Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited

16. The Supreme Court in several decisions has laid down the test which is to be applied while evaluating the question regarding the infringement. In the case of F. Hoffman La Roche v. Geofferey Manners reported in (1969) 2 SCC 716, the Apex Court held that true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. In the said case, while deciding the question of infringement relating to trademark “PROTOVIT” and “DROPOVIT”, it was held that marks have to be compared from the point of view of a person of imperfect recollection and meticulous comparison of both the words side by side is not to be made, but the marks are to be compared as a whole looking at the first impression created in the minds of the consumer. The Court has to lay stress on the common features rather than on the differences in essential features. In the case of Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. 2001 PTC 541 (SC), the Supreme Court was deliberating on the question of infringement in relation to two brand names “FALCITAB” and “FALCIGO”. Referring to its earlier judgment in Amritdhara Pharmacy v. Satyadev Gupta AIR 1963 SC 449, the Court held that for deceptive resemblance, two important questions that need to be kept in mind are i) who are the persons that the resemblance must be likely to deceive or confuse and ii) what rules of comparison are to be adopted in judging whether such resemblance exists. It was further held that confusion is perhaps an appropriate description of the state of mind of a consumer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether the impression is not due to imperfect recollection.

17. Further, in Shree Nath Heritage Liquor Pvt. Ltd. v Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359, this Court while dealing with the marks OFFICER‟S CHOICE and COLLECTOR‟s CHOICE elucidated the concept of similarity in idea of a trademark and use of synonyms as trademarks. The Court elaborately discussed the different types of synonymy observed in adoption of trademarks or trade names classifying the same into absolute synonymy and relative synonymy. It was held that in case of relative synonymy, words or phrases may be similar in certain contexts while not in others and in such cases, where certain words which may not be similar in every context but convey the same idea in a particular context, similar brand name recollection impairment may be observed. Thus, it was held that marks containing words with the same sense relation (or falling in the same semantic field, or conveying the same or similar idea in the mind) as that of previously existing marks are likely to be considered so similar as to be refused registration or deemed to constitute infringement of the previously existing trademark. The said judgment was recently followed in the case of The Gillette Company v Tigaksha Metallics Private Limited 251(2018)DLT530, wherein the Court held that the device mark is deceptively similar to the Plaintiff‟s mark, as the words SWORD and TALVAR convey the same meaning. In Corn Products Refining v Shangrila Food Products AIR 1960 SC 142 also, the Apex Court noted the concept of similarity of idea. In the said case, the Court was dealing with the marks GLUCOVITA and GLUVITA and it was observed that the idea of the two marks is the same as both convey the ideas of glucose and life giving properties of vitamins and to a person of average intelligence and imperfect recollection, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause confusion. Reference may also be made to the case of Prathiba M. Singh v. Singh and Associates, 2014 ( 60 ) PTC 257 ( Del ), wherein this Court discussed the concepts of “priming” and “word association” and it was observed as under: “(A)(iv) To make sure that the aforesaid phenomenon and experience is not confined to the undersigned, I looked up and found the experts to have defined the same as "Priming" and which is defined as an implicit memory effect in which exposure to one stimulus influences a response to another stimulus. The seminal experiments on the said subjects appear to be of Meyer and Schvaneveldt who found that people were faster in deciding that a string of letters is a word when the word followed an associatively or semantically related word and subsequent research has led to priming, now being understood to be of many sorts. The said works report that priming can occur following perceptual, semantic or conceptual stimulus repetition and that its effect can be very salient and long lasting and unconscious, affecting word choice on a word-stem completion test, long after the words have been consciously forgotten. Keith E. Stanovich and Richard F. West in their Paper "On Priming by a Sentence Context" published in the Journal of Experimental Psychology have reported associative priming as a word that has a high probability of appearing with the prime and is associated with it and frequently appear together and context priming as where the context speeds up processing for stimuli that are likely to occur in that context and reported that these latter words are processed more quickly than if they had been read alone. Similarly John A. Bargh, Mark Chen and Laura Burrows in their Paper "Automaticity of Social Behaviour: Direct Effects of Trait Construct and Stereotype Activation on Action" published in the Journal of Personality and Social Psychology have reported that attention to a response increases the frequency of that response, even if the attended response is undesired. (A)(v) The phenomenon is also described by some as 'Word Association' meaning "stimulation of an associative pattern by a word" or "the connection and production of other words in response to a given word done spontaneously". Derren Brown, a psychologist has predicted people's word associations and has opined that humans find it very difficult to disassociate words. Another author on the basis of psycholinguistic studies has reported that words are not stored in our mental lexicon as single items, but forming clusters with related concepts. Yet others have reported that our brains use some kind of connections between lexical items and that it associates words with others.” In the present case also, while the first two words of the marks MakeMyTrip and MakeMyTravel are identical, the last words, TRIP and TRAVEL are similar and convey the same idea. Similarly, the Defendant‟s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiff‟s taglines HOTELS UNLIMITED and MEMORIES UNLIMITED. While the second word in the tag lines is identical, the first words DREAMS, MEMORIES and HOTELS, when considered in the context of travel and holiday related services, may be used in the same context or idea.

18. In view of the law laid down by the Supreme Court in the aforegoing judgments and having regard to the facts of the case, there cannot be any doubt that the Plaintiff has a strong prima facie case and the balance of convenience also lies in its favour. In case the Defendant is permitted to continue to use infringing marks, grave and serious prejudice is likely to be caused to the Plaintiff.

19. Now, coming to the Defendant‟s plea regarding suppression of facts and acquiescence. Plaintiff has strongly refuted the Defendant‟s allegation qua suppression of facts in respect of the communications which have been placed on record. Plaintiff has explained that it is a large organization having over 3000 employees across India and in addition to these employees, it has a large franchise network which works independently of the Plaintiff company. It has further been clarified that the communications relied upon by the Defendants were allegedly exchanged between the booking executives of the Plaintiff and the franchisees of the Plaintiff in the year 2011. Prima facie, it appears that such email communications were not exchanged with the management of the Plaintiff Company or any of its key managerial personnel who could be regarded as persons who ought to be aware of Defendant‟s existence. Although, for the sake of complete discovery, the Plaintiff should have placed on record all the communications exchanged between the parties including the franchisees, but failure to do so, cannot lead to assumption that there has been willful concealment on its part. This aspect would require trial, having regard to the nature of the Plaintiff‟s business which is based on a large network of booking executives, who are stated to be lowest rung employees. It is quite possible that such communications and correspondences were not known to any of the key managerial personnel of the Plaintiff Company. Further, as pointed out by the Plaintiff‟s counsel, some of the communications were exchanged with the email addresses obt[1].delhicp@makemytrip.in and dom[1].delhicp@makemytrip.in, which ids pertain to the franchisees and not the Plaintiff Company. Correspondences sent by the franchisees could possibly be not known to the key managerial personnel of the Plaintiff Company. It is also significant, as pointed out by Plaintiff‟s counsel, that the email communications exchanged between the automated response system and the officials of the Defendant Company are unnamed. Plaintiff‟s explanation regarding the bank statement of HDFC bank that the transactions reflected therein were completed by the franchisee and its knowledge cannot be attributed to the Plaintiff, appears to be plausible, keeping in mind its business model. Besides, Defendant has not placed on record any email communication exchanged with the management of the Plaintiff Company, or any of its key managerial personnel who ought to have been aware of Defendant‟s existence. Therefore, it is not a case where the Plaintiff can be held to be guilty of suppression of facts.

20. Significantly, it cannot go unnoticed that the adoption of the mark by the Defendants is without any cogent explanation, and it prima facie appears to be dishonest. It cannot be accepted that the Plaintiff has acquiesced the use of the infringing mark by the Defendant. The correspondence with the booking customer care executive of the Plaintiff who apparently did not have knowledge of the intellectual property rights of the Plaintiff, cannot be considered as positive acts of encouragement towards the Defendant to do business under Infringing/Impugned Marks.

21. I have also perused the orders passed by this Court in the case of MakeMyTrip (India) Pvt. Ltd. v. Orbit Corporate Leisure Travels (I) Private Limited(supra), where this Court on the plea of suppression, vacated the interim injunction granted against the Defendants and dismissed the application of the Plaintiff under Order 39 Rule 1 and 2, CPC, 1908. In the said case, the two competing marks were „MakeMyTrip‟ and „GetMyTrip‟. Plaintiff contends that in the said case, the Defendant therein has made a false statement which resulted in vacation of interim injunction and the Plaintiff had instituted an application under Section 340 Cr.P.C for perjury against the Defendants and has also filed the second interim application for interim relief which led the parties to settle the matter amicably. Reliance is also placed on the other orders passed by the Court that records the filing of the aforenoted application.

22. The facts of the said case as recorded in the aforenoted order reveal that Defendant therein approached the Court by way of an application under Order 39 Rule 4 contending that the Plaintiff had prior knowledge of the Defendant‟s predecessor-in-interest using the trademark „GetMyTrip‟ and the Plaintiff had been doing business with the said predecessor-in-interest of the Defendant under the mark „GetMyTrip‟ since 2011. This contention was duly taken note of in paras 7 and 8 of the said decision which read as under:- “7. Case of the defendant in IA 11871/2017 under Order XXXIX Rule 4 CPC is that the plaintiff has concealed material facts i.e. the plaintiff had prior knowledge of the predecessor-in-interest of the defendant using the trademark GETMYTRIP and plaintiff had been doing business with the predecessor-in-interest of the defendant being Hermes I Tickets Private Limited under the mark GETMYTRIP since 2011. The plaintiff has also used the services of the defendant under the mark GETMYTRIP. The plaintiff is in fact a subscriber of the defendant's service on its website www.getmytrip.com. Further the plaintiff is fully aware that the plaintiff and defendant operate in entirely different spheres of activities i.e. plaintiff operates in business to consumer (B2C Model) whereas the defendant operates in business to business (B2B Model), thus there exists no scope of confusion. Further the new venture of the defendant's business into B2C model is under the trade name 'GOOMO" and not 'GETMYTRIP'. In fact the defendant is properly known as GMT and the plaintiff to copy the same has started calling itself as MMT. It is further contended that the plaintiff has played fraud on the Court by misrepresentation and suppression of material facts. Acquiescence, delay and latches also disentitle the plaintiff an injunction in its favour. Thus the interim injunction in favour of the plaintiff be vacated. Defendant also claims that it enjoys enormous good- will and reputation as a travel platform and has received several notable accolades/ awards. The sales figures of the defendant show its popularity and goodwill. The defendant's trademark GETMYTRIP is written in a distinctive and unique stylized manner. The trademark/ label GETMYTRIP qualifies as a well-known trademark since it has been used continuously by the defendant for its goods and services.

8. Defendant further claims that the trademark GETMYTRIP and internet platform www.getmytrip.com to the knowledge of the plaintiff exits since 2011 as the plaintiff is transacting huge volume of business since then on its e-commerce platform i.e. www.getmygrip.com with the defendant and also its predecessors-in-interest Hermes. Defendant has placed on record table-wise summary of plaintiff availing the defendant's services. Screen shot of e-mail dated 20th November, 2013 exchanged between the representative of the plaintiff and the predecessor-in-interest of the defendant showing that the plaintiff was transacting with the predecessor of interest of the defendant on the same platform has also been placed on record. It is the case of the defendant that the trademark/logo GETMYTRIP and domain name www.getmytrip.com has been continuously used by the defendant and its predecessor-in-interest as a travel platform solution for organizing the airline services, train ticketing and largely unorganized regional bus services, tier 2/ tier 3 hotels, car rental services and providing the customer's/ travelers access to large markets and a more efficient ticket distribution and reservation systems. Plaintiff cannot claim any proprietary rights on the words "MyTrip". The defendant further forayed into the Business to Consumer B2C trade under its mark "Goomo" and the defendant's site for the said business has become an instant success and has in fact generated approximately over ₹16-17 crores of sales monthly. So as to stifle a healthy competition, the plaintiff's have filed the present suit to affect the defendant's later B2C venture under the mark 'Goomo' which is directly competing with the plaintiff's business under the mark 'MakeMyTrip'.”

23. Taking note of the above, the Court inter alia observed as under:-

15. Thus cause of action to the plaintiff is use of the trademark 'GETMYTRIP' and domain name www.getmytrip.com and the plaintiff claims reliefs not only against the defendant but its franchisees, affiliates, subsidiaries, licencees and agents as well, Hermes being one of the agents of the defendant. Plaintiff in its reply to IA 11871/2017 has admitted its dealing with Hermes and thereby its knowledge of the use of the trademark GETMYTRIP and the internet platform www.getmytrip.com since September,

2011. Further the API agreement dated 21st September, 2011 copy whereof the defendant has placed on record is an agreement between the Hermes and MakeMyTrip.

16. No doubt, defendant claimed user in the application since 2016, however the fact remains that plaintiff with the same trademark and domain name i.e. GETMYTRIP and www.getmytrip.com respectively had been dealing with the Hermes which is the predecessor-in-interest of the defendant at least since 2011, thus had knowledge of this trademark and domain name being used.

24. From the above, it can be easily discerned that there was an agreement between Defendant‟s predecessor-in-interest and the Plaintiff, and this crucial factor prevailed upon the Court to accept the plea of acquiescence and to hold that the use of the mark „GetMyTrip‟ was within the knowledge of the Plaintiff. In the present case, there is no such agreement on record and the plea of acquiescence is premised merely on the basis of email communications exchanged with booking customer care executives. Thus, I cannot, at this stage, hold that the Plaintiff has acquiesced to the use of the infringing marks by the Defendant. Similarly, the decision in Triumphant Institute of Management Education Pvt. Ltd. v Aspiring Mind Assessment Pvt. Ltd. (2014) 210 DLT 618, relied on by the Defendant, is distinguishable on the facts and circumstances prevailing therein. In the said case, the factum of concealment of material fact and acquiescence had been proved, by the Defendants therein.

25. The law relating to acquiescence is well established. In Hindustan Pencils Private Limited v. India Stationary Products Co. AIR 1990 Del 19, this Court dealt elaborately with the question of delay and acquiescence. It has been held that in order to claim the defence of acquiescence, there should be a tacit or an express assent by the plaintiff to the defendant's using the mark and in a way encouraging the defendants to continue with the business. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiff's rights. In Dr. Reddy Laboratories Pvt. Ltd. v. Reddy Pharmaceuticals 2013 SCC OnLine Del 3626, the Court took note of the fact that the owners of trademarks or copyrights cannot be expected to run after every infringer and thereby remain involved in litigation at the cost of their business time, but can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers. In Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd. 2014 SCC OnLine Bom 1064, the Bombay High Court extensively discussed the defence of acquiescence as available to an alleged infringer of trademark. It was held that a mere failure to sue without a positive act of encouragement is no defence and is not acquiescence. Further, examining the concept of “acquiescence”, it was observed that acquiescence is a species of estoppel, a rule in equity and a rule of evidence and it is essential to the acquiescence doctrine that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter's detriment, confident in the knowledge that the former is not asserting his rights against theviolator. Acquiescence is sitting by when another invades your rights and spends money in the doing of it. It is conduct incompatible with claims of exclusivity, but it requires positive acts, not mere silence or inaction (of the stripe involved in the concept of laches). Acquiescence is not mere negligence or oversight. There must be the abandonment of the right to exclusivity. In Midas Hygiene Industries v. Sudhir Bhatia 2004 (28) PTC 121 (SC) the Apex Court held that mere delay in bringing action is not sufficient to defeat grant of injunction in infringement cases.

26. Significantly, Defendant has no justification or defense for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require a further and deeper scrutiny and examination during the course of trial. Thus, having regard to the aforesaid facts, the Court is of the considered opinion that Plaintiff has a prima facie case and the balance of convenience also lies in favour of the Plaintiff. Irreparable loss would be caused to the Plaintiff if the Defendant is not retrained from using the impugned marks.

27. Accordingly, I.A. No. 6869/2018is allowed and the injunction order dated 17th May 2018 is made absolute and shall continue to operate during the pendency of the present suit. Consequently, I.A. No. 8837/2018 is dismissed. No order as to costs. The opinion expressed by the Court is only a prima facie view on the merits of the case and needless to say the same shall not have any binding effect at stage of final adjudication.

SANJEEV NARULA, J. OCTOBER 18, 2019 ss