'Yatra' a generic word, can't be monopolised: Delhi High Court in Yatra Online vs BookMyYatra trademark case

The Delhi High Court recently dismissed an application filed by Yatra Online Limited, which had sought to restrain Mach Conferences and Events Limited from launching services under the marks BookMyYatra and BookMyYatra.com [Yatra Online Vs Mach Conferences Limited]..Justice Tejas Karia held that the expression “Yatra”, being synonymous with travel in Hindi, is generic and descriptive in relation to travel services. Consequently, the Court ruled that no single entity can claim exclusivity over it."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,” the Court said..Yatra Online had argued that it had built enormous goodwill in its “Yatra” and “Yatra.com” marks since 2006, with over 15 million customers and a turnover of more than ₹5,600 crore in FY 2023–24. It submitted that the rival mark - BookMyYatra - was deceptively similar and adopted in bad faith to ride on Yatra's reputation.Mach Conferences countered that “Yatra” is a descriptive term used by hundreds of travel operators across India for decades, and that Yatra Online’s registrations contained clear disclaimers denying any exclusive right over the word. The defendant further pointed out that the prefix “BookMy” gave the marks a distinct character, already common in the online space.In its ruling, the Court emphasised that Yatra Online’s trademark registrations for “Yatra with device” and “Yatra Freight” were granted only with explicit disclaimers: “No exclusive right for the word Yatra.” Having accepted those disclaimers at the time of registration, the Court held that the plaintiff (Yatra Online) could not enlarge its rights beyond their legitimate bounds. “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,” Justice Karia noted..The Court also rejected Yatra Online’s argument that the word “Yatra” had acquired a secondary meaning through long use. “The word ‘Yatra’ cannot be said to have acquired a secondary meaning. For acquiring a secondary meaning, the primary meaning of the expression has to be lost and left behind … 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,” the judgment said. On the contrary, documentary evidence on record showed extensive use of “Yatra” by several other operators across India..Justice Karia further held that when viewed as a whole, the defendant’s marks, BookMyYatra and BookMyYatra.com, were distinguishable by the prefix “BookMy” and the overall impression they created. “The defendant’s use of ‘BookMyYatra’ does not violate any trademark in ‘BookMy’ or ‘Yatra’ disjunctively or collectively as a whole,” the Court said, citing a prior case-law which had described “BookMy” as itself a descriptive formulation.On Yatra Online’s attempt to rely on the domain suffix “.com” to claim trademark rights, the Court added,"It is settled law that ‘.com’ is a Top Level Domain and is entirely generic and cannot have any distinctiveness at all as no one can claim exclusivity in any domain suffix of any level. In view of the same, ‘Yatra.com’ also cannot be protected differently than ‘Yatra’.”Holding that no prima facie case had been made out, the Court dismissed Yatra Online’s injunction plea and vacated its December 2024 interim order, which had earlier restrained Mach Conferences from using the impugned marks..Yatra was represented by Advocates Pravin Anand, Jaya Negi and Yashi Agarwal from Anand & Anand. .Mach Conferences was represented by Advocates Saurabh Prakash, Utsav Jain, and Anant Aditya Patro..[Read Judgment]