Delhi High Court
Yatra Online Limited vs Mach Conferences And Events Limited on 22 August, 2025
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 22.08.2025
+ CS(COMM) 1099/2024
YATRA ONLINE LIMITED .....Plaintiff
versus
MACH CONFERENCES AND EVENTS
LIMITED .....Defendant
Advocates who appeared in this case
For the Plaintiff : Mr. Pravin Anand, Ms. Jaya Negi & Ms.
Yashi Agarwal, Advocates.
For the Defendant : Mr. Saurabh Prakash, Mr. Utsav Jain & Mr.
Anant Aditya Patro, Advocates.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
I.A. 47682/2024
INTRODUCTION:
1. The Plaintiff has filed this Application for injunction restraining the
Defendant from infringement of the Trade Mark, passing off,
misrepresentation, dilution, unfair competition by directly or indirectlySignature Not Verified CS(COMM) 1099/2024 Page 1 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
using, selling, advertising, mentioning, or dealing in any manner including
as part of domain name the Marks ‘BOOKMYYATRA.COM’ or
‘BOOKMYYATRA’ (“Impugned Trade Marks”).
2. This Court vide order dated 09.12.2024 had granted ex-parte ad-
interim injunction restraining the Defendant from using the Impugned Trade
Marks.
3. The Defendant filed its Reply to this Application on 06.03.2025
opposing the grant of interim relief. The Plaintiff has filed Rejoinder to the
Reply to this Application on 25.03.2025.
4. Accordingly, this Application was finally heard on 27.07.2025 and the
order was reserved.
FACTUAL BACKGROUND:
5. The Plaintiff has submitted that:
5.1 The Plaintiff is the registered proprietor of the Trade Marks,
‘YATRA.COM’, ‘YATRA WITH DEVICE (Device) i.e.,‘, ‘YATRA FREIGHT’ and ‘YATRA FREIGHT
(Device) i.e., ‘ (“Plaintiff’s Trade Marks”).
5.2 The Plaintiff’s Trade Mark ‘YATRA’ adopted by the Plaintiff in
the year 2005 as a part of its Trade Name / Corporate Name.
The Plaintiff commenced its business of providing online travel
booking and related services to its customers in the year 2006.
The Plaintiff through its interactive website, www.yatra.com, its
mobile applications and its other associated platforms, provides
an online platform to its customers to explore, research compare
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
prices and book travel related services which include domestic
and international air ticketing, hotel bookings, homestays,
holiday packages, bus ticketing, rail ticketing, and ancillary
services.
5.3 In the year 2007, the Plaintiff applied for various Trade Mark
Applications seeking registration for the Mark ‘YATRA WITH
DEVICE (Device) i.e., ‘, bearing Registration
Nos. 1521727, 1521728, and 1521729 all in Class 39 which
contained a disclaimer stating that ‘No exclusive right for the
word YATRA’. The Plaintiff also has several Word Mark
registrations for the Mark ‘YATRA.COM’ bearing Registration
Nos. 2260822, 2260824, and 2260836 in Classes 38, 42, and
45, respectively.
5.4 Over the years, since the commencement of its operations in
2006, the Plaintiff’s brand ‘YATRA’ has stood out as a strong
and trusted brand in India which is associated with travel
related services. The Plaintiff has built its brand from strength-
to-strength resulting in Plaintiff having:
• Large and loyal customer base;
• Multi-channel platform for leisure and business travelers;
• Robust mobile applications;
• A strong technology platform designed to deliver a high
level of scalability and innovation;
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
• A seasoned senior management team comprising of
industry executives with deep roots in the travel industry
in India and abroad.
5.5 The Plaintiff inter alia caters to the following types of business
segments namely: ‘Business-To-Customer’ (“B2C”), Business-
To-Business’ (“B2B”), Corporate Travel, Travel Agents,
‘Meeting, Incentives, Conferences, and Exhibitions’ (“MICE”)
Segments.
5.6 In the current fiscal year (2024-2025), the Plaintiff also
acquired Globe All India Services Limited. As a result of the
said acquisition, approximately 360 corporate clients were
added to the Plaintiff’s pre-existing corporate clients for a
combined total of over 1200 corporate customers, which further
strengthened the Plaintiff’s leadership in India’s corporate travel
sector.
5.7 Due to the widespread popularity of the Plaintiff’s business, the
Plaintiff has been awarded with multiple awards from various
entities including the Ministry of Tourism, Government of
India.
5.8 The Plaintiff has invested an enormous amount of time, effort,
and money through its website, www.yatra.com and other
means to promote and advertise its travel bookings and related
service under its Trade Mark / Trade Name ‘YATRA’ which are
consequently been identified solely with the services rendered
by the Plaintiff.
Signature Not Verified CS(COMM) 1099/2024 Page 4 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
5.9 As of 31.03.2024, approximately 15 million customers have
used one or more of Plaintiff’s comprehensive travel-related
services in the Plaintiff’s consumer-direct business. The
Plaintiff provides its online and travel booking services as
stated hereinabove under its Trade Mark ‘YATRA’/
‘YATRA.COM’. The Plaintiff has registered various domain
names containing its Trade Mark / Trade Name ‘YATRA’.
Consequently, the Plaintiff is entitled to sole and exclusive use
of its Trade Mark in relation to the services for which the said
registrations have been secured.
5.10 The Defendant has intentionally and malafidely adopted
deceptively similar marks to the Plaintiff’s Marks i.e., ‘YATRA’
/ ‘YATRA.COM’ (“Impugned Trade Marks”) for identical
services, i.e., travel bookings and related services.
5.11 In the month of November, 2024, the Plaintiff came across a
document dated 26.10.2024 bearing the Subject ‘Transcript of
the Analysts / lnvestor’s Meet held on October 22, 2024’ on the
official website of Bombay Stock Exchange (“BSE”) Limited at
www.bseindia.com. The said document contains a transcript of
a question-and-answer session with the Chairman and
Managing Director of the Defendant company, Mr. Amit Bhatia
which was conducted during the said ‘Analysts / lnvestor’s
Meet’ dated 22.10.2024. Upon reviewing the said Transcript
dated 26.10.2024, the Plaintiff was shocked to know that the
Defendant is at a preparatory stage for launching a portal /
website under the name ‘BOOK MY YATRA’.
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
5.12 Upon, coming across the said Transcript dated 26.10.2024 of
the Defendant company, the Plaintiff conducted online searches
on the Search Engine ‘Google’ at www.google.com to find
more information about the Defendant and the Defendant’s
business and also about its proposed online portal. The Plaintiff
came across the ‘Draft Red Herring Prospectus’ of the
Defendant bearing the date 08.07.2024 on the official website
of BSE Limited at www.bseindia.com. The said ‘Draft Red
Herring Prospectus’ contained further information about the
Defendant’s proposed business venture under the Mark ‘BOOK
MY YATRA’ in the B2C business segment.
5.13 Upon conducting further online research, the Plaintiff was
shocked to come across a website, www.bookmyyatra.com.
However, upon visiting the said website, the Plaintiff found that
the said website was still under construction and the name of
the Defendant, ‘Mach Conferences & Events’ was prominently
mentioned on the said website.
5.14 Further, upon conducting an online search on the official
website of the Trade Marks Registry, the Plaintiff was shocked
to find that the Defendant has also filed Trade Mark
Applications seeking registrations of the Impugned Trade
Marks ‘BookMyYatra’ and ‘BookMyYatra.com’ details of
which are tabulated hereinbelow:
Signature Not Verified CS(COMM) 1099/2024 Page 6 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
TRADE MARK APPLICATION DATE OF CLASS STATUS
NO. APPLICATION
BookMyYatra.com 6503437 28.06.2024 39 Opposed
BookMyYatra 6503438 28.06.2024 39 Opposed
BookMyYatra 6614948 09.09.2024 42 Objected
BookMyYatra.com 6614951 09.09.2024 42 Opposed
BookMyYatra 6614949 09.09.2024 9 Objected
BookMyYatra.com 6614950 09.09.2024 9 Opposed
5.15 It is pertinent to mention that the Defendant’s Trade Mark
Application No. 6503437 for the Mark ‘BookMyYatra.com’ and
the Defendant’s Trade Mark Application No. 6503438 for the
Mark ‘BookMyYatra’ are for services namely, travel
reservations, travel services, travel organization, travel
consultancy, travel arrangements, travel information, travel
reservation, travel booking agencies, travel information
services, travel arrangement services. The said services for
which the Impugned Trade Marks ‘BookMyYatra’ and
‘BookMyYatra.com’ have been applied for by the Defendant for
the purpose of seeking a Trade Mark registration are identical to
the services which are provided by the Plaintiff.
5.16 The Defendant’s Trade Mark Applications Nos. 6614951,
6503437, 6503438, and 6614950 are wrongly accepted and
advertised. The Plaintiff has already filed ‘Notice of
Signature Not Verified CS(COMM) 1099/2024 Page 7 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
Opposition’ against the said Trade Mark Applications of the
Defendant on 28.11.2024. Further, the Defendant’s Trade Mark
Application Nos. 6614948 and 6614949 for the Mark
‘BookMyYatra’ are presently ‘objected’. The Plaintiff shall
oppose the same as and when the same is advertised in The
Trade Marks Journal.
5.17 It is clearly evident from the Impugned Trade Marks and
conduct of the Defendant, that the said adoption and use by the
Defendant is not a mere coincidence and that the Defendant
clearly had prior knowledge about the Plaintiff’s Marks
‘YATRA’ / ‘YATRA.COM’. Such an adoption by the Defendant
is in bad faith, clearly done with an intention to harp on the
reputation and goodwill created by the Plaintiff due to their
long and extensive use of the Marks ‘YATRA’ / ‘YATRA.COM’
and the quality of services associated with the said Marks. By
virtue of such deceitful adoption of the Defendant, the Plaintiff
is bound to suffer dilution, diminution, weakening and eventual
erosion of the goodwill, reputation and the positive associations
linked to its ‘YATRA’ / ‘YATRA.COM’ Marks.
5.18 The Plaintiff contends that:
i. The Defendant is preparing to launch its new business
segment / website / portal under the name
‘bookmyyatra.com’;
ii. The said business venture of the Defendant would be an
online portal bearing the Mark ‘BOOK MY YATRA’,Signature Not Verified CS(COMM) 1099/2024 Page 8 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
which clearly subsumes the Plaintiff’s well-known Trade
Mark ‘YATRA’ in entirety;
iii. The said business venture of the Defendant would be a
B2C segment which is different from the Defendant’s
existing B2B business segment;
iv. It is clearly evident that the Defendant is in the process of
launching its online business venture under the Impugned
Trade Mark ‘BOOK MY YATRA’ for travel related
services. Although at this stage, the exact services which
the Defendant is proposing to provide through its portal
are unclear, the Plaintiff reserves its rights to furnish the
said information on a later date.
5.19 The adoption and use of the Impugned Trade Marks by the
Defendant with the Plaintiff’s Trade Marks ‘YATRA’ /
‘YATRA.COM’ displayed prominently on its website is patently
dishonest as it is evident from the Defendant’s adoption and
proposed use of the Impugned Trade Marks, that the Defendant
was clearly aware of the goodwill and reputation of the
Plaintiff’s Trade Marks ‘YATRA’ / ‘YATRA.COM’ for identical
services. The Defendant’s actions are against honest and fair-
trade practices and will cause severe harm to Plaintiff’s
goodwill and reputation in the market, which the Plaintiff has
painstakingly established over many years, thereby amounting
to unfair competition.
5.20 The Defendant’s actions are intended to mislead consumers and
all other market players into believing that the Defendant is
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
associated with the Plaintiff. The use of deceptively similar
marks to the Plaintiff’s well-known Trade Marks ‘YATRA’ /
‘YATRA.COM’ that too for identical services, when rendered
by the Defendant, are likely to cause misrepresentation, as the
proposed actions of the Defendant is aimed at attempting to
deceive the public into believing that it has some association or
nexus with the Plaintiff and reap unjust gains at the cost of the
Plaintiff as well as the members of the public.
5.21 In view of the above, the Plaintiff has filed the present Suit
seeking permanent injunction restraining the Defendant from
using the Impugned Trade Marks, delivery of the Defendant’s
domain name, direction to the Defendant to withdraw its Trade
Mark Application for the Impugned Trade Marks and damages.
6. The Defendant has submitted that:
6.1 Out of sixty nine domain names that the Plaintiff has mentioned,
sixty seven domains / websites are not working, have been
abandoned and are not in use, and only one domain redirects to
www.yatra.com. It is clear that the Plaintiff is merely squatting on
these domain names only to prevent others from using them. The
Plaintiff has also not been conducting any business in respect of
telecommunication, education, legal services, vehicles, paper
cardboard, leather made goods, clothing, footwear, scientific and
technological services for which it has applied in Classes 38, 41,
45, 12, 16, 18, 43, 25. These Applications are merely for the
purpose of squatting on the word ‘YATRA’ for goods and services
in other classes even though the Plaintiff does not conductSignature Not Verified CS(COMM) 1099/2024 Page 10 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
business in any of such goods or services, and so that it may use
the fact that it has registered such domain names to keep out
legitimate competition in Class 39 by foul means.
6.2 The Plaintiff also does not have any common law right in the
word ‘YATRA’. It has not acquired any right in the word ‘YATRA’
merely by use of the same. The word ‘YATRA’ has been used by
innumerable travel operators all over India since a long period of
time, as part of their business names, and includes many who have
offices in other countries also. The word ‘YATRA’ is a common
name in relation to travel and tour services since it denotes and is
the Hindi word for travel. There are several Trade Mark
Registrations and Applications in respect of the word ‘YATRA’,
not just in Class 39, but also in several other classes. In its Written
Statement, the Defendant has mentioned some examples of the
names of travel operators from different cities in India, who have
been using the word ‘YATRA’ in relation to their travel and related
services. Thus, recognising any right of the Plaintiff in the word
‘YATRA’ bears a risk of shutting down thousands of such travel
operators across India and outside, several of whom most
probably preceded the Plaintiff in the use of the word ‘YATRA’ in
relation to their businesses by several decades. The learned
Registrar of Trade Marks has also been consistently refusing such
registrations to the Plaintiff.
6.3 The Defendant being an entity operating in the MICE segment,
has been consistently involved in travel and accommodation
bookings, tour planning, leisure activities and arrangements. Now,Signature Not Verified CS(COMM) 1099/2024 Page 11 of 36
Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
the Defendant wishes to use this vast experience by also
expanding into the travel industry, and clearly, the Plaintiff only
wants to stop or impede the Defendant from entering what it
considers to be its domain, even as the Plaintiff is entering the
MICE segment that is the domain of the Defendant, even by foul
means. The Defendant submits that it’s Trade Marks
‘BookMyYatra’ and ‘BookMyYatra.com’ are seen, read and
pronounced as a whole, and depict the entire mark as one, and is
distinctly different from the Plaintiff’s Trade Marks. There cannot
be any confusion in distinguishing the Marks of the Defendant
from that of the Plaintiff. It is inconceivable that the Plaintiff,
which claims to have such a large corporate clientele, would
genuinely believe that its clientele would be confused between the
offerings of the Defendant and that of the Plaintiff.
6.4 The Defendant has been caused serious prejudice by the manner in
which the Plaintiff has obtained an ex-parte injunction against it,
and due to which the Defendant has had to keep the launch of its
business in abeyance. The same is causing considerable loss to the
Defendant on a daily basis. The Defendant reserves its right to
pursue appropriate remedies for the losses which are being caused
to it.
6.5 The Plaintiff does not have any prima facie case, since the word
‘YATRA’ is being used by thousands of operators in the travel and
tour industry. It does not have any right in the word ‘YATRA’.
Any amount of expenditure on advertisements would not give the
word ‘YATRA’ a ‘secondary meaning’ thereby creating any rights
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
in the Plaintiff which it did not have and which were specifically
and expressly denied to it. Further, the word ‘YATRA’ cannot be
associated commercially with the Plaintiff’s Trade Mark ‘YATRA’
by anyone, and more importantly in relation to travel and tour
services.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF:
7. The learned Counsel for the Plaintiff submitted that the Plaintiff has
adopted the Trade Mark ‘YATRA’ as part of its Trade Name and Corporate
Name in the year 2005 and commenced the use of the Trade Mark ‘YATRA’
in the year 2006 by providing online travel booking and related services in
the year 2006 through its interactive website, www.yatra.com.
8. The learned Counsel for the Plaintiff further submitted that the
Plaintiff is the registered proprietor of various ‘YATRA’ formative Trade
Marks bearing Registration Nos. 1521727, 1521728 and 1521729. The
Plaintiff’s registration contains a disclaimer stating that ‘No exclusive right
for the word YATRA’. However, it was submitted that ‘YATRA’ is the most
dominant and essential feature of the Plaintiff’s Trade Mark ‘YATRA WITH
DEVICE (Device) i.e., ‘ in Class 39 and has attained a
widespread reputation and goodwill amongst the people at large, such that
the public at large associates the word ‘YATRA’ solely and exclusively with
the Plaintiff and no one else. It was submitted that the Plaintiff enjoys
common law rights over the Trade Mark ‘YATRA’.
9. The learned Counsel for the Plaintiff submitted that the Plaintiff’s
Trade Mark ‘YATRA’ is distinctive and well-known for travel booking and
related services industry. The Plaintiff has also filed an application seeking
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
registration of the Trade Mark ‘YATRA.COM’ on 03.01.2012 bearing
Application No. 2260823 in Class 39 for services, inter alia transport and
travel arrangements. The said Application is still pending. The Plaintiff has
around sixty nine domain names containing its Trade Mark / Trade Name
‘YATRA’ in its favour.
10. The learned Counsel for the Plaintiff submitted that even though there
is a disclaimer with regard to not having exclusive right for the word
‘YATRA’ in the registration for the Trade Mark ‘YATRA WITH DEVICE
(Device) i.e., ‘, there are numerous Trade Marks of the
Plaintiff for which registrations have been granted without any disclaimer. It
was submitted that the Defendant has adopted the Plaintiff’s Trade Mark
‘YATRA’ in the Impugned Mark ‘BOOKMYYATRA’.
11. The learned Counsel for the Plaintiff further submitted that the
disclaimers do not go to the market and the customer has no knowledge of
any disclaimer present in a Trade Mark registration. The learned Counsel for
the Plaintiff relied upon the following judgments in support of this
submission:
• Registrar of Trade Marks v. Ashok Chandra Rakhit Limited, 1955
SCC OnLine SC12;
• Pidilite Industries Limited v. Riya Chemy, 2022 SCC OnLine Bom
5077;
• Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel &
Others, (2006) 8 SCC 726;
• Amritdhara Pharmacy v. Satyadeo Gupta, 1962 SCC OnLine SC 13;
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
• Corn Products Refining Co. v. Shangrila Food Products Limited,
1959 SCC OnLine SC 11;
• Sky Enterprise Private Ltd. v. Abaad Masala & Co., 2020 SCC
OnLine Bom 750;
• British School Society v. Sanjay Gandhi Educational Society and
Another, 2022 SCC OnLine Del 1165;
• British School Society v. British International School, 2021 SCC
OnLine Del 5210.
12. The learned Counsel for the Plaintiff further submitted while relying
upon the judgment Frank Reddaway and Frank Reddaway & Co., Limited
v. George Banham and George Banham & Co., Limited, [1896] AC 1999
and Godfrey Philips India Ltd. v. Girnar Food & Bevarages (P) Ltd.,
(2004) 5 SCC 257 that due to the long and consistent use of Trade Marks
‘YATRA’ and ‘YATRA.COM’ over the period of 19 years, the Plaintiff has
garnered extensive goodwill and reputation in the said Trade Marks. The
Mark ‘YATRA’ has become a household name and is synonymous with the
Plaintiff and its business and no one else, such that the Trade Mark ‘YATRA’
has acquired a secondary significance.
13. The learned Counsel for the Plaintiff submitted that the Plaintiff’s
Trade Mark is deceptively similar to the Impugned Trade Marks in respect
of the same goods and services and that the resemblance between the
Plaintiff’s Trade Marks and the Impugned Trade Marks must be considered
with reference to the ear as well as the eye. The learned Counsel for the
Plaintiff has relied upon the following judgments in support of this
submission:
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
• K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras and
Another, (1969) 2 SCC 131;
• M/s Amar Singh Chawal Wala v. M/s Shree Vardhman Rice and
Genl. Mills, 2009 SCC OnLine Del 1690;
• Shree Vardhman Rice and General Mills v. Amar Singh Chawal
Wala, (2009) 10 SCC 257;
• Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618;
• Mex Switchgears Pvt. Ltd. v. Omex Cables Industries and Anr., 2018
SCC OnLine Del 10412;
• Pidilite Industries Ltd. v. S.M. Associates & Ors., 2003 SCC OnLine
Bom 143.
14. The learned Counsel for the Plaintiff further submitted that the
Plaintiff’s sales turnover in the year 2023-2024 was ₹5,607.57 Crores. A
simple search for the word ‘YATRA’ on the search engine ‘Google’ returns
search predictions and search results pertaining to the Plaintiff’s business.
15. The learned Counsel for the Plaintiff submitted that the Defendant has
knowledge of the Plaintiff’s rights in Trade Mark ‘YATRA’ and the goodwill
associated with the said Trade Mark. The Defendant has explicitly
acknowledged and admitted in its Written Statement that “Plaintiff is one of
the leading players in the online tour and travel booking and related service
industry”. The Defendant has acknowledged that the Plaintiff’s Trade Marks
‘YATRA’ and ‘YATRA.COM’ are well-known marks.
16. The learned Counsel for the Plaintiff relied upon the decision in Mex
Switchgears Pvt. Ltd. v. Omex Cables Industries and Anr., 2018 SCC
OnLine Del 10412, wherein it is held that in order to test a case of
infringement of a trade mark, only trade marks are to be compared by the
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
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Court and in case registration stands granted in favour of the Plaintiff, the
Plaintiff requires valuable rights by reason of the registration. While judging
the question as to whether the Defendant has infringed the trade mark by
colourable imitation of the mark or not, the Court has to consider the overall
impression of the mark in the minds of the public and not by merely
apportioning dissimilarities.
17. The learned Counsel for the Plaintiff further submitted that honesty
and fair play are, and ought to be, the basic policies in the world of business
and when a person adopts or intends to adopt a name in connection with his
business or services which already belongs to someone else, it results in
confusion and has propensity of diverting the customers of someone else to
himself. The learned Counsel for the Plaintiff relied upon the decision in
Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65 in
support of this submission.
18. The learned Counsel for the Plaintiff submitted that the Impugned
Marks ‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’ have been
adopted by the Defendant having complete knowledge of the Plaintiff’s
rights in the Trade Mark ‘YATRA’ and the same is a deliberate, intentional
and bad faith adoption, at the risk of challenge by the Plaintiff. The learned
Counsel relied upon the following decisions in support of his submission:
• Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd., 2001 SCC
OnLine Bom 1176;
• S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683.
19. The learned Counsel for the Plaintiff further submitted that the
Defendant has also adopted the domain name using the Impugned Trade
Mark ‘BOOKMYYATRA.COM’ and the Defendant is guilty of infringement
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
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and passing off by adopting a deceptively similar domain name. The learned
Counsel for the Plaintiff relied upon the following judgments in support of
this submission:
• M/s Info Edge (India) Pvt. Ltd. & Anr. v. Shailesh Gupta & Anr.,
2002 SCC OnLine Del 239;
• Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC
145;
• Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2
SCC 727;
• Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5
SCC 73;
• Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine
Del 50.
20. The learned Counsel for the Plaintiff submitted that the present Suit is
filed quia timet qua passing off as at the time of filing of the Suit, the
Plaintiff had a real and a tangible threat that the Defendant would enter the
business of travel booking and related services any time soon. It was further
submitted that it is a settled law that the law on infringement and passing off
would also be applicable on a quia timet action. The learned Counsel for the
Plaintiff has relied upon the following judgments in support of this
submission:
• M/s. Jawahar Engineering Co. and others v. M/s. Javahar
Engineers Pvt. Ltd., 1983 SCC OnLine Del 41;
• Intel Corporation v. Harpreet Singh & Ors., 2018 SCC OnLine Del
7264;
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SHARMA
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• Mars Incorporated v. Kumar Krishna Mukerjee & Ors., 2002 SCC
OnLine Del 1218.
21. The learned Counsel for the Plaintiff submitted that use of the similar
Mark by third parties cannot be a defense to an illegal act of infringement
and passing off by the Defendant. The Plaintiff is not expected to sue each
and every insignificant infringer. It was further submitted that a Mark
common to the Register of Trade Marks does not mean that the Mark is
common to the trade. The learned Counsel for the Plaintiff relied upon the
following decisions in support of this submission:
• National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd. & Anr., (1970) 3
SCC 665;
• Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744;
• Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt.
Ltd. & Anr., 2023 SCC OnLine Del 2065;
• Rajesh Chugh & Anr. v. Chhavi Poplai & Others, 2019 SCC OnLine
Del 6717;
• Goenka Institute of Education & Research v. Anjani Kumar Goenka
& Anr., 2009 SCC OnLine Del 1691;
• Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Limited,
2004 SCC OnLine Del 668;
• Lupin Limited v. Eris Lifesciences Pvt. Ltd. & Ors., 2015 SCC
OnLine Bom 6807;
• Shree Nath Heritage Liquor Pvt. Ltd. v. M/s. Allied Blender &
Distiller Pvt. Ltd., 2015 SCC OnLine Del 10164.
22. The learned Counsel for the Plaintiff submitted that the balance of
convenience lies in favour of the Plaintiff while relying on the decision of
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
this Court in Automatic Electric Limited v. R.K. Dhawan & Anr., 1999
SCC OnLine Del 27. At the time of the filing of the present Suit, the
Defendant was yet to commence its business under the Impugned Mark
‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’. The website bearing
the Impugned Mark, www.bookmyyatra.com was also under construction.
The Defendant is in the business of meetings, incentives, conferences and
events (MICE) and has been carrying on its business under the Corporate /
Trade Name, ‘Mach Conferences & Events Limited’ through its official
website, www.machconferences.com. The Defendant has adopted a
deceptively similar Mark with the Plaintiff’s Trade Mark ‘YATRA’ and
‘YATRA.COM’. The Defendant has adopted ‘BOOKMY’ from another
well-known third-party Mark ‘BOOKMYSHOW.COM’ and clubbed it with
the Plaintiff’s Mark ‘BOOKMYYATRA.COM’. It is evident that the
adoption of deceptively similar Marks ‘BOOKMYYATRA’ and
‘BOOKMYYATRA.COM’ are in bad faith.
23. The learned Counsel for the Plaintiff submitted that the principle of
‘anti-dissection’ does not impose an absolute embargo upon the
consideration of the constituent elements of a composite Mark. The said
elements may be viewed as a preliminary step on the way to an ultimate
determination of probable customer reaction to the conflicting composites as
a whole. Thus, the principle of ‘anti-dissection’ and identification of
‘dominant mark’ are not antithetical to one another and if viewed in a
holistic perspective, the said principles rather complement each other. The
learned Counsel for the Plaintiff relied upon the following decisions in
support of this submission:
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
• M/s South India Beverages Pvt. Ltd. V. General Mills Marketing
Inc. & Anr., 2014 SCC OnLine Del 1953;
• Crompton Greaves Consumer Electricals Limited v. V-Guard
Industries Limited, 2024 SCC OnLine Del 1838;
• United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals
Ltd. & Ors., 2012 SCC OnLine Del 2942;
• Foodlink F and B Holdings Private Limited v. Wow Momos Foods
Private Limited, 2023 SCC OnLine Del 4719;
• Wow Momos Foods Private Limited v. Foodlink F and B Holdings
Private Limited, FAO(OS)(COMM) 181/2023;
• Kishore Kumar v. L. Chuni Lal Kidarnath and Anr., 2010 SCC
OnLine Del 91;
• Serum Institute of India Limited v. Green Signal Bio Pharma Ltd. &
Anr., 2011 SCC OnLine Bom 696.
24. In view of the above, the learned Counsel for the Plaintiff submitted
that the Defendant’s Impugned Mark ‘BOOKMYYATRA’ subsumes the
Plaintiff’s Trade Mark ‘YATRA’ in entirety and the other Impugned Trade
Mark ‘BOOKMYYATRA.COM’ of the Defendant also subsumes the
Plaintiff’s Trade Mark ‘YATRA.COM’ in entirety. The deceptive similarity
includes phonetic, visual and conceptual similarity. These deceptive similar
Marks have been adopted by the Defendant for identical services, i.e., travel
booking and related services. Hence, there is a strong likelihood of
confusion. Therefore, the Defendant is guilty of infringement of the
Plaintiff’s statutory rights in the registered Trade Marks and passing off the
Plaintiff’s Trade Mark.
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
25. It was submitted that this Court has granted an ex-parte ad-interim
relief in Paragraph No. 42 of order dated 09.12.2024, which reads as under:
“42. Accordingly, till the next date of hearing, the defendant its partners,
directors, proprietors, subsidiaries, affiliates, franchisees, officers,
servants, agents distributors, stockists, representatives, licensees
and anyone acting for or on its behalf directly or indirectly, as the
case may be, are restrained from selling, advertising,
manufacturing, mentioning on their websites or any third party
website, dealing in any manner whatsoever, including as a part of its
trade name and also as part of its domain name/website
<BOOKMYYATRA.COM> or otherwise using, the marks
‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’ amounting to
infringement, passing off, misrepresentation, unfair competition,
dilution and tarnishment of the plaintiff’s trade
marks’YATRA.COM’, ‘YATRA WITH DEVICE (Device)i.e. ‘, ‘YATRA FREIGHT’ and ‘YATRA FREIGHT
(Device) i.e. ‘, and also passing off of the plaintiff’s
trade mark ‘YATRA’.”
26. Accordingly, the learned Counsel for the Plaintiff submitted that the
aforesaid ad-interim injunction be confirmed till the final hearing and
disposal of the present Suit.
SUBMISSIONS ON BEHALF OF THE DEFENDANT:
27. The learned Counsel for the Defendant submitted that the Plaintiff
does not have any right in the word ‘YATRA’ in Class 39 in relation to travel
and related services. The learned Registrar of Trade Marks has refused to
grant any right to the Plaintiff on the word ‘YATRA’ while granting
registration of the Trade Mark ‘YATRA WITH DEVICE (Device) i.e.,
‘ in Application Nos. 1521727, 1521728 and 1521729 in
Class 39. The Plaintiff has accepted the disclaimer with respect to not
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
having exclusive right for the word ‘YATRA’, the Plaintiff cannot detach
itself from the said disclaimer and claim a larger right. The Plaintiff also
does not have any registration in respect of ‘YATRA.COM’ in Class 39 as
the Application No. 2260824 in relation to ‘YATRA.COM’ in Class 39 was
opposed by Cox and Kings Ltd. and since then, the registration has not been
granted.
28. It was submitted that the Plaintiff has got the Mark ‘YATRA.COM’
registered in other Classes being 38, 41, 12, 45, 18 and 16, in which the
Plaintiff has not been doing any business or providing any services, and has
obtained registration of these Marks in other Classes nearly to squat on the
word ‘YATRA’ because the Plaintiff could not get the same registered in
Class 39. The Plaintiff has not been conducting any business in respect of
telecommunication, education, legal services, vehicles, paper cardboard,
leather made goods, clothing, footwear, scientific and technological services.
The registration of the Plaintiff in other Classes is with malafide intention to
misinterpret and claim that the rights from the said registrations extend to
Class 39 as well. As the Plaintiff can never get any right over the word
‘YATRA’ in relation to services prescribed in Class 39, the Plaintiff has tried
to mislead by referring other applications. The Plaintiff has been trying to
somehow obtain registration for the word ‘YATRA’ in Class 39, but so far
has failed in its all attempts.
29. It was submitted that registration of a Trade Mark is a notice to the
world of the rights of the holder therein. Where a mark has been registered
with a disclaimer, that is also a notice to the world. A party who holds such a
mark with a disclaimer, cannot later claim a right over the word which is
part of the disclaimer. In the present case, the Plaintiff having not challenged
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
or objected to the disclaimer put by the Registrar of Trade Marks, the
Plaintiff is not entitled to drop the disclaimer. The learned Counsel for the
Defendant relied upon the decision in Parakh Vanijya Private Limited v.
Baroma Agro Product and Others, 2018 SCC OnLine SC 686 in support of
this submission.
30. The learned Counsel for the Defendant submitted that out of the sixty
nine domain names, mentioned by the Plaintiff, sixty seven domain names
are not working as the same have been abandoned and not in use. It is clear
that the Plaintiff is merely squatting on these domain names only to prevent
others from using them.
31. The word ‘YATRA’ is a generic descriptive word. The Plaintiff also
does not have any common law right in the word ‘YATRA’ as the same has
been used by innumerable travel operators all over India since a long period
of time, as part of their business names. The word ‘YATRA’ is a common
name in relation to travel and tour services as it denotes and is the Hindi
word for travel. The Defendant has filed voluminous documents in relation
to the dominant use of the word ‘YATRA’. The primary meaning and
significance of the word ‘YATRA’ is well-known and it continues to hold
when it is referred, everyone knows that it is about a journey and not about
the Plaintiff. No user can have a monopoly over the word ‘YATRA’ in
relation to travel and tour services as it merely describes the nature of
business / services provided.
32. The learned Counsel for the Defendant submitted that there are
several Trade Mark Registrations and Applications in respect of the word
‘YATRA’ in Class 39 as well as other Classes. If any right of the Plaintiff in
the word ‘YATRA’ is recognized, it will result in shutting down all such
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
travel operators across India, who use the word ‘YATRA’ in their businesses
for several decades. As a result, the learned Registrar of Trade Marks has
also refused the registration of the word ‘YATRA’ to the Plaintiff. Presently,
there are 48 Trade Marks in Class 39 and 280 Trade Marks in other Classes,
which contain the word ‘YATRA’. When the Plaintiff deliberately chose a
generic descriptive word ‘YATRA’ for its business name / mark / website in
relation to travel, tour and related services, the Plaintiff was fully aware that
there were already several other such businesses.
33. The learned Counsel for the Defendant submitted that the Defendant
being in the MICE segment, has been involved in travel and accommodation
bookings, tour planning, leisure activities and arrangements. The Defendant
wishes to use its vast experience by expanding into the travel industry and
the Plaintiff has stopped the Defendant from entering its domain. At the
same time, the Plaintiff is entering the MICE segment, which is the domain
of the Defendant by foul means.
34. The learned Counsel for the Defendant submitted that the Impugned
Trade Marks ‘BookMyYatra’ and ‘BookMyYatra.com’, if seen, read and
pronounced as a whole are distinctly different from the Plaintiff’s Trade
Marks ‘YATRA’ and ‘YATRA.COM’. The Plaintiff has deliberately
misrepresented and sought prayers against the Impugned Trade Marks by
using the Mark ‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’ instead
of ‘BookMyYatra’ and ‘BookMyYatra.com’. There is no visual, conceptual
or phonetic similarity between the Impugned Marks and the Plaintiff’s Trade
Marks.
35. The learned Counsel for the Defendant submitted that there cannot be
any confusion in distinguishing the Marks of the Defendant from the
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
Plaintiff’s. It is inconceivable that the Plaintiff, which claims to have a large
corporate clientele, could claim that its clientele would be confused between
the offerings of the Defendant and the Plaintiff.
36. The learned Counsel for the Defendant further submitted that the
combination of ‘Book’ and ‘My’ has become common for online businesses
and several businesses combine this word with other words to invent new
unique Marks / Names, which have never been used in conjunction before
such as ‘BookMyShow’, ‘BookMySport’, ‘BookMyTrip’, ‘BookMyBus’,
‘BookMyForex’ and ‘MakeMyTrip’, to carve out their own identities.
Likewise, the phrase ‘BookMyYatra’ is an invented Mark, unlike ‘YATRA’
which is purely a single generic descriptive word common to the travel
industry. In case of descriptive words, even a small distinction is enough to
allow the other Marks to exist. It is not alleged that there is any element of
deceptiveness in the Defendant’s Mark as it clearly distinguishes from
‘YATRA’.
37. The learned Counsel for the Defendant relied upon the decision of this
Court in Nilkamal Crates and Containers & Anr. v. Ms. Reena Rajpal &
Anr., Neutral Citation: 2023:DHC:8087 wherein it was held that rival marks
are to be considered as whole marks, and not by vivisecting them into their
individual components and that the principle also finds its statutory avatar
in Section 17 of the Trade Marks Act, 1999 (“Act”), which specifically
holds that plaintiffs are entitled to claim exclusivity over a registered mark
as a whole and not over individual parts of the mark, unless such parts are
registered by themselves as marks.
38. It was submitted by the learned Counsel for the Defendant that the
amount of expenditure on advertisements by the Plaintiff would not give any
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
right over the word ‘YATRA’ as the same has not acquired ‘secondary
meaning’. The Plaintiff has not filed any documentary evidence, showing
that use of the word ‘YATRA’ has acquired a secondary meaning or
significance amongst the public at large in India. It was submitted that a
descriptive Mark can acquire a secondary meaning ‘where the trade mark
has been used for such a long period of time of many years that the mark is
unmistakably and only and only relatable to one and only source’. A
descriptive Mark acquires secondary significance when it has displaced the
primary significance and meaning of the word. Secondary significance
would mean that other traders in that line of trade acknowledge that such
common word has come to denote the goods belonging to a particular trader.
It was submitted that the word ‘YATRA’ has not acquired a secondary
meaning as it has not replaced the primary meaning of the word ‘YATRA’
which means travel and being used widely by others without identifying the
word ‘YATRA’ only with the Plaintiff alone.
39. The Plaintiff has never claimed a well-known status of the Trade
Mark ‘YATRA’ or that it has acquired a secondary meaning before the
learned Registrar of Trade Marks. Whenever the learned Registrar of Trade
Marks raised any objection citing existing Marks of other proprietors
consisting the word ‘YATRA’, the Plaintiff has tried to distinguish the other
Marks claiming differences in goods and services offered. Hence, the
Plaintiff has given up any claim for the word ‘YATRA’ being a well-known
mark. Further, no declaration has been sought in the Suit for declaring the
Trade Mark ‘YATRA’ as a well-known mark.
40. The learned Counsel for the Defendant has relied upon the following
cases in support of his submissions:
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
• BigTree Entertainment Pvt. Ltd. v. Brain Seek Sportainment Pvt.
Ltd. & Anr., Neutral Citation: 2017:DHC:7767;
• People Interactive (India) Pvt. Ltd. v. Vivek Pahwa & Ors., 2016
SCC Online Bom 7351;
• Juice Generation Inc. v. GS Enters LLC, 2015 U.S App. LEXIS
12456;
• Office Cleaning Services LD. V. Westminster Window and General
Cleaners LD., (1946) 63 RPC 39;
• Radio Taxicabs (London) Ltd. v. Owner Driver Radio Taxi Services
Ltd., [2004] RPC 351;
• Kamdhenu Ltd. v. Registrar of Trade Marks, 2023 SCC Online Del
3913;
• J.R Kapoor v. Micronix India, 1994 Supp (3) SCC 215;
• Pernod Ricard India Pvt. Ltd. v. A.B Sugars Limited, 2023 SCC
OnLine Del 6966;
• PhonePe Private Limited v. EZY Services & Anr., 2021 SCC OnLine
Del 2635;
• Ayushakti Ayurved Pvt. Ltd. v. Hindustan Lever Limited, 2003 SCC
OnLine Bom 404;
• Vijay Kumar Ahuja v. Lalita Ahuja, 2001 SCC OnLine Del 1215.
41. In view of the above, it was submitted that the present Application for
grant of interim relief during the pendency of the Suit be dismissed and the
ad-interim relief granted vide order dated 09.12.2024 be vacated.
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
ANALYSIS AND FINDINGS:
42. The Plaintiff has filed the present Application seeking injunction
against the use of the Marks ‘BOOKMYYATRA’ and
‘BOOKMYYATRA.COM’ by the Defendant claiming infringement,
misrepresentation, unfair competition, dilution and passing off of the
Plaintiff’s Trade Marks ‘YATRA.COM’, ‘YATRA WITH DEVICE (Device)
i.e., ‘, ‘YATRA FREIGHT’ and ‘YATRA FREIGHT (Device)
i.e., ‘ and also passing off of the Plaintiff’s Trade Mark ‘YATRA’.
43. The Plaintiff has claimed that the Plaintiff has various ‘YATRA’
formative Marks and also uses ‘YATRA’ as part of its Trade Name /
Corporate Name since the year 2006. The Plaintiff is the registered
proprietor of the following ‘YATRA’ formative Marks in Class 39, i.e., for
travel and related services:
S. Trade Marks Registration Application User Date Class
No. No. Date
1. YATRA WITH 1521727 03.01.2007 01.04.2006 39
DEVICE(Device)
2. YATRA WITH 1521728 03.01.2007 01.04.2006 39
DEVICE(Device)
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
3. YATRA WITH 1521729 03.01.2007 Proposed to 39
DEVICE be used(Device)
4. YATRA 4743850 12.11.2020 21.09.2020 39
FREIGHT
5. YATRA 4743851 12.11.2020 21.09.2020 39
FREIGHT
(LOGO)(Device)
44. While granting the above registrations, the learned Registrar of Trade
Marks has put a disclaimer that ‘No exclusive right for the word YATRA’.
The Plaintiff claims that the said disclaimer does not prevent the Plaintiff
from claiming exclusivity over the Mark ‘YATRA’ as the same is most
dominant and essential feature of the Plaintiff’s Trade Marks registration.
45. The Plaintiff has claimed that the Defendant’s Impugned Trade Marks
‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’ are deceptively similar
to the Plaintiff’s Marks ‘YATRA’ and ‘YATRA.COM’. The Plaintiff has
relied upon the following table for showing the comparison:
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
PLAINTIFF'S REGISTERED DEFENDANT'S IMPUGNED
TRADE MARK MARKS
YATRA WITH DEVICE BOOKMYYATRA
YATRA.COM BOOKMYYATRA.COM
46. The Plaintiff has submitted that due to long, consistent and extensive
use over 19 years, the Plaintiff’s Trade Marks ‘YATRA’ and ‘YATRA.COM’
have acquired goodwill, reputation and secondary significance as these
Marks are exclusively associated with the Plaintiff alone.
47. The Defendant has contended that the disclaimer makes it clear that
the Plaintiff cannot claim exclusive right over the word ‘YATRA’ although
the same may be significant part of the Plaintiff’s registered Device Marks.
It was submitted by the Defendant that the Plaintiff has no registration over
the word ‘YATRA’ as the same forms part of the disclaimer. It was also
submitted that the Plaintiff cannot claim a larger right over the word
‘YATRA’ when the same is excluded specifically by way of the disclaimer.
48. The Plaintiff has submitted that the adoption of the Impugned Trade
Marks ‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’ are intentional,
deliberate and in bad faith as the Defendant was already aware about the
Plaintiff being one of the leading players in the online tour and travel
booking and related services industry.
49. The Defendant, however, has submitted that the word ‘YATRA’ is a
generic and descriptive word which means journey in Hindi and is widely
used across India in relation to travel services by numerous businesses
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
involved in the said services. It was submitted that no one can have
monopoly over the word ‘YATRA’ in relation to travel and tour services as is
descriptive of the nature of the business and the services provided.
50. The Plaintiff has submitted that the use of Marks by a third-party
cannot be a defense to an illegal act of infringement and passing off by the
Defendant as it is not expected to sue each and every insignificant
infringement.
51. The Plaintiff has contended that the balance of convenience lies in
favour of the Plaintiff as the present Suit is a quia timet action since the
Defendant has not commenced the use of the Impugned Trade Marks at the
time of filing of the Suit and have been restrained from using the same in
view of the ex-parte ad-interim injunction granted vide order dated
09.12.2024 by this Court. Hence, no prejudice would be caused to the
Defendant as the Defendant can conduct its business of travel booking and
related services under any other Trade Name / Mark, which is not
deceptively similar to the Plaintiff’s Trade Mark.
52. It is a settled law that the generic and commonly descriptive marks,
which describe the nature of the business or the services cannot be exclusive
to the proprietor of the registered trade mark. Section 30 of the Act provides
for limits on the effect of the registered trade mark when the use of the mark
in relation to goods or services indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production of goods or
rendering of services or other characteristics of goods or services.
53. Admittedly, the word ‘YATRA’ is a synonym for travel in Hindi. The
Plaintiff claims that the Mark ‘YATRA’ is the most dominant and essential
feature of the Plaintiff’s Trade Marks ‘YATRA.COM’, ‘YATRA WITH
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
DEVICE (Device) i.e., ‘, ‘YATRA FREIGHT’ and ‘YATRA
FREIGHT (Device) i.e., ‘. Although, it can be said that Mark
‘YATRA’ is dominant and essential part of the registered Device Mark of the
Plaintiff, the Plaintiff cannot claim monopoly on the Mark ‘YATRA’ as the
same is generic, commonly descriptive for the service of travel and tourism.
When the Plaintiff has adopted words in common use for its own Trade
Name / Corporate Name, it runs the risk of the same Mark being used by
others. The generic or commonly descriptive word can never become trade
marks on their own as they never acquire distinctiveness or a secondary
meaning. These words do not indicate origin or source. It is settled law that
words used in everyday language cannot be allowed to be monopolized.
54. The word ‘YATRA’ cannot be said to have acquired a secondary
meaning. For acquiring a secondary meaning, the primary meaning of the
said expression has to be lost and left behind. The claim of a secondary
meaning has to satisfy that although the primary meaning of the expression
with which it began, no longer means what it used to prior to the adoption
by the Plaintiff. Hence, to hold that ‘YATRA’ has acquired a secondary
meaning, the Plaintiff has to demonstrate uninterrupted use for considerable
length without any competitor attempting to use the said Mark. For
‘YATRA’ to acquire a secondary meaning and to be associated exclusively
with the Plaintiff, it has to be explained the primary meaning of the word
‘YATRA’, which has said to have been lost.
55. The fact that ‘YATRA’ is a generic and descriptive word is also
evident from the disclaimer of the learned Registrar of Trade Marks while
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
granting the Device Marks of the Plaintiff. The Plaintiff has relied upon the
decision of Ashok Chandra Rachit (supra) to argue that the disclaimer does
not affect the rights of the proprietor with respect to the part that has
acquired any right due to prolonged use of those parts in respect of the
services provided by the Plaintiff. However, if the disclaimed word is
generic in nature, the prolonged use of the same cannot confer the Plaintiff
with the right to claim passing off.
56. The Defendant has relied upon the case of Pernod Ricard (supra),
which holds that the plaintiff cannot claim infringement of the mark, which
is part of disclaimer as the same cannot constitute the basis for the
infringement. As the word ‘YATRA’ is specifically disclaimed by the learned
Registrar of Trade Marks, which has been accepted by the Plaintiff, the same
cannot be the basis for alleging infringement of the said Trade Mark.
57. The disclaimers are placed so that the proprietor of the registered
mark does not try to expand the right beyond their legitimate bounds or
claim special advantages in the disclaimed portions. The Plaintiff’s
registered marks are Device Marks and not Word Marks. Hence, no
infringement can be brought merely because of the use of the word ‘YATRA’
by the Defendant as ‘YATRA’ is a generic and a descriptive word.
58. The Defendant has placed on record the documentary evidence
showing use of the word ‘YATRA’ by third parties and also ‘YATRA’ being
part of various Trade Marks registered in Class 39. Hence, ‘YATRA’ cannot
be held to be a well-known mark that is unmistakably relatable to the only
source, i.e., the Plaintiff.
59. For the Mark to be declared as a well-known Mark, the Plaintiff has to
follow the procedure under Rule 124 of the Trade Mark Rules, 2017
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
(“Rules”) and also qualify to be a well-known Trade Mark as defined in
Section 2(zg) of the Act. The Act and Rules require that a well-known trade
mark is such mark that would indicate a connection of the goods or services
to the person using the mark so that any other use of the said mark would be
likely to be taken as indicating the connection with that person. For
declaration of a mark as a well-known trade mark, the conditions and factors
provided under the Act and Rules have to be satisfied. The Plaintiff has not
followed any such procedure for declaring ‘YATRA’ as a well-known Mark
associated with the Plaintiff. The Plaintiff has also not sought any such
declaration in this Suit. Given that ‘YATRA’ is a generic and descriptive
word, it would not be open for the Plaintiff to claim it as a well-known
Mark.
60. When the Defendant’s Trade Mark is viewed as a whole, the same is
distinguishable by the prefix ‘BookMy’. The Defendant claims that the
Defendant does not have a logo / device and only has Word Marks
‘BookMyYatra’ and ‘BookMyYatra.com’, with B, M and Y in capitals and
rest in small case, while the Plaintiff’s use of word ‘YATRA’ is all in small
case in Red and a particular style. This argument of the Defendant has merit
as the Word Marks ‘BookMyYatra’ and ‘BookMyYatra.com’ are distinctive
with the use of prefix before the word ‘YATRA’.
61. The argument of the Plaintiff that ‘BookMy’ has been adopted from
another well-known third-party website, i.e., ‘BookMyShow.com’ and
clubbed with the Plaintiff’s Mark ‘YATRA.COM’ cannot be accepted as this
Court in case of BigTree Entertainment (supra) has held that the words
‘BOOKMY’ are descriptive in nature and the trade mark
‘BOOKMYSHOW’ had not acquired a distinctive meaning for grant of
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00
injunction against the use of the prefix ‘BOOKMY’. Hence, the Defendant’s
Marks ‘BookMyYatra’ and ‘BookMyYatra.com’ do not violate any Trade
Mark in ‘BOOKMY’ or ‘YATRA’ disjunctively or collectively as a whole.
62. It is also settled law that ‘.com’ is a Top Level Domain (“TLD”) and
is entirely generic and cannot have any distinctiveness at all as no one can
claim exclusivity in any TLD or any domain suffix of any level. In view of
the same, ‘YATRA.COM’ also cannot be protected differently than ‘YATRA’
as the disclaimer for the word ‘YATRA’ at the time of registration of
‘YATRA WITH DEVICE (Device) i.e., ‘, ‘YATRA
FREIGHT’ and ‘YATRA FREIGHT (Device) i.e., ‘ will also
apply to ‘YATRA.COM’ in Class 39.
63. As ‘YATRA’ and ‘.com’ both are generic and commonly descriptive,
‘YATRA.COM’ also is generic and cannot be protected under common law
of passing off. Hence, the Defendant cannot be prevented from using the
Impugned Trade Marks ‘BOOKMYYATRA’ and
‘BOOKMYYATRA.COM’.
64. Accordingly, no prima facie case is made out for granting the interim
injunction against the Defendant restraining from using the Marks
‘BOOKMYYATRA’ / ‘BOOKMYYATRA.COM’ and the domain name /
website, www.bookmyyatra.com. As a result, the present Application is
dismissed.
TEJAS KARIA, J
AUGUST 22, 2025
‘SMS’
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Signed By:NEELAM
SHARMA
Signing Date:22.08.2025
16:22:00