Point of Law: Right of a proprietor in a domain name is entitled to equal protection, applying principles of trade mark law.

JUDGMENT :

1. The present suit has been filed by the plaintiff praying for a decree of permanent injunction against the defendants, restraining them from using the marks/logos ‘MAKEMYTRIPMOOD’,the domain name http://www.makemytripmood.com or any other marks deceptively similar to the plaintiff’s registered ‘MakeMyTrip’ trade marks (hereinafter referred to as the ‘MakeMyTrip Marks’),which would amount to either infringement, passing off, dilution, tarnishment of the plaintiff’s ‘MakeMyTrip’ marks, or unfair competition. The ‘MakeMyTrip Marks’ of the plaintiff are reproduced hereinbelow:-

FACTUAL BACKGROUND

2. It is the case of the plaintiff-company that it is one of the largest travel companies in India, with its pan-India presence as also international presence, in countries including the United States of America, the European Union, Australia and the United Kingdom amongst others.

3. The plaintiff was originally incorporated on 13.04.2000. Vide fresh Certificate of Incorporation dated 02.08.2000, the plaintiff changed its name to ‘Makemytrip.com Pvt Ltd.’. Subsequently, the plaintiff changed its name to its present name, ‘MakeMyTrip (India) Pvt. Ltd’. The plaintiff, through its domain name www.makemytrip.com (registered in May, 2000) and other technology-enhanced platforms, including mobile-applications since July, 2012, offers an extensive range of travel services and products, both in India and abroad. The said services of the plaintiff include booking of air tickets, bus tickets, hotel reservations, car hire, domestic and international holiday packages, and ancillary travel requirements such as facilitating access to travel insurance, visa assistance and forex exchange under its ‘MakeMyTrip Marks’.

4. The plaintiff asserts that it has been using the ‘MakeMyTrip Marks’ continuously and uninterruptedly since the year 2000 for all its business activities. The word ‘MakeMyTrip’ is coined and inventive, which is an essential feature of all the composite device and/or word marks of the plaintiff. The same is not a common dictionary word.

5. It is further asserted that due to extensive use for more than twenty years and owing to the plaintiff’s widespread goodwill and reputation in its ‘MakeMyTrip Marks’, the general public and the members of trade have come to associate and recognize the ‘MakeMyTrip Marks’ as originating from the plaintiff and no one else.

6. It is asserted that the plaintiff maintains an active and extensive presence on social media platforms such as Facebook, Twitter, YouTube and Instagram, which prominently feature the ‘MakeMyTrip Marks’. The plaintiff has over thousands of followers on each platform.

7. The plaintiff has provided details of its annual sales turnover for the Financial Years 2000-01 to 2018-19 in paragraph 16 of plaint, and the details of the amount expended on advertising in the same time period in paragraph 17 of plaint.

8. It is asserted by the plaintiff that the plaintiff has sponsored various national and international events, Bollywood feature films such as ‘Dostana’ and ‘Yeh Jawaani Hai Deewani’, and sporting events such as the Indian Premier League (2016-2018), wherein the ‘MakeMyTrip Marks’ of the plaintiff have been prominently featured. It is asserted that the plaintiff has been the recipient of numerous prestigious national and international awards and recognitions, and is also a part of several renowned national and international trade associations.

9. The plaintiff submits that the plaintiff-company has, apart from common law rights, also acquired statutory rights by way of numerous registrations in the ‘MakeMyTrip Marks’ under various classes in India as per the provisions of the Trade Marks Act, 1999 (in short ‘the Act’), which have been detailed in paragraph 13 of the plaint. It is further asserted that the plaintiff has acquired trade mark registrations in several countries across the globe, such as Australia, Canada, Singapore and the United Arab Emirates, for its ‘MakeMyTrip Marks’.

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