In the recent case of Frankfinn Aviation Services Pvt Ltd v Tata Sia Airlines Ltd, an interim injunction was filed against Tata Sia Airline (the defendant) by Frankfinn Aviation Services (plaintiff) in the Delhi High Court, seeking a permanent and mandatory injunction restraining the defendant from, inter alia, trademark infringement, passing off, unfair competition, dilution, and for the rendering of accounts. The plaintiff’s grievance was that the defendant had brazenly copied the registered trademark of the plaintiff, “fly high”, and used it for related and cognate services, while advertising its services under the mark “fly higher”.
The parties to the lawsuit were both rendering services in the aviation industry, and the defendant also used the trademark “fly higher” as a hashtag on its website. Based on the above, the high court on 21 January 2022, had granted the plaintiff an ex parte ad interim injunction with an observation that the plaintiff was the registered owner of the trademark “fly high” and that, consequently, it had a legal right to use the mark exclusively and to seek protection from infringement by other parties under the terms of section 28(1) of the Trade Marks Act, 1999.
The primary issue framed by the court was whether the plaintiff’s registration of the mark “fly high” precluded the defendant from using “fly higher”. The court noted that the terms “trademark” and “mark” have different meanings under the law and that to indicate a connection, in the course of trade, between the goods or services and the person having the right to use the mark either as a proprietor or as a permit, a mark must be able to distinguish the goods and services of one person from those of others. Therefore, trademarks are intangible assets of their owners that act as “source identifiers”, directly linking the owner to their products or services.
The court observed that the defendant is correct in claiming that the slogan “fly higher” is not used as a trademark but rather is only used in connection with its well-known mark Vistara and solely for advertising and marketing its scheduled airline. Accordingly, the court determined that “fly higher” is a generic term that is common to aviation services and does not serve as a source identifier and cannot be referred to as a “trademark” as defined by the act.
The court used the findings in the Cadila HealthCare, Bata India Limited and Red Bull judgments as a guide, and stated that if the airline can show that its use of the allegedly infringing trademark is not as a trademark “but merely descriptive of its goods”, it can escape the rigours of section 29 of the act. According to section 30(2)(a) of the act, a registered trademark is not infringed on when used in connection with products or services that identify the sort, quality or origin of the amount, intended use, or features of the products or services. The court then underlined the airline’s categorical position that Vistara and its forms are its registered brand and that it had recognised them as well-known trademarks in 2019. Thus, the court felt that the defendant is correct in claiming that the slogan “fly higher” is used solely for advertising and not as a trademark.
The court observed that several airlines, including Air India, Emirates, Spice Jet, Lufthansa and others, have used and still use the phrase “fly high” or a variation of it in their social media posts, ad campaigns or even as a part of their frequent flyer programmes, and are still operating and have not been struck off the Register of Companies.
The court additionally ruled that the plaintiff failed to disclose that Frankfinn’s trademark registration for the phrase “fly high” is contingent on it not holding an exclusive right to use the word “high”. The court added that “the voluminous documents entered into the record, in the court’s prima facie view, do not agree with the plaintiff that the defendant uses the phrase “fly higher” as a trademark, and thus the argument that the defendant is guilty of infringement by using a deceptively similar trademark is not supported.”
It was further observed that the public interest and registered owner’s intellectual rights serve as cornerstones of any infringement action brought under section 29 of the act. The potential for misunderstanding and/or connection among the intended consumers is therefore a crucial component of a claim of infringement.
Under its well-known brand, the defendant runs a full-service airline, whereas the plaintiff uses the “Frankfinn” mark to operate a training institute. While Vistara Airlines passengers make up the defendant’s clientele, the plaintiff’s target market is individuals looking for soft skills training in the travel, tourism, hotel management and aviation sectors. Thus, the requirements of sections 29(1) and (2) of the act are not met and there is no sense that consumers or members of the trade associate the services provided by the defendant as coming from the plaintiff.
Contrary to the plaintiff’s arguments, Justice Jyoti Singh held that the defendant’s use of the phrase “fly higher” did not appear to be intended to mislead, deceive or confuse members of the public. He also held that the prominent use of the well-known trademark next to the phrase “fly higher” further refuted any intent to misrepresent. As a result, the court revoked the earlier ex parte ad interim injunction order it had issued on 21 January 2022.
The dispute digest is compiled by Numen Law Offices, a multidisciplinary law firm based in New Delhi & Mumbai. The authors can be contacted at email@example.com. Readers should not act on the basis of this information without seeking professional legal advice.