Trademark Protection vs. Generic Words: Lessons from the Yatra v. BookMyYatra Dispute

Introduction

On August 22, 2025, the Delhi High Court passed a notable order in the matter of Yatra Online Limited v Mach Conferences and Events Limited, concerning trademark infringement and passing off. The order sets a strong precedent regarding the generic and directly descriptive nature of brands and provides compelling insights into striking a delicate balance between trademark protection and bonafide descriptive fair use. The dispute centred on whether the online travel booking giant Yatra could prevent a competitor from using the mark ‘BookMyYatra’.

The Heart of the Dispute: “Yatra” vs. “BookMyYatra”

The plaintiff, “Yatra Online Limited ”, claiming to be a well-known player in the online travel industry, sought a permanent injunction to restrain the defendant, Mach Conferences and Events Limited, from using the marks ‘BookMyYatra’ and ‘BookMyYatra.com’.

Plaintiff’s Arguments (YATRA)

The plaintiff contended that it had been using the trademarks “YATRA” and “YATRA.COM” since 2006 and had established a strong brand presence and an extensive customer base. The plaintiff relied upon its sales turnover for the year 2023-2024 to argue that the mark “YATRA” had become distinctive and well-known in the travel booking and related service industry. The plaintiff emphasised the secondary significance of the mark “YATRA” and argued that the said mark had become a household name, synonymous with the plaintiff and its business of online travel booking and related services. This, the plaintiff claimed, meant that the public no longer saw the mark “YATRA” as a mere generic Hindi word for travel, but rather associated it exclusively with travel services provided by the plaintiff. Further, the plaintiff claimed that the defendant’s marks were deceptively similar and their use was a dishonest attempt to capitalize on YATRA’s acquired goodwill and statutory rights, leading to consumer confusion and unfair competition.

Defendant’s Arguments (BookMyYatra)

Defending its use of the marks “BookMyYatra” and “BookMyYatra.com”, the defendant argued that the word “YATRA” was a common Hindi word for “travel” and therefore such a generic word cannot be monopolised by any single entity. An interesting fact highlighted by the defendant is that the plaintiff did not own any registration for the word mark “YATRA” per se. Rather, they pointed out that the plaintiff’s trademark registration for the “YATRA” device mark included a disclaimer that stated that “No exclusive right for the word YATRA”. The defendants further argued that thousands of other travel operators across India were using the word “Yatra” in their business names, and granting the plaintiff an exclusive right despite the disclaimer would unfairly harm the competition in the market. Lastly, the defendant argued that their marks, BookMyYatra and BookMyYatra.com, should be viewed as a whole, and a holistic comparison renders the plaintiff’s mark dissimilar from the defendant’s marks.

Key observations and Decision:

While dismissing the plaintiff’s plea for an injunction, the Court made the following significant observation that has condensed the dust surrounding the legal position on generic and descriptive marks, among others. 

1. No Exclusivity on Generic and Commonly Descriptive Marks: Common descriptive terms are those that directly describe the nature of the business or services. It is no longer res integra that the generic or commonly descriptive words can never become trademarks on their own, as they fail to perform one of the most important functions of trademark – to indicate origin or source. In other words, it can never acquire distinctiveness or a secondary meaning. It is no longer debatable in the eyes of the law that words used in everyday language cannot be allowed to be monopolised. Such descriptive words, such as “YATRA”, even if registered, cannot be exclusive to the proprietor of the registered trademark as excepted under Section 30 of the Trade Marks Act 1999. The generic and descriptive marks always run the risk of being used by others.

2. Missed Secondary Meaning Threshold: “YATRA” cannot be said to have acquired a secondary meaning. To acquire a secondary meaning, the primary meaning of the said expression should have been lost and left behind in the minds of the general public by virtue of an uninterrupted use for a considerable length without any competitor attempting to use the said expression and mark. The Court found that the plaintiff did not meet this threshold, and the word “YATRA” continues to retain its primary meaning in respect of the travel business.
3. Disclaimers Reinforce Generic Nature: The disclaimer imposed by the learned Registrar of Trade Marks while granting the registration to the device marks containing the word “YATRA” further confirms the generic and descriptive nature of “YATRA” marks. The Court observed that the prolonged or extensive use of the generic word cannot entitle the Plaintiff to claim exclusivity or succeed in an action for passing off. Taking a step forward, the Court clarified the legal purpose and contours of the disclaimers and emphasised that the proprietor of a registered mark cannot be allowed to expand their right beyond their legitimate bounds or claim special advantages in the disclaimed portions.
4. “BookMy” Prefix: The Court noted that “BookMy” prefix in the Defendant’s Mark was itself widely used (e.g., BookMyShow, BookMyBus) and descriptive in online commerce. That said, and comparing as a whole, the Court held that the mark “BookMyYatra” was dissimilar from the Plaintiff’s marks owing to distinct colour, stylisation, and manner of writing.

Accordingly, the interim injunction granted earlier in favour of the Plaintiff was vacated, permitting the Defendant to continue with the mark “BookMyYatra”.

Our View

This decision sets a strong precedent and serves as a cautionary note for brands that adopt generic or descriptive terms as trademarks. Brand owners adopting such marks face an uphill battle in trademark enforcement. Unlike coined and invented terms, descriptive terms are inherently vulnerable to competitive use and, therefore, an absolute monopolisation cannot be asserted.

In essence, this judgment aligns with global jurisprudence that prevents the unfair monopolisation of generic and commonly used descriptive terms, and highlights the essence of distinctiveness for long-term trademark protection. For lasting brand exclusivity and consumers’ recollection, businesses must prioritise the adoption and use of distinctive marks over merely descriptive ones.