Introduction

In a recent appeal filed before the Delhi High Court, Vistara Airlines (the "Appellant") has brought a lawsuit against Vistara Home Appliances (the "Respondent") alleging trademark infringement and passing off due to their use of the word "VISTARA."

The Appellant adopted and began using the word "VISTARA" in 2014, deriving it from the Sanskrit term "Vistaar," which means 'limitless expanse of possibilities.' As a joint venture between Tata Sons Private Limited and Singapore Airlines Limited, the Appellant operates flights domestically and internationally under this mark. It is worth noting that the Delhi High Court had previously declared the mark as well-known under Section 2(1)(zg) of the Trade Marks Act in a case titled TATA SIA AIRLINES LTD. v. M/S. PILOT18 AVIATION BOOK STORE & ANR in 2019.

On the other hand, the Respondent filed a trademark application for the mark "VISTARA" on July 20, 2016, claiming a user date of July 19, 2016. This filing occurred after the Appellant adopted and began using the mark, but before the Appellant's mark attained well-known status. While the Appellant holds the prior filing date, it appears that the Respondent was aware of the Appellant's mark and still applied for the identical mark. However, it is important to note that the Appellant primarily deals with airlines and hospitality services, while the goods applied for by the Respondent are related to home appliances such as air coolers, fans, torches, irons, air conditioners, refrigerators, and ovens.

The trial court passed the order in favor of the Defendant; hence the Plaintiff has filed an appeal before the Delhi High Court.

Contentions of the Appellant

The Appellant presented several contentions to support their case. Firstly, they referred to information obtained from the Ministry of Corporate Affairs database to demonstrate the association between the Respondent and the Shyam Group. The Appellant argued that this information revealed the malicious intent behind the Respondent's adoption of the mark "VISTARA" as the Shyam Group had no connection with the Appellant's trademark. Additionally, the Appellant relied on various judgments to establish that they were the prior adopter and users of the disputed mark. They emphasized that their mark had been declared a well-known mark and that the competing marks were similar to each other. They also asserted that there was no delay on their part in approaching the trial court.

Contentions of the Respondent

The Respondent presented their own set of contentions to counter the Appellant's claims. Their primary contention was that merely declaring the trademark "VISTARA" as a well-known mark was not sufficient. They argued that the test laid down by the court in the case of Tata Sons Ltd. v. Manoj Dodia & ors. had not been followed. The Respondent further contended that the Appellant was not entitled to interim relief or an injunction since the Respondent was already a registered proprietor of the mark "VISTARA" in different classes. They relied on selected judgments to support their claim that the Appellant could not claim a monopoly on a dictionary word, as "VISTARA" is a Sanskrit word. Referring to the judgment of Nandhini Deluxe and others, they argued that the disputed mark was a device mark, while the Appellant's mark was a word mark. They emphasized that the mark should be considered as a whole and not solely based on phonetic similarity. Lastly, they contended that the Appellant was estopped from making arguments contrary to their statements previously made before the Trademark Registry regarding the mark "Vistar" of a third party.

Observations of the Court

During the proceedings, the court made several key observations that influenced its judgment in the case. The court noted that the Respondent could not derive any benefit from their alleged wrongful usage of the mark "VISTARA" without providing valid reasons. The fact that third parties were also using the word "VISTARA" was deemed irrelevant, as the registered proprietor has the right to take action against any infringing party of their choice. The court emphasized that under established trademark law, priority is given to the person who initially adopted the mark, and subsequent usage after a wrongful adoption should not be given any weight. The court further observed that undue importance had been placed on the Respondent's wrongful adoption and unwarranted usage of the mark "VISTARA," as it lacked any justifiable explanation. The court did not find it substantive to deny the Appellant relief simply because their mark was not well-known at the time of the Respondent's adoption. The Appellant's right to an injunction against the Respondent should not be denied based on the timing of the mark's recognition. Additionally, the court found it irrelevant that the Appellant did not initiate proceedings against the Respondents in the Trademark Registry or any court during the interim application, as it did not diminish the protection afforded to the mark "VISTARA." Based on these observations, the court relied on the following key points in pronouncing its judgment:

• The Appellant's mark is considered arbitrary, indicating a higher level of distinctiveness.
• Despite the Respondent's knowledge of the existence of the mark "VISTARA" belonging to the Appellant as the prior adopter and user, the Respondent applied for the identical mark in bad faith.
• The Respondent's mark is identical to the Appellant's mark, "VISTARA," which further strengthens the case of infringement.

Conclusion

However, it is important to note that this order appears to place a significant emphasis on the well-known status of the mark and the similarity between the marks, rather than taking into consideration the differentiation based on the primary services offered by the Appellant and the Respondent. The channels of trade and the consumer base for the goods and services of both parties are distinctly different from each other. This aspect should have been given more weightage in determining the likelihood of confusion or infringement. Additionally, it is worth mentioning that although the Delhi High Court order acknowledges the well-known status of the "VISTARA" mark, it is important for the Appellants to follow the proper procedure of filing the appropriate form and requisite fees to include the mark in the list of well-known marks maintained by the Trade Marks Registry. There may arise difficulties for future brands attempting to com