondent:
- A mere declaration of the trademark “VISTARA” as a well-known mark is insufficient, and the test laid down by the Court in Tata Sons Ltd. vs. Manoj Dodia & Ors has not been followed.
- The Appellant is not entitled to the relief of injunction as the respondent is already a registered proprietor of the impugned mark in different classes.
- The Appellant cannot claim a monopoly on the dictionary word “VISTARA,” and the impugned mark is a device mark compared to the Appellant’s word mark.
- There is no triable issue raised, and the trademark registry was satisfied while granting registration of the impugned mark.
The Division Bench of the Delhi High Court, comprised of Hon’ble Mr. Justice Manmohan and Hon’ble Mr. Justice Saurabh Banerjee, set aside the judgment of the Trial Court on the following grounds:
- The contention that the impugned mark “VISTARA” is a common dictionary word in various languages, including Sanskrit, is incorrect. The word “VISTARA” is neither a common word nor found in the dictionary in any language. It is at best a derivative of the Sanskrit word “Vistar”. Therefore, the word “VISTARA” cannot be categorized as a common dictionary word. The Appellant adopted the trademark in good faith and genuinely. The trademark “VISTARA” is thus arbitrary and distinctive (see para 18).
- The Trial Court erred in denying the relief of injunction based on the argument that the Respondents adopted and used the impugned mark in different classes/products. When assessing competing marks, they should be considered as a whole, taking into account the overall impact and impression they will have on the general public and members of the trade. The primary consideration is the trademark’s actual identification, rather than its sound, appearance, or type. The Trial Court’s finding that the conflicting marks were not significantly dissimilar and were phonetically similar is crucial, irrespective of whether one mark is a (word) mark and the other is a (device) mark (see para 20).
- It is established law that the mere existence or presence of a mark in the market or in the Trademark Register is not sufficient, particularly when there is no evidence of its usage. The Respondents have failed to provide any proof of usage for the products in Classes 7, 9, and 11 for which the mark is registered (see para 21).
- The Respondents’ claims of contracts, trade channels, business networks, and potential loss of customers lack proof. The adoption of the impugned mark is shrouded in mystery and lacks relevance. The Trial Court erred by relying on unsubstantiated assertions without supporting evidence. Even if assumed true, dishonest adoption cannot be protected under Section 12 of the Trademarks Act. The principle of “adoption” prevails over “usage” in trademark law (see para 22).
- The non-adoption and non-usage of the impugned mark “VISTARA” in the same class and for the same goods as the Appellant hold no significance in the current proceedings. Class discrimination or distinction becomes irrelevant when the adoption of the mark by the respondent no.1 is deceitful and tainted under suspicious circumstances without any clear reasons (see para 23).
- The Trial Court overlooked the significance of the association, existence, and popularity of the Appellant’s registered trademark “VISTARA” as a well-known mark. The legislative recognition of well-known marks and the availability of services/products under common dictionary words demonstrate their eligibility for trademark registration and protection (see para 24).
- The Appellant, despite having trademark registration for “VISTARA” in other classes, issued legal notices, followed by a lawsuit against the Respondents, indicating its clear intention to expand its presence. Moreover, Tata Sons, a majority shareholder in the Appellant, has been involved in FMCG products, including those falling under Classes 7, 9, and 11 for which the Respondents applied for registration. These crucial facts should have been considered by the Trial Court when adjudicating the interim application (see para 25).
The Delhi High Court reversed the judgment of the Trial Court and favoured the contentions of the Appellant. The use of the mark by the Respondents was found to be in bad faith. The reasoning of the High Court was based on (a) Appellant’s mark is arbitrary, (b) Respondents’ mark is phonetically identical to the Appellant’s mark, and (c) Dishonest and bad faith use of the mark by the Respondents.
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