Delhi High Court
Frankfinn Aviation Services Private ... vs Tata Sia Airlines Ltd. on 4 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~29
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 4th December, 2023
+ CS(COMM) 54/2022, I.As. 1795/2022, 3651/2022 & 3652/2022
FRANKFINN AVIATION SERVICES
PRIVATE LIMITED ..... Plaintiff
Through: Mr. Kapil Midha, Ms. Samiksha
Gupta, Advs. (M. 9318887589)
versus
TATA SIA AIRLINES LTD. ..... Defendant
Through: Ms. Kruttika Vijay, Mr. Aditya
Gupta, Mr. Mukul Kochhar, Advs.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The Plaintiff- Frankfinn Aviation Services Pvt. Ltd. is a company
engaged in training airline staff and providing other services under the name
FRANKFINN. The present suit under Section 134 of the Trade Marks Act,
1999 has been filed by the Plaintiff- seeking protection of rights in its trade
mark 'FLY HIGH'.
3. The Plaintiff claims rights in the said mark 'FLY HIGH', both due to
the trade mark registrations as extracted at paragraph 16 of the plaint and
common law rights underlying the said marks. It adopted the mark 'FLY
HIGH' in 2004, obtained registrations for the same in 2007.
4. It is averred that the Plaintiff is engaged in the business of training
staff for airlines and uses the marks 'FRANKFINN' and 'FLY HIGH'. Its
grievance in the present suit is that the Defendant- Tata SIA Airlines is using
the mark 'FLY HIGHER'.
5. An interim order was granted on 21st January, 2022, which was,
however, vacated on 28th October, 2022. One of the findings in the said
judgement is that the Defendant is not using the mark 'FLY HIGHER', as a
trade mark but is only using it as a common usage of the said expression.
The relevant paragraph of the order dated 28th October 2022 is set out below
(para 30):
"30. Albeit, Defendant has taken a clear position that
it is not using the expression/phrase 'FLY HIGHER' as
a trademark, however, in order to show common
usage of the said expression, Defendant has placed
on record documents which are online articles
showing use of the mark 'FLY HIGH' by several
Airlines, in the context of their common as well as
dictionary meaning. A chart enumerating the same is
as follows:-
Name Date
Air India Brand Journey: Of 09.10.2021
Pride, Prudence, Panache
Airline Stocks Fly High in 08.12.2021
Monday's Trading: Here's Why
Airline Stocks Fly High in 14.01.2022
Thursday's Trading: Here's
Why
Airlines fly high as European 15.10.2021
markets end good week on a
high note
Airlines fly high as India-UAE 04.10.2021
flight bookings soar by 75%
Domestic airlines fly high in 10.09.2020
September as demand soars but
still far away from pre-Covid
era
For civilian aircraft, 'Viceroy's 29.07.2021
Territory' will stay
Hi-tech facilities at upcoming 29.11.2021
terminal, taxi track to make
Surat airport fly high
Indigo shares fly high on 14.04.2021
vaccine optimism, ignoring
risks from new wave
In-Flight Catering Services 24.01.2022
Market is Set To Fly High in
Years to Come LSG Group,
Gategroup Holding, Dnata
Now that Jet Airways' revival 23.06.2021
plan has been cleared, will it
have a smooth ride?
Star Air announces direct 25.08.2021
flights from Jamnagar to
Bengaluru and Hyderabad
Airlines 'fly high' after 17.09.2021
passenger traffic surge
US airlines fly high while virus 04.08.2021
drag keeps Japan carriers low
What the Tatas must do to make 10.10.2021
Air India fly high again
Abu Dhabi's Etihad flying high 07.04.2013
as revenues rise 19 percent
Air India could fly high with 14.08.2020
Tatas
SpiceJet, IndiGo fly high riding 23.08.2019
Jet closure. Will this dream-run
sustain?
Chelsea fly high with Etihad 11.05.2008
Flying high: Jet, Etihad re- 28.07.2014
engineer tarmac
Indian airlines fly high as 17.09.2021
August passenger traffic surges
IndiGo, SpiceJet Shares Fly 17.09.2021
High As August Passenger
Traffic Surges
KLM Airlines enters digital 10.09.2021
territory on the back of TCS'
high-flying tech
What the Tatas must do to make 10.10.2021
Air India fly high again
Will Tata Sons, Singapore 25.09.2013
Airlines fly high in Indian skies
6. In paragraph 24 of the said order, the Court has further observed as
under:
".......From the plethora of documents placed on
record, in my prima facie view, this Court cannot
agree with the Plaintiff that the Defendant uses the
phrase FLY HIGHER as a trademark and thus the
edifice built on foundation of the argument that by
using a deceptively similar trademark. Defendant is
guilty of infringement, falls to the ground."
It bears repetition to state that in the wake of the
Defendant not using FLY HIGHER as a trademark,
none of the judgments would be applicable to the
present case."
7. Thus, the repeated and clear findings in the order are to the effect that
the Defendant is not using FLY HIGHER as a trade mark but merely as a
descriptive term. The said judgment dated 28th October 2022 has not been
challenged by the Plaintiff, and thus, it has attained finality at the interim
stage.
8. Considering that the short issue between the parties involves the use
of the 'FLY HIGH' and 'FLY HIGHER' in a non-trademark sense, the
Defendant made a proposal to the Plaintiff vide email dated 26th July 2023.
The said proposal contains the following two conditions:
"1. TSAL (Defendant herein) will not file applications
for registration of the mark, 'Fly High' or 'Fly Higher'
as a trade mark.
2. Frankfinn agrees that TSAL's use of 'Fly High' or
'Fly Higher' as a part of keywords, advertising
campaigns and hashtags does not constitute trademark
use."
9. The contest between the parties revolves around whether the suit
ought to be decreed or not based on the terms suggested by the Defendant. It
is the Defendant's apprehension that such a decree may be used against it
and its affiliated group companies, potentially binding them to the said
undertaking.
10. On behalf of the Plaintiff, it is submitted that since the Defendant is
not using the expression as a trade mark, there ought to be no apprehension
about the suit being decreed.
11. Heard. There is no longer any dispute about the fact that the
Plaintiff's objection is about use of the mark FLY HIGHER as a trade mark.
The Plaintiff has accepted the position that non-trade mark use of the said
words would not be objected by it. The Defendant has accepted the position
that it would not use the said expression FLY HIGHER in a trade mark
sense.
12. Viewed in the context of the above and the suggested terms extracted
above, it is clear that the same can be made binding on the parties.
Accordingly, the following two terms are recorded as as assurances and
undertakings given to the Court.
a. Defendant shall not claim any trade mark rights in the
expression FLY HIGH or FLY HIGHER. It shall also
not file any applications for registration of the mark,
'Fly High' or 'Fly Higher' as a trade mark.
b. The Defendant also agrees not to oppose the
Plaintiff's trade mark 'FLY HIGH'.
c. However, the Defendant is free use 'Fly High' or 'Fly
Higher' in a non-trade mark sense as also as a part of
keywords, advertising campaigns and hashtags.
Plaintiff has no objection in this respect.
The said undertakings and assurances are accepted by the Court and it is
held that the Defendant shall be bound by the same. Additionally, it is
clarified that the above terms are binding only on the parties and shall not be
read against any other entities including group companies.
13. Needless to add, the judgment dated 28th October, 2022 clarifies in
paragraph 41 as under:
"41. It is made clear that the observations in the
present judgment are only prima facie and shall not
impact the final adjudication of the suit on merits. "
14. Thus, the said order shall not be treated as a final adjudication of the
disputes on merits. The suit is disposed of in the above terms. All pending
applications are disposed of.
PRATHIBA M. SINGH
JUDGE
DECEMBER 04, 2023
dj/dn
