Pluto Travels India Private Limited v. PTW Holidays Private Limited

9.6. Given the popularity of both word mark “PLUTO” and the device mark, it is highly unlikely that the defendant was unaware of their presence in the market. Hence, the adoption of the impugned marks by the defendant is dishonest.

9.7. Comparison of the rival marks “PLUTO”/ of the plaintiff with “PLUTO TOURS”/ of the defendant reflects that the prominent/ dominant feature thereof is the word “PLUTO”, thus the word “PLUTO” has to be accorded greater weight, more so, since it creates stronger and more lasting impression on the public. While comparing the device marks and in their entirety, the emphasis has to be on the similarities rather than dissimilarities between them. Reliance was placed upon KRBL Limited. v. Praveen Kumar Buyyani & Ors.[4] and M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr[5]. In any event, the rival word marks “PLUTO” and “PLUTO TOURS” are virtually identical. The word “TOURS” in the defendant’s mark is merely descriptive of services offered by the defendant and adds no distinctiveness to it.

9.8. All the aforesaid makes the defendant’s mark deceptively similar to that of plaintiff. In fact, due to the aforesaid identity/ similarity between the marks, there has been actual confusion among customers of both the parties who mistakenly associated defendant with plaintiff and, upon being dissatisfied with the defendant’s services, left negative comments/ reviews on the Google page of the plaintiff, thereby causing damages to plaintiff’s goodwill, reputation and business. In any event, the other elements in the defendant’s mark, such as text “Tours World Holiday Pvt. Ltd.” or the artistic elements therein, are merely ancillary and do not impart any distinctiveness to the defendant’s marks.

10. In the wake of the afore-going, Ms. Achal Shekhar, learned counsel for the plaintiff sought an interim injunction against the defendant till the disposal of the present suit. Submissions by learned counsel for defendant:

11. In response, Mr. Rishub Kapoor, learned counsel for the defendant has made the following submissions:-

11.1. The defendant has honestly and in a bona fide manner adopted the mark on 14.04.2016 and has been continuously using it since then. The said mark of the defendant was uniquely developed by Mr. Pankaj Samyal, the manager of the erstwhile proprietorship, with the assistance of his family members. Presently, it is in the name of the present defendant, a private limited company.

11.2. The defendant is engaged in providing leisure trip, ayurveda and yoga tours, vacation planning, honeymoon travel, adventure travel, corporate travel and customized tours as per the needs of the customer which is very different from the services which the plaintiff is providing. Under such circumstances, the use of the marks “PLUTO TOURS”/ by the defendant is not likely to cause any confusion among the customers, as the nature of services offered by the defendant is entirely different from those offered by the plaintiff. Even more, the parties cater to distinct customer bases; on one hand, the plaintiff primarily caters to the business houses, whereas on the other hand, the defendant caters to individual customers.

11.3. Over a period of eight years, the defendant, owing to its excellent service, has acquired immense goodwill and reputation, which is evident from the revenue figures earned by it, and which are as under:-

11.4. Moreover, the defendant has also invested significant portion of its revenue in advertisement and publicity of its mark, the details whereof are set out as under:-

11.5. Resultantly, the defendant has become a household name across India and an average consumer associates the marks “PLUTO TOURS”/ with the defendant only.

11.6. Although, both the rival marks fall in Class 39, they pertain to different categories within that Class, as the nature of services offered by the parties is entirely different. Even otherwise, the plaintiff cannot claim a monopoly over all the services offered under Class 39. Reliance was placed upon Vishnudas Trading As Vishnudas Kishendas v. Vazir Sultan Tabacco Co. Ltd., Hyderabad and Anr.[6] and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited.7.

11.7. The defendant’s mark and the plaintiff’s mark are structurally so different that they are incapable of causing any confusion in the mind of the average consumer. Moreover, the word “PLUTO” in the defendant’s mark is displayed in white, bold, capital letters while in the plaintiff mark, the text “PLUTO” is in golden capital letters. The defendant’s mark contains the phrase “Tours World Holiday Pvt. Ltd.” in smaller capitals letters below the word “PLUTO”, in contrast to the plaintiff’s trademark “PLUTO” featuring the phrase “Driven by Class” in smaller letters. Moreover, the background of the defendant’s mark is gradient blue, while that of the plaintiff’s mark is black. Additionally, the defendant’s mark features a small circle containing a world map outline and an airplane graphic, whereas the plaintiff’s mark displays a horse-drawn carriage.

11.8. When the rival marks are seen in entirety, they are wholly dissimilar and there is no likelihood of confusion and the defendant’s marks “PLUTO TOURS”/ would create a completely different impression in the mind of average customer. Moreover, the defendant has also added one liner in the form of a ‘Disclaimer’/ clarification on the bottom of its homepage of its websites “plutotours.com” and “plutotours.in” to efface even the likelihood of confusionin the minds of the consumers. Reliance was place upon Sammaan Finserv Limited v. Svamaan Financial Services Private Limited & Ors[8]. Furthermore, a few Google reviews/ comments are insufficient to show confusion, as customers typically verify the origin of products and services before making a purchase or availing themselves of such services. Reliance was placed upon Mountain Valley Springs India Private Limited v. Baby Forest Ayurveda Private Limited (Formerly Known As M/S Landsmill Healthcare Private Limited) & Ors.[9]

11.9. The plaintiff’s claim over the word “PLUTO” is misplaced, as the word “PLUTO” is a common English word over which the plaintiff cannot claim monopoly/ exclusive right. Even if there is commonality in the use of the word “PLUTO” in both rival marks, such similarity alone is not sufficient to establish a case of infringement or passing off. Reliance was placed upon Kedar Nath Gupta v. J.K. Organization10.

11.10. The plaintiff has misrepresented the material facts as though in the earlier two Legal Notices as well as the Notice of Opposition filed against the defendant’s earlier trademark application, the plaintiff referred/ represented itself as a “luxury car rental service provider” whereas in the present suit it has referred/ represented itself as a “company providing travel and tour services”. 2025:DHC:1007-DB

11.11. Lastly, since there is an ulterior motive to cause irreparable loss and injury to the defendant, the plaintiff is not entitled to any relief.

12. In the wake of the afore-going submissions, the defendant opposed grant of an interim injunction in favour of the plaintiff. Analysis and Findings:

13. The plaintiff has filed substantial documents/ proof in the form of TAN allotment letter, EPFO challan, plaintiff company’s master data from the Ministry of Corporate Affairs website, brochure, trademark registration certificate along with other materials on record qua the use of both the word mark “PLUTO” as its trademark/ tradename since its incorporation and adoption in the year 2004 as also the device mark thereafter since January 2016 in relation to transport, travel and tour services. As such, the plaintiff has been able to establish the continuous and uninterrupted usage of its word mark “PLUTO” and device mark.

14. On the other hand, the defendant was, admittedly, incorporated much later in March 2016 in comparison to the plaintiff which was incorporated in the year 2004. Thus, there is a substantial gap of twelve years between them. Though the defendant claims to have adopted the impugned device mark on 14.04.2016, however, application for registration thereof was only filed on 28.11.2022. The same, prima facie, carried no weight and cannot come to the aid of the defendant, firstly, since the defendant filed registration thereof only after the plaintiff issued the first Legal Notice on 04.11.2022 and, secondly, the said application, after opposition by the plaintiff, has since been abandoned, thirdly, even though the defendant claims to have been using the impugned mark continuously and uninterruptedly since April 2016, however, it has failed to adduce any credible document(s) of substance to enable this Court to believe and/ or come out with the exact date thereof. In fact, the only document evidencing the usage thereof is a Tax Invoice dated 14.04.2016 wherein the GST number corresponds to a registration that becomes effective subsequently only from 07.06.2018. Moreover, since GST was implemented only in July 2017, the presence of a GST number on a Tax Invoice of the year 2016 is factually impossible. Thus, the Tax Invoice dated 14.04.2016 of the defendant is of no credence at all.

15. It emerges from the aforesaid that the plaintiff is not only the prior adopter but is also the prior and continuous user thereof who also has the registrations for both word mark “PLUTO” and the device mark. Also, there is no denial to the fact that the plaintiff herein, besides being the owner of both word mark “PLUTO” and the device mark, is also the registered proprietor thereof, which registrations are validly continuing and subsisting in the name of the plaintiff in the Register of the Trade Marks and which have never been opposed by the defendant herein. As a result thereof, and further being a registered proprietor, the plaintiff is well and truly entitled to claim protection in and to both word mark “PLUTO” and the device mark. Moreover, it is also a matter of fact that it was the plaintiff herein who filed an opposition to the impugned device mark of the defendant before the Trade Marks Registry, and which was subsequently abandoned. It is noteworthy that the defendant has till date not taken any steps qua restoration of its trademark before the Trade Marks Registry.

16. Although the defendant has raised some semblance of defence, but all throughout it has been unable to give any plausible explanation for its adoption of the word “PLUTO”, barring that the word “PLUTO” is a common English word. The said word “PLUTO”, when used as a trademark by the plaintiff in relation to providing services falling in Class 39, is itself distinct and unique as it has no connection with the class of services offered by it, making it inherently distinctive.

17. It is also interesting to note that the defendant has nowhere denied that it was unaware of the plaintiff and/ or its existence in the same field/ line of services and/ or about both word mark “PLUTO” and the device mark of the plaintiff. Moreover, though the defendant has claimed that it is providing different services than those provided by the plaintiff, however, there is no denial of the fact that the services are very much connected, ancillary and intertwined, as also the fact that the very same defendant had itself applied for registration of the impugned device mark under the very same Class 39 wherein both word mark “PLUTO” and the device mark of the plaintiff were duly registered. It is too far-fetched for the defendant to contend otherwise.

18. The defendant cannot be given any benefit of the above sham and moonshine defences raised, particularly, when it comes to the adoption thereof and also since the defendant has all throughout maintained a stoic silence about it. The defences raised by the defendant are thus said to be nothing but an afterthought. Also, in view of the claims made by the defendant, it can well be presumed that the defendant was already aware of the plaintiff and its word mark “PLUTO” and the device mark being duly registered.

19. In view of the aforesaid, particularly, since the very adoption of the impugned marks is shrouded in mystery, the usage thereof and the benefit derived therefrom are unlawful and unwarranted.

20. Be that as it may, adverting to a comparison of the rival marks in issue, the same are reproduced as under:- Plaintiff’s Marks Defendant’s Marks/ Impugned Marks PLUTO PLUTO TOURS

21. The aforesaid reveals that the impugned marks of the defendant has subsumed the prominent part of the mark “PLUTO” belonging to the plaintiff in its entirety and is nearly identical/ deceptively similar to it. The defendant, in its word mark, has merely added a suffix “TOURS” to the plaintiff’s existing mark “PLUTO”, which the Hon’ble Supreme Court in Ruston & Hornsby Ltd. v. Zamindara Engineering Co.11 as also a learned Single Judge of this Court in KSB Aktiengesellschaft & Ors. v. KSB Global Limited12, Greaves Cotton Ltd. v. Mohammad Rafi & Ors.13 and Subhash Chand Bansal v. Khadim’s and Ors.14, held that merely adding a prefix/ suffix to an existing mark does not make the offending mark distinctive. Accordingly, just by appending “TOURS” to the plaintiff’s mark, defendant cannot claim that no infringement is made out, as the resulting mark still remains highly deceptively and identically similar and costumers of average intelligence are likely to associate the origin of defendant’s services with that of the plaintiff.

22. Moreover, on comparing the rival device marks and

2012 SCC OnLine Del 4326, it is evident that the prominent feature thereof is the word “PLUTO”, which appears in bold and capital letters. The other features such as difference in colour, words/ tagline are insufficient to distinguish the two marks. An average customer of imperfect recollection is likely to recollect only the term “PLUTO” and not other ancillary features in the mark. The adoption of the prominent word of the label/ device mark amounts to infringement, as has been held by a learned Single Judge of this Court in MAX Healthcare Institute Ltd. v. Sahrudya Health Care Pvt. Ltd.15, relevant paragraphs whereof are reproduced as under:- “… …G. That brings me to the star argument of the senior counsel for the defendant, of the label/device mark of the plaintiff being entirely different from the label/device mark of the defendant. I must admit that I myself being a resident of Delhi since birth, and familiar as any other citizen of Delhi with Max Hospitals, having not only visited patients therein but having also umpteen times passed in front of Max Hospitals/Healthcare Services, had never noticed the device of a single/double cross appearing on the label/device marks of the plaintiff or even the words Healthcare or Health Staff. If at all any other word besides MAX stuck to the mind, that was of Super Speciality as one of the twin MAX hospitals in Saket is called. My mind always identified the hospitals of the plaintiff with the word MAX, and not necessarily along with the word Healthcare or Hospital or Medcentre or Health Staff or with the medical cross. I can well imagine others, not having dealings with the plaintiff, also associating plaintiff only with MAX and with no other device or word. In addition, what my mind was familiar with, was the earlier names of the hospitals, management whereof has been taken over by the plaintiff and/or management whereof was taken by the plaintiff and on which take over, the plaintiff invariably adds MAX to the earlier/existing names. Mention in this context 2019 SCC OnLine Del 9036 can be made of Janki MAX and MAX Centre for Liver & Biliary Sciences also. The same would be the position of others. Again, I have wondered whether the legislators of Trademarks Act providing for registration of label/device marks can be presumed to be ignorant of human psychology and/or the way the human mind perceives such marks. The answer is again no. It has been held in Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346 affirmed by the Division Bench in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359, Prathiba M. Singh v. Singh & Associates 2014 SCC OnLine Del 1982 and Gillette Company LLC v. Tigaksha Metallics Pvt. Ltd. (2018) 251 DLT 530 that the test for infringement of a label/word mark is the test of prominent word of the mark. Besides the judgment cited by the senior counsel for the plaintiff, mention may be made of Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel (2006) 8 SCC 726 where it has been held that adoption by the defendant of a prominent word in the label/device mark of the plaintiff amounts to infringement. The label/device marks may be of different kinds. Those with words only as prominent part thereof with a not so prominent device, have in Keshav Kumar Aggarwal v. NIIT Ltd. (2013) 199 DLT 242, Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services 2015 SCC OnLine Bom 531, Mallcom (India) Ltd. v. Rakesh Kumar 2019 SCC OnLine Del 7646 and New Balance Athletics, INC v. Apex Shoe Company Pvt. Ltd. 2019 SCC OnLine Del 7393, appeal preferred whereagainst was dismissed vide order dated 26th March, 2019 in FAO(OS) (COMM) No. 59/2019 titled Apex Shoe Company Pvt. Ltd. v. New Balance Athletics, INC, held to be infringed by the defendant who in his label/device adopts the same word/s by making only variation in the not so prominent device. The nature of business/services also are of several kind. A label/device mark in relation to some businesses, as of textile and/or prints, may invite the attention of the public and/or the consumer to the brand of the label/device mark but no so in others. The business of providing hospitals/healthcare services is such, where people/consumers pay least attention to the device or the label mark and read generally the first word of the label mark by which the hospital/healthcare services come to be known and recognized......”. [Emphasis supplied]

23. In fact, more recently also, another learned Single Judge of this Court in Jaquar and Company Private Limited v. Ashirvad Pipes Private Limited16 while ruling on similar lines reiterated the same principle and held as under:- “… …34.11.3.[4] Thus, where the competing marks are device marks but the prominent feature of the device marks in each case is a word, and the words themselves are phonetically, confusingly and deceptively similar to each other, the Court would return a finding of deceptive similarity even if the two device marks, viewed as complete marks, are totally dissimilar. This decision therefore, completely negates Mr. Lall's argument that there is no deceptive similarity in the present case as, comparing device mark to device mark, the ARTISTRY device mark of the defendant is not similar to the ARTIZE mark of the plaintiff. Inasmuch as the word ARTISTRY in one case and the word ARTIZE in the other constitutes the main feature of both the marks, the comparison has to be between ARTISTRY as a word and ARTIZE as a word even if they are used as device marks… …” [Emphasis supplied]

24. The defendant seeks to ride upon the goodwill and reputation of the plaintiff by simply making some minor changes/ modification to the registered trademarks of the plaintiff to carve out a superficial distinction therein, since the prominent element in both the impugned trademarks of the defendant remain the very same word “PLUTO”.

25. Moreover, identity/ similarity of the word “PLUTO” between the rival marks; the similar nature of services offered by the parties; both the parties having the similar customer base; and theprevious actual instances of confusion and deception amongst the members of the general public and also amongst those belonging to the same trade channels, are all sufficient reasons to believe that there is all likelihood thatthe defendant and its impugned marks may be mistakenly associated with the plaintiff. Thus, unless stopped,the same could/ would lead to wider ramifications.

26. Further, though it is the case of the defendant that it has recently added one liner in the form of a ‘Disclaimer’/ clarification on the bottom of its homepage of its websites “plutotours.com” and “plutotours.in”, however, considering the aforesaid factual matrix involved, the same cannot absolve its previous wrongful adoption, much less, accrue any right/ title/ interest in its favour to continue using the impugned marks. If the defendant is allowed to continue with the impugned marks, it would amount to allowing the defendant without any permission/ authority/ leave/ sanction from the plaintiff.

27. Lastly, reliance by learned counsel for the defendant upon Vishnudas (supra) and Nandhini Deluxe (supra), being misplaced, are of no assistance to the case set up/ defences raised by the defendant and are completely different to the facts herein. Similarly, Mountain Valley (supra) is also not applicable herein since this Court is dealing with identical impugned marks whose adoption is unexplainable. Conclusion:

28. In view of aforesaid, the plaintiff has been able to make out a prima facie case with the balance of convenience for grant of an interim injunction in its favour and against the defendant, and if not granted the plaintiff is likely to suffer irreparable harm, loss and injury which cannot be compensated in terms of money. In effect, allowing the defendant to continue under the existing circumstances and using the impugned marks “PLUTO TOURS”/ is likely to end up causing deception and confusion in the market as also amongst the members of general public.

29. Accordingly, in view of the afore-noted reasoning and analysis, the present application of the plaintiff is allowed and the defendant, its partners, officers, employees, agents, affiliates, subsidiaries, franchisees, licensees, and representatives is/ are restrained from advertising, promoting, displaying, marketing, and/ or using the mark “PLUTO TOURS”/ or any mark identical or deceptively similar to both word mark “PLUTO” and the device mark of the plaintiff till the pendency of the present suit.

30. As such, the present application is disposed of, leaving the parties to bear their own respective costs. CS(COMM) 334/2024 & I.A. 43070/2024

31. List before the Court for framing of issues on 07.08.2025.

SAURABH BANERJEE, J. MAY 14, 2025