The Delhi High Court’s Justice Jyoti Singh vide her order dated October 28, 2022 has vacated an ex-parte ad interim injunction (dated January 21, 2022) against Tata Sia Airlines for using the mark ‘Fly Higher’ in their promotional campaigns. The case, Frankfinn Aviation Services Private Ltd. vs Tata Sia Airlines Limited CS(COMM) 54/2022 was instituted by Frankfinn to refrain Tata from using their registered trademark ‘Fly High’. The plaintiff has been using its ‘Fly High’ mark since 2004 for managing and operating training institutes for people wishing to join the aviation, hospitality, travel and customer care management industries.

Justice Singh in her order has deliberated the question of whether the registration of the trademark ‘Fly High’ by the plaintiff could prevent the defendant from using the phrase ‘Fly Higher’ in their promotional campaigns. The defendant in its submissions to vacate the order contended that:

  1. The plaintiff and the defendant operate in completely different fields, i.e. educational training and the airline industry, respectively;
  2. ‘Fly Higher’ is descriptive of the services provided by the defendant;
  3. The defendant has not used the phrase ‘Fly Higher’ as a trademark, but is instead used along with their well-known trademark Vistara as a descriptor for the purposes of marketing and promotion;
  4. No goods or services were being provided under the said phrase;
  5. The plaintiff’s rights are restricted to classes 16 and 41 whereas the defendant is engaged in providing goods and services in classes 12 and 39;
  6. The plaintiff itself was using the fly high mark in conjunction with their Frankfinn mark;
  7. The plaintiff misrepresented to obtain the interim order since their registration in class 41 was subject to the condition that they do not get the right to monopolise the word ‘High’;
  8. ‘Fly High’ has a dictionary meaning and is merely laudatory in nature;
  9. The plaintiff approached the court belatedly since the defendant’s promotional campaign went live in 2018.

The plaintiff on the other hand contended that they were the original adopter, prior user, and registered proprietor of the mark ‘Fly High’ with use claimed since the year 2004. They additionally stated that they had acquired goodwill and reputation to the extent that their mark had become distinctive and was actively associated with the plaintiff. They relied upon orders in their favour and submitted that the High Court of Delhi in CS(COMM) 305/2021, had held that ‘the trademark FLY HIGH cannot be termed as generic or descriptive in nature and at the highest it may be possible to contend that the expression FLY HIGH is suggestive of the services provided by the Plaintiff’. The counsel for the plaintiff further submitted that the defendant was using the impugned mark for cognate and allied services due to their presence in the same sector i.e. aviation, therefore it was highly likely that the public could be confused. Further, they recorded their dissatisfaction with the defendant’s use of the mark ‘Fly High’ as hashtags on popular social media websites to promote their services.

The court while taking due note of the arguments raised by both sides observed the fine line of difference between the definition of the words mark and trademark in the Trade Marks Act, 1999. Further, the court held that ‘Trademarks, therefore, are intangible assets of the proprietors, which serves as a ‘source identifiers’, instantly connecting the goods/services with the proprietor thereof.’, whereas a mark is a device, label, ticket, etc. that is not capable of acting as a source identifier.

While upholding the division judge’s decision in the case of Cadillac Health Care LTD. vs Gujarat Co-Operative Milk marketing federation LTD. & Ors., 2009 SCC OnLine Del 2786, the Court stated, ‘…what is of relevance to the present case is the observation that even if the mark of the Plaintiff acquired a secondary meaning and is distinctive in relation to its products, it does not entitle such a person to preclude others from using the expression for purpose of describing the characteristic features of their products and more importantly where the Defendant uses the expression only in a descriptive sense and not as a trademark.’

Justice Singh further observed that even though the plaintiff placed on record a plethora of documents, the court could not agree that the defendant was using the phrase ‘Fly Higher’ as a trademark. As regards the claim of passing off, the court was of the view that the plaintiff had failed to prove that their reputation was being sullied by the defendant’s alleged use of their mark. Thereafter, the court added that the defendant on account of its acquired reputation was in no need to ride upon the goodwill of the Plaintiff.

On the issue of the likelihood of confusion, the court held that ‘Looking at the nature of services, channels of trade and class of customers in the present case, at this stage, it is difficult to reach a prima facie conclusion that the services offered by the respective parties are not separate and distinct.’

The court while vacating the January 21, 2022 order observed the nuanced complexities of the case with a keen eye. However, it is pertinent to note that at the center of the court’s findings was the conclusion that the defendant was not using the mark ‘Fly Higher’ as a trademark and was therefore not liable to be held accountable for infringement of the plaintiff’s mark. While the court sided with an established brand in this case, it is rather interesting to note how the court decided to stay silent regarding the usage of trademarks as hashtags on social media and whether such use will amount to infringement.

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