India: VISTARA deserves to be a well-known trademark says Delhi High Court - SSRANA

India: VISTARA deserves to be a well-known trademark says Delhi High Court

September 26, 2019

By Priya Adlakha and Ruhee Passi

Recently, in the case of Tata SIA Airlines Limited vs. M/S Pilot18 Aviation Book Store & others, Justice Pratibha Singh of the Hon’ble Delhi High Court while deciding a dispute pertaining to trademark infringement stated that ‘VISTARA’ deserves to be declared a well-known trademark.

Facts:

  • The suit was filed by TATA SIA Airlines Ltd. (hereinafter referred to as the ‘Plaintiff’) for permanent injunction restraining infringement of its registered trademark.
  • The Plaintiff is a joint venture of TATA Sons Private Limited and Singapore Airlines Limited and operates a fully functioning airlines ‘VISTARA’ since 2014.
  • ‘VISTARA’ is a registered mark under classes 12, 39, 21, 25, 27 and 28 in India, in Singapore and various other jurisdictions. The mark ‘VISTARA’ is used on various merchandise, uniform, tags and other accessories worn by the staff. A list of trademarks currently on the records of the Trademark Registry pertaining to the mark ‘VISTARA’ are as follows –

 

SI. No. Application No. Class Brands/Trademarks Status
1. 2748039 12 VISTARA

(Wordmark)

Valid up to 02/06/2024

2. 2881502 21 VISTARA (Wordmark) Valid up to
13/01/2025 
3. 2881501 25 VISTARA (Wordmark) Valid up to
13/01/2025 
4.  2881503 27 VISTARA (Wordmark) Valid up to 13/01/2025
5. 2881503 28 VISTARA (Wordmark) Valid up to 13/01/2025
6.  2748039 39 VISTARA  (Wordmark) Valid up to

02/06/2024

 

  • The Plaintiff came to know in February 2019 about the sale of ‘VISTARA’ branded products on the online study portal of M/s Pilot18 Aviation Book Store (hereinafter referred to as the ‘Defendant’) and other e-commerce platforms like Amazon and Flipkart.
  • The Court had already restrained the Defendants from manufacturing, selling, offering for sale and dealing in any manner with a product branded with ‘VISTARA’ or any other deceptively similar mark.
  • The Court had appointed a Local Commissioner on March 26, 2019 and on the same date also restrained the Defendants from selling the products branded ‘VISTARA’.
  • The Local Commissioner visited the Defendant’s premise and found a large number of products bearing the mark ‘VISTARA’. The photographs of the seized goods were placed on record by the Local Commissioner.

Contentions of the Plaintiff:

  • The Defendants were offering merchandise, cups and badges, etc. bearing the mark ‘VISTARA’ on their website.
  • The Plaintiff claimed that some of these products were supplied to Vistara Airlines itself.

Contentions of the Defendant:

  • It was argued that the Plaintiff never sourced any products from the Defendants.
  • The Defendants relied upon the grooming manual of the airlines and said that the Plaintiff provided uniforms and accessories in a controlled manner. The same was done under the control of the Ground Station Head, therefore, it is untrue that the Defendants supplied goods for the Plaintiff’s airlines.
  • The Defendants contented that they have never used the trademark ‘VISTARA’ and the Plaintiff have made up a false story.

Court’s Decision and Analysis

  • The Court said that the plea taken in the written statement by the Defendants that they have never sold any product bearing the mark ‘VISTARA’ is false.
  • The Defendants were selling goods which were bearing not only the Plaintiff’s mark but also of Jet Airways, Spice Jet, Indigo and Air India.
  • The Court said that the sale of these many merchandise with marks of various airlines is not only violative of the trademark rights of these airlines but also a threat to the security in Airports. The goods may help unauthorized person to get entry into the airport.
  • The Court observed that, “this Court is of the opinion that the Defendants are not only liable to be permanently injuncted from using the mark ‘VISTARA’ but are also liable to pay costs and damages.”
  • The Court ordered the Defendants to pay INR 2,00,000/- (2764 USD Approx) to the Plaintiff as damages within a period of 1 month.
  • The goods seized by the Local Commissioner were handed over to the Plaintiff.
  • The Court further remarked in the order that, “the mark VISTARA is quite popular in India and has acquired a unique status. It is a distinctive mark that enjoys enormous goodwill and reputation in the airline, travel and tourism industry. Use of this mark, even in respect of unrelated services would create confusion and deception. It deserves to be declared as a `well-known mark’. The suit is thus decreed in terms of paragraphs 36 (a), (b), (c), (d) & (f). Decree sheet be drawn.”

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