Delhi HC: Delay Simpliciter is no

Defence in Trademark Infringement

Suit
Case name: Makemytrip (India) Private Limited v. Orbit Corporate
Leisure Travels

In this case, the Delhi High Court delved into the law of acquiescence. In the
case the Plaintiff was aware of the Defendant’s mark and still did not take
any action for long. In view of the settled position of law of acquiescence, the
Court did not restrain the Defendant from using the mark GETMYTRIP which
Plaintiff alleged was deceptively similar to its mark MAKEMYTRIP.

Background of the case- In the instant case the Plaintiff i.e. MakeMyTrip
filed suit to restrain the defendants, from in any manner using the trademark
GETMYTRIP that allegedly infringed the plaintiff’s trademark MakeMyTrip.

Bench’s Verdict

In the case, the Delhi High Court denied any relief to the Plaintiff in view of
the following observations:

Plaintiff had knowledge of GETMYTRIP mark- That though the

defendant claimed user in the application since 2016, however the fact
remained that plaintiff with the same trademark and domain name i.e.
GETMYTRIP and www.getmytrip.com respectively had been dealing with the
Hermes which is the predecessor-in-interest of the defendant at least since
2011, thus Plaintiff had knowledge of this trademark and domain name being
used.

The Delhi High Court opined that in the present case the issue was not of
delay and latches only but of acquiescence where the plaintiff to its
knowledge permitted continued user by Hermes of the trademark
GETMYTRIP and domain name www.getmytrip.com , however now to its
transferee-in-interest i.e. the plaintiff has objection to it on the sole ground
that Hermes never operated in B2C domain but in B2B domain. In this regard
it would be appropriate to note the documents filed by the defendant placing
on record copies of the screenshot of websites of Hermes dated 10th
January, 2012 showing its B2C user falsifying the claim of the plaintiff that
Hermes was not operating in the B2C space.

The Delhi High Court made reference to the case of National Bell Co. v.
Gupta Goods Manufacturing Co. (P) Ltd. & Anr.[2], wherein the
Supreme Court held that if a registered proprietor of a mark ignores
repeated infringements of its mark than it can even be considered as
an abandonment of its mark. With reference to the instant case, the Court
noted that the plaintiff was aware of the use of the trademark GETMYTRIP
since 2011 and admittedly since 2013. Thus despite the use of the trademark
GETMYTRIP plaintiff continued its business dealings with Hermes which is the
predecessor-in-interest of the defendant.

Law of Acquiescence- To arrive at its decision, the Delhi High Court made
reference to the case of Power Control Appliances v. Sumeet Machines
(P) Ltd.[3] wherein it observed that Acquiescence is sitting by, when
another is invading the rights and spending money on it. It is a course of
conduct inconsistent with the claim for exclusive rights in a trade mark, trade
name etc. It implies positive acts; not merely silence or inaction such as is
involved in laches.

That Delay simpliciter may be no defence to a suit for infringement of

a trade mark. That where a trader allows a rival trader to expend
money over a considerable period in the building up of a business
with the aid of a mark similar to his own he will not be allowed to
stop his rival’s business. If he were permitted to do so great loss would be
caused not only to the rival trader but to those who depend on his business
for their livelihood.
That it is settled that the registered proprietor of trademark is not expected
to pursue each and every insignificant infringer who is of no consequence to
his business. In the present case, Hermes was holding a substantial share in
the market place. It cannot be said that Hermes was an insignificant
infringer. As noted above Hermes was also working in B2C space thus
competing with plaintiff’s business.

In view of the aforesaid legal proposition and the fact that the Plaintiff
suppressed material facts, the Court stated that no case was made out
against the Defendant.