The Delhi High Court recently passed an order (<–click here for the order) restraining a travel company named Shree Ganesh Enterprises Pvt. Ltd. (the Defendants) from using the domain name “www.makemytours.com” in Make My Trip(India) Pvt. Ltd. vs Make My Tours Pvt. Ltd. & Ors. (CS(OS) 4039/2014).
The issue first arose in 2013, when Make My Trip Pvt Ltd (Plaintiff), the very famous and reputed travel agency, brought an action against the Defendants for passing off and infringing its trademarked domain name, www.makemytrip.com .
The Plaintiff is an online travel company which was incorporated in the year 2000. It initially dealt in online flight bookings for customers who regularly travelled from India to the US. Having taken its business eventually to an international stage, it today stands as one of the most famous and successful online “trip manager” for many Indians. It offers an array of services from booking flight tickets to arranging lodging and travel facilities for its customers. The Defendants offers similar services.
Previously in 2013, the Plaintiff filed a suit for infringement being against the Defendants before the Delhi High Court for misuse of its mark wherein the Court granted an ex-parte ad-interim injunction restraining the Defendants from using the mark and Logo in any manner. In October 2014, the Plaintiff filed a suit against the Defendants after it came across a website www.makemytours.com which was owned by the Defendants; which was ascertained by the Plaintiff on conducting a WHOIS search.
The Plaintiff contended that they are registered proprietors of the makemytrip mark. It has also made a substantial investment in order to promote and advertise its logos through newspapers, electronic media and magazines. The Plaintiff further contended that makemytrip.com is one of the most accessed website on the internet and the number of website users is only increasing each day.
Thus, the Defendantss were not only using the marks and logos but are also using an identical domain name as that of the Plaintiff. The latter then concluded that due to continuous and extensive use of the mark and logos, the immense investment in their promotion, the Plaintiff’s mark has now become a well-known mark.
The Court observed the following:
“It is evident from the material placed on record that the MMT marks and MMT logos of the plaintiff are identified and associated in the public mind with the plaintiff. Defendants’ use and promotion of virtually identical impugned marks for identical services creates a false sense of affiliation or collaboration or nexus between the plaintiff and the Defendants in the minds of the public. Such use by the Defendants is likely to cause confusion and deception and is bound to mislead the public to believe that the source of the Defendants’ services is the plaintiff”.
“The visual identity between the defendants’ mark and the logo and the plaintiff’s mark and logo, seems to be motivated by an intention to trade upon and benefit from the reputation and goodwill enjoyed by the plaintiff in its MMT marks.”
The court was therefore of the opinion that the plaintiff was able to make out a strong prima facie case in its favour and that the balance of convenience also lied in favour of the plaintiff and against the Defendants.
Although passing off is not defined under the Trademarks Act, 1999 it provides for it is a well settled point of law that any mark or logo that is deceptively similar to another can lead to passing off. The two marks can easily confuse the common and rational consumer and may lead him / her to think of both the marks to be owned by the Plaintiff.
In the present case, the word marks makemytrip and makemytour, albeit not identical, are certainly deceptively similar. Also, considering that the Plaintiff had previously filed a suit for infringement against the Defendants in 2013, the primary motive of the Defendants seemed so as to sustain over the goodwill of the Plaintiff’s Company. Thus in the particular facts and circumstances, the Delhi High Court’s reasoning in support of the injunction is appropriate in deciding for the Plaintiff.
Fun Fact: If you presently access the website named http://www.makemytour.com; it displays a website owned by another travel agency named ONS Travel Inc., which claims to be an authorized seller for companies Globus Tours and Trafalgar tours. Although the device mark may not seem confusing, the Delhi High Court’s order against the Defendant in the above case should serve as a warning to ONS Inc. since it does carry on business in India as well. Interitus IP will be back with updates if there are any further developments!
 The WHOIS is a query and response protocol that is widely used for querying databases that store the registered users or assignees of an Internet resource, such as a domain name.
III BSL LLB
ILS Law College, Pune