Sanjeev Narula, J
I.A No. 6896/2018 (under Order XXXIX Rules 1 And 2, CPC) & IA No. 8837/2018 (under Order XXXIX Rule 4, CPC)
1. Plaintiff by way of the present suit inter alia seeks permanent injunction restraining the Defendant from adopting and using (A) the trade mark/trade
name 'Make My Travel' (word per se), MMT (letter mark) and the tag line 'Dreams Unlimited' (hereinafter, the ""Impugned WordMarks""); (B) the
Submission of the Plaintiff
MakeMyTravel Word Marks, Logo, namely, i.e., MMT and which includes the Infringing Dreams Unlimited (hereinafter, the ""Impugned
Logo"") and (C) their domain name
re2f.e rTrehde tcoa saes othf et hâe€ œPlIaminptiufgf n[eMd aMkeaMrkysâT€ri]p; a(Isn tdhiae) sPamrivea ater eL vimioiltaetdiv]e i so ft htahte itP wlaainst iifnfcâo€rsp ostraattuetdo riyn athned yceoamr m2o0n0 0l aawnd r isgthatrst eidn iittss bouwsnin etrsasd ein imtiaalrlyk sw (iAth)
MaAirliKneE MticYkeTt RboIoPk i(nhgesr eainnda ftise rt, otdhaey ""oMnaek oefM thyeT rliapr gWesotr dtr aMvealr kc""o)m; p(Ban)i eMs Min Tth e(h ecroeuinntarfyt.e rI,t thhaes "" MpreMseTn cLee attlel ra cMroasrsk ""I)n adniad a(nCd) stehvee traagl olitnheesr McoEunMtriOesRIES
UaNroLuInMd ItThEe Dw aonrldd HinOclTudEiLngS iUn NthLeI MUInTitEedD S(htaetreesi noaff tAerm, tehreic ""aP, lathinet ifUfân€itse dT aAg rLabin eEsm"")i.r aFtoers thaen ds aMkea uorfi tciuosn.v ePnlaieinntcifef, twhea st eorrmigsi nMalalyk einMcoyrTproipra Wtedo rodn M 1a3rtkh,
MAMpTri l L2e0t0te0r, wMitahr kth aen tdr aPdlea inntaifmfâe€ 'sT Traavge Ll binye Ws aerbe Pcorilvleacteti vLeilmy irteefde' rarendd tsou basse ""qMueanktely M, vyid Te raip f rMesahr kCs""e.rtificate of Incorporation, dated 02 August 2000, its
trade name changed to 'Makemytrip.com Pvt. Ltd'. Thereafter, on 28 June 2002, another change was effected and that remains its current and
present name, i.e., 'MakeMyTrip (India) Pvt. Ltd.' Over the years, the Plaintiff has expanded its range of products and services beyond online travel
bookings. Presently, the Plaintiff, through its primary website, www.makemytrip.com and other technology-enhanced platforms including application
based mobile platforms, etc., offers an extensive range of travel services and products, both in India and abroad. The said services of the Plaintiff
include, booking of air tickets, rail tickets, bus tickets, hotel reservations, car hire, domestic and international holiday packages and ancillary travel
requirements such as facilitating access to travel insurance.
3. After changing its trade name to include the words “MakeMyTrip"" on 2nd August 2000, the Plaintiff has continuously and uninterruptedly used
the trade marks MakeMyTrip and MMT, the MakeMyTrip Word Mark as well as the MMT Letter Mark. The tag line ""Memories Unlimited"" and
Hotels Unlimited"", have also been continuously and uninterruptedly used by the Plaintiff for its business activities since the day they were conceived.
The MakeMyTrip Marks, including the MakeMyTrip Word Mark, MMT Letter Mark and Plaintiffâ€s Tag Lines are invented terms, and have earned
immense reputation and goodwill on account of extensive and continuous use by the Plaintiff. The domain
back on 8th May 2000 and stands in the name of the founder of the Plaintiff Company, namely, Mr. Deep Kalra. Plaintiff has been hosting an
interactive website on the said domain name, since as early as 2001. Due to extensive use, now spanning almost seventeen (17) years, the
MakeMyTrip Word Mark is synonymous with high standards of quality in respect of services provided by the Plaintiff. In order to add further
distinctiveness and brand recall to its MakeMyTrip Word Mark, the Plaintiff, over the years, has conceived, adopted and used various catchy and
stylized logos, all of which contain the MakeMyTrip Word Mark, as their essential feature. Some such logos conceived, adopted and used by the
Plaintiff, in different unique and stylized forms, include ,
(the “MakeMyTrip logo marksâ€). Owing to the Plaintiffâ€s
widespread goodwill and reputation in its MakeMyTrip Marks, the public and trade has come to associate and recognize the MakeMyTrip Word Mark
and MakeMyTrip Logo Marks as originating from the Plaintiff and none else. Thus, any unauthorized use of the MakeMyTrip Marks and/or any other
deceptively similar mark would violate the Plaintiffâ€s statutory and common law rights and an effort to ride upon the immense reputation and goodwill
garnered by the Plaintiff in its MakeMyTrip Marks.
4. Plaintiff is also the registered proprietor of the MakeMyTrip Word Mark and MakeMyTrip Logo Marks. The sales turnover attributable to the
Plaintiffâ€s MakeMyTrip Marks in India alone runs into several crores of Rupees. With a view to promote its MakeMyTrip Marks, the Plaintiff has
made and continues to make substantial investment in advertising and promotional activities on a worldwide basis, including India. The promotional
activities are done not only through conventional print media, but also digital media on the Internet. There is a strong social media presence and has
been conferred with several awards and accolades. It has also been enforcing its rights in the MMT Marks through litigation as well as domain name
complaints.
5. Sometime in the month of December 2017, while browsing through the Internet, the Plaintiff came to know about the Defendant and its Infringing
Marks. Plaintiff carried out further investigation and came across the website of the Defendant, https://www.makemytravelindia.com/ being hosted on
the Impugned Domain Name, wherein the Defendant was offering information pertaining to travel tours and packages, which services are identical to
that of the Plaintiff. Being aggrieved by the adoption and use of the Infringing Mark and Infringing Domain Name, the Plaintiff, through its Counsel,
issued a cease and desist notice requisitioning the Defendant to, inter alia, cease all use of the Infringing Marks and Infringing Domain Name.
6. For the sake of full disclosure, the Plaintiff submits that in the past it had exchanged a few correspondences with two individuals- Mr. Desh Raj
Yadav and one Mr. Kishan Panara, whose email addresses were makemytravel8@gmail.com and makemytravel28@gmail.com respectively. Plaintiff
is not aware of whether these two individuals and email addresses are in any way connected with theDefendant.
7. The infringement and passing off of Plaintiffâ€s marks is proved by following factors:
a) Phonetically, visually, structurally and conceptually the competing marks are identical and/or deceptively similar.
b) Identity of idea: The mark MakeMyTravel and MakeMyTrip are combination of three words, where first two words are identical and last word
“travel†and “trip†convey the same meaning, idea and concept
c) Nature of goods and services in respect of which the trademarks are being used are identical.
d) Class of purchasers likely to use services of the Plaintiffs and the Defendants is the same.
Submissions of the Defendant
8. It is the case of the Defendant that the suit is barred by Section 33 of the Trade Marks Act 1999. Plaintiff and its officials were aware that
Defendant had incorporated a company by name of Make My Travel (India) Private Limited and is doing business under the name of Make My
Travel (India) Private Limited, since the year 2010-2011. There have been several email exchanges between the officials of Plaintiff and officials of
Defendant during the period 2011 to 2017. Plaintiff and Defendant are members of various associations where in the list of members, their name
appears alongside each other. In the years 2011 to 2017, Plaintiff and Defendant had entered into business transactions and on occasions, money was
transferred from the account of Defendant to that of the Plaintiff. Plaintiff despite being aware of use of the name “Make My Travel (India)
Private Limited†by the Defendant, has not objected to the same. Plaintiff has also acquiesced to the use of trade mark/trade name Make My Travel,
MMT and tag line DREAMS UNLIMITED and make my travel logo for a continuous period of five years and more and it cannot object to the use
thereof. Since the very beginning, Defendant company was using the letter marks MMT in all its email accounts and other communication, this fact
was known to the Plaintiff and its officials since the year 2011. Plaintiff company has adopted the letter mark MMT much later i.e. in and around the
year 2015 and 2016.
9. With respect to the emails exchanged with Mr Desh Raj Yadav and Mr Kishan Panara, it was clarified that the said persons and their IDs have
never been not associated with the Defendant company in any manner whatsoever.
Proceedings in the suit
10 . The case first came up for hearing before this Court on 17th May 2018. On the said date, temporary ad-interim injunction was granted in favour of
the Plaintiff, restraining the Defendant from using in any manner whatsoever, selling, offering for sale, advertising directly or indirectly dealing in any
prAodnuaclytssi s oarn ds eCrovniccelus siuonnder the infringing marks, namely Make My Travel (word per se), MMT (letter mark). Dreams unlimited (tag line),
11. The Court heard the learned counsels for the parties at length. The main relief sought in the suit is for permanent injunction restraining
wiwnfwrin.mgeamkeemnty otrfa tvrealdinedmiaa.rckosm a nadn dp aMssainkge oMffy. ATrsa nvoetl eldo gaobso, ve, the interoimr a innyju nocthtieorn tirsa dceo nmtinaurkin/tgr aadned nthaem ceo/turartd eh adsr ebsese no rc alollgeod/ duepvoinc et,o w dheilcibhe risa tied eunptoicnal
tot haen qdu/oers tidoenc wephteivtehleyr tshime islaarm teo shaonudl/do rb ep lcaoinntfifirfms eMd aokr evMacyaTterdip. logo marks, namely, MakeMyTrip (word mark), MMT (letter mark) and Memories
Unlimited and Hotels Unlimited (tag line). The said injunction is continuing. On 20th September 2018 certain compromise proposals were stated to have
be1e2n. Tdhisec umsaseind thbreutswt eoefn t hteh ea rpgaurmtieesn.t oHf otwhee vDeer,f eonnd a1n0tt his Oprcetmobiseer d2 o0n1 8th, eit gwroausn ds utbhmati tPteladi ntthifaftâ €asn saumit iicsa nbolet broensoalfuidtieo.n Pcloauinldti ffn ohta sb es uaprprriveessde da tm aantde rtiahle
prfoaccetse,d ainngds nhoatv ed icscolnotsineude dth saitn cthee t hDene.fendant and its impugned marks were known to the Plaintiff since the year 2011, contrary to what has been
pleaded in the suit. Defendant has also strongly emphasized that the Plaintiff has deliberately withheld from the court vital documents viz the
communications exchanged between the booking executives and the franchisees of the Plaintiff, pertaining to the year 2011. In support of this
submission, the Defendant has placed on record and relied upon email conversations exchanged between the Defendant and the booking customer
care executives of the Plaintiff which exhibit the use of the impugned marks by the Defendant. To further buttress this argument, learned counsel for
the Defendant has sought to highlight the conduct of the Plaintiff by relying upon the decision of this Court concerning the Plaintiff: MakeMyTrip
(India) Pvt. Ltd. v. Orbit Corporate Leisure Travels (I) Private Limited2017 SCC OnLine Del 12172.
13. In addition to the aforegoing ground of defence, the Defendant has also set up the plea of acquiescence, alleging that since the Plaintiff has
previously not objected to the use of the name MakeMyTravel (India) Pvt. Ltd by the Defendant, it cannot now be permitted to object to the use of
the said name. It had been further contended that Plaintiff and its officials were aware of the use of the letter mark MMT and the tagline “Dreams
Unlimited†and MakeMyTravel Logo by the Defendants since the year 2011 and thus the Plaintiff has acquiesced to the use of trademark/trade
name MakeMyTravel, MMT and tagline “Dreams Unlimited†and MakeMyTravel Logo for a continuous period of five years and cannot object to
the use of the said marks.
14 . At the preliminary stage of the suit, while deciding the application of the Plaintiff under Order 39 Rule 1 & 2 as also the application of the Defendant
under Order 39 Rule 4, the court has to keep in mind the well settled principles governing the grant of injunction viz. prima facie case; balance of
co1n5v. eCnoienncceed eadnlyd, tthhee nhaatrumre oorf ginojuordys /sliekrevlyic etso inb er ecsapuescet do fo wn haicchc otuhnet twofo tthrea diemmpaurgknse hda vaec tsb eoefn tuhsee dD ise faelnsod acnot.m Amso np, einr apsmlaiunct,h Pasla binottifhf thaed oPpltaeidn tiafnfd
coamndm Denecfeendd tahnet uasree oinf tthhee btruasdineemsas rokf MonalikneeM tryaTverilp b iono tkhien gy esearrv 2ic0e0s0. fTohr ep rtaorvgideitn agu tdraievnecl er elilkaetelyd tsoe urvsiec ethse a snedr vPiclaeins toifff thhaes pbaeretine su sisin agl stoh eth per ismaamrey. website
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
Plaintiff has also secured registration of the word marks “MakeMy†and “Go-MMTâ€. Plaintiff claims that they had been using the MMT letter
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
mark which has been thoughtfully conceived by taking first three alphabets of its trade name MakeMyTrip. Plaintiff is now commonly referred to by the
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
abbreviation MMT within the trade and by consumers. It adopted and commenced the tag lines “MEMORIES UNLIMTED†in April and
mark. In the said case, while deciding the question of infringement relating to trademark “PROTOVIT†and “DROPOVITâ€, it was held that
“HOTELS UNLIMITED†in May 2013. Defendant has adopted (A) the trade mark “Make My Travelâ€; (B) letter mark MMT (C) tag line
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
â€laœy Dsrtereasmss oUn nltihmei tecdoâm€;m (oDn ) fMeaatkuereMs yrTartahveer l tLhoagno oi.ne . t.h e differenc e s Oinn ecsosmenptaiarils ofne aotfu rthees. DIenf etnhdea nctaâs€es mofa rCksa dwililtah tHhoesaelt hocf atrhee PLltadi.n tivf.f , Conaed icllaan
eaPshilayr mnoatciceeu titchaalts thLet ds. a2m0e0 1a rPeT pCho n5e4t1ic (aSllyC, )v, isthuea llSy,u sptrreumcteu rCalolyu rat nwd acso ndceelipbteuraaltlyin gid eonnt itchael/ dqeuceesptitoivne loyf siinmfrilianrg etmo ethnet iPn lareinlatitfifosn Mtoa ktweMo ybTrarnipd Mnaamrkess.
Dâe€fœenFdAanLtCs IhTaAs nBoât €o fafnedre âd€ aœnFyA pLlaCusIiGbleO eâx€p. lRaneafteiorrni nfgo rt oa ditosp etiaornli eorf jtuhdeg minfernint ginin Ag mmarirtkdsh.a rTah Pe hmaarmrka âc€yœ v.M SaakteyMadyeTv rGipuâp€t aa nAd IâR€ œ19M63a kSeCM y4T49ra, vtheelâ C€ oaurert
cohmelbdi nthaatito nfo ro fd ethcreepet ivwe orredsse mwbhlearnec eth, etw tow iom wpoorrtdasn t aqruee sidtieonntsic tahl aat nnde ethde t ol abset wkeoprtd inâ €mœintrda vaerelâ €i) awnhdo âa€rœe ttrhipeâ p€e rcsoonnvse yth atht et hsea mrees emmebalannincge, miduesat baend
colinkceelyp tt.o 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
OFFICERâ€S CHOICE and COLLECTORâ€s CHOICE elucidated the concept of similarity in idea of a trademark and use of synonyms as
trâa€dœem(Aar)k(siv. ) TThoe m Caokuer ts uerlea btohraat ttehlye adfisocruesssaeidd pthheen doimffeenreonnt atnydp eesx poef rsieynncoen yism nyo to bcsoenrfvineedd into a tdhoep utinodne orsfi gtrnaedde, mI alorokks eodr utpra adned n faomuneds tchlea sesxifpyeinrtgs tthoe h saavmee
indtoe fainbesdo luthtee ssyanmoen yams y""P arnimd irnegla"" taivned swynhoicnhy mis yd. eIfti nweads a hse aldn tihmapt liicni tc amseem oofr rye elaftfievcet siynn wonhyicmhy ,e xwpoorsdusr eo rt op hornaes essti mmualyu sb ein fsliumeinlacre sin a c reerstapionn csoen ttoe xatnso wthheirle
nostt iminu oluthse. rTs haen dse imn isnuacl he xcpaesreism, ewnhtse roen ctehret asiani dw sourbdjse cwtsh iacphp meaary t on obte b oef s Mimeilyaer ri na nedv eSryc hcvoannteevxet lbdut tw choon vfoeuyn tdh eth saatm pee oidpelea wine rae p faarstticeur lianr dceocnitdeinxgt, tshimati laar
brsatrnidn gn aomf ele trteecros lliesc ati own oimrdp awirhmeenn tth me awyo bred ofoblsloewrveedd . aTn hausss, oitc iwataivse hlye ldo rt hsaetm maanrtkicsa lclyo nrtealiantiendg wwoorrdds awndit hs uthbes esqaumeen ts erensseea rreclha thioans (loerd ftaoll inpgri mini ntgh,e nsoawme
sebmeianngt iucn fdieerlds,t ooord ctoon bvee yoinf gm tahney ssaomrtes .o Tr hseim sialaidr iwdeoar kisn rtehpeo rmt itnhda)t apsr imthiantg ocfa pnr oecvciouurs lfyo leloxwisitningg p meracrekpst uaarle, sleikmelayn ttioc boer ccoonncseidpetrueadl sstoim suimluisla rre apse tittoio bne
reafnuds etdh arte igtsis terfafteiocnt coar nd ebeem veedr yt os acloiennstt iatuntde lionnfgri nlagsetminegn at nodf uthnec opnrsecviioouuss,l ya fefxeicsttiinngg wtraodrde mcahrokic. eT ohne as awido rjudd-sgtmemen tc owmapsl erteiocne nttelys t,f olollnogw eadft einr tthhee wcaosred sof
have been consciously forgotten. Keith E. Stanovich and Richard F. West in their Paper ""On Priming by a Sentence Context"" published in the Journal
Tohfe EGxiplleetrtiem eCnotaml pPasnyyc vh oTloiggayk hsahvae M reeptaolrlticesd Pasrsivoactiea tLiviem pitreimd i2n5g1 a(2s0 a1 8w)DorLdT th5a3t0 h, awsh ae rheiignh t hpero Cbaobuirlitt yh eolfd atphpaet athrien gd ewviitche tmhea rpkr im ise and idse acsespotciviaetlye ds iwmiitlhar
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
to the Plaintiffâ€s mark , as the words SWORD and TALVAR convey the same meaning. In Corn Products Refining v Shangrila Food
Burrows in their Paper ""Automaticity of Social Behaviour: Direct Effects of Trait Construct and Stereotype Activation on Action"" published in the
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
Journal of Personality and Social Psychology have reported that attention to a response increases the frequency of that response, even if the attended
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
response is undesired.
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,
(A)(v) The phenomenon is also described by some as 'Word Association' meaning ""stimulation of an associative pattern by a word"" or ""the connection
2014 ( 60 ) PTC 257 ( Del ), wherein this Court discussed the concepts of “priming†and “word association†and it was observed as under:
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.â€
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 Defendantâ€s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiffâ€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 Defendantâ€s plea regarding suppression of facts and acquiescence. Plaintiff has strongly refuted the Defendantâ€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 Defendantâ€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 Plaintiffâ€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 Plaintiffâ€s counsel, some of the communications were exchanged with
the email addresses obt1.delhicp@makemytrip.in and dom1.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 Plaintiffâ€s counsel, that the email communications exchanged between the automated response system and the officials
of the Defendant Company are unnamed. Plaintiffâ€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 Defendantâ€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
“GetMyTripâ€. 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 Defendantâ€s predecessor-in-interest using the trademark “GetMyTripâ€
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 Rs. 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'.â€
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 Defendantâ€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 “acquiescenceâ€, 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.
