A plea of trademark invalidity can be prima facie tenable based on phonetic and visual similarities, requiring sufficient specificity in pleadings to support such claims under the Trade Marks Act.

JUDGMENT

Jyoti Singh, J.

I.A. 12318/2019 (under Section 124 of Trade Marks Act, 1999 r/w Section 151 CPC, by Plaintiffs)

1. This application has been preferred on behalf of the Plaintiffs under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the `Act') seeking permission to file rectification/cancellation petition against registrations of Defendant's trademark TRAVELXP in different classes, as mentioned therein. It is pertinent to mention that during the course of hearing of the application, learned counsel for the Plaintiffs, on instructions, sought to confine the relief sought in the application to classes 16, 35, 38, 39 and 43, in which the Defendant has registrations and this stand is incorporated in writing in the written submissions.

2. Present suit was instituted by the Plaintiffs seeking permanent injunction against the Defendant from inter alia infringing Plaintiffs' trademark `TRAVELEX' as well as passing off.

3. Plaintiffs No. 1 and 2 are companies incorporated under the laws of United Kingdom while Plaintiff No. 3 is incorporated under the Companies Act, 1956. Plaintiffs claim to have adopted the mark TRAVELEX in 1976 for providing services in relation to currency exchange business including supplying currency online at airports, shopping malls, for financial institutions etc. In India, Plaintiffs have obtained registrations for the trademark TRAVELEX in Classes 16, 35 and 36.

4. Plaintiffs state that they trade in over 80 currencies and have business in nearly 50 countries with approximately 1100 stores and 900 ATMs across the world. Plaintiffs' sales turnover, amounts expended on promotion, awards received and presence on several websites are reflective of their transborder reputation and distinctiveness of the trademark. Plaintiffs are also engaged in providing services in Travel and Trip insurance at least since 19.04.2002, the date of domain name registration for www.travelexinsurance.com.

5. On 25.01.2016, when the suit was listed, an ex parte ad interim injunction was granted in favour of the Plaintiffs by the Court, observing in the order that the rival marks bear visual and phonetic resemblance and the services offered by the Plaintiffs relating to foreign exchange go hand in hand with the services of the Defendant. Subsequently, on an application filed by the Defendant seeking vacation of the injunction order, Court modified the order dated 25.01.2016 qua the classes in which the Defendant was registered but with a prima facie finding that the services of the Defendant are allied and cognate to those of the Plaintiffs. As a matter of record, both the interim orders are continuing to operate till date.

6. Defendant filed written statement dated 18.04.2016 to the original plaint and one of the defences taken against the alleged infringement was that Defendant has registration in the mark TRAVELXP in Classes 38, 39, 41, 42 and 43. Defendant claimed to be a continuous user of TRAVELXP trademark since the year 2009 and averred that its business activities primarily involve booking of tickets and lodgings for travellers under TRAVELXP and running of TV channel TRAVELXP HD. Defendant also stated that its usage of the registered trademark has been honest and keeping in view its flourishing reputation in travel consultancy and travel programmes, Defendant is also entitled to a defence under Section 34 of the Act.

7. Upon learning of Defendant's registration of the trademark TRAVELXP in various classes from the writt