Recently, in an action of infringement and passing off brought by Make My Trip Pvt Ltd, the Delhi High Court granted an interim injunction restraining Make My Tours Pvt. Ltd from using their mark ‘Make My Tours’.
The plaintiff was originally incorporated as “Travel by Web Private Limited” in 2000 and later changed its name to “MakeMyTrip (India) Pvt. Ltd” in 2002. The plaintiff, through its website www.makemytrip.com, offers a range of travel services and products, from air/train/bus tickets to hotel bookings to holiday packages etc. Some of its marks have been registered whereas applications of others (including ‘Make My Trip’ under classes 39, 43) are still pending. A copyright registration for the logo of the mark has also been obtained.
In order to promote its mark, the plaintiff has made substantial investment in advertising. For example, the plaintiff has sponsored Bollywood movies such as Race 2 and Yeh Jawani Hai Deewani and also sponsored the IPL franchisee ‘Sunrisers Hyderabad’. The plaintiff’s website has become very popular and users for the year 2014 (till October) were 343,727,615.
In 2013 the plaintiff was successful in obtaining an ex parte interim injunction against Shree Ganesh Enterprises for alleged infringement and passing off of its trademark ‘Make My Trip’ and this matter seems to have been settled (here and here)
In 2014, the plaintiff found out that the defendants were using the domain name www.makemytours.com and providing services similar to that of the plaintiff. The plaintiff claimed that Make My Tours is deceptively similar to Make My Trip and the two logos in issue are identical.
The court held that the plaintiff had established a prima facie case and balance of convenience was in its favour. The court notes “From comparison of the marks, it is clear that the impugned marks used by the defendants in the course of their business, are not only virtually identical to the plaintiff’s well-known MMT marks, but are also colorable imitation of the MMT logos [….] 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.” However, the defendants were allowed to use the mark ‘My Tour’ or ‘My Travel’.
While the case is largely straightforward, the word marks are not in themselves ‘virtually identical’ (the defendant’s mark (word and logo) has not been reproduced in the judgement, so a complete comparison is difficult). But the word marks would have been identical if both the marks were ‘Make My Trip’. The word ‘tours’ is only synonymous to ‘trips’ (plural), which makes the marks ‘similar’. And in trademark law similarity per se is acceptable, so long as it does not lead to confusion. Likelihood of confusion is a fact based assessment made after taking into consideration factors such as similarity of service, class of consumers etc. Internet users who book tickets etc. online, may not have been confused by ‘Make My Tours’ since 1) the website of Make My Tours, offers similar services, but is functionally very different from Make My Trip (“the impugned website was a passive website, in that it was not possible for a customer to make online bookings… prospective customer could contact the owner and make the desired booking”), 2) this is a service and not a product which is bought off the shelf, so the consumer makes a more conscious choice and 3) Make My Trip is so widely advertised and well known to consumers of this class that they can almost automatically tell the difference between Make My Tours.
Even though, taken as whole, the idea of the two marks are largely the same, and there may be questions on the honesty of adoption, a question that could be considered is whether courts should be aware of the dangers in granting monopoly property rights to a claimant in a large class of words (including synonyms).