*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
Pronounced on: April 10, 2017
+
FAO(OS)(COMM)
21/2016
|
DPS
WORLD FOUNDATION & ANR
|
..... Appellants
|
||
|
Through:
|
Mr.Salman
|
Khurshid,
|
Appellant
|
|
No.2-in-person.
|
|
|
|
|
Mr.Anil
|
Airi,
Sr.Adv.,
|
Mr.Sumeet
|
Pushkarna,
|
Ms.Girija Krishan Verma, Mr.Abhishek Saket,
Mr.P.K.B. Dubey, Mr.Aadil Singh, Ms.Vijaya
Singh, Ms.Sakshi Kotiyal and Mr.Vikramditya
Singh,
Advs. for Appellant No.1
Versus
DELHI PUBLIC SCHOOL SOCIETY .....
Respondents
Through: Mr.Sandeep Sethi, Sr.Adv. with
Mr.Sudhanshu Batra, Sr.Adv., Mr.Puneet Mittal,
Mr.Bhuvan
Gugnani, Mr.Rupender Pratap Singh,
Ms.Vasudha Bajaj, Mr.Amitej Nagar, Mr.Sagar
Mittal
and Ms.Arushi Tangri, Advs.
CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE MS.JUSTICE SANGITA DHINGRA SEHGAL
J U D G M E N T
:
Ms.G.ROHINI,
CHIEF JUSTICE
1. This
appeal under Order 43 Rule 1 of CPC read with Section 13 of
Commercial Courts, Commercial Division and Commercial Appellate
Division
of High
Courts Act, 2015 is directed against the order of the
learned
Single Judge dated 18.4.2016 in IA No. 2920/2016 in CS(COMM)
154/2016.
FAO(OS)(COMM)
No.21/2016 Page 1
of 22
2. The said IA No.2920/2016 was filed by the plaintiff / respondent
herein under Order 39 Rules 1 and 2 CPC, 1908, to restrain the defendants /
appellants herein from dealing in any manner inter alia:
"a) from offering their services, advertising, offering
franchisees, selling goods and stationary, adopting, using and/or dealing in
any manner with the registered trade mark/name 'DPS' and logo
of the plaintiff or any other
trade mark identical or deceptively similar to the registered trade marks of
the plaintiff amounting to infringement and passing off the plaintiffs
registered trade marks.
b) from offering services, advertising, offering franchisees, selling
goods, adopting, using and/or dealing in any manner with the trade mark/name
'DELHI PUBLIC SCHOOL' and the crest logo
of the plaintiff or any other
trade mark identical or deceptively similar to it amounting to passing off the
plaintiffs trade mark/name.
c)
from
using the impugned
trade mark/name 'DPS',
'Delhi
Public
School' and logo
d)
from directly or indirectly reproducing, using
and/or dealing
in any manner with the plaintiff's crest and or any other crest identical
or deceptively similar amounting to infringement of the plaintiff's copyright
in the said crests."
3. By the
order under appeal dated 18.04.2016, the learned Single Judge allowed the
application on the following terms:
FAO(OS)(COMM)
No.21/2016 Page 2
of 22
"1. The defendants, their life trustees, terms trustees, members,
franchisees, officers, employees, agents, delegates, representative, associates
and all other acting for and on their behalf, are restrained from offering
their services, advertising, offering franchisees, selling goods, and
stationery, adopting, using and/or dealing in any manner with the registered
mark/name 'DPS' or any other mark identical or deceptively similar to the
registered mark of the plaintiff, amounting to infringement and passing off the
plaintiff's registered trademark till the disposal of this suit;
2. The defendants, their life trustees, terms trustees, members,
franchisees, officers, employees, agents, delegates, representatives,
associates and all other acting for an on their behalf are restrained from
using the impugned trademark/name 'DPS', or any other trademark identical or
deceptively similar to it, amounting to passing off the plaintiff's
trademark/name, till the disposal of the suit."
4.
As could be seen, the relief was
granted to the plaintiff to the extent of its registered trade mark/name 'DPS'
by restraining the defendants from using, till the disposal of the suit, the
registered mark/name 'DPS' or any other mark identical or deceptively similar to
the registered mark of the plaintiff amounting to infringement and passing off
the plaintiff's registered trademark. The defendants have also been restrained
from using the impugned trademark/name 'DPS' or any other trademark identical
or deceptively similar to it amounting to passing off the plaintiff's
trademark/name.
5.
Aggrieved by the same, the
present appeal has been filed by the defendants.
6.
Before going into the merits of
the case, the relevant facts to appreciate the controversy between the parties
may be noticed.
FAO(OS)(COMM)
No.21/2016 Page 3
of 22
7.
The plaintiff/Delhi Public School
Society is a society registered under the Societies Registration Act, 1860. It
is pleaded that it was registered in the year 1948-49 with an object to
establish progressive schools or other educational institutions in Delhi or
outside Delhi. The plaintiff established its schools at various places in India
which are 11 in number and are known as Core Schools. The plaintiff has also
entered into agreements with other societies/trusts for establishing schools at
various places known as affiliated schools and there are more than such 170
affiliated schools. The plaintiff has also established 15 schools outside India
and approximately 3 lakhs students are studying in the schools run under the
aegis of the plaintiff.
8.
It is also pleaded that in the
year 1948, the plaintiff conceived and adopted the crest which comprises of a
hand holding a torch along with the
school motto “Service Before Self” and the words “Delhi Public School”
written inside a shield. It is claimed that the unique crest of the plaintiff
is widely recognised in India as well as across borders and has been considered
synonymous with the plaintiff and the various schools established by it. During
1996-97, plaintiff conceived and adopted another crest which comprises of a
torch (mashaal) on a book along with school motto "Service Before
Self" written inside a shield device surrounded by creeper and the words
"Delhi Public School'' written at the bottom with other distinctive
artistic features comprised therein. It is claimed that both the above-said
crests are of original artistic work and the plaintiff is the first owner of
the same under the provisions of the Copyright Act, 1957.
9. It is claimed that due to continuous and extensive use of its trademark/name
“Delhi Public School”, its acronym “DPS” as well as two
FAO(OS)(COMM)
No.21/2016 Page 4
of 22
logos conceived and adopted by it are being perceived by the students,
parents and academicians throughout the country and also abroad as an
indication of the source of the plaintiff and they have become the
un-paralleled benchmark of the academic excellence, goodwill and reputation
enjoyed by the plaintiff.
10.
In order to secure the statutory
rights in respect of the crest conceived in the year 1948 and the trade-names
DPS & Delhi Public School, the plaintiff filed applications for
registration under the provisions of the Trademarks Act, 1999. So far the crest
conceived in the year 1948, the Trademark was registered under Class 16, 35,
36, 41 and 42. Similarly, registration was granted for the trade mark/name
'DPS' under Class 16, 35,
42
and 36. However, the application
dated 08.10.2007 under Class 41 for trade mark 'DPS' is still pending. The
applications dated 08.03.2011 for trade mark 'Delhi Public School' under Class
16, 36, 35, 41 and 42 are also pending.
11.
It is pleaded that the plaintiff
has been extremely vigilant about its intellectual property rights and whenever
any attempt was made to infringe and/or pass off their services and business by
any third parties, the plaintiff filed suits and all such suits were decreed
injuncting the defendants therein from using the trademarks/names DPS and Delhi
Public School. The suits which were decreed in favour of the plaintiff included
Delhi
Public School Society vs. DPS Trust [CS(OS)
No.1519/2008; CS(OS) No.1518/2008; CS(OS) No.1520/2008; CS(OS)
No.1521/2008; CS(OS) No.114/2011 and CS(OS) No.1092/2012].
FAO(OS)(COMM)
No.21/2016 Page 5
of 22
12. It is pleaded that the defendant No.1 is a Trust whereas the
defendant No.2, who was the life member of the plaintiff Society till
17.10.2015 and was also the President of the plaintiff society from 1994-2004,
is stated to be one of the founder trustees of the defendant No.1. It is
alleged that the defendant No.1 Trust is functioning under the trade-name 'DPS
World Foundation' by adopting the identical trademark/name 'DPS' and a
deceptively similar logo/crest. It is pleaded that for the first time the
plaintiff came to know about the same in the month of July 2015 when it came
across a letter dated 12.06.2015 addressed by the founding trustees of the
Defendant No.1 to the Alumni of the schools running under the aegis of the
plaintiff. It is alleged that Defendant No.1 is the brainchild of Defendant
No.2 who while holding the life membership in the plaintiff deceived the
plaintiff by secretly forming the Defendant No.1 Trust and adopting the
trademarks of the plaintiff which were extensively used by the plaintiff during
the tenure of the Defendant No.2 as the President of the plaintiff. It was
found that the defendants are also maintaining a website wherein the impugned trademark
“DPS” as well as the crest/logo have been prominently displayed. It was also
found from the website that the Defendant No.1 Trust was inaugurated on
16.08.2015 for the purpose of establishing schools and other educational
institutions similar to that of the plaintiff and has been using the impugned
trademarks in relation to the said services.
13.
It is alleged that the logo/crest
of the defendant No.1 is identical and
deceptively similar to the plaintiff’s registered trademark and has been
deliberately copied by the defendants in order to gain unlawful advantage and
illegal profits by confusing and deceiving the intending parents,
FAO(OS)(COMM)
No.21/2016 Page 6
of 22
students, staff as well as the general public by misrepresenting that
they have connections with the plaintiff. The plaintiff therefore served a
show-cause notice dated 24.07.2015 calling upon the Defendant No.2 as to why an
action should not be taken against him for having clandestine association in
creation of Defendant No.1 and adoption of the impugned trademarks. The
Defendant No.2 vide his reply dated 21.08.2015 admitted that he is associated
with the Defendant No.1. In the circumstances, the plaintiff vide notice dated
17.09.2015 declared that the Defendant No.2 has ceased to be a life member of
the plaintiff society from 17.10.2015. Having received the same Defendant No.2
filed CS (OS) No.3094/2015 with a prayer to declare the notice dated 17.09.2015
as null and void. The said suit is pending on the file of this Court.
14. The plaintiff came to know that the defendants got published
advertisements in newspapers for recruiting staff, teachers, employees etc for
the schools proposed to be established by them in Greater Noida, Patna, Alwar
and other places. It is alleged that on account of unlawful adoption of the
registered trademark/name and logo of the plaintiff by the defendants the
following consequences are inevitable:
a) The potential students, staff and parents would believe that the
defendants are endorsed by and franchisee of the plaintiff in regard to their
services and the defendants command and provide the same quality and
reliability i.e. synonymous with the services of the plaintiff which as a
matter of facts the plaintiff has build up over last more than 65 years of
dedicated hard work.
FAO(OS)(COMM)
No.21/2016 Page 7
of 22
b)
The general public would also
believe that the defendants are licensed or authorized by the plaintiff to use
the plaintiff's trade mark/name and logo.
c)
Irreparable loss, injury and
damage to the plaintiff in its business, goodwill and reputation and by use of
the impugned trade marks by the defendants, value of the plaintiff's trade
marks is getting diminished.
15.
It is thus pleaded that the
plaintiff is likely to suffer unquantifiable loss and irreparable damage unless
the defendants are restrained from carrying on their illegal acts of
deliberately infringing the plaintiff’s trademarks “DPS” and logos and
copyrights in the crests.
16.
The defendants/appellants herein
filed a reply denying the allegations and stating that the defendant No.1/'DPS
World Foundation' is a DIPSITES Knowledge initiative and an independent effort
of DPS alumni (DIPSITES) and that it is not a part of Delhi Public School
Society. It is also pleaded that in fact, “DIPSITES Association” was registered
by the DIPSITES under the Societies Registration Act, 1860 as an association of
the alumni and staff members of the Delhi Public School in the year 1982
itself. The defendant No.2 was the founding president of the said association.
The DIPSITES Association has an active participation in the DPS World
Foundation/defendant No.1. While claiming that the goodwill of the plaintiff is
actually the goodwill generated by DIPSITES, be it students, staff or teachers,
it is contended that the defendant No.1 has no intention to mislead anyone and
that the said Trust has been envisaged with the noble objective to give the
character of excellence in education, social service and
FAO(OS)(COMM)
No.21/2016 Page 8
of 22
advancement of human values. While claiming that the values and ethos
for which the plaintiff society was created, has over the years degraded in
view of the number of franchise schools and the simultaneous lack of attention
towards educational standards, it is pleaded that the DIPSITES (alumni of the
Delhi Public School) who are the original torch-bearers of the ideals of the
Delhi Public School are beholdened to further propagate and cherish the true
ideals of education and human values and thus several illustrious DIPSITES and
former teachers are part of DPS World Foundation/defendant No.1 in the capacity
of life members, trustees, etc. It is contended that the members of the DPS
World Foundation/defendant No.1 have a strong link with Delhi Public School
value system and share the common heritage and legacy that all DIPSITES are
entitled to.
17. While categorically denying the allegations in the plaint that the
defendant No.1 has adopted the identical trademark/name 'DPS' and deceptively
similar logo/crest and thus infringing plaintiff's trademark 'DPS' and logos,
it is pleaded that the goodwill that the plaintiff is seeking to appropriate to
itself is actually a goodwill generated by the DIPSITES, be its students, staff
or teachers without which the plaintiff society has no goodwill. It is also
claimed that the bona fide altruistic
motives of the members of the defendant No.1 are clearly brought forth by the
fact that in all the material published and circulated by the defendant No.1, a
categorical and prominent advisory which states "A Dipsites Knowledge Initiative
and
an independent effort of DPS Alumni (Dipsites). Not a part of Delhi
Public School Society, New
Delhi" has been put up. It is thus claimed that
the clear
intention of the defendant No.1 is to ensure that the public can
FAO(OS)(COMM)
No.21/2016 Page 9
of 22
clearly discern that the defendant No.1 has no connection or relation
whatsoever with the plaintiff society and is an independent initiative of the
DIPSITES. It is claimed that the logo of the defendant No.1 also gives a bona fide description that the DPS World
Foundation is a DIPSITES Knowledge
Initiative. The allegation that the defendant No.1 is making fraudulent gain by
misrepresentation thus causing unquantifiable loss and irreparable damage to
the plaintiff has also been categorically denied.
Findings of the learned Single Judge:
18.1
The learned Single Judge had
taken note of the fact that the plaintiff has registration of trademark/name
'DPS' in Class 16 (Paper, Cardboard, Photographs, Stationery), Class 35
(Advertising, Business Management, Business Administration, Office Functions),
Class 36 (Insurance, Financial Affairs, Monetary Affairs, Real Estate Affairs)
and Class 42 (Food and Drink, Medical, Industrial Research and Computer
Programming). Having regard to the admitted fact that the defendant No.1 Trust
has been operating under the trade name 'DPS World Foundation' which itself
includes 'DPS' in respect of which the plaintiff has the registration of
trademark in Classes 16, 35, 36 & 42, the learned Single Judge held that
the mark/name of defendant No.1 'DPS World Foundation' or 'DPS World School'
would surely cause 'infringement' under the provisions of Section 29 of the
Trademarks Act, 1999 of the registered trademark 'DPS' of the plaintiff.
18.2
The learned Single Judge also
opined that from the documents placed on record it is clear (at least at this
stage) that the mark/name 'DPS' owe its origin to Delhi Public School and not
to 'DIPSITES' and to connect defendant No.1 with DIPSITES Association is not
appealing. The learned
FAO(OS)(COMM)
No.21/2016 Page 10
of 22
Single Judge had also taken note of the fact that this Court in various
judgments/orders passed with regard to the mark/name 'DPS' held that schools
established by the plaintiff society are known as Delhi Public Schools and are
popular by the branch names and at the public at large and students, staff
refers to the same as 'DPS'. Thus, the learned Single Judge recorded a prima facie view that the plaintiff has
made out a case for interim relief with regard to the usage of trademark 'DPS'
and further the balance of convenience is also in favour of the plaintiff. It
was further held that the reliance placed by the plaintiff on several orders of
this Court wherein this Court had held 'DPS' enjoyed goodwill and reputation in
the field of school education is a relevant factor for determining the prima facie case in favour of the
plaintiff.
18.3
With regard to the advisory
"a Dipsites knowledge initiative and an independent effort of DPS alumni
(Depsites). Not a part of Delhi Public School Society, New Delhi," claimed
to have been put up by the defendant No.1 right from its inception showing
their disassociation with the plaintiff society, the learned Single Judge
opined that it is a matter of evidence whether such an advisory would not
create confusion or is sufficient notice to the public at large that the
defendant No.1 is not associated with the plaintiff in any manner or would not
pass off its institution/schools as the plaintiff's schools.
18.4
With regard to the contention on
behalf of the defendants that the delay would disentitle the plaintiff the
relief inasmuch as the plaintiff became cognizant of the defendant No.1 in the
month of July, 2015 and despite such knowledge, the plaintiff has not taken any
steps to protect the
FAO(OS)(COMM)
No.21/2016 Page 11
of 22
trademark till February, 2016 also, the learned Single Judge was of the
view that the issue of delay being a mixed question of fact and law needs to be
decided in trial upon furnishing evidence.
18.5 The allegation of the plaintiff that the crest/logo of the defendant
No.1 when compared to the plaintiff’s trademark and logo clearly establishes
that the same is identical to the plaintiff’s crest/logo conceived and adopted
during 1996-97 and deceptively similar to the plaintiff’s registered trademark
which was conceived in the year 1948 was not accepted by the learned Single
Judge observing:
"Apparently, it does not appear to be
identical or deceptively similar for the plaintiff to contend infringement of
its registered crest logo at 1 of Annexure-A. The only common feature, is the
Torch (Mashaal). The crest logo of the defendant No.1 does not feature the
hand. Additionally, it has a book in the background. That apart, the crest logo
of the defendant has creepers on both sides, which are not there with the crest
logo of the plaintiff. The crest logo of the defendant No.1 is not identical or
deceptively similar so as to infringe the registered crest logo of the
plaintiff. I may note, here, that the defendant No.1 has stated in its reply
that it is neither using the registered crest logo of the plaintiff at 1 of
Annexure 'A', or it intends to use the same in future."
18.6 With regard to the crest/logo of the plaintiff which was stated to
be conceived and adopted by it in the year 1996-97, the learned Single Judge
was of the view that the issues involved therein need to be ascertained by way
of an evidence to be adduced during the trial. It was also observed that in the
absence of any evidence to controvert the plea of the defendants that the
plaintiff has used the said crest logo only in the year 2008 and not
thereafter, the discretion cannot be exercised in favour of the plaintiff on
the
FAO(OS)(COMM)
No.21/2016 Page 12
of 22
aspect of the said crest/logo
while considering the application under Order
39 Rules 1 and 2 of CPC.
19.
Thus, the learned Single Judge
disposed of the application by the order under appeal restraining the
defendants, their life trustees, terms trustees, members, franchisees,
officers, employees, agents, delegates, representative, associates and all
other acting for and on their behalf from offering their services, advertising,
offering franchisees, selling goods, and stationery, adopting, using and/or
dealing in any manner with the registered mark/name 'DPS' or any other mark
identical or deceptively similar to the registered mark of the plaintiff,
amounting to infringement and passing off the plaintiff's registered trademark
till the disposal of this suit. The defendants their life trustees, terms
trustees, members, franchisees, officers, employees, agents, delegates,
representatives, associates and all other acting for an on their behalf are
also restrained from using the impugned trademark/name 'DPS', or any other
trademark identical or deceptively similar to it, amounting to passing off the
plaintiff's trademark/name, till the disposal of the suit.
20.
The said order is assailed in the
present appeal preferred by the defendants.
21.
It may at the outset be mentioned
that though the learned Single Judge declined to grant the injunction sought by
the plaintiff in respect of the two crests/logos stated to be conceived and
adopted by the plaintiff, the plaintiff had not chosen to challenge that part
of the order of the learned Single Judge. Therefore, the challenge to the
impugned order is limited only to the
FAO(OS)(COMM)
No.21/2016 Page 13
of 22
extent of the injunction granted restraining the defendants (i) from
using and/or dealing in any manner with the registered trade mark/name 'DPS' or
any other mark identical or deceptively similar to the registered trade mark of
the plaintiff till the disposal of the suit; and (ii) from using the impugned
trade mark/name 'DPS' in the trade name and/or logo of the defendant No.1.
22.
We have heard Sh.Salman Khurshid,
the appellant No.2/defendant No.2 who appeared in person as well as Sh.Sandeep
Sethi, the learned Senior Counsel appearing for the respondent/plaintiff.
23.
The contentions advanced by
Sh.Salman Khurshid may be summarized as under:
(i)
The order under appeal suffered
from factual infirmities, namely, that the appellant No.1/defendant No.1 Trust
has been set up by the DIPSITES Association and that the respondent/plaintiff
has registration over the words 'Delhi Public School' under Classes 16, 35, 36
& 42.
(ii)
The learned Single Judge failed
to properly appreciate the intent and effect of the Advisory and erred in
concluding that it is a matter of evidence whether such an Advisory would not
create confusion or is sufficient notice to the public at large that the
defendant No.1 is not associated with the plaintiff in any manner.
(iii)
The learned Single Judge has also
failed to appreciate the fact that no school of the plaintiff society has ever
been called 'DPS' by the society or the school management across the country
and that the word 'DPS' has never been used as a trademark by the plaintiff not
FAO(OS)(COMM)
No.21/2016 Page 14
of 22
even in Classes 16, 35 and 42 in which the said mark is registered. It
is contended that the acronym/abbreviation 'DPS' which is used only for the
purpose of convenience cannot be extended the statutory protection.
(iv)
Placing reliance upon Khoday
Distilleries Ltd. vs. Scotch Whiskey Association (2008) 10 SCC 723,
Skyline Education Institute vs. SL Vaswani and Anr. (2010) 2 SCC 142 and Cadila Health Care Ltd. vs.
Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, it is also contended
that there is no reason as to why the alumni of DPS, who are part of its legacy
cannot use DPS with a suitable disclaimer. It is also contended that as more
than 200 schools have been operating as Delhi Public Schools/DPS with same logo
as that of the plaintiff society without authority and further several other
societies and public sector sponsored societies having been registered as the
franchisees of the plaintiff society, the learned Single Judge ought to have
held that the trademark 'DPS' has been diluted and has become publici juris.
(v)
Having regard to the fact that
the appellant has been running 14 schools where admissions have also done, the
finding recorded by the learned Single Judge that the balance of convenience is
in favour of the plaintiff is erroneous. In support of the said submission,
reliance
has been placed upon Wander vs. Antox 1990 (SUPP) SCC 727 wherein it
is held that the need for protection must be weighed against the corresponding
need of the defendant to be protected against injury. Reliance has also been
placed upon Nestle India vs. Mood
FAO(OS)(COMM)
No.21/2016 Page 15
of 22
Hospitality Private Limited (2010) ILR 3 Delhi 560, wherein this Court held that the test of prima facie case has been replaced in
trademark matters by the test of comparative strengths of the rival cases.
(vi) It is also contended that the plaintiff has no registration of
acronym 'DPS' in Class 41. Therefore, to extend the benefit of trademark protection
is not in conformity with the provisions of Section 29(4) of the Act. It is
sought to be pointed out that no finding was recorded by the learned Single
Judge with regard to satisfaction of the ingredients of Section 29(4).
24. On the other hand, it is submitted by Sh.Sandeep Sethi, the learned
Senior Counsel appearing for the respondent/plaintiff that the discretionary
order of injunction passed by the learned Single Judge comprehensively dealing
with the respective factual and legal contentions and returning a prima facie finding that the defendant
is prima facie guilty of infringement and passing off of the plaintiff's
trademark is neither arbitrary nor capricious nor perverse. It is also
submitted that the said order being judicious and in terms of settled
principles of law regulating grant of injunction warrants no interference by
the Appellate Court in terms of the dictum of the Supreme Court in Wander
vs. Antox (supra).
25. Placing reliance upon Ramdev Food Products vs. Arvindbhai Rambhai
Patel; (2006) 8 SCC 726, Laxmikant V. Patel vs. Laxmi Bhat Shah; AIR
2002 SC 275, T.V. Venugopal vs. Ushodaya Enterprises;
(2011) 4
SCC 85 and Midas Hygiene vs. Sudhir Bhatia;
2004 (28) PTC 121 (SC), it is further contended that the
adoption of the trademark by the
FAO(OS)(COMM)
No.21/2016 Page 16
of 22
defendants being clearly
dishonest, the learned Single Judge has rightly
injuncted the defendant.
26.
The further contention is that
apart from the infringement of registered trademark of plaintiff, the defendants
are also guilty of passing off. It is a clear case where the defendants adopted
the trademark of the plaintiff to encash upon its reputation and goodwill and
wrongly impress upon the people at large that there is some connection between
the plaintiff and the defendant No.1. The defendant No.1 is therefore, guilty
of passing off and is liable to be injuncted. In support of the said
submission, the learned Senior Counsel relied upon Reckitt & Coleman Limited vs.
Borden Inc. [1990] 1 All ER 873
and Honda Motors Company Limited vs. Charanjit Singh & Others, (2002)
101 DLT 359 (Del).
27.
It is finally submitted by the
learned Senior Counsel that the appellant has not complied with the impugned
order dated 18.04.2016 and has continued to violate the said order by
continuing to use the trademark of the plaintiff. Therefore, according to the
learned Senior Counsel, the appellant who is in contempt cannot be heard in
this appeal until the appellant purges itself.
Consideration:
28.
This is a case where the
plaintiff claims to be entitled to the exclusive
use of trademarks 'DPS', 'Delhi Public School' and two logos i.e.
(i) conceived and adopted in the year 1948 and (ii)
conceived and adopted in 1996-97. The
allegation is that the defendants
FAO(OS)(COMM)
No.21/2016 Page 17
of 22
have malafidely adopted and have
been using the trade mark/name 'DPS
World
Foundation' and the crest logo which are
identical and
deceptively similar to the
trademarks of the plaintiff.
29.
Though the defendants denied the
said allegations, in the light of the material available on record, the learned
Single Judge opined that the documents placed on record at least at this stage
make it clear that the mark/name 'DPS' owes its origin to the plaintiff.
Accordingly, it was held that the mark/name of the defendant No.1 'DPS World
Foundation' or 'DPS World School' would cause infringement of the registered
trade mark 'DPS' of the plaintiff. The learned Single Judge was therefore of
the view that the plaintiff has made out a case for interim relief with regard
to the usage of the trade mark 'DPS' and that the balance of convenience is
also in favour of the plaintiff.
30.
Section 28 of the Trade Marks
Act, 1999 provides that the registration of a trade mark shall give to the
registered proprietor of the trade mark the exclusive right to the use of the
trade mark in relation to the goods or services in respect of which the trade
mark is registered and to obtain relief in respect of infringement of the trade
mark in the manner provided by the Act. Section 29 of the Trade Marks Act, 1999
further provides that a registered trade mark is infringed by a person who not
being a registered proprietor or a person using by way of permitted use, uses
in the course of trade a mark which is identical with or deceptively similar to
the trade mark in relation to goods or services in respect of which the trade
mark is
FAO(OS)(COMM)
No.21/2016 Page 18
of 22
registered. It may also be added that Section 27 expressly provides that
no person shall be entitled to institute any proceeding to prevent the
infringement of an unregistered trademark.
31.
Admittedly, the plaintiff got the
trade mark 'DPS' registered in accordance with the provisions of the Trade
Marks Act, 1999 and the Rules made thereunder. It is not disputed before us
that the said registration for the trade mark 'DPS' is under Class 16, Class
35, Class 42 and Class 36. The application of the plaintiff for registration of
the trade mark 'DPS' under Class 41 is still pending.
32.
So far as the trade mark/name
'Delhi Public School' is concerned, the plaintiff made application dated
08.03.2011 for its registration under Class 16, Class 36, Class 35, Class 41
and Class 42 and all the said applications are admittedly pending.
33. With
regard to logo conceived
and adopted by the plaintiff
in the year 1947, it is not in dispute that it is a registered trade
mark and that the same has been registered under Class 16, Class 35, Class 36,
Class 41 and Class 42.
34. However, the logo stated to be conceived and adopted by
the plaintiff in the year 1996-97 is not a registered trade mark and it
appears that the plaintiff has not even made an application for registration.
FAO(OS)(COMM)
No.21/2016 Page 19
of 22
35.
Coming to the trade name of the
defendant No.1 and the logo adopted by it, the trade name of the defendant No.1
'DPS World Foundation' itself includes the registered trade mark 'DPS' of the
plaintiff. So far as the logo adopted by it is concerned, we found that though
it cannot be held to be identical or deceptively similar to the registered logo
conceived and adopted by the plaintiff in the year 1947, the logo of the
defendant No.1 admittedly contains the words 'DPS World Foundation' which again
includes the registered trade mark 'DPS' of the plaintiff. That being the case,
we are of the view that the learned Single Judge is justified in holding that a
prima facie case has been made by the plaintiff that the trade name/mark of the
defendant No.1 and the logo would cause infringement under the provisions of
Section 29 of the Trade Marks Act.
36.
The contentions on behalf of the
appellants that no school of the plaintiff society has ever been called 'DPS'
across the country and that the same is nothing but acronym/abbreviation of
Delhi Public School being used for the purpose of convenience and that the
plaintiff enjoys no goodwill or reputation in the word 'DPS' and that no
evidence could be placed by the plaintiff to show that any damage has been
caused to its reputation by the trade mark/name adopted by the defendant No.1
which included the word 'DPS' are all untenable in view of the admitted fact
that 'DPS' is a registered trade mark of the plaintiff and thus entitling the
plaintiff to the statutory protection under the provisions of the Trade Marks
Act, 1999.
37.
The mere fact that the plaintiff
has no registration of the trade mark 'DPS' in Class 41 (education, providing
of training, entertainment, sporting and cultural activities) cannot be a bar
to the plaintiff's claim for statutory
FAO(OS)(COMM)
No.21/2016 Page 20
of 22
protection of its trade name/mark 'DPS' in view of the admitted fact
that the said trade mark has been registered in Class 16 (Paper, Cardboard,
Photographs, Stationery), Class 35 (Advertising, Business Management, Business
Administration, Office Functions), Class 36 (Insurance, Financial Affairs,
Monetary Affairs, Real Estate Affairs) and Class 42 (Food and Drink, Medical,
Industrial Research and Computer Programming). We also agree with the view of
the learned Single Judge that the effect of the Advisory stated to be used by
the defendant needs consideration in the main suit.
38.
We, therefore, do not find any
justifiable reason to interfere with the finding of the learned Single Judge
that the name of defendant No.1 'DPS World Foundation' and its logo which
included the plaintiff's registered trade mark 'DPS' resulted in infringement
under Section 29 of the Trade Marks Act, 1999.
39.
However, it may be added that for
the trade mark/name 'Delhi Public School', no registration has been granted to
the plaintiff till date. Moreover, as rightly contended by the appellants, it
contains separate words 'Delhi' 'Public' 'School' in respect of which the
plaintiff cannot seek exclusive rights for passing off purposes.
40.
It is also relevant to note that
though there was a specific prayer in the application to grant injunction in
respect of the trade mark/name 'Delhi Public School', the same has not been
granted by the learned Single Judge.
41.
Therefore, may be it is open to
the defendant No.1 to adopt the trade name/mark including the words 'Delhi'
'Public' 'School', however, the
FAO(OS)(COMM)
No.21/2016 Page 21
of 22
registered
trade mark/name 'DPS' of the plaintiff cannot be used in any manner whatsoever.
The
appeal is accordingly disposed of.
CHIEF JUSTICE
SANGITA DHINGRA SEHGAL, J
APRIL 10, 2017/pmc
FAO(OS)(COMM)
No.21/2016 Page 22
of 22
No comments:
Post a Comment