TMI Blog2013 (9) TMI 349X X X X Extracts X X X X X X X X Extracts X X X X ..... me accessible to Indians via their website - if the plaintiffs have customers in a country, it can be presumed that they enjoy a reputation in that country - Owing to the fact that Indians could access the plaintiff no 2’s services through its website as far back as in 1998 - the same was sufficient to constitute prior use - By virtue of Section 28 of the Act, a registered proprietor of the trademark had the exclusive right to the use of the trademark in relation to the goods and services in respect of which the trademark was registered and to obtain relief against infringement of the trademark. The plaintiff and the defendants were operating in the same sphere of activity - The services provided by the plaintiff and defendants were identical in nature - Therefore, the likelihood of confusion and deception was strong on account of the public at large associating the defendants services to be those offered by the plaintiff - The acts of the defendants in using the impugned trademark coupled with a lack of plausible explanation offered by the defendants for the same, leads to the conclusion that the defendants were in fact passing off their services as those of the plaintiffs in a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Jet is registered. 4. Summons were issued in the suit vide order dated 24.02.2010. Though initial appearance was put in by the defendants, no written statement was filed and after repeated absence, the defendants were proceeded ex parte vide order dated 16.12.2010. 5. The plaintiff tendered the affidavit by way of evidence of Sh. Sudhir Thakur, the constituted attorney of the plaintiff no 1 as PW-1, which is Ex. PW-1A. This witness proved various documents on 05.08.2011, which are Ex. PW1/1 to PW1/46. The testimony of the plaintiffs witness has gone unrebutted and there is no reason not to accept the same. Some of the exhibited documents, which are considered relevant, shall be referred to hereinafter. 6. The first submission of learned counsel for plaintiffs is that the suit trademark is registered in England since 1995, and in India since 2001onwards under multiple classes, the most important being class 39 - which registration was granted on 07.12.2004. Class 39 includes, but is not restricted to, transportation of goods, passenger and travelers by air; airline and shipping services; airport check in service; chartering of aircraft; rental and hire of aircraft etc. Learne ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or servi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to the mark, as well as to the members of the aviation and travel industry. 11. Learned counsel for the plaintiff next submits that since the year 1995, the trademark of the plaintiffs has come to be associated with a significant amount of goodwill all over the world. Learned counsel submits that the defendant no 1, which was incorporated on 31.03.2003, is in the same line of business as plaintiffs i.e. providing air travel services and therefore the defendants would have been aware of the plaintiff s trademark owing to the plaintiff s popularity not just worldwide, but even in India. It is submitted that the advertising and publicity expenditure incurred by the plaintiffs for worldwide promotion was 38.1 million in 2009 alone. 12. Learned counsel submits that up till the year 2009, over 45 million people had travelled on the plaintiff no 2 s airline. It is submitted that the website of the plaintiffs eayJet.com went live in the year 1995 and attracts immense traffic from Indians who travel abroad. Learned counsel submits that though the airline does not operate in India, many Indians books tickets on the plaintiff s website easyJet.com and easyJet.in for routes on which the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... being featured in Indian newspapers, the plaintiff s trademark has also been featured in international leading magazines such as Time , Forbes , and Economist etc. which are also available for circulation in India. Learned counsel further submits that since 1999, the plaintiffs have been conferred several awards and accolades over the years such as one of the greatest marketing moments of the 20th Century by Marketing Magazine in 1999, Best Low Cost Airlines- Business Traveller Magazine in 1999, Top Consumer Superbrand spot by Brand Council in 2003 for the second time, Best Airline website at TravelMole Web Awards in 2006 etc. 16. Learned counsel for the plaintiff submits that due to the aforementioned popularity of the plaintiffs mark since, at least since the year 2000 in India, the easy group of trademarks have come to be associated exclusively with the plaintiffs and the adoption by the defendants of the suit trademark has a strong likelihood of confusing the public, since the consumer base and services offered by the parties are the same. It is submitted that the trademark is a well-known trademark within the meaning of Section 2(zg) of the Act. However, at t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iff s rights in the easy group of trademarks/service marks have been protected by various international tribunals such as the domain name dispute resolution panel- namely WIPO, which is constituted under the aegis of the United Nations. Learned counsel submits that the aforesaid demonstrates that judicial pronouncements have consistently recognized the plaintiff s rights in easyJet and the easy family of trademarks. 21. The next submission of learned counsel is that the defendants have steered clear of the court so that this court cannot access the books of accounts of the defendants to analyse the profits made by the defendants on account of passing off its services as those of the plaintiffs. Learned counsel submits that the plaintiff s are entitled to damages on account of the defendant s infringement and passing off, of the suit trademark. On the aspect of quantum of damages to be awarded to the plaintiffs, reliance is placed on Time Incorporated v. Lokesh Srivastava Anr, 2005 DLT (116) 599, Microsoft Corporation v. Mr. Yogesh Paprt Anr., 2005 (118) DLT 580 and Hero Honda Motors Ltd. v. Shree Assuramji Scooters, 2005 (125) DLT 504. Learned counsel submits that in Time I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2 s website. The same shows that between 2008-2010, 28416 bookings were made by clients accessing the website from India. 25. Furthermore, Exhibit PW1/14 is an article dated 16.11.2000 in the magazine The Economist referring to several low cost airlines including plaintiff no 2 and its plan to increase the density of its flights. Exhibit PW 1/19 is a list of top 5 best companies in marketing according to FORBES Asia magazine featuring the plaintiff no 2 at fifth position. Exhibit PW1/21 is an article dated 23.07.2001 in International magazine TIME discussing the easy group s successful marketing strategy. Similarly exhibits PW1/22, PW1/23 and PW1/24 are write ups in TIME magazine about low cost carriers and the plaintiff no 2 airline dated 26.11.2001, 22.05.2002 and 04.08.2002 respectively. The aforesaid demonstrates that the plaintiff no 2 has consistently been covered in international news and magazines as a successful marketing phenomenon. In Allergan Inc (supra), it was held that internationally established reputation is enough to entitle the plaintiff to sue in India, even if he has no business in India. 26. In N.R. Dongre (supra), a Division Bench of this court h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ft charter services and air ambulance services. 29. The defendants are using the impugned trademark in respect of identical services covered under class 39 in which the plaintiffs enjoy their registration. Therefore, the action of the defendants squarely amounts to infringement under Section 29. Having already established that the plaintiffs enjoy a considerable amount of reputation, there is no iota of doubt that the use of the suit trademark by the defendants in respect of identical services is likely to cause confusion and mislead the public into believing that the services of the defendant are associated with the plaintiff no 2 s airline. 30. In Allergan Inc (supra), the appellant and respondent were both manufacturing medicinal preparations relating to the eye under the mark Ocuflox . The Supreme Court in Para 9 observed In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima-facie shows that the Respondents product was advertised before the Appella ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ausible explanation offered by the defendants for the same, leads to the conclusion that the defendants are in fact passing off their services as those of the plaintiffs in an attempt to cash in on the plaintiff s reputation worldwide as well as in India. 35. Furthermore, the plaintiff has been vigilant about protecting and defending its intellectual property rights. The plaintiff s intellectual property rights have also been protected by international dispute resolution bodies such as WIPO. Exhibit PW1/30 is a WIPO administrative panel decision dated 18.03.2003 wherein the respondent was ordered to transfer the domain name easyjets.com to the plaintiff no 1 in the present suit on the grounds that it was confusingly similar to the trademark in which the plaintiff no 1 has rights. Exhibit PW1/30 is an order by the Royal Courts of Justice in London upholding the plaintiff no 1 s rights in the easy family of trademarks. Similarly, exhibit PW 1/32 is an opposition filed by the plaintiff no 1 in respect of a trademark application filed by a corporation in respect of the mark easy. The decision dated 31.05.2006 upholds the opposition of the plaintiff no 1 herein. 36. Under the afores ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
