Delhi High Court Vacates Stay on Vistara's 'Fly Higher' Campaign, Says Term Common To Aviation Sector

Vacating its ex parte ad interim injunction against Tata Sia Airlines-owned Vistara's promotional campaign 'Fly Higher', the Delhi High Court has said the term 'Fly High' is common to the aviation sector.

The airline had introduced the advertising campaign in 2018 as an extension of its tagline 'Fly The New Feeling'.

On January 21 this year, the court granted an ad interim injunction in favour of a training institute in its suit seeking permanent and mandatory injunction against Tata Sia Airlines. The Frankfinn Aviation Services Private Limited in the suit accused the airline of infringing its registered trademark 'Fly High' which it uses as a tagline for its institute where people are trained in the fields of aviation, hospitality, travel and customer care management.

Hearing Tata's application seeking vacation of the January 21 order, Justice Jyoti Singh considered the question whether registration of the trademark Fly High by Frankfinn Aviation Services can prevent Tata Sia Airlines from using Fly Higher in light of its defence that it was not using the term as a trademark.

The court at the outset noted that the airline was using the phrase Fly Higher in conjunction with its well-known logo and trademark Vistara. Under the law, there is a clear distinction between a 'mark' and a 'trademark', the court noted.

After perusal of the relevant provisions, the court came to a conclusion that in order to qualify as a trademark, the term must be capable of distinguishing the goods and services of one person from the others and it must be used or proposed to be used in relation to goods or services for indicating a connection, in the course of trade, between the goods or services.

"Trademarks, therefore, are intangible assets of the proprietors, which serve as 'source identifiers', instantly connecting the goods/services with the proprietor thereof," the court said.

Relying on the high court's observations in Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors., 2009; Bata India Limited v. Chawla Boot House and Another, 2019 and Red Bull AG v. Pepsico India Holdings Pvt. Ltd. & Anr., 2022, the court said if the airline is able to demonstrate that its use of the allegedly infringing trademark is not as a trademark "but merely descriptive of its goods," it can escape the rigours of Section 29 of the Trade Marks Act, 1999.

"In fact, this defence is available to the Defendant under Section 30(2)(a) of the Act which provides that a registered trademark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose etc. or characteristics of goods or services," said Justice Singh.

The court further noted that the airline's categorical stand is that its registered trademark is Vistara and its formations, and that same has been declared as a well-known trademark by the high court in 2019.

"In my prima facie view, the Defendant is right in stating that the phrase FLY HIGHER is only used in conjunction with its well-known mark [Vistara] and with a sole purpose of advertising and promoting its scheduled Airline operating under [Vistara] and is not as a trademark," it said.

FLY HIGHER does not serve as a source identifier so as to distinguish the airline's goods and services from its competitors, and cannot be termed as a 'Trade Mark', as defined under the Act, the court said further.

The court also referred to various documents placed on record by Tata Sia airlines to observe that various airlines such as Air India, Emirates, Spice Jet, Lufthansa etc. have been using and continue to use the phrase FLY HIGH or its variation as part of their social media posts, advertising campaigns or even as a part of their Frequent Flyer Programmes.

"On a perusal of the documents, this Court finds prima facie merit in the submission of the Defendant that the term FLY HIGH is demonstrably common to Aviation sector and this is fortified by the Master Data of over 20 registered companies, incorporating the phrase FLY HIGH/HIGH FLYER/HIGH FLYERS, which continue to be active and have not been struck off from the Register of Companies. Defendant has also placed on record copies of extracts of online records of the Trade Marks Registry showing registrations/pending applications for the mark FLY HIGH/HIGH FLYER," said the court.

The court further said that the fact that Frankfinn's trademark registration of 'Fly High' is subject to the condition that it shall have no exclusive right to use the word 'High', has been concealed in the plaint.

"From the plethora of documents placed on record, in my prima facie view, this Court cannot agree with the Plaintiff that the Defendant uses the phrase FLY HIGHER as a trademark and thus the edifice built on foundation of the argument that by using a deceptively similar trademark, Defendant is guilty of infringement, falls to the ground," it added.

It also said that Frankfinn has not filed applications in classes 12 and 39 and its registration for the mark FLY HIGH in different classes cannot be the basis to restrain the airline in classes for which the Plaintiff has no registration, unless it is able to make out a case that the services are similar or allied and cognate.

The court said the plaintiff and defendant operate in an entirely different field and industry. While Tata Sia operates an airline, Frankfinn runs a training institute.

"The channels of trade and class of customers are separate inasmuch as Plaintiff's target audience comprise young impressionable students seeking soft skills training for future career. Plaintiff does not guarantee any student a career in an Airline and only trains them. No doubt, there is an element of training that the Defendant imparts, however, the same is only limited to a technical training imparted to the cabin crew personnel which is approved and regulated by DGCA and BCAS, coupled with technical examinations to obtain a pass issued by BCAS," the court said, while rejecting the argument that services offered by the parties are allied and cognate.

With regard to the question on likelihood of confusion or association amongst the intending customers, the court said it is difficult to reach a prima facie conclusion that the services offered by the respective parties are not separate and distinct.

"Plaintiff's target audience are people seeking soft skills training in the travel, tourism, hotel management and Aviation sector with the hope of possible employment opportunities while Defendant's customers comprise travellers who choose to fly with Vistara Airlines. It is difficult to fathom that an informed decision to travel by Vistara Airlines would be taken by a person intending to travel, keeping in mind the alleged popularity of the FLY HIGH mark of the Plaintiff or the services pertaining to training in varied fields of travel, hospitality and hotel industry, including Aviation Sector," it added.

The court also said Frankfinn has not placed on record any material to establish that it has the necessary goodwill or reputation in the services offered by the airline.

"Prima facie, the argument of the Plaintiff seems too far-fetched for this Court to hold that any prudent person desirous of purchasing an Airline ticket, would be influenced by the stellar reputation of a training Institute, even if it was solely training people for recruitment in Aviation sector, instead of exercising an option from amongst the competing airlines, based on the competitive fares and services offered. Defendant's customers, as rightly pointed out, comprise well-informed discerning people, who would not choose to travel in Vistara airlines, based on Plaintiff's repute in the training Institute. Prima facie the element of likelihood of confusion or members of the public or trade associating the services offered by the Defendant as emanating from the Plaintiff, is lacking in the present case," the court held.

The court also said the manner in which the phrase Fly Higher is being issued by the defendant does not appear to be with an intent to deceive, misrepresent or confuse members of the public. "Hence, Plaintiff has failed to establish a prima facie case of passing off against the Defendant," it added.

Vacating the ex parte ad interim injunction order, the court listed the matter for further proceedings before Joint Registrar on January 13, 2023.

Title: FRANKFINN AVIATION SERVICES PRIVATE LIMITED vs TATA SIA AIRLINES LTD.

Citation: 2022 LiveLaw (Del) 1024

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