Delhi High Court
Tata Sia Airlines Limited vs Shenzhen Coloursplndour Gift Co ... on 31 August, 2022
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 23.08.2022
Date of decision: 31.08.2022
+ CS(COMM) 352/2020 & I.A. 9553/2021
TATA SIA AIRLINES LIMITED
..... Plaintiff
Through: Mr.Mukul Kochhar & Mr.Aditya
Gupta, Advs.
versus
SHENZHEN COLOURSPLENDOUR GIFT CO LTD & ANR.
..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The present suit has been filed seeking inter alia a decree of
permanent injunction restraining the defendant, their associated
companies, subsidiaries, directors, wholesalers, distributors, partners or
proprietors, as the case may be, its officers, servant and agents from
advertising, directly or indirectly offering any goods or services, using or
registering corporate names, domain names, or listings on social media
platforms as also e-commerce websites which bear the plaintiff‟s
registered trade marks „VISTARA' and/or (hereinafter
referred to as the „VISTARA Marks') along with relief against passing
off, dilution, tarnishment and unfair competition.
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Signing Date:01.09.2022CS(COMM) 352/2020 Page 1 of 14
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FACTUAL BACKGROUND
2. It is the case of the plaintiff that the plaintiff was incorporated in
the year 2013 as a joint venture between TATA Sons Limited and
Singapore Airlines Limited, with TATA Sons holding the majority stake
of 51% (Fifty-One Percent) in the plaintiff-company.
3. The plaintiff operates its full-service airlines for domestic and
international destinations. The plaintiff, as on the date of filing the suit,
has been serving thirty-six destinations with over two hundred flights a
day, with a fleet of thirty-two Airbus A320 aircrafts; seven Boeing 737-
800NG aircrafts; one Boeing 787-9 Dreamliner aircraft and one Airbus
A321 Neo aircraft- with all aircrafts bearing the „VISTARA Marks' of
the plaintiff.
4. The plaintiff commenced operations with a maiden flight from
New Delhi to Mumbai on 09.01.2015. The plaintiff, as on the date of
filing the present suit, operated flights between the Indian cities of Delhi,
Mumbai, Bengaluru, Hyderabad, Chennai, Pune, Ahmedabad, Lucknow,
Goa, Varanasi, Guwahati, Bagdogra, Bhubhaneswar, Srinagar, Jammu,
Kochi, Chandigarh, Kolkata, Port Blair, Amritsar, Leh, Ranchi,
Dibrugarh and Raipur; as also international destinations namely,
Bangkok, Dubai, Nepal, Sri Lanka and Singapore. As on the date of
institution of the suit, the plaintiff has already flown more than 15 million
passengers. The screenshots and print outs from the plaintiff‟s website
www.airvistara.com providing information about the plaintiff‟s services
under the 'VISTARA Marks' are exhibited as Ex. PW1/4 (colly.).
5. The plaintiff has incorporated the registered mark 'VISTARA' in
their domain name www.airvistara.com as also their mobile application
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(available on iOS and Android platforms), allowing the public to book
flight tickets for their airline. The number of unique internet users
visiting the website and WAP site of the plaintiff bearing the mark
„VISTARA' between the August 2014 and December 2019 are detailed
in paragraph 6 of the affidavit of Mr. Shashank Jain, the authorised
signatory and Head-Legal of the plaintiff, examined by the plaintiff as
PW-1.
6. The plaintiff has provided details of the amount spent by them on
the advertisement and sales promotion across various media, with the
amount spent on expenditure increasing substantially from Rs.
1,66,81,571/- (Rupees One Crore Sixty-Six Lakh Eighty-One Thousand
Five Hundred Seventy-One only) pre-launch between April to October
2014 to Rs. 29 Crore (Rupees Twenty-Nine Crore only) in the Financial
Year 2018-19. The details are mentioned in paragraph 8 of the affidavit
of the PW1. The printouts of articles and advertisements regarding the
services offered by the plaintiff are exhibited as Ex. PW1/6 (Colly.).
7. The plaintiff has applied for and is the registered proprietor of the
'VISTARA Marks' in several classes in India. The details of trade mark
registrations granted in favour of the plaintiff under the provisions of the
Trade Marks Act, 1999 (in short, „the Act‟) are given by the plaintiff in
paragraph 10 of the affidavit of PW-1, as under:
Trade Mark TM No. Class (No. and its Application Date
particulars)
VISTARA 2748039 Class 12: Vehicles; 02.06.2014
apparatus for
locomotion by
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land, air or water
VISTARA 2881502 Class 21: 13.01.2015
Household or
kitchen utensils and
containers; combs
and sponges:
brushes (except
paint brushes);
brushmaking
materials: articles
for cleaning
purposes: steel
wool: unworked or
semiworked glass
(except glass used
in building);
glassware,
porcelain and
earthenware not
included in other
classes
VISTARA 2881501 Class 25: Clothing, 13.01.2015
footwear, headgear
VISTARA 2881503 Class 27: Carpets, 13.01.2015
rugs, mats and
matting, linoleum
and other materials
for covering
existing floors;
wall hangings
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(non-textile).
VISTARA 2881504 Class 28: Games 13.01.2015
and playthings;
gymnastic and
sporting articles not
included in other
classes; decorations
for Christmas trees
VISTARA 2881506 Class 18: Leather 13.01.2015
and imitations of
Leather, and goods
made of these
materials and not
included in other
classes; animal
skins, hides; trunks
and travelling bags;
umbrellas and
parasols; walking
sticks; whips,
harness and
saddlery.
The copies of the trade mark registration certificates issued in favour of
the plaintiff in India are exhibited as Ex. PW 1/7 (Colly.).
8. The plaintiff further states that since their launch in the year 2014,
the plaintiff has adopted and extensively used the colour combination of
violet (aubergine) and gold as a part of its trade dress, inter alia, as part
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of its logo ; on the uniform of its airline staff; its
advertisement panels and its sign-boards/message panels at airports.
9. The plaintiff also issues baggage tags to its crew members which
bear the plaintiff‟s 'VISTARA Marks'. The photographs of baggage
tags issued to the plaintiff‟s crew at the time of filing of the present suit
are exhibited as Ex. PW1/8.
10. In July 2020, the plaintiff received information about the sale of
keychains and baggage tags bearing the 'VISTARA Marks' in the
aubergine and gold colour-combination, which were being sold on a
Chinese e-commerce platform, namely AliExpress, by the seller, which is
the defendant in the present suit.
11. It is the case of the plaintiff that despite the e-commerce platform
being based mostly in China, the website contained several listings by the
defendant of infringing baggage tags and keychains bearing the
'VISTARA Marks' in the aubergine and gold colour-combination
without the authorisation of the plaintiff which were eligible for shipping
to India. The printouts from the e-commerce website AliExpress which
lists the defendant‟s products for sale are exhibited as Ex PW1/9.
COURT PROCEEDINGS IN THE SUIT
12. This Court, vide order dated 01.09.2020, granted an ex-parte ad-
interim injunction in favour of the plaintiff and against the defendants-
restraining the defendants, their agents and employees from
manufacturing and/or selling baggage tags or any other tags and
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keychains under the impugned trade mark and/or trade logo or any other
trade mark and/or trade logo, which are deceptively similar to the
plaintiff‟s registered 'VISTARA Marks'. The same was made absolute
vide order dated 18.12.2020.
13. Huizhou Hongyuan Technology Co. Ltd. had been originally
impleaded by the plaintiff in the suit as the defendant no. 2. On an
application, being I.A. No 9412 of 2020, it was deleted from the array of
parties vide order dated 15.10.2020 passed by the learned Joint Registrar
(Judicial), leaving Shenzhen Coloursplendour Gift Co. Ltd. as the sole
defendant in the suit.
14. This Court, vide order dated 18.12.2020, proceeded the defendant/
Shenzhen Coloursplendour Gift Co. Ltd. ex-parte.
15. In the order dated 08.10.2020, the submission of the learned
counsel for the plaintiff was recorded to the effect that the defendant had
taken down the impugned trade mark from its webpages maintained with
third-party websites.
EVIDENCE OF THE PLAINTIFF
16. The plaintiff has filed the affidavit of evidence of Mr. Shashank
Jain, who was examined as PW-1 in the present suit on 20.07.2022.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
17. The learned counsel for the plaintiff submits that the adoption of
the plaintiff‟s 'VISTARA Marks' by the defendant vis-à-vis the sale of
baggage tags and keychains bearing not only the same trade marks but
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also the same trade dress as that of the plaintiff amounts to infringement,
passing off, dilution and unfair competition.
18. The word mark of the plaintiff, that is 'VISTARA' was declared to
be a „well-known trade mark' as defined under Section 2(1)(zg) of the
Trade Marks Act, 1999 (in short, „the Act‟) by this Court in a decision
dated 05.08.2019 in TATA SIA Airlines Limited v. M/s Pilot18 Aviation
Book Store & Anr., CS(COMM) 156 of 2019. The learned counsel for
the plaintiff submits that by virtue of such declaration, the plaintiff‟s
'VISTARA Marks' are entitled to the highest degree of protection
conferred under the law, across all classes, which includes against
disparate goods and services.
19. The learned counsel for the plaintiff further submits that there is a
high likelihood of confusion on account of adoption of the same marks as
also trade dress of the plaintiff amongst members of the general public, of
an association between the plaintiff and the defendant. He submits that on
account of the goods being displayed and offered for sale by the
defendant through an e-commerce platform, unwary customers may be
misled into believing that there is an association or an endorsement by
the plaintiff of the goods offered for sale by the defendant. Having no
knowledge or mechanism to maintain control over the quality or sale of
the goods of the defendant, the plaintiff would face huge monetary and
reputational loss as the plaintiff has no means to maintain the standard of
goods being sold by the defendant.
20. The learned counsel for the plaintiff states that the word „Vistara'
is drawn from the Sanskrit word 'Vistaar', which means limitless
expanse to allude to the limitless expanse of the sky and limitless
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possibilities. Given that the plaintiff‟s „VISTARA Marks' are used for
travel purposes, the same is an arbitrary adoption and there is no basis for
the defendant to use identical marks and trade dress, as the word is not a
common dictionary word.
21. The learned counsel for the plaintiff submits that in accordance
with the „Cabin Crew Service Manual', which has been exhibited as Ex.
PW1/10), the flight crew of the plaintiff is mandated to prominently
display and bear crew baggage tags which are issued by the plaintiff-
bearing the same colour combination as the trade dress of the plaintiff.
This policy has been adopted as to differentiate crew baggage from
passenger baggage in order to ensure the plaintiff supplements the
security requirements mandated under the law through their own
identification standards, in order to sure a safe and secure flying
experience. By the use of identical marks and trade dress by the
defendant for sale of baggage tags and keychains, there is an
apprehension in relation to safety and security at airports and on the
aircraft. He further states that the unauthorised offer for sale of goods in
bulk bearing the „VISTARA Marks' as also the trade dress may be used
to permit unauthorised entry into airports, which could be a grave
security threat.
22. The learned counsel for the plaintiff submits that where the
defendant, in spite of having been served with the injunction order,
chooses not to contest the suit, the same fortifies that it is indulging in the
activities complained of by the plaintiff in the plaint. In support, he
places reliance on the following judgments of this Court:
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i) Satya Infrastructure Ltd. & Ors. v. Satya Infra & Estates
Pvt. Ltd., 2013 SCC OnLine Del 508;
ii) Glaxo Group Limited v. Aar Ess Remedies Private Limited
& Ors., 2017 SCC OnLine Del 9549
iii) IHHR Hospitality Pvt. Ltd. v. Ananda Resort, 2018 SCC
OnLine Del 8277; and
iv) Impresario Entertainment & Hospitality Pvt. Ltd. v.
Mocha Blue Coffee Shop, 2018 SCC OnLine Del 12219.
ANALYSIS AND FINDINGS OF THE COURT
23. I have considered the submissions made by the learned counsel for
the plaintiff.
24. This Court, in its judgment dated 05.08.2019 passed in TATA SIA
Airlines Limited (supra), has held that "the mark VISTARA is quite
popular in India and has acquired a unique status. It is a distinctive mark
that enjoys enormous goodwill and reputation in the airline, travel and
tourism industry. Use of this mark, even in respect of unrelated services
would create confusion and deception."
25. A comparison of the baggage tags provided by the plaintiff to their
cabin crew and the goods of the defendant bearing the 'VISTARA
Marks' is reproduced hereinbelow:
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PLAINTIFF'S TAGS DEFENDANT'S TAGS
26. The use of the „VISTARA Marks‟ is not only amounts to
infringement and passing off of the mark of the plaintiff but would cause
dilution of the mark of the plaintiff. It is also likely to cause deception
and confusion in the mind of the unwary consumer.
27. Furthermore, the apprehension of national as also international
security concerns at airports by mala fide usage of the baggage tags and
keychains being offered for sale by the defendant prima facie appears to
be valid in nature. Airports are an incredibly critical junction of not only
travel but also of trade and commerce; any lapse in security, especially by
permitting the sale of vagrantly-infringing goods, would be turning a
blind eye to obvious wrongdoings of the defendant.
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28. It is trite law that where the defendant, in spite of being served
with an injunction order, chooses not to contest the suit, the same fortifies
that it is indulging in activities complained of by the plaintiff in the
plaint. Considering the fact that the plaintiff is the registered proprietor of
the 'VISTARA Marks' and none has entered appearance for the
defendant, this Court is of the opinion that the defendant has no
justification for the adoption of an identical trade mark for sale of their
goods.
29. This Court, in Tata Sons Ltd. v. Manoj Dodia & Ors., 2011 (26)
PTC 244 (Del.), held that a well-known trade mark is a mark which is
widely known to the relevant general public and enjoys a comparatively
high reputation amongst them. It further held that when a person uses
another person‟s „well-known trade mark‟, he tries to take advantage of
the goodwill that such a „well-known trade mark‟ enjoys. Such an act
constitutes as unfair competition. It also causes dilution of a „well-known
trade mark‟ as it loses its ability to be unique and distinctively identified
and distinguish as one source and consequent change in perception which
reduces the market value or selling power of the product bearing the
well-known trade mark.
30. In view of the above, the plaintiff is held entitled to a decree in its
favour in terms of prayers made in paragraph 37 (a) to (c) and (e) against
the defendant.
31. As far as relief claimed by the plaintiff in paragraph 37 (d) and (e)
of the plaint are concerned, this Court in Intel Corporation v. Dinakaran
Nair & Ors., 2006 SCC OnLine Del 459 has held as under:-
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"13. The only other question to be
examined is the claim of damages of Rs. 20
lakh made in para 48(iii) (repeated) of the
plaint. In this behalf, learned Counsel has
relied upon the judgments of this Court
in Relaxo Rubber Limited v. Selection
Footwear, 1999 PTC (19) 578; Hindustan
Machines v. Royal Electrical Appliances,
1999 PTC (19) 685; and CS (OS)
2711/1999, L.T. Overseas Ltd. v. Guruji
Trading Co., 123 (2005) DLT 503 decided
on 7.9.2003. In all these cases, damages of
Rs. 3 lakh were awarded in favour of the
plaintiff. In Time Incorporated v. Lokesh
Srivastava, 2005 (30) PTC 3 (Del) apart
from compensatory damages even punitive
damages were awarded to discourage and
dishearten law breakers who indulge in
violation with impunity. In a recent
judgment in Hero Honda Motors
Ltd. v. Shree Assuramji Scooters, 125
(2005) DLT 504 this Court has taken the
view that damages in such a case should be
awarded against defendants who chose to
stay away from proceedings of the Court
and they should not be permitted to enjoy
the benefits of evasion of Court
proceedings. The rationale for the same is
that while defendants who appear in Court
may be burdened with damages while
defendants who chose to stay away from the
Court would escape such damages. The
actions of the defendants result in affecting
the reputation of the plaintiff and every
endeavour should be made for a larger
public purpose to discourage such parties
from indulging in acts of deception.
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14. A further aspect which has been
emphasised in Time Incorporated
case (supra) is also material that the object
is also to relieve pressure on the overloaded
system of criminal justice by providing civil
alternative to criminal prosecution of minor
crimes. The result of the actions of
defendants is that plaintiffs, instead of
putting its energy for expansion of its
business and sale of products, has to use its
resources to be spread over a number of
litigations to bring to book the offending
traders in the market. Both these aspects
have also been discussed in CS(OS) No.
1182/2005 titled Asian Paints (India)
Ltd. v. Balaji Paints and Chemicals decided
on 10.3.2006. In view of the aforesaid, I am
of the considered view that the plaintiff
would also be entitled to damages which
are quantified at Rs. 3 lakh."
32. Keeping in view the above as also the object and mandate of the
Commercial Courts Act, 2015; the Delhi High Court (Original Side)
Rules, 2018; and the Delhi High Court Intellectual Property Division
Rules, 2022, the plaintiff is held entitled to damages and costs quantified
at Rs. 20 Lakh (Rupees Twenty Lakh only).
33. The suit is disposed of in the above terms. Let a decree sheet be
drawn accordingly.
NAVIN CHAWLA, J.
AUGUST 31, 2022/AB
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