Bombay High Court cancels trademark "Vistarraah" for being identical to well-known mark “VISTARA®”

The Bombay High Court has cancelled the mark “vistarraah” for being phonetically identical and visually and structurally similar to the well-known mark “VISTARA®”.

Air India approached Bombay High Court seeking removal, cancellation, and rectification of the trade mark of Girish Basrimalani Trading As T.G. Exports bearing Registration No.3487173 in Class 31, registered in its name.

High Court was told that Air India's mark had been declared as a well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 by the Delhi High Court in the case of TATA SIA Airlines Limited v. M/s Pilot18 Aviation Book Store & Anr.1 following which the trade mark had been included in the list of well-known trade marks.

An Evidence Affidavit was also filed pointing out that Air India had extensively used the trade mark “VISTARA®” in relation to a wide range of services, such as vehicle apparatus, transport services, household utensils, clothing, carpets, games, etc. It was further pointed out the numerous recognitions and awards were received for the exemplary quality of its services under the mark “VISTARA®”. It was also pointed out from the evidence that Air India had incurred substantial costs for continuous advertising and promotional efforts conducted nationwide. It was thus the submission that all of this established that Air India's trade mark had been used extensively across various services and had acquired significant goodwill and reputation.

High Court was also told that the respondent had chosen to remain absent from present proceedings despite repeated attempts by Air India to serve them.

"The Petitioner adopted the mark “VISTARA®” in 2014 and commenced commercial operations in 2015, acquiring significant goodwill and reputation. Respondent No. 1’s alleged first use is stated to be in 2017, which is plainly subsequent to that of the Petitioner. The Petitioner also uses its mark in connection with meals served onboard and in airport lounges, i.e., services that relate to food and hospitality. Respondent No. 1 claims use of the impugned mark “vistarraah” for allied and cognate goods in Class 31, including agricultural and horticultural products, grains, fresh produce, seeds, and animal foodstuffs. Courts have repeatedly restrained the use of well-known marks for dissimilar goods," Justice Arif S Doctor noted.

Court further found that Section 9(2)(a) of the Act prohibits registration of marks likely to deceive or cause confusion. Respondent's mark was found to be deceptively similar, phonetically, visually, and structurally, to “VISTARA®”. The stylisation adds no distinguishing characters and the risk of consumers believing that Respondent No. 1’s goods originate from or are associated with VISTARA is both real and substantial, court noted.

"Section 11(2)(a) of the Act prohibits the registration of a mark which is identical with or similar to an earlier trade mark. There can be no manner of doubt that the impugned trademark “vistarraah” is similar to the Petitioner’s well known trade mark “VISTARA®”. Thus, the registration of the impugned trade mark clearly, falls foul of Section 11(2)(a) of the Act", the bench held.

Court went on to hold that, "Section 11(10)(i) of the Act mandates protection for well known marks, and Section 11(10)(ii) of the Act also requires the Registrar to take into consideration bad faith either on the part of an applicant or opponent affecting the right relating to the trade mark in question. Given that the Petitioner’s trade mark was declared as a well-known trade mark and was widely advertised throughout the Country, Respondent No.1 was clearly aware of the same and the reputation and goodwill associated with the said mark. Additionally, and crucially, Respondent No.1 was specifically made aware of the same and the Petitioner’s rights owing to cease-and-desist notices, opposition proceedings, and this rectification petition. Despite this, Respondent No.1 persisted in maintaining the impugned registration. Such conduct is not merely negligent but clearly is in bad faith, compounded by the fact that Respondent No.1 has not even chosen to appear and justify such adoption."

Reliance was also placed on the Supreme Court decision in Corn Products Refining Co., wherein it was held that consumers often assume a trade connection when the trade marks in question are similar even if the goods and services are of varied description.