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The High Court of Delhi, by its interim ex-parte order dated 21 November 2023, granted the prayer of ‘makemytrip’ and issued interim injunction against the mark ‘dialmytrip’.
I shall provide an overview of the order and offer comments in this post.
Facts
The petitioner, MakeMyTrip (India) Pvt. Ltd, filed an injunction suit against the defendant, Dialmytrip Tech Pvt. Ltd, against the mark ‘dialmytrip’ and the domain names ‘www.dialmytrip.com’ and ‘www.dmtgroup.in’.
The petitioner argued that:
- it enjoys goodwill and reputation in the travel industry;
- it enjoys trademark registrations since 2011 under various classes for ‘makemytrip’ and its allied marks;
- the defendant was using the mark ‘dialmytrip’ in relation to financial and other services; but recently the defendant expanded its services to tours and travels and the defendant’s use of ‘dialmytrip’ violated the petititioner’s trademark rights;
- there are judicial precedents against the misuse of the wordmark ‘makemytrip’ (for e.g., there are judgments against the usage of ‘PickMyTrip’ and ‘MyTripBazaar’)
The Court referred to the reply given by the defendant to the legal notice issued by the petitioner where the defendant highlighted that (i) its travel and industry component is negligible in size and (ii) its business did not harm the reputation or goodwill of the petitioner. Further, its registered mark ‘DMT’ is an acronym of ‘dialmytrip’ and therefore, the defendant is entitled to use ‘dialmytrip’.
The Court evaluated both the marks – ‘makemytrip’ and ‘dialmytrip’ – and concluded that the marks are confusingly similar. The general public may perceive ‘dialmytrip’ as an extension or affiliate of ‘makemytrip’.
The Court referred to the Supreme Court judgment in Laxmikant V. Patel v. Chetanbhai Shah & Ors (2001 case) and held that where a case of prima facie passing off is made out, the Court ought to grant an immediate ex-parte injunction.
As the Court concluded that there exists a prima facie case, the Court restrained the defendant from using the mark ‘dialmytrip’ in respect of tour, travel, hospitality and other services. If an injunction is not granted, it can lead to irreparable loss for petitioner. As far as other services which are offered by the defendant (such as financial, banking, insurance and other services), the Court shall consider them at a later stage of the suit when the defendant enters appearance.
Accordingly, the Court concluded as follows: ‘The Defendant has two domain names ‘www.dialmytrip.com’ and ‘www.dmtgroup.in’. The first domain name shall not be used in respect of tour, travel, hospitality, hotels cabs or any other travel related services. The defendant is, however, free to use the second domain name ‘www.dmtgroup.in’ in respect of such services.’
The matter is listed before the court on 22 March 2024.
Comments
It can be argued that ‘makemytrip’ started of as a descriptive mark. But the facts pertaining to its market share indicate that the mark has achieved distinctiveness. Therefore, using a major portion of its word mark (‘mytrip’ in this case) can confuse the common public.
The statutory threshold for proving trademark dilution is pegged higher when compared to trademark infringement and passing off. Therefore, the Court prudently limited the ex-parte interim injunction to travel-related services only.
But does it mean that the defendant has no case at all? I do not believe so.
The defendant can show that their mark, when taken as a whole (i.e. including logo and typography), can be quite different from ‘makemytrip’ .
Also, behavioural sciences can help in the objective appreciation of consumer psychology – an important yardstick when it comes to the determination of consumer confusion. For e.g., one plausible argument can be, ‘dial’ and ‘make’ are two expressions with altogether different meanings. When we read words, they evoke thoughts / emotions where one relates to her/his previous experiences. For example, when one reads the word ‘dial’, one may readily recall the image of dialing a phone and may tend to read the rest of the mark in that context i.e., ‘mytrip’ in the context of ‘dialing’ someone for booking the tickets. In other words, ‘dial’ as the prefix will leave an altogether different preliminary impression compared to the prefix ‘make’.
Please refer to my earlier post concerning Karnataka High Court judgment in M/S Adiga Sweets v. M/S Vasudeva Adigas Fast Food Pvt – where the Karnataka High Court discussed consumer confusion from the perspective of human psychology. For the benefit of readers, I am copy-pasting the relevant parts of the judgment:
“9. There have been plenty of studies in the United States of America where the psychological impact of confusion in trademarks have been studied. For, as Justice Felix Frankfurter observed in Mishawaka Rubber and Woolen Mfg. Co. v SS. Kresge Co. [316 US 203] “the protection to trademark is the law’s recognition of the psychological functions of the symbols”. Mr. Jacob Jacoby in his article, “The Psychological Foundations of Trademark Law: Secondary Meaning, Generism, Fame, Confusion, Dilution.” states that “The brand names serve as information ‘chunks’. They represent core nodes in the memory around which other ‘associated information is connected and organized’. Given, only a familiar brand name, a host of relevant and important information can be efficiently called into consciousness.” The brand names serve as the ‘information chunks’ “enabling the consumer to efficiently organize, store, and retrieve information from the memory. Indeed, when consumers engage in pre-purchase decision making, brand name information turns out to be the most frequently accessed type of information.” According to the author, “incoming information is interpreted in terms of prior knowledge. Moreover, the process of retrieving information stored in memory to interpret new stimuli is not done with conscious deliberateness, but unconsciously and virtually instantaneously, generally within the first two hundred milliseconds after apprehending the incoming information.” The author concludes that “In sum, we do not need to pay attention to every single aspect of an external object (i.e. product, advertisement or store) before using what we have in our memory to interpret and identify that object. Instead, in interpreting the outside world, we generally rely in a process called ‘pattern recognition’. When sufficient number of features represented in the incoming information match the pattern of features of a pre-existing cognitive network, we tend to fill in the details and interpret the object as an exemplar of that network. The greater the similarity between the pattern of information extracted from the outside object and the pattern of information stored in a cognitive network, the greater the likelihood that one will be confused into thinking that the latter is an exemplar of the former.” [The Trademark Reporter, Vol. 91 No. 5 September-October, 2000].”
In this Karnataka case, “Adigas” (a non-descriptive mark) was at the heart of the dispute and therefore, my view is that a comparison cannot be drawn with ‘my trip’ which are common words. However, either party can rely on the above principles for advancing their case.
I believe, reliance on behavioural sciences and explaining as to how the impugned mark does not create confusion, is the way forward for the defendant.