Full Text
HIGH COURT OF DELHI
CS(COMM) 305/2021 & I.A.7710/2021, I.A.7711/2021
FRANKFINN AVIATION SERVICES PRIVATE LIMITED..... Plaintiff
Through: Mr.Kapil Midha and Ms.Pritika Juneja, Advs.
Through: Mr. Mirza Nisar Ahmed Baig, Adv. for R-1 to 3
J U D G E M EN T (O R A L)
16.02.2022
Procedure, 1908)
JUDGMENT
1. By order dated 5th July, 2021, this Court had granted ex parte ad-interim injunction, restraining the defendants (Defendants 2 and 3 are partners of Defendant 1) from using the mark “FLY HIGH”, either by itself or in any combination with other words, as would infringe the plaintiff‟s registered marks in this regard.
2. Subsequent thereto, pleadings in the application have been completed. Learned Counsel for both sides have been heard at length on this application. 2022:DHC:725
3. The mark, forming subject matter of consideration in the present case is “FLY HIGH”. The plaintiff is engaged in providing training in hospitality, aviation, travel management and customer services, and is a well known name in providing training for in-flight cabin crew. The plaintiff is the registered proprietor of:
(i) the registered word mark “FLY HIGH”, vide certificate dated 19th April, 2011, in Class 41 with the services described as “providing of training”,
(ii) the device mark, vide certificate dated 1 7th December, 2018, in Class 41, with services described as “providing education and training services in aviation, hospitality, travel and customer care management”.
(iii) the device mark registration dated 20th January, 2017 including fly high part registered under Class 16 for “paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesnes for stationery or household purposes; artists materials; paint brushes; typewriters and office requisite (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers type; printing blocks”, and
(iv) the device mark under Class 41 in respect of “education; providing of training; entertainment; sporting and cultural activities”.
4. The plaint asserts that the plaintiff has coined and adopted the mark “Frankfinn” in 1980 and has been continuously using the said mark in connection with hospitality, aviation, travel management and customer services since 1993. The mark “FLY HIGH”, it is asserted in the plaint, was coined and created by the plaintiff in 2004. The plaintiff is, as already noted hereinabove, the proprietor of “FLY HIGH” as a registered word mark/device mark under the aforesaid four registrations, all of which continue to be valid and subsisting till date.
5. The plaint also asserts that, on each page of the plaintiff‟s website www.frankfinn.com, the mark “FLY HIGH” figures, thereby indicating that it is an essential part of the market identity of the plaintiff. The plaint has also cited, in this context, the domain names of the plaintiff registered including the mark “FLY HIGH”, viz www.flyhigh.in; app.flyhigh.in; fivt.flyhigh.in; fima@flyhigh.in. The plaint asserts, therefore, that, by dint of long and uninterrupted user, the mark “FLY HIGH” is exclusively identified with the plaint.
6. The plaint also refers to orders passed by Coordinate Benches of this Court, which granted injunction against other entities using the mark “FLY HIGH”.
7. The plaintiff expresses grievance against the defendant using the expression “FLY HIGH” in respect of services identical to those provided by the plaintiff, being provided by it. It is pointed out, in the plaint, that Defendant 1 has a registered domain name www.flyhighinstitute.in. Defendants 1 to 3, it is alleged, are providing services identical to those of the plaintiff, i.e. training services for aviation crew under the name “Fly High Institute of Aviation and Hospitality”. The defendants are also operating the website www.flyhighinstitute.in.
8. On 3rd March, 2020, Defendant 1 applied for registration of the mark “Fly High Institute of Aviation and Hospitality”, claiming user since 2018. As such, the plaintiff submits that the plaintiff has priority of user over Defendant 1. The aforesaid application has been accepted and advertised by the Trademark Registry and Mr. Midha, learned Counsel for the plaintiff, submits that his client intends to oppose the mark within the statutory period available in that regard.
9. Arguing on the application, Mr. Midha, learned Counsel for the plaintiff has invited my attention to the following screenshot from the defendants‟ website: Mr. Midha points out that, from the aforesaid screenshots, it is clear that the defendant is prominently displaying the words “FLY HIGH” as its own mark, under which it is providing training in respect of aviation and hospitality services. Mr. Midha has invited my attention to the fact that the defendant has also applied for registration of the word mark “Fly High Institute of Aviation and Hospitality”, claiming user since 1st June, 2018, under Class 41, describing the services provided as „Training Institute for Aviation and Hospitality‟. As such, he submits, the defendant is seeking registration of the word mark “Fly High Institute of Aviation and Hospitality” in respect of services identical to those provided by the plaintiff, for which the plaintiff is already the registered proprietor not only of the word mark “FLY HIGH” but also of device marks in which “FLY HIGH” is prominently displayed.
10. Mr. Midha further points out that though, in the application filed by it, for registration of its mark, Defendant 1 had claimed user since 1st June, 2018, consequent to the filing of the plaintiff‟s suit, the defendant has sought to amend the user details with the Trademark Registry, and now seeks to claim user since 2002. This, he submits, is directly contrary to the trademark user affidavit filed by Mrs. Shaheen Khanam (Defendant 2), accompanying its application for registration of its mark “Fly High Institute of Aviation and Hospitality”, in which it is averred thus: “TRADEMARK USER AFFIDAVIT In support of the request made to apply for Trade Mark for the mark "MARK" under Trademark Class 41. I, Mrs.
SHAHEEN KHANAM, Proprietor of FLY HIGH INSTITUTE, having registered office at 6-2-983, 2ND. FLOOR, LAKDIKAPUL, KHAIRTABAD, HYDERABAD, TELANGANA., Hyderabad, do hereby solemnly affirm and declare as follows: ****
3. A trademark application is hereby made for registration of the accompanying trade mark in class <41> and the said mark has been continuously used since 01-06- 2018 in respect of the said services.”
11. Mr. Midha has also drawn my attention to the plaintiff‟s own brochure as well as to the following screenshot of the plaintiff‟s website, both of which display, prominently, the word “FLY HIGH” in conjunction with the name of the plaintiff‟s establishment.
12. Mr. Midha submits that, in these circumstances, the services being provided by the defendant being identical to those provided by the plaintiff, it is but apparent that persons seeking to avail such services would mistake those provided by the defendant with those of the plaintiff or would, at the very least, be inclined to draw an association between the two, which, within the meaning of the Trademarks Act, is sufficient to constitute infringement. He, therefore, submits that a clear case has been made out for grant of injunction, pending decision in the suit.
13. Mr. Midha has also submitted that, being itself an applicant for registration of the mark “Fly High Institute of Aviation and Hospitality”, the defendant is estopped from contending that the mark “FLY HIGH” is not distinctive or not entitled to registration. He has relied, for this purpose, on the judgment of the Division Bench of this Court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. v. Anchor Health & Beauty Care Pvt. Ltd.[1] and Indian Hotels Co.Ltd. v. Jiva Institute of Vedic Science & Culture[2], as well as the judgments of coordinate Single Benches of this Court in Automatic Electric Ltd. v. R.K. Dhawan[3] and Creative Travel Pvt. Ltd. v. Creative Tools & Travels India Pvt. Ltd.[4]
14. Refuting the submissions of Mr. Midha, Mr. Baig, learned Counsel for the defendants submits that the expression “FLY HIGH” is a mere combination of two commonly used words, „FLY‟ and „HIGH‟, and that the plaintiff cannot claim a monopoly over the said expression. He submits that the expression is not distinctive in any manner of the plaintiff‟s services and is in use by a number of persons providing similar services, in support of which he has placed on record, as the first document with his reply to the plaintiff‟s Order XXXIX application, a screenshot reflecting the number of parties who have obtained registrations for “FLY HIGH”, in conjunction with other words or on their own, for similar services. He, therefore, submits that the words are common to the trade and that the plaintiff cannot claim any kind of exclusivity in respect thereof.
15. Mr. Baig has also sought to contend, from certain pages from the plaintiff‟s website, that, though the plaintiff has been using the words “Frankfinn”, as distinguishing its services, the words “FLY HIGH” have not acquired any secondary meaning by dint of long usage, insofar as the plaintiff is concerned. In the absence of any such 211 (2014) DLT 466 2008 (37) PTC 468 (DB) (1999) 77 DLT 292 (2020) 268 DLT 256 secondary meaning, he submits that the plaintiff is not entitled to any injunction, for which purpose he has placed reliance on the judgment of this Court in Globe Superparts v. Blue Sueprflame Industries[5].
16. He further submits that, visually, the logo of the plaintiff and the defendants are different and that the persons availing their services, being students, and belong to a literate class of society, would be easily able to distinguish between the plaintiff and the defendant, so that there is very little likelihood of any confusion as a result of the usage, by the defendant, of the allegedly infringing mark. He also submits that the plaintiff is not the originator or inventor of the mark “FLY HIGH” and cannot, therefore, seek exclusive trademark rights in respect of the said mark.
17. Nonetheless, to a query from the Court, Mr. Baig candidly acknowledges that his client has not opposed the grant of any of the “FLY HIGH” marks to the plaintiff, either prior to or after their registration and has not moved the Trademark Registry or any forum for revocation or cancellation of the mark.
18. Arguing in rejoinder, Mr. Midha, learned Counsel for the plaintiff submits, adverting in the first instance to the extracts from the website of the Trademark Registry, filed by the defendant as representing the number of entities who are using the mark “FLY HIGH” and have obtained registration in respect thereof, that most of the marks in question have either been abandoned or have expired, or AIR 1986 Del 245 have been opposed by the plaintiff or are otherwise challenged. In any event, he submits that the mere fact that there may be other infringers cannot be a ground to deny injunction to the plaintiff, for which purpose Mr. Midha places reliance on the judgment of a learned Single Judge of this Court in Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd.6. He submits that he has placed on record material on record to indicate the goodwill that his client has achieved by use of the “FLY HIGH” marks and has also placed on record a certificate by his Chartered Accountant setting out the expenses incurred on advertisement using the said mark. He emphasises the fact that the defendant has not challenged the grant of the mark either prior to challenge or thereafter, by way of any revocation or cancellation petition or by other means known to law.
19. Apropos the submission of Mr. Baig that the mark “FLY HIGH” being a portmanteau of two commonly used words, “Fly” and “High”, the plaintiff cannot claim exclusivity in respect of the said phrase, that an identical contention, raised before the Division Bench of this Court, stands rejected in World Book Co. Pvt. Ltd. v. Worldbook Inc.[7] To the same effect, he has also relied on an oft cited decision of A.K. Sikri (as his Lordship then was) sitting singly in this Court in Ishi Khosla v. Anil Aggarwal[8].
20. Having heard learned for both sides and considered the material on record and applied my mind to the arguments advanced at the bar, 2004 (29) PTC 435 (Del) 2030 (2016) DLT 597 2007 34 PTC 370 (Del) it is clear, at first glance, that the defendant is infringing the plaintiff‟s mark. The plaintiff has as many as four registrations, which involves the use of the phrase “FLY HIGH”, both as a word mark as well as a device mark, in respect of the very same services, in respect of which the defendant is seeking to register and use the mark “Fly High Institute of “Aviation and Hospitality”.
21. Mr. Midha has also drawn my attention to the manner in which the defendant is using the said mark in which the words “FLY HIGH” are prominently displayed with the words “Institute of Aviation and Hospitality” in miniscule letters which are almost undiscerapble to a person at first view. In any event, in the mark “Fly High Institute of Aviation and Hospitality”, it is clear that the distinctive part of the mark in use are the words “FLY HIGH”, the words “Institute of Aviation and Hospitality” merely describing the nature of the establishment in respect of which the mark is used.
22. The plaintiff being the registered proprietor of “FLY HIGH” with as many as four valid registrations, it is clear that any person using “FLY HIGH” in respect of identical or similar services, would be infringing the plaintiff‟s mark.
23. The defendant has applied for registration of the mark “Fly High Institute of Aviation and Hospitality” in the very same class and with the very same description of services as those in respect of which the plaintiff holds a valid and subsisting registration. A prima facie case of infringement is, therefore, made out.
24. The submissions advanced by Mr. Baig essentially seek to question the validity of the registration granted to the mark “FLY HIGH”, being itself an applicant for registration of the mark “Fly High Institute of Aviation and Hospitality” at least at an Order XXXIX stage, this contention is really not available to the defendants.
25. That apart, even on merits, I am not convinced, prima facie, that the mark “FLY HIGH” is not distinctive and is generic or descriptive in nature and that the plaintiff cannot, therefore, claim exclusivity in respect thereof. In the context of services of training for hospitality and in-flight crew, it is not possible to hold, at a stage of hearing of the injunction application, that the words “FLY HIGH” are merely descriptive of the services provided by the plaintiff and are not distinctive in any manner. At the highest, it may be possible to contend that the expression “FLY HIGH” is suggestive of the services provided by the plaintiff. The expression cannot, prima facie, be treated as descriptive of the said services.
26. The distinction between suggestive marks and descriptive mark is well recognised, inter alia in the judgment of the Supreme Court in T.V. Venugopal v. Ushodaya Enterprises Limited[9] and by the judgment of this Court in Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd10. Whereas marks which are purely descriptive of the services or goods in question and do not bear any distinctive nature, cannot be registered, marks which are only suggestive are
(2019) 262 DLT 101 capable of being registered and the registration granted in respect of such marks is valid. At the highest, prima facie, I am of the opinion that the expression “FLY HIGH” may be suggestive of the services provided by the plaintiff. They cannot be treated as descriptive thereof.
27. Mr. Baig submits that the phrase “FLY HIGH” as used by the plaintiff has not acquired any secondary meaning qua the services provided by the plaintiff, is essentially to be seen in trial. The plaintiff has placed on record material to indicate that the mark “FLY HIGH” is used by it on every page of its webpage. Mr. Midha has also drawn my attention to various screenshots of the plaintiff website indicating, prominently, the use of the mark “FLY HIGH”, either individually or in conjunction with the name of the plaintiff‟s establishment Frankfinn Institute of Aviation and Hospitality. On the material on record, therefore, prima facie, the mark “FLY HIGH” is in frequent use by the plaintiff in respect of the services provided by it. A prima facie case of goodwill having been earned by the plaintiff by use of the said mark therefore, in my view, exists.
28. I am also in agreement with Mr. Midha, on his reliance on the judgment of the Division Bench of this Court in World Book Co.[7] which rejected the submission that the words “world” and “book” being words of common usage, no exclusivity could be claimed in respect of the phrase “world book”. In that case, the plaintiff had agreed to a disclaimer in respect of the expression “book”. In the present case, the plaintiff has agreed to a disclaimer in respect of the word “HIGH”, though Mr. Baig had also emphasised this fact, it cannot really alter the merits of the plaintiff‟s case, as the plaintiff is not claiming infringement because of the use of the word “HIGH” by the defendant. The defendant is using the same expression which is used by the plaintiff, namely “FLY HIGH”.
29. Section 31 of the Trademarks Act envisages a statutory presumption of validity in respect of a mark which is registered. At least at the stage of interlocutory injunction, in the absence of cogent material on the basis of which that presumption can be unseated, the plaintiff is entitled to the benefit thereof.
30. The submissions of Mr. Baig, though assiduously canvassed, do not, in my view, suffice to unseat the presumption of validity which attaches to the registered marks of the plaintiff and which, prima facie, stands infringed by the use, by the defendant, of the mark “Frankfinn Institute of Aviation and Hospitality”.
31. In view thereof, I am of the opinion that, pending disposal of the suit, the plaintiff is entitled to an interim injunction as prayed in this application.
32. Resultantly, the ad interim order dated 5th July, 2021 passed in this application is made absolute pending disposal of the suit. The application stands allowed accordingly. I.A.7711/2021 (under Order XXVI Rule 9 of the Code of Civil Procedure, 1908)
33. Mr. Midha, on instructions, seeks leave to withdraw this application. Leave is granted.
34. The application is dismissed as withdrawn.
C. HARI SHANKAR, J.
FEBRUARY 16, 2022