Assent Of Trademark Owner Necessary To Claim Acquiescence: Delhi HC Sustains Temporary Injunction In Favour Of 'Make My Trip' [Read Order]

Arguments

Make My Trip had contended that on perusal of the Defendant's marks, one could easily notice that the same were phonetically, visually, structurally and conceptually identical/deceptively similar to its MakeMyTrip marks. Concededly, the nature of goods/services in respect of which the two trademarks were being used was also common.

Reliance was placed on F. Hoffman La Roche v. Geofferey Manners, (1969) 2 SCC 716, whereby the Apex Court had held that,

"true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark."

Contesting the suit, the Defendant set up the plea of acquiescence, alleging that the impugned marks were known to Make My Trip since the year 2011 and since it had not objected to the use of the name MakeMyTravel (India) Pvt. Ltd by the Defendant previously, it could not be permitted to object to the use of the said name now.

In support, the Defendant submitted documents viz. the communications exchanged between the booking executives and the franchisees of Make My Trip, pertaining to the year 2011.

Make My Trip refuted the plea stating that the said email communications were not exchanged with its management or any of its key managerial personnel who could be regarded as persons who ought to be aware of Defendant's existence.

The Plaintiff explained that it was a large organization having over 3000 employees across India and a large franchise network which worked independently. The communications relied upon by the Defendants were exchanged with the booking executives and the franchisees of the company, and not with any of the managerial persons.

Findings

Agreeing with Make My Trip's submissions, the Justice Sanjeev Narula said,

"The correspondence with the booking customer care executive of the Plaintiff who apparently did not have knowledge of the intellectual property rights of the Plaintiff, cannot be considered as positive acts of encouragement towards the Defendant to do business under Infringing/Impugned Marks."

Reliance was placed on Hindustan Pencils Private Limited v. India Stationary Products Co., AIR 1990 Del 19, where under the high court had elaborately dealt with the question of delay and acquiescence and held that,

"in order to claim the defence of acquiescence, there should be a tacit or an express assent by the plaintiff to the defendant's using the mark."

Further, in Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd., 2014 SCC OnLine Bom 1064, it was categorically stated by the Bombay High Court that,

"It is essential to the acquiescence doctrine that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter's detriment, confident in the knowledge that the former is not asserting his rights against the violator."

With regards a similar case that Make My Trip lost to a travel agency namely, Orbit Corporate Leisure Travels (I) Pvt. Ltd., which operated under the name 'Get My Trip', the court noted that refusal to grant relief to Make My Trip emanated from the fact that the use of the mark 'GetMyTrip' was within its knowledge and was based on an agreement between the two parties.

The court also stated that the adoption of the mark by Make My Travel was "without any cogent explanation" and holding that it "prima facie appears to be dishonest", the court said,

"Defendant has no justification…for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require a…deeper scrutiny…during the course of trial. Thus…Plaintiff has a prima facie case and the balance of convenience also lies in favour of the Plaintiff. Irreparable loss would be caused to the Plaintiff if the Defendant is not retrained from using the impugned marks.

… injunction order dated 17th May 2018 is made absolute and shall continue to operate during the pendency of the present suit."

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