Trade Mark - 'YATRA' cannot be monopolized in relation to services like travel and tourism

Delhi High Court Dismisses Yatra Online's Plea Against 'BookMyYatra' for Trademark Infringement. Court rules 'YATRA' as generic, denies exclusivity claims over travel-related services.

In a significant ruling, the Delhi High Court has dismissed the plea filed by Yatra Online Limited seeking to restrain Mach Conferences and Events Limited from using the trademarks 'BookMyYatra' and 'BookMyYatra.com'. The plaintiff, Yatra Online, argued that the defendant’s use of these trademarks amounted to infringement, passing off, and unfair competition, leveraging the established goodwill of Yatra Online’s marks 'YATRA' and 'YATRA.COM'.

Presiding over the matter, Justice Tejas Karia emphasized the generic nature of the word 'YATRA', which in Hindi translates to 'travel', thereby rendering it ineligible for exclusive trademark protection in the travel and tourism sector. The court noted that the Trade Marks Act, 1999 limits protection over generic and descriptive terms, especially those indicating the nature of services provided.

The court highlighted that the Registrar of Trade Marks had granted Yatra Online registration for its device marks with a disclaimer explicitly stating 'No exclusive right for the word YATRA'. This disclaimer, the court ruled, restricts Yatra Online from claiming exclusivity over the word, despite its dominant role in the company’s brand identity.

Further, the court found that the defendant's marks, 'BookMyYatra' and 'BookMyYatra.com', were distinguishable due to the prefix 'BookMy', which added a distinct phonetic and visual element differentiating it from Yatra Online's marks. The judgment referenced previous cases, underscoring that common descriptive words cannot be monopolized, and that '.com' as a domain suffix lacks distinctiveness.

The court also addressed Yatra Online’s claim of the word acquiring secondary significance, stating that the plaintiff failed to demonstrate that the primary meaning of 'YATRA' had been eclipsed by its association with their services. Moreover, the court noted that Yatra Online had not pursued any statutory procedure to have 'YATRA' recognized as a well-known mark, further weakening its exclusivity claims.

Concluding that no prima facie case was established for granting an interim injunction, the court vacated the earlier ex-parte ad-interim relief and allowed Mach Conferences and Events Limited to proceed with using their marks.

Bottom Line:

Trade Mark - Generic and descriptive marks such as 'YATRA' cannot be monopolized in relation to services like travel and tourism. A trade mark's registration with disclaimers does not confer exclusivity over generic terms.

Statutory provision(s): Sections 2(zg), 17, 30 of the Trade Marks Act, 1999; Rule 124 of Trade Marks Rules, 2017

Yatra Online Limited v. Mach Conferences and Events Limited, (Delhi) : Law Finder Doc Id # 2767335