August 05, 2019: The Delhi High Court in Tata SIA Airlines Limited versus M/s Pilot18 Aviation BookStore and anr, CS (COMM) 156/2019 observed that the mark “VISTARA” should be declared as a well-known mark and permanently restrained the Defendants, an aviation studies portal, from using the Plaintiff’s mark.

Factual background

The Plaintiff operates full-service airlines under the mark “VISTARA.” The mark has been used by the Plaintiff since 2014 for airline services as well as for various merchandises such as uniforms, name tags, badges and other accessories worn by the airline staff. The Plaintiff is also the registered proprietor of the mark “VISTARA” in classes 12, 21, 25, 27, 28 and 39 in India and various other jurisdictions.

The Defendant No. 1, M/s Pilot18 Aviation Book Store operates an aviation studies portal called www.pilot18.com. The Defendant No. 2 is the proprietor of Defendant No. 1.

The Plaintiff filed the present suit seeking injunction against the Defendants for infringement of its trademark when it learnt that the Defendants were engaged in the sale of products bearing the mark “VISTARA” with an identical device mark/logo form, on its website as well as various e-commerce portals, such as Amazon and Snapdeal.

Proceedings before the court

The Hon’ble Court vide order dated March 26, 2019 restrained the Defendants from manufacturing, selling, offering for sale, or dealing in any manner whatsoever with any “VISTARA” branded products, or any other mark or logo which is identical or deceptively similar to the “VISTARA” mark/logo.

The Defendants pleaded before the Court that they have not used the Plaintiff’s trademarks.

On March 26, 2019, a local commissioner was appointed by the Court, who in fact, found a large number of products (more than 300 in number, including clips, cuff links, bag tags, stickers etc) bearing the mark “VISTARA.”

Therefore, it was clear that the Defendants were taking a false stand before the court. On July 26, 2019, the Defendant No. 2, in his statement before the Hon’ble Court admitted that goods bearing the mark “VISTARA” which were seized by the Local Commissioner were being sold at his shop. Further, the Defendant No. 2 also stated that they were not just selling products bearing the mark ‘VISTARA’ but products of various other airlines including Jet Airways, SpiceJet and Air India as well.

Observation of the court and decision

The Court observed that the sale of such huge merchandise with the names of various airlines is not only violative of the trademark rights of the respective parties, including the Plaintiff but also poses a serious threat owing to the fact that some unauthorised persons may try to seek entry into airports etc., on the basis of the counterfeit badges, labels, uniforms and other merchandise illegally bearing the trademarks of these airlines.

In view of the foregoing, the Court opined that the Defendants are not only liable for permanent injunction but also to pay costs and damages. Further, the incorrect statement made before the court that the Defendants are not using the trade mark “VISTARA” also constitutes perjury before this Court.

Therefore, in addition to permanently restraining the Defendants from using the Plaintiff’s trademark, also directed the Defendants to pay Rs. 2 lakhs to the Plaintiff within one month.

The Court held that “the mark VISTARA is quite popular in India and has acquired a unique status. It is a distinctive mark that enjoys enormous goodwill and reputation in the airline, travel and tourism industry. Use of this mark, even in respect of unrelated services would create confusion and deception. It deserves to be declared as a `well-known mark’.”

The suit was decreed in favour of the Plaintiff.