Using Another Person’s “well-known trade mark” is trying to take Advantage of Goodwill: Delhi High Court Imposes Cost And Damages

The Delhi High Court imposed cost and damages while stating that using another person’s “well-known trade mark” is trying to take advantage of Goodwill.

Court Observation 

The single judge bench of Justice Navin Chawla stated that use of the VISTARA Marks not only amounts to infringement and passing off of the mark of the plaintiff but would cause dilution of the mark of the plaintiff. It is also likely to cause deception and confusion in the mind of the unwary consumer. 

The court said that the apprehension of national as also international security concerns at airports by mala fide usage of the baggage tags and keychains being offered for sale by the defendant prima facie appears to be valid in nature.

The court added that airports are an incredibly critical junction of not only travel but also of trade and commerce; any lapse in security, especially by permitting the sale of vagrantly-infringing goods, would be turning a blind eye to obvious wrongdoings of the defendant. 

Background 

It is the case of the plaintiff that the plaintiff was incorporated in the year 2013 as a joint venture between TATA Sons Limited and Singapore Airlines Limited, with TATA Sons holding the majority stake of 51% (Fifty-One Percent) in the plaintiff-company. 

The plaintiff, as on the date of filing the suit, has been serving thirty-six destinations with over two hundred flights a day with all aircrafts bearing the VISTARA Marks of the plaintiff. Despite the e-commerce platform being based mostly in China, the website contained several listings by the defendant of infringing baggage tags and keychains bearing the ‘VISTARA Marks’ in the aubergine and gold colour-combination without the authorisation of the plaintiff which were eligible for shipping to India.

Arguments  

Counsel appearing for the plaintiff submitted that the adoption of the plaintiff‟s ‘VISTARA Marks’ by the defendant vis-à-vis the sale of baggage tags and keychains bearing not only the same trade marks but also the same trade dress as that of the plaintiff amounts to infringement, passing off, dilution and unfair competition. 

The counsel further contended the word mark of the plaintiff, that is ‘VISTARA’ was declared to be a „well-known trade mark’ as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 by the Court in a decision in TATA SIA Airlines Limited v. M/s Pilot18 Aviation Book Store & Anr., and that by virtue of such declaration, the plaintiff‟s ‘VISTARA Marks’ are entitled to the highest degree of protection conferred under the law, across all classes, which includes against disparate goods and services.  

Decision 

The court said that it is trite law that where the defendant, in spite of being served with an injunction order, chooses not to contest the suit, the same fortifies that it is indulging in activities complained of by the plaintiff in the plaint.

The court after considering the fact that the plaintiff is the registered proprietor of the ‘VISTARA Marks’ and none has entered appearance for the defendant, opined that the defendant has no justification for the adoption of an identical trade mark for sale of their goods. 

The court stated that the plaintiff is entitled to a decree in its favour in terms of prayers made in paragraph 37 (a) to (c) and (e) against the defendant. 

The court held that  the plaintiff is entitled to damages and costs quantified at Rs. 20 Lakh.

Case title: Tata Sia Airlines Limited v/s Shenzhen Coloursplendour Gift Co Ltd & Anr.

Citation: CS(COMM) 352/2020 & I.A. 9553/2021

Click here to read the Order/Judgment