The conflict between "fly high" and "fly higher": High Court of Delhi elucidates while vacating the stay!

In the recent case of Frankfinn Aviation Services Pvt Ltd. Vs Tata Sia Airlines Ltd. an interim injunction suit was filed against the TATA Sia Airline (“Defendant”) by Frankfinn Aviation Services Private Limited ("Plaintiff") in the High Court of Delhi, seeking a permanent and mandatory injunction restraining the Defendant from, inter-alia, trademark infringement, passing off, unfair competition, dilution, and for the rendering of accounts. The grievance of Plaintiff was that, Defendant had brazenly and flagrantly copied the registered trademark of Plaintiff, "FLY HIGH," and used it for related and cognate services, while advertising its services under the mark "FLY HIGHER." The parties to the lawsuit were rendering the services in the same industry, namely aviation, and Defendant also used the trademark "FLY HIGHER" as a hashtag on its website. Based on the above facts, earlier, the High Court, on January 21, 2022, had granted the Plaintiff an ex-parte ad interim injunction with an observation that the Plaintiff was the registered owner of the trademark "FLY HIGH" and that, consequently, it had a legal right to use the mark exclusively and to seek protection from infringement by other parties under the terms of Section 28(1) of the Trade Marks Act, 1999 (“Act”).

The primary issue framed by the Court was whether the Plaintiff's registration of the mark FLY HIGH preclude the Defendant from using ‘FLY HIGHER’. The Court noted that the terms "trademark" and "mark" have different meanings under the law and that to indicate a connection, in the course of trade, between the goods or services and the person having the right to use the mark either as a proprietor or as a permit, a mark must be able to distinguish the goods and services of one person from those of others. Therefore, trademarks are intangible assets of their owners that act as "source identifiers," directly linking the owner of the products or services to them.

The Court observed that the Defendant is correct in claiming that the slogan "FLY HIGHER" is not used as a trademark but rather is only used in connection with its well-known mark ‘VISTARA’ and solely for advertising and marketing its scheduled airline operating under it. Accordingly, the Court determined that ‘FLY HIGHER’ is a generic term that is common to aviation services and does not serve as a source identifier and cannot be referred to as a "Trade Mark" as defined by the Act.

The Court used the findings of Courts in Cadila Health Care, Bata India Limited and Red Bull Judgment 1as a guide, and stated that if the airline can show 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 Act. According to Section 30(2)(a) of the Act, a registered trademark is not infringed upon when used in connection with products or services that identify the sort, quality, or origin of the amount, intended use, or features of the products or services. The Court then underlined the airline's categorical position that Vistara and its forms are its registered brand and that it had recognised them as well-known trademarks in 2019. Thus, the Court felt that the Defendant is correct in claiming that the slogan ‘FLY HIGHER’ is used solely for advertising and promoting its scheduled airline operations and not as a trademark.

The Court observed that several airlines, including Air India, Emirates, Spice Jet, Lufthansa, and others, have used and still use the phrase ‘FLY HIGH’ or a variation of it in their social media posts, ad campaigns, or even as a part of their frequent flyer programmes and are still operating and have not been struck off from the Register of Companies.

The Court additionally ruled that the plaint failed to disclose that Frankfinn's trademark registration for the phrase ‘Fly High’ is contingent upon it not holding an exclusive right to use the word "High". The Court added that “the voluminous documents entered into the record, in the court’s prima facie view, it cannot agree with Plaintiff that Defendant uses the phrase ‘FLY HIGHER’ as a trademark, and thus the edifice built on a foundation of the argument that Defendant is guilty of infringement by using a deceptively similar trademark, falls to the ground.”

It was further observed that the public interest and registered owner's intellectual rights serve as the cornerstones of any infringement action brought under Section 29 of the Act. The potential of misunderstanding and/or connection among the intended consumers is thus a crucial component of a claim of infringement.

Under its well-known brand, the Defendant runs a full-service airline, whereas the Plaintiff uses the ‘FRANKFINN’ mark to operate a training institute. While Vistara Airlines passengers make up the Defendant's clientele, the Plaintiff's target market is made up of individuals looking for soft skills training in the travel, tourism, hotel management, and aviation sectors in the hopes of finding career prospects. Thus, the requirements of Sections 29(1) and (2) of the Act are not met and there is a lack of the element of the possibility of confusion, or consumers or members of the trade associating the services provided by Defendant as coming from the Plaintiff.

Contrary to the Plaintiff’s arguments, Justice Jyoti Singh finally held that Defendant's use of the phrase "FLY HIGHER" does not appear to be done with the intention of misleading, deceiving, or confusing members of the public. It also held that the prominent use of the well-known trademark next to the phrase ‘FLY HIGHER’ further refutes any intent on the part of the Defendant to misrepresent. As a result, the Plaintiff has not succeeded in proving that the Defendant has engaged in passing off. Thus, the Court revoked the earlier ex parte ad interim injunction order issued by it on January 21, 2022.

By - Muskan Maheshwari & Pranav Sethi

  1. Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors., Bata India Limited v. Chawla Boot House and Another, 2019 and Red Bull AG v. Pepsico India Holdings Pvt. Ltd. & Anr., 2022