‘Term ‘Fly High’ Common to Aviation Sector’: Delhi HC Vacates Stay on Vistara’s Campaign ‘Fly Higher’

Vistara Airlines Law Insider

Sakina Tashrifwala

Published on: November 1, 2022 at 19:47 IST

The Delhi High Court has vacated its ex parte ad interim order against Tata Sia Airlines-owned Vistara’s promotional campaign “Fly Higher,” saying the term “Fly High” is ubiquitous in the aviation industry.

The airline launched the campaign in 2018 as a continuation of their tagline “Fly The New Feeling.”

On January 21, this year, the court awarded an ad interim order in favour of a training institute in its action against Tata Sia Airlines, seeking a permanent and mandatory injunction.

In the claim, Frankfinn Aviation Services Private Limited accused the airline of infringing on its registered trademark “Fly High,” which it uses as a motto for its institute, which trains people in aviation, hospitality, travel, and customer service management.

Justice Jyoti Singh considered whether registration of the trademark Fly High by Frankfinn Aviation Services can prevent Tata Sia Airlines from using Fly Higher in light of its defence that it was not using the term as a trademark in hearing of Tata’s application seeking vacation of the January 21 order.

The court observed right away that the airline was using the phrase “Fly Higher” in conjunction with its well-known logo and brand, Vistara.

According to the law, there is a distinct difference between a “mark” and a “trademark,” the court stated.

Following a review of the relevant provisions, the court determined that in order to qualify as a trademark, the term must be capable of distinguishing one person’s goods and services from those of others, and it must be used or proposed to be used in relation to goods or services for indicating a connection, in the course of trade, between the goods or services.

“Trademarks are thus intangible assets of the proprietors, serving as ‘source identifiers,’ instantly identifying the goods/services with the proprietor thereof,” the court stated.

Based on the remarks of the Supreme Court in Cadila Health Care Ltd. vs. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors., 2009; Bata India Limited vs. Chawla Boot House and Others, 2019; and Red Bull AG vs. PepsiCo India Holdings Pvt. Ltd. & Anr., 2022, the court stated that if the airline can demonstrate that its use of the allegedly infringing name is “merely descriptive of its goods,” it can avoid the rigours of Section 29 of the Trade Marks Act, 1999.

“In fact, the Defendant has this defence available to him under Section 30(2)(a) of the Act, which states that a registered trademark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, etc., or characteristics of goods or services,” Justice Singh explained.

The court further stated that the airline’s categorical position is that its registered trademark is Vistara and its forms, which was deemed a well-known trademark by the Supreme Court in 2019.

“In my opinion, the Defendant is correct in asserting that the phrase FLY HIGHER is exclusively used in conjunction with its well-known mark [Vistara] and for the sole purpose of advertising and promoting its scheduled Airline operating under [Vistara] and is not as a trademark,” the court said.

FLY HIGHER does not serve as a source identifier to distinguish the airline’s goods and services from competitors, and hence cannot be considered a “Trade Mark” under the Act, the court added.

The court also referred to various documents filed by Tata Sia Airlines to note that various airlines such as Air India, Emirates, Spice Jet, Lufthansa, and others have used and continue to use the phrase FLY HIGH or variations of it in their social media posts, advertising campaigns, or even as part of their Frequent Flyer Programs.

“Based on a review of the documents, this Court finds prima facie merit in the Defendant’s contention that the term FLY HIGH is demonstrably common in the aviation sector, and this is supported by the Master Data of over 20 registered companies incorporating the phrase FLY HIGH/HIGH FLYER/HIGH FLYERS, which are still active and have not been struck off the Register of Companies.”

The court further stated that the fact that Frankfinn’s trademark registration of “Fly High” is conditional on it having no exclusive right to use the phrase “High” was concealed in the plaint.

From the plethora of documents placed on record, in my prima facie view, this Court cannot agree with the Plaintiff that the Defendant uses the phrase FLY HIGHER as a trademark, and thus the edifice built on the foundation of the argument that Defendant is guilty of infringement by using a deceptively similar trademark,” it added.

It also stated that Frankfinn has not filed applications in classes 12 and 39, and that its registration for the mark FLY HIGH in various classes cannot be used to restrain the airline in classes for which the Plaintiff has no registration, unless the Plaintiff can demonstrate that the services are similar, allied, and cognate.

According to the court, the plaintiff and defendant work in completely different fields and industries. Tata Sia is an airline, whereas Frankfinn is a training institute.

“The channels of trade and class of customers are distinct inasmuch as Plaintiff’s target audience consists of young impressionable students seeking soft skills training for future careers. Plaintiff does not guarantee any student a career in an airline and only trains them.”

Concerning the likelihood of confusion or association among prospective customers, the court stated that it is difficult to establish a prima facie determination that the services provided by the individual parties are not separate and distinct.

“Plaintiff’s target audience is people seeking soft skills training in the travel, tourism, hotel management, and aviation sectors in the hope of possible employment opportunities, whereas Defendant’s customers are travellers who choose to fly with Vistara Airlines.”

“It is difficult to imagine that a person intending to travel would make an informed decision to travel by Vistara Airlines, given the alleged popularity of the Plaintiff’s FLY HIGH mark.”

The court also stated that Frankfinn has not shown any evidence to establish that it has the essential goodwill or reputation in the services provided by the airline.

“Prima facie, the Plaintiff’s argument appears too far-fetched for this Court to hold that any prudent person desirous of purchasing an airline ticket, even if it was solely training people for recruitment in the Aviation sector, would be influenced by the stellar reputation of a training Institute..”

“..even if it was solely training people for recruitment in the Aviation sector, instead of exercising an option from amongst the competing airlines, based on the competitive fares and services offered.”

The court further stated that the defendant’s use of the phrase “Fly Higher” does not appear to be done with the goal to deceive, distort, or confuse members of the public.

“As a result,” it continued, “Plaintiff has failed to prove a prima facie case of passing off against the Defendant.”

The court vacated the ex parte ad interim injunction decision and scheduled a hearing before the Joint Registrar on January 13, 2023.

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