Recently, the Delhi High Court dismissed an application seeking injunction restraining the defendant, Mach Conferences and Events Limited from, inter alia, infringement of the trade mark, passing off, misrepresentation, dilution, unfair competition, including as part of domain name, the marks BOOKMYYATRA.COM or BOOKMYYATRA (“Impugned Marks”).
By way of background, the plaintiff, Yatra Online Limited, adopted the mark YATRA in 2005 as a part of its trade name/corporate name and commenced its business of providing online travel booking and related services to its customers in the year 2006 and is the registered proprietor of YATRA marks in Class 39. Counsel for plaintiff contended that while the plaintiff’s registrations contain a disclaimer that no exclusive rights would be granted to the word ‘Yatra’, however, YATRA being the most dominant feature of the plaintiff’ mark, is distinctive and well-known for travel booking and related services industry. Further, he reasoned that even though there is a disclaimer with regard to the plaintiff not having exclusive rights in the word YATRA, there are numerous trade marks of the plaintiff that have been granted without any disclaimer. It was submitted that the defendant adopted the plaintiff’s mark YATRA in the Impugned Marks.
On the other hand, counsel for defendant submitted that the plaintiff does not have any right in the word YATRA in Class 39 in relation to travel and related services. He further pointed out that the plaintiff has accepted the disclaimer with respect to not having exclusive right for the word YATRA, and cannot detach itself from the said disclaimer and claim larger rights. He also pointed out that the plaintiff does not have any registration in Class 39 as its application stands opposed. The plaintiff also does not have any common law right in the word YATRA as the same has been used by innumerable travel operators all over India since a long period of time, as part of their business names. Counsel further asserted that the combination of ‘Book’ and ‘My’ has become common for online businesses and several businesses combine this word with other words to invent new names/marks such as ‘BookMyShow’, ‘BookMySport’, ‘BookMyTrip’ etc.
While analysing the case, the court noted that the word Yatra cannot be said to have acquired a secondary meaning since the plaintiff failed to establish that the term has acquired a secondary meaning and is exclusively associated with the plaintiff. Further, the single judge observed that Yatra is synonymous with ‘travel’ in Hindi and is a generic and descriptive word in the travel industry and cannot be monopolised by a single trader. The court also reiterated the significance of disclaimers in demarcating the scope of rights, beyond which no trader can claim exclusivity. Read the judgement copy here