No Exclusive Ownership over Generic Terms: An Analysis of the Delhi High Court’s Decision in the “Yatra” Trademark Case

Introduction

Have you ever imagined a scenario where a commonly used word is restricted by a firm just because it asserts that it “owns” the word just because the have a trademark on the word. What if, say, a travel agency trademarked the word yatra (which stands for journey) and none of the other travelling businesses are restricted in using this in day to day life? Doesn’t this sound absurd? Well, it is the same problem that the High Court of Delhi brought to the discussion in the current “Yatra” trademark case. Over time, companies have different ways to attract and keep customers through their trademarks. Branding and customer loyalty are part of the trademarks' market role. The law, however, is very strict about that when it comes to the monopolization of generic and descriptive expressions. The recent ruling of the Delhi High Court in the “Yatra” trademark dispute revisits this foundational principle and at the same time brings to the fore the difficult terrain between brand protection and allowing free competition in the market.

The Current Case

Yatra Online Limited is a company operating in the business of travelling, providing a platform for bus, flights, trains, cabs, hotels, hotels, etc, bookings. The company has a presence in the Indian market since 2006, and have multiple trademarks registered on their name ‘YATRA Device mark”, “Yatra Freight” and “Yatra Freight device mark”. Having a massive turnover and more than 12 million users, Yatra Online Ltd. has become one of the biggest travel companies of India[i]. Recently another company Mach Conference and Events Ltd. filed trademark application for registration of marks “BookMyYatra” and “BookMyYatra.Com” on which Yatra filed opposition and subsequently filed a suit against Mach Conference and Events Ltd[ii].

Initially in December 2024, the Delhi High Court passed an ex – parte interim injunction, restricting Mach Conference from using trademark “BookMyYatra” in their business practices till further notice. After which the proceedings were initiated. Plaintiff Yatra Online Ltd. claimed that the present trademark application is filed with malafide intention and dishonest means. Yatra claimed that as they have presence of more than 18 years in the market, they have acquired substantial reputation and goodwill and in India and mark has acquired distinctiveness and the respondent are trying to misuse the goodwill and reputation of their company[iii]. Over a due course of time, Yatra has become a well known trademark due to extensive marketing campaigns, advertisements and word of mouth and the people have a basic perception that in case the word Yatra has been used, it must be something affiliated with the Yatra Online Ltd. Adding to it plaintiff claimed that using “Yatra” with “Book my” will confuse the people and there are high chances that the users of Yatra engages with the services of Mach (Considering it to be associated with Yatra). The plaintiff further argued that “Bookmy” has been copied from well-known third party company “Bookmyshow”, making this marked unregistrable.

On the other hand, Defendants argued that the word Yatra is a very popular Hindi word meaning Travel, and the word is used by many people on daily basis and they aren’t mentioning about the Yatra Online Ltd. Adding to it they mentioned that this word is so commonly used and generic that it can’t be and shouldn’t me monopolised. Further the defendant claimed that common perception about Yatra word as mentioned by Plaintiff is clearly incorrect and factually wrong because of which the Plaintiff weren’t able to attach any evidence to verify the same. Adding to which the defendant mentioned, the brand name of defendant “BookMyYatra” both device and word are entirely different from that of plaintiff and for which the trademark should be read as whole. The defendant claimed that the plaintiff neither tried nor received the acceptance that this a well-known trademark. The defendant further cited that in the case of “Bigtree Entertainment Pvt. Ltd. v. D. Sharma and Ors” the court have very clearly laid down that the term ‘BookMy’ is very common and generic, the ‘BookMyshow’ cannot have monopoly on it[iv].

Analysis of the Court

The court after understanding and listening all arguments, stated that if the word “Yatra” if being considered in common parlance it will be describing Travel / Journey as if its meaning and not about any of the above travel company. Thus, the argument of the plaintiff regarding the perception can be neglected. Coming to the aspect of the trademark the term is very generic in nature and can’t be monopolised as its a well-established principle that generic or commonly descriptive expressions, which merely indicate the nature of the business or services, cannot be claimed exclusively by any proprietor, even if registered as a trade mark[v]. Section 30 of the Trade Marks Act[vi] places specific limitations on the rights conferred by registration, particularly where the mark is used to describe aspects such as the kind, quality, quantity, intended purpose, value, geographical origin, or the time and manner of production of the goods or provision of services. Court mentioned that when the respondent’s Trade Mark is viewed as a whole, the same is distinguishable by the prefix ‘BookMy’. The Plaintiff’s claim that ‘BookMy’ was derived from the well-known website ‘BookMyShow.com’ and combined with its own mark ‘YATRA.COM’ is not convincing. The Court in BigTree Entertainment has already held that ‘BOOKMY’ is descriptive, a very common term and that the mark ‘BOOKMYSHOW’ had not acquired distinctiveness to justify restraining others from using the prefix ‘BOOKMY’. Thus, the court dismissed the present suit marking the same[vii].

Law Regarding Generic terms

Generic terms mean terms which are too general in nature and used on a daily basis by a common man. Section 9(1)(c) of the Trademarks Act,1999[viii] clearly mentions that marks which have become customary in common language cannot be registered. But over due course of time many brands having a generic term in their mark have applied before the registry for registration some of them have been accepted considering disntinctivness prolonged use, good intention, second meaning and businesses requirement of the brands. In Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd.[ix], the Court held that even descriptive or generic terms can be protected as trademarks if they have gained secondary meaning. This means that consumers have come to associate that particular mark with a specific source or producer. However, complications arise when another business seeks to register a mark containing the same generic term, prompting the earlier user to oppose such registration. In such situations, the courts have consistently reiterated, through multiple precedents, that generic expressions cannot be monopolised, and the mere prior use of a common term does not grant exclusive proprietary rights over it. the court has done same to ensure that these generic items are not exclusively owned by one applicant and these terms are available for use by common people.

The Delhi High Court in case of Bhole Baba Milk Food Ltd. v. Parul Food Specialities (P) Ltd[x]., refused to grant an injunction to the plaintiff. The plaintiff had a registration for “KRISHNA” in a special stylized label form, while the defendant used the phrase “Parul’s Lord Krishna.” The Court did not give exclusive ownership over the word “KRISHNA” by itself. The court in the current case Krishna is a very generic term as it is a Deity’s name and commonly referred in daily basis, thus a single brand cannot establish monopoly. Similarly, in the case of Bigtree Entertainment Pvt. Ltd. v. D. Sharma and Ors[xi]. The plaintiff was ‘BookMyShow’ which have accused defendant of copying their mark who have filed for registration of their mark ‘BookMyEvent’. The court held similarly that this BookMy is a very generic term, it can’t be monopolised by a brand, considering that the parties haven’t filed any evidence to declare any second meaning.

But, there are cases where the court have granted interim protection to a trademark even when it is based on a generic term, such is generally done when the plaintiff shows that their mark can be considered as a well-known mark and has acquired a secondary meaning in the market and if a similar mark has been accepted the same will create a perception that the mark is somewhere associated with that well known mark. Thus, court after considering the prolonged use and secondary meaning. have provided interim protection to some marks. In the case of Info Edge (India) Pvt. Ltd. v. Shailesh Gupta[xii], the word “naukri” (meaning “job”) was examined to determine if it could function as a trademark. The plaintiff had been using “NAUKRI.COM” since 1997, and over time, the term had come to be closely associated with its job portal. The Court held that although “naukri” is a generic word, the plaintiff’s long and consistent use had given it distinctiveness and secondary meaning. As a result, the Court restrained the defendant from using the mark. Similarly in the case of Makemy Trip (India) Private Limited vs M/S Make My Happy Journey[xiii] the Court granted a permanent injunction restraining the defendant from using the mark “MakeMyHappyJourney.” Although the expression “Make My Trip” may appear to be a common and descriptive phrase, the Court noted that MakeMyTrip had built a strong reputation and goodwill in the market, giving the mark distinctiveness through use. The decision was passed ex-parte, where MakeMyTrip argued that the defendant’s mark was phonetically, visually, and structurally similar, with a similar colour scheme and emphasis on the word “My.” The Court accepted these contentions and held that such similarity amounted to infringement and passing off[xiv].

Current Status & Way Forward

Thus, court has clearly from many precedents established a position that no brand can get exclusive rights over a mark containing generic terms. A brand can in some cases get a generic term registered as a trademark considering the secondary meaning using prolonged use, or distinctiveness but still, they can’t monopolise that term and restrict other brands for applying for similar term[xv]. If an applicant has applied for mark which contains generic terms, and a similar mark has already being registered, it is duty of applicant to proof that their mark is phonetically, visually, and structurally different, from the registered one and the consumers will nowhere associate these marks with each other, and if the same is being provided and approved the mark can be registered by the registry[xvi]. The same has been done to ensure that the new business aren’t bullied by business giants and dragged into trademark disputes. It is to ensure fair competition in the country and promote new businesses to join and operate. Although the court considers that the goodwill around well known marks and public perception so does, they have provided protection and have denied registration to the new applicant in the cases where a brand can through subsequent evidence proof that they have acquired secondary meaning in the market and the people can somewhere associate the applied mark with the brand’s mark[xvii].

The ultimate reason why the court has ordered such precedents, is to safeguard the interest of growing brands. Imagine that a local bakery shop, can’t use word – Cake or Bakery, just because a MNCs has a registered mark as if the same. Such is the current case, Yatra in its own is a very generic term used commonly by the citizens. Many locally based transport arrangement shops in India may have been using Yatra as if their name of the business. Now, if a huge travel company operating using the mark Yatra, restraints all these small businesses from using the word Yatra, and tries to create a monopoly on the term ‘Yatra’ then there will be clear violation of the rights of a proprietor and it will discourage individuals from doing similar businesses. This is because courts have focused on one can claim exclusive ownership over common words that describe a category or type of goods or services[xviii].

Conclusion

The "Yatra" ruling is nothing short of a powerful reassertion of the principle that language cannot be subjected to private ownership. Throughout the course of a brand's life, it might start with a small and, all the way, develop into a giant with a strong positive reputation and yet cannot claim and keep words that are part of daily communication and are linked to the cultural identity of the people. The ruling meticulously and thoughtfully considers the rights of the trademark owners by giving them some extent of the very people's boons and thus declares that the generic and descriptive terms are non-exclusive and must remain free for open and honest trading. It is only when a word has gone beyond its literal meaning and has become a synonym for a certain company or a product because of the established secondary significance that the exclusivity can be claimed. By not allowing the word "Yatra" to be monopolized, the Court not only secures the right of fair competition and the linguistic commons but also the opportunity for the coexistence of big and small businesses who want to offer their services in a clear manner. The ruling, in the end, confirms that the law of trademarks is aimed at market clarity and not at changing the meanings of the words we use in our conversations.