VISTARA – Trademark Infringement of well-known mark
Introduction
The Well-known trademark is defined under Section 2(1) (zg) of the Trademarks Act, 1999. The act has incorporated the concept to protect a trademark identified with a particular type of goods and services and protect the same mark used with any other goods/services. Compared with ordinary trademarks, the scope of protection of the well-known trademarks is much more comprehensive. This can be further interpreted by stating that the trademark law protects the goods/services for which it is registered and covers the non-identical and dissimilar goods if such use deceits the public at large and is likely to infringe the owner of the well-known trademark.
The present cases also involve an infringement of the well-known trademark named “Vistara” by Kanha Trading company and Vistara Ac Restaurant and Family function Hall.
Facts
The plaintiff, the Tata Sia Airlines Private Limited, is a joint venture of Tata Sons Private Limited and Singapore Airlines Limited, which runs the airline under the mark ‘Vistara,’ which provides aviation services and aviation-related services under the mark. The plaintiffs have been the owners of the mark ‘Vistara’ since 2014.
The VISTARA mark has also been recognized as a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 by a coordinate Bench of the Delhi High Court vide order dated 5th August 2019 in (Tata Sia Airlines Ltd. vs. M/s Pilot18 Aviation Book Store[1])
Also read: Famous MDH granted injunction for DEGGI mark
Tata Sia Airlines Limited vs. Kanha Trading Co.[2]
The first conflict regarding the mark arose in 2021, wherein the defendant was using the impugned mark ‘VISTAARA’ for the footwear, which was liable to be available for sale on e-commerce websites such as Amazon Flipkart and Snapdeal. The plaintiffs were infringed by the defendants’ action and issued cease-and-desist notice to the defendants in July 2021, but the defendants did not respond to the warnings given. The plaintiffs also conducted an investigation that revealed that the defendants sought to capitalize on the plaintiff’s goodwill and infringe the plaintiff’s registered mark. The plaintiffs, in their defense, contended that:
- When the defendants sought registration of the VISTARA mark under Class 25, on a ‘proposed to be used basis,’ the Trademark Registry objected to the same as the mark was deceptively similar to the plaintiff’s registered mark. The registration could cause public confusion and other losses if granted registration.
- Secondly, they stated that the mark was recognized as a well-known trademark under Section 2(1) (zg), and is therefore provided with additional protection under Section 11(6) and Section 29(4) of the Trademarks Act, 1999 by the Delhi High court.
Hence, the plaintiff made a prima facie case of infringement under Section 135 of the Trademarks Act, 1999.
Also read: ‘Go Air’ airline rebranded as ‘Go First’
Tata Sia Airlines Limited vs. Vistara AC Family Restaurant and Function Hall[3]
The second conflict of the plaintiffs again arose in 2021, wherein the defendants, namely Vistara Ac Restaurant and Family function Hall, were using the mark for the restaurant services and even featured the same on the menu card and tissues of the restaurant. The plaintiffs issued a cease-and-desist notice to the defendants for the infringement. To this, the defendants responded via an undertaking stating they would adopt a new mark and discontinue using the plaintiff’s registered mark. A further notice was issued to the defendant to remind them for abiding by the undertaking as they continued using the VISTARA mark. Resultantly, the plaintiffs made a prima facie case and filed a suit of infringement against the defendants under Section 135 of the Trademarks Act, 1999.
Issues
The issue between the parties concerns the registered well-known trademark named “Vistara.” The question of law before the Court is:
- Whether the defendants are at fault for the infringement of the mark under Section 135 of the Trademarks Act, 1999.
Also read: Frankinn Aviation Services sues Frankinn Creations
Order
In the first instance, Justice C. Hari Shankar of the Hon’ble Delhi High Court passed an ex-parte injunction order in favor of the plaintiff. The Court barred the defendant from using the registered mark and logo of “Vistara” in any of their goods and services concerning being a trading name, corporate name, and domain name, which would result in public confusion and deceit..
In the second instance as well, the plaintiff succeeded in bagging an ex-parte interim injunction favoring them. Justice C.Hari Shankar of the Hon’ble Delhi High Court passed an order against the defendants and restrained them from using “VISTARA” in any of their associated companies and subsidiaries.
Conclusion
Hence, we can interpret it from the Court’s orders that the judge’s final decision will favor the plaintiffs because of the constant infringement of the well-known trademark “Vistara.” Therefore, it is also essential to understand that the protection of well-known trademarks is vital from the perspective of businesses and consumers to protect them from fraud and imposition.
[1] CS(COMM) 156/2019
[2] CS(COMM) 686/2021
[3] CS(COMM) 701/2021
— Harmanpreet Kaur (Intern), Amity University, Kolkata
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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