In a recent trademark tussle between Vistara Voyages and TATA SIA Airlines concerning the trademark VISTARA, the Karnataka High Court granted relief to TATA SIA Airlines based on jurisdictional issue of filing suit under Section 134 of the Trademark Act in Bengaluru.
Facts of the case:
1. Vistara Voyages (India) Pvt. Ltd. (hereinafter referred to as the Respondent/ Plaintiff) having its head office in Karnataka, Bengaluru is a travel management company, delivering travelling solutions to its clients.
2. In January 2015, a joint venture of TATA Sons and Singapore Airlines namely M/S TATA SIA Airlines Limited (hereinafter referred to as the Petitioner/ Defendant) launched its airlines in India under the brand name VISTARA;
3. Aggrieved by the adoption of an identical trademark, the Respondent initially filed a suit before the District Judge, Bengaluru for issue of an injunction restraining the Petitioner from using the mark “VISTARA” and claimed damages of Rupees 1 Crore from the Petitioner;
Brief Facts and Findings of the Trial Court
In response to the aforesaid suit filed by the Respondent (Plaintiff), the Petitioner (Defendant) filed an application for rejection of the plaint or return of the plaint for being presented before the Jurisdictional Court on the following grounds:
– That the suit is liable to be dismissed for lack of jurisdiction as the Petitioner (Defendant) was not carrying any business in India;
– That Section 134 of the Trademark Act, 1999 (the Act) does not apply to unregistered trademarks;
Finding of the Trial Court
The Court dismissed the application filed by the Petitioner (Defendant) for rejection of the plaint on the following grounds:
i. That the certificate issued by the Joint Director, District Industrial Centre, Bengaluru indicates that Respondent (Plaintiff) has been permitted to do the activity of travel and forex in Bengaluru and Plaintiff (Respondent) is having an office at Bengaluru;
ii. That there is no record placed by the Petitioner (Defendant) to indicate that the Government of India has permitted it to carryout business only in Delhi;
iii. That the permission to provide Airport and allied services to domestic passengers includes the entire territory of India;
Aggrieved by the aforesaid order to the Trial Court, the Petitioner (Defendant) filed a writ petition before the Karnataka High Court for quashing of the impugned order.
Contentions forwarded by the Petitioner (Defendant):
- That no cause of action has arisen within the jurisdiction of this Hon’ble Court and as such the suit was not maintainable before The Civil Court, Bengaluru;
- That Section 134(1) (4) of Trade Marks Act, 1999 requires that in a suit for passing off the Petitioner (Defendant) shall be carrying on business at the place of suing and when no cause of action had arisen within the jurisdiction of Civil Court, Bengaluru, suit under the said provision was not maintainable;
- That the right flowing from Section 134 (1) (a) & (b) of the Act would be available only to a registered proprietor or registered user and in the present case Respondent’s (Plaintiff) mark Vistara is still pending at the Registry;
Contentions forwarded by the Respondent (Plaintiff):
- That even if a small part of cause of action accrues the Court will have jurisdiction and cause of action being a bundle of facts would entitle the party to maintain a suit;
- That in this age of advanced technology people would read newspapers and magazines via internet and the Petitioner’s (Defendant) website which is accessible across the globe entitles the Respondent (Plaintiff) to maintain a suit at Bengaluru;
- That it is the prior user of the mark VISTARA, as it has been in the business of travel and travel related services since 2008 and has been trading under the mark “Vistara Voyages” and “Vistara”;
- That on account of being widely publicized, its mark
Vistara has acquired a distinctive feature; That the Petitioner’s (Defendant) use of an identical and similar mark Vistara is bound to create confusion and deception among public who are looking to avail similar set of services;
Observation and Decision of the Hon’ble Court:
In view of the facts and circumstances the Court made its observations and findings on the following issue:
Whether in the present case, the Respondent would be entitled to maintain suit despite the bar prescribed under clauses (a) to (c) of Section 134(1) of the Act?
- That a plain reading of Section 134 indicates that in an action for infringement of a registered trademark or relating to any right in a registered trademark as the place for suing would be a District Court having jurisdiction and includes the jurisdiction of the Court where the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain;
- The Court also referred to the decision of the Apex Court in the case of K. Narayanan & Ors. v. S. Murali (AIR 2008 SC 3216), wherein the Court held that in order to maintain a suit for infringement of a registered trademark, it would be the District Court where Respondent (Plaintiff) resides or carries on business as indicated under Section 134(2) of the Act. Hence, as on the date of filing of the suit if there is no infringement of a registered trademark it cannot be said that cause of action would be available to file a suit in the District Court where Respondent (Plaintiff) carries on business and such suit would be maintainable;
- That the Respondent’s (Plaintiff) case would not even fall under Section 134 (1)(c) of the Act to enable the Respondent (Plaintiff) to institute the suit at Civil Court, Bengaluru. Further, the Petitioner (Defendant) is undisputedly having its office at Delhi and has not yet commenced its business operations at Bengaluru and as such the suit in question instituted at Bengaluru ought to be held as premature;
- That the Petitioner (Defendant) does not reside at Bengaluru, no business is carried at Bengaluru, and no branch of Petitioner (Defendant) is located at Bengaluru. Since, Defendant has not commenced its operations at Bengaluru it cannot be said by Respondent (Plaintiff) that there would be confusion in the mind of public or travelers about the services of the Plaintiff and Defendant being deceptively similar;
In view of the aforesaid, the Court set aside the impugned order of the Trial Court.
The Judgement can be accessed by clicking here
Jurisdiction constitutes an essential ingredient to claim relief and if the correct forum is not chosen then however reasonable is the claim of the Party it would not be heard adequately as he has not approached the correct forum.
Another point to take home from this judgement is that a registered trade mark gives certain advantages to the proprietor which cannot be claimed when an application is pending, this means that prior use though taken into consideration, the advantages of a registered trade mark are far beyond.
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