New market entrants must be wary of confusing customers through their trademarks

MAKEMYTRIP INDIA PRIVATE LIMITED v. DIALMYTRIP TECH PRIVATE LIMITED (Decided on 21 November, 2023| HIGH COURT OF DELHI)

CS(COMM) 815/2023

2023 SCC Online Del7563

 

Facts

MakeMy Trip India Pvt. Ltd (the plaintiff) sought an injunction against Dialmytrip Tech Pvt Ltd (the defendant) to prevent it from using the name/mark ‘Dialmytrip’, and the domain names ‘www.dialmytrip.com’ & ‘www.dmtgroup.in.’

According to the plaintiff, their business was one of the biggest online travel agencies in India and across the world for booking flights. In the 2018–19 fiscal year, turnover was Rs. 3 billion (US$36 million).

Their domain name – ‘www.makemytrip.com’ was registered on 8 May 2000 and since then they have registered a series of marks with the core being ‘MakeMyTrip’ in India and other jurisdictions. The website generated more than 260 million hits and over 20 million bookings in 2023. 

Arguments of the parties

The plaintiff was aggrieved by the defendant’s use of the name ‘Dialmytrip’ as they are engaged in a similar business of providing travel-related services including selling and booking tickets, hotel reservations and arranging trips both in India and around the world through their website and domain name – ‘dialmytrip.com’ and ‘www.dmtgroup.in.’

The plaintiff argued that it had already been protected against misuse by marks like ‘PickMyTrip’ and ‘MyTripBazaar’ through various court orders and hence, must be protected against the defendant’s infringement of their mark ‘MakeMyTrip’.

‘Dialmytrip’ has been conducting banking, insurance and investment-related services since 2015 and has recently set foot into the travel and tour industry. After receiving a cease-and-desist notice from MakeMyTrip, the defendant argued that its business model differed from the plaintiff’s and its tour and travel services contributed 0.8% of total turnover in the preceding 12 months (April-March), averaging around Rs. 700,000, which was significantly lower than MakeMyTrip’s per minute turnover for these services.

The defendant stated that they were not offering services similar to MakeMyTrip and did not engage in business that impacted their goodwill. Additionally, they also stated that they had their own registered brand under the name of ‘DMT’ which is an abbreviated form of ‘Dialmytrip’ and hence had the right to exploit the word ‘DMT’ in public through an e-commerce platform or in any other manner.

Judgement

The Court ruled in favour of MakeMyTrip and stated that the marks ‘MakeMyTrip’ and ‘Dialmytrip’ were confusingly similar. The court said that considering the manner in which online business relating to travel is conducted, the defendant’s business and name is likely to be perceived as an extension of the plaintiff’s well-known business or as an affiliate/connected business. Such confusion could also lead to dilution of the plaintiff’s mark, name and brand equity.

The court held that at a prima facie level, it was imperative to restrain the defendant from using the mark ‘Dialmytrip’ in relation to tour, travel, hospitality and all other related services. It applied the ‘balance of convenience’ rule in favour of MakeMyTrip and stated that it was a well-known company in the travel business that had immense goodwill and reputation in the market.

If an injunction was not granted, it would lead to irreparable loss to MakeMyTrip. However, the court stated that in relation to the use of the corporate name for the financial, banking, insurance and other services, that would be considered at a later date after the defendant had entered appearance in the matter.

The defendant would not be allowed to use the first domain name – “www.dialmytrip.com” in respect of tour, travel, hospitality, hotels cabs or any other travel-related services but would be allowed to use its second domain name – “www.dmtgroup.in” in respect of such services.

Analysis

The plaintiff’s mark ‘MakeMyTrip’, though descriptive in nature, has garnered reputation over the years and has acquired distinctiveness. The court’s observation that the defendant’s mark would be considered as an extension of the plaintiff’s well-known business was commendable. However, the defendant has only been restricted from using the mark in relation to tour, travel, hospitality and other related services. The defendant can argue for continued use of the mark for conducting banking, insurance and investment-related services.

It is pertinent to note that this is a decision of a High Court and it would then be prudent to closely follow if and when the Supreme Court has an opportunity to opine on this subject.

 

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