The Hindu Business Line : Tata Sons wins trademark case against MakeMyTrip

Tata Sons recently won a trademark case at the World Intellectual Property Organisation against New Delhi-based travel portal MakeMyTrip for the use of the word ‘TATA’ in the latter’s sister Web site okaytatabyebye.com, an online networking forum for the travel community.

Tata Sons filed a complaint with WIPO in May this year alleging that the disputed domain name infringes the right of its registered trademark/service mark TATA. It had requested to get the disputed domain name transferred to it.

The business conglomerate complained that the disputed domain name oktatabyebye.com includes the word TATA, “which is identical in part and confusingly similar as a whole to the well-known and registered trademark and service mark TATA that has a statutory right as well as rights in common law, by virtue of a long and continuous use and being its registered proprietor thereof.”

They said that the use of their corporate name TATA in the portal creates “confusion in the minds of the relevant group of consumers and is apparent that the sole purpose of registering the disputed domain name oktatabyebye.com is to misappropriate the reputation associated with the Complainant’s well-known and famous trademark TATA”.

The group had also pointed out that the “Respondent (MakeMyTrip) is not commonly known by the domain name oktatabyebye.com” but as “MakeMyTrip”.

Tata Sons also said that “…the Respondent (MakeMyTrip) has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”

The services being offered by MakeMyTrip through oktatabyebye.com are similar to those being offered by its other domain name makemytrip.com, argued Tata Sons.

The argument put forth was that MakeMyTrip had “ill intention” behind creation of oktatabyebye.com in order to infringe the intellectual property rights of Tata.

Tata Sons had also mentioned in their plea that they had approached MakeMyTrip last year to transfer the aforesaid domain name to them in accordance with the applicable procedures; however, MakeMyTrip refused “giving vague reasons”.

MakeMyTrip on its part contested that “usage of the word ‘tata’ as a gesture finds its mention in the origin of a place called Ta Ta Creek as far back as in the year 1860.” It further argued that the okaytatabyebye was a “name is derived from the common parlance “OK Ta Ta Bye Bye” since it signifies travel, journey and related activities. The expression bidding farewell has been used by using the generic word “Ta Ta” in the same flow as “OK” and ending at “Bye Bye”. Therefore, the expression “Ta Ta” has been used not as a standalone mark but as a generic description of bidding farewell for this Web site”.

The portal had also said that the services offered by both the sites were entirely different. “While makemytrip.com offers discounts and easy access to travel plans, oktatabyebye.com, launched in 2006, lets these travellers make online records about their journey.”

“Neither at any point of time or any link whatsoever of the Respondent’s (okaytatabyebye.com) site, takes a user to a site of Complainant’s (Tata Sons) competitor or any material which is infringing trade mark of the Complainant. In fact, all the trade marks or services referred by the Complainant have no conflict whatsoever with the services offered by the Respondent,” the portal said in its responses.

MakeMyTrip will be appealing against the decision of WIPO at the Delhi High Court on Monday, said Mr Sachin Bhatia, the Co-Founder of MakeMyTrip. As per directions issued by WIPO on August 24, the transfer of the domain name okaytatabyebye.com would not take place if MakeMyTrip went in for legal proceedings against Tata Sons in the matter within a period of 10 days.

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