In a trademark infringement case moved by Tata SIA Airlines Ltd against a Kannada news network for infringing its Vistara trademark, both parties agreed before the Delhi High Court recently that they will not take coercive steps against each other until the next hearing.
The high court had last month granted an interim order restraining Vistara Media Private Limited from using Tata’s Vistara trademark.
As the interim injunction was issued “ex parte” on December 2, the network moved an application before the high court challenging the interim order issued in favour of Tata. While issuing notice to Tata and granting them time to file their reply, a single judge bench of Justice Amit Bansal said, “Without prejudice to the rights and contentions of the parties, it is agreed between the counsels that no coercive steps shall be taken by either of the sides till the next date of hearing”.
The matter is next listed on December 15.
On November 22, a single judge bench of Justice Jyoti Singh had restrained Vistara Media Private Limited—the defendant—and all others acting on its behalf from using Tata’s “registered and well-known trademark VISTARA”, in any form or manner including “its variations in vernacular languages such as Kannada”, which amounts to infringement further restraining them from “passing off its services or goods” as that of Tata’s airline.
Issuing notice to Vistara Media, the high court further directed them to take down the website with the domain name “www.vistaranews.com forthwith”.
Tata SIA Airlines is a joint venture between Tata Sons Private Limited, the holding company of the Tata Group, and Singapore Airlines Limited. It filed a lawsuit seeking “permanent injunction” restraining the network from infringing its registered and well-known trademark Vistara, its “dilution and tarnishment” as well as “damages and rendition of accounts” among other reliefs.
Tata SIA Airlines argued it is the registered proprietor of the Vistara trademark explaining that the term is a “coined and invented word drawn from the Sanskrit word ‘VISTAAR’, meaning limitless expanse and limitless possibilities”. They said that their trademark for travel services is inherently distinctive and was declared a “well-known trademark” by the high court in its August 2018 judgment in the Tata SIA Airlines Limited vs M/s Pilot18 Aviation Book Store & Anr case.
“Therefore, the trademark VISTARA is entitled to the highest degree of protection conferred under law, across all classes including against disparate products and services,” Tata said. It was also argued it has registrations for the Vistara trademark in “different permutations and combinations” and in several classes. Tata said that the airline has several awards and accolades to its credit including the award for ‘Best Airline’ in India and Southern Asia. It also argued that the Vistara trademark has built immense “goodwill and reputation”, evident from its sales turnover over the years including the figure for the financial year 2021-22 which alone is Rs. 5,520 crore.
Tata argued in July it found out about the defendant company Vistara Media Pvt Ltd incorporated in November 2021, which is engaged in the business of news broadcasting services. Tata claimed that Vistara Media has been using the former’s trademark in various forms including as part of its corporate name, in the logo on its mobile application available on the Google Play store, as a registered domain name wherein the mark displays the word ‘Vistara’ written in Kannada. Tata contended that the defendant had used the Vistara trademark on its social media accounts and for promotional materials such as visiting cards, which mentions the “Defendant is located and carries on business in New Delhi”.
Tata further said a news article on Vistara Media’s website finds mentions about Tata and its airline business and destinations and operations, using Vistara. Tata argued it has the exclusive right to use the Vistara trademark and to protect the same from infringement by third parties. It argued that the intention of the network was to confuse the customers into believing that the services and packages offered by Vistara Media originate from Tata and are a “clear case of infringement” under the Trademarks Act.
“The unauthorised use of an identical mark by the Defendant is also leading to dilution and tarnishment of the well-known trademark VISTARA, as Plaintiff has no control over the activities of the Defendant and the quality of services rendered by it. Plaintiff has, over the years, built a stellar reputation and misrepresentation by the Defendant to the general public is leading to an incalculable harm and injury to Plaintiff’s goodwill and business,” Tata argued.
Justice Singh after hearing Tata observed they had made out a “prima facie case for grant of ex parte ad-interim injunction”, that the “balance of convenience lies” in their favour, and that Tata would suffer “irreparable harm” in case the injunction prayed for is not granted.