The Delhi HC while observing that the term ‘FLY HIGH’ is a dictionary term and is used in common parlance in the sectors associated with aviation and training institutes for the aviation sector, held that Vistara is only using this phrase as a mark for promoting its campaign and not as a trademark.
Brief Facts:
The Defendant operates its airline under the trademark ‘VISTARA’ and it is alleged that he has copied the trademark as he has been using ‘FLY HIGHER’ as a hashtag on its websites. Therefore, a suit had been filed by the Plaintiff to restrain the Defendant from using the trademark ‘FLY HIGH’ which is registered by the Plaintiff.
(The Judgement is only concerning the application filed by the Plaintiff under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, and an application filed by the Defendant for the vacation of ex-parte ad interim injunction granted by way of an order.)
Contentions of the Plaintiff:
The Plaintiff contended that it is the original adopter of the trademark ‘FLY HIGH’ which is well registered and had been adopted in 2004. It is also contended that the Plaintiff has built an immense reputation in the field of aviation, hospitality, etc., and has registered the trademark ‘FLY HIGH’ in multiple classes. The extensive use of this trademark has now become an essential part of the identity of the Plaintiff. It is argued that the Defendant is using ‘FLY HIGHER’ and the same is like the trademark of the Plaintiff, thereby confusing the public.
Contentions of the Defendant:
The Defendant alleged that the fields of both parties are different as the Plaintiff is engaged in educational training and the Defendant is in the airline industry. It is argued that no goods or services are sold under the hashtag ‘FLY HIGHER’ and it is only used as a marketing and promotional tool. It is alleged that the phrase is not being used as a trademark and hence, there can be no trademark infringement. The Defendant argued that ‘FLY HIGH’ is not a well-known mark and it is a dictionary term that is very commonly used in the airline sector. It is also contended that the Plaintiff knew since 2018 that the Defendant has been using ‘FLY HIGHER’ as part of its campaign and never once said anything about it. Based on the doctrine of laches and acquiescence the Plaintiff should not be entitled to seek the relief claimed.
Observations of the Court:
The Court observed that the Defendant had used ‘FLY HIGHER’ in conjunction with the trademark i.e., ‘VISTARA’ and the logo. The Court pointed out the distinction between a ‘mark’ and a ‘trademark’ and clarified that for something to qualify as a trademark it should be capable of serving as a ‘source identifier’ and should connect the goods and services with the proprietor immediately. The Court opined that if Defendant is successful in proving that the mark was only used in a descriptive sense and not as a trademark then Section 29 of the Trademarks Act, 1999 would have no role to play. Moreover, wherein the kind, quality, quantity, or characteristic is being described by using such words, it qualifies as a defense as provided under section 30 of the Trademarks Act, 1999.
The Court expounded that the term ‘FLY HIGH’ is common to the aviation sector and there are other airlines such as Air India, Emirates, Spice Jet, etc. that have in the past used phrases like ‘FLY HIGH’. It also pointed out that the registration of the trademark by the Plaintiff is done in different classes than the core classes of the Defendant and therefore, the services of both parties cannot be said to be similar. The Plaintiff is engaged in running a training institute whereas the Defendant is running an airline.
Pointing out the most significant ingredient of a trademark infringement, i.e., the likelihood of confusion, the Court observed that one must look at it from the perspective of an average consumer. The Court noted that the consumer market for both the parties is different, and the Plaintiff has not even established how he has gained goodwill and reputation in the field of the Defendant. And therefore, the court concluded that even if trademark infringement was assumed, the basic ingredient of the same has not been proved by the Plaintiff.
Finding of the Court:
The Court further remarked that the Defendant was neither the first nor the only user of the phrase ‘FLY HIGHER’ as the same is used in common parlance in the aviation sector and coaching institutes pertaining to the aviation sector. The Court elucidated that the Plaintiff has failed to show how Defendant is encashing on the reputation and goodwill of the Plaintiff by using ‘FLY HIGHER’. Instead, the Defendant has been able to prove the stellar reputation built by solely using Vistara and its logo, and therefore, the Court noted that the Defendant does not need to encash Plaintiff’s reputation to operate its airlines.
Based on the aforementioned reasons, the Court vacated the ex parte ad interim injunction order and allowed the application of the Defendant.
Cause Title: Frankfinn Aviation Services Pvt. Ltd. V. Tata Sia Airlines Ltd.
Bench: Hon’ble Ms. Justice Jyoti Singh
Decided on: October 28TH, 2022
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