IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment
delivered on: 28.03.2019
+
CS(COMM)
698/2018
M/S NAV JAGRITI NIKETAN EDUCATION SOCIETY
.....Plaintiff
DELHI INTERNATIONAL SCHOOL & OTHERS
.....Defendants
Advocates who appeared in this
case:
For the Plaintiff : Mr S.K. Bansal, Mr Ajay Amitabh Suman, MrA. Chanchal Jha and Mr P.
Kishan.
For
theDefendants : Ms Romy Chacho for defendant no.1.
Mr Aman Sinha, Senior Advocate with Mr Sanjai Kumar
Pathak and Mr Parvesh Thakur
for defendant
No.2.
Mr Amit
Jain and Ms JubliMomalia for
defendant
no.3.
CORAM
HON’BLE MR JUSTICE VIBHU BAKHRU
JUDGMENT
VIBHU BAKHRU, J
IA No. 8139/2014
1.
The present application has been
filed by defendant no.2 – a Society registered under the Madhya Pradesh Societies
Registration Act, 1973 –
under
Order VII Rule 11 of the Code of Civil Procedure, 1908, inter alia,
praying that
the above-captioned suit
be rejected and/or
the plaint be
returned.
CS(Comm) 698/2018 Page 1 of 23
2.
The applicant has established a school at Indore
under the name of
―Delhi International School‖. The applicant asserts that it does not
carry on any activity in Delhi and, therefore, no part of the cause of action
hasarisen in Delhi. The applicant further claims that the above-captioned suit
is for infringement of certain trademarks which are unregistered and,
therefore, this Court would have no jurisdiction to entertain the present suit.
3.
The applicant further submits
that although the plaintiff has registered the trademarks ―DIS‖ and―DISKids‖ as
described in the plaint in respect of the books, publication, magazine, in its
favour, no evidence with regard to the use of the said trademarks is placed on
record. Further, the applicant is neither using the said trademarks nor intend
to do so in connection with its activities and, therefore, there is no cause of
action against the applicant for infringement of a trademark under the
Trademarks Act, 1999.
4.
The applicant also claims to be a
prior user of the tradename ―Delhi International School, Indore‖. Applicant
further claims that it had applied for registration of the said
tradename/trademarks prior to the applications filed by the plaintiff.
5.
During the course of arguments,
the applicant had also contended that the suit be dismissed as it is ex facie suffers from mis-joinder of
parties and causes of action. It was pointed out that defendant nos. 1, 2 and 3
are independent schools promoted by separate societies/trusts which have no
connection with each-other. Each of the said defendants has established a
school under the name of Delhi International School and although there is
CS(Comm) 698/2018 Page 2 of 23
similarity in the name of the school, there is no relation or connection
between them.
6.
The plaintiff alleges that the
defendants are passing off their services and have infringed the plaintiff’s
trademark. Although trade names used are similar, it is apparent that causes of
action are entirely different and the defence available to each of the
defendants are also not necessarily common.
7.
It is well settled that the
question whether a Court would have the jurisdiction to entertain a suit would
have to be on demurrer, that is,
solely on the basis of the plaint and the documents filed by the plaintiff and
without examining the defence raised by the defendants.
8.
It is, thus, necessary to refer
to the plaint, to address the question whether the plaint discloses the cause
of action, which – either in part or in whole – has arisen within the
territorial limits of this court.
9.
The plaintiff has filed the
above-captioned suit for permanent injunction to restrain the defendants from
infringement of its trademarks for passing off and for infringement of
copyright.
10.
The plaintiff is a society which
was formed in the year 1997 with the object to establishing progressive schools
and educational institutions in and outside Delhi. The plaintiff avers that in
the year 2003, it started using
the trademark/ trade name, ―Delhi International School‖ as well as ―DIS
Logo‖ in relation to the said schools established by the plaintiff and
educational goods and services provided by the plaintiff.
CS(Comm) 698/2018 Page 3 of 23
11.
In paragraph 4 of the plaint, the
plaintiff has referred to various trademarks which are either registered in its
name and/or are pending registration with the trademark authorities. Three of
the four trademarks that are claimed to be registered areword marks, namely (i)
―DIS‖ under registration No. 1208890 in Class-16; (ii) ―DIS KIDS‖ under registration
no. 1208889 in Class-16; and (iii) ―DIS‖ under registration no. 1337019 in
Class-41. In addition, the trademark ―Delhi International Schools (Label)‖
is also
registered under registration No. 1288909 in Class-41.
12.
The plaintiff has,interalia, based its case on
infringement and passing off three trademarks‖: (i) ―Delhi International
School‖ which is a word mark and is referred to by the plaintiff as ―Delhi
International
School‖; (ii) ―DIS Logo‖;and (iii) ―Delhi International School (Label)‖ which
is registered under registration no. 1288909 and is reproduced above. Although
this is also referred to by the plaintiff as ―DIS Logo‖, to avoid any
confusion, this mark is hereafter referred as ―Delhi International School
(Label)‖.
13.
The trademark ―Delhi International
School (Label)‖ and "DIS logo" are reproduced below:-
14.
The plaintiff also averred that
it has a copyright in the artistic works relating to DIS Logo and has taken
steps for obtaining that copyright registration in relation to the said word
mark. The plaintiff has averred that
CS(Comm) 698/2018 Page 4 of 23
it uses the domain to be www.dis.ac.in. The plaintiff has further
averred that it spends large sum of money in advertisement and promoting its
school, goods and services under its trademark, ―Delhi International School‖.
15.
Defendantno.1 is described as
Delhi International School, P.O. Edayur, Valanchery, District-Malappuram and
defendant no.3 is Delhi International School, Chandigarh Road, Near Chabbewal,
Hoshiarpur, Punjab. The plaintiff has claimed that defendants have dishonestly
adopted the trademark ―Delhi International Schools‖ and ―DIS Logo‖having
artistic features, get up layout, lettering style, in relation to impugned
educational goods and educational services. Trademarks used by defendant no.3,
defendant no. 1 and defendant no.2 are reproduced in the plaint and are set out
below:-
16.
The plaintiff has averred that
the said trademarks are deceptively similar to the trademarks /labels/ trade
names ―DIS International School‖
―DIS Logo‖ and ―Delhi International School (Label)‖ as used by the plaintiff.
The plaintiff has further averred that defendants are also using the domain
names and email IDs as set out in paragraph 9 of the plaint.
CS(Comm) 698/2018 Page 5 of 23
17.
The plaintiff has also produced
some screen shots of the respective website of the defendant, which use the
name ―Delhi International School‖. The plaintiff claims that the website of
defendant no.3and defendant no.2 also indicate the use to the letters ―DIS‖.
18.
The plaintiff hasarticulated its
grievance in paragraph 35 of the plaint, which is reproduced below:-
―35. That by the impugned adoption and user of the
impugnedtrademark/label/domain name/e-mail ids/logo
―Delhi InternationalSchool‖& DIS Logo the defendants are:
(a). Infringing the registered trademark of the
plaintiff under no.1208890 in class 16, 1208889 in class 16, 1337019 in class
41 andunder no. 1288909 in class 41.
(b).
Passing off and others to pass off the impugned school,
educational goods and educational services as that
of the plaintiff. Thedefendants are thus thereby violating the plaintiff
common law rights intheplaintiff said
trademark/label/logo/trade name/domain name.
(c). Infringing the plaintiffs Copyright in the
saidtrademark/label/trade name/logo/domain name by inter
alia using,publishing, reproducing the impugned
trademark/label and DIS Logo inplaintiffs common law rights therein.
(d). Not only that the defendants are further
guilty of falsification andunfair and unethical trade practices.
19.
The plaintiff avers that it is
aggrieved by the activates of the defendants, which is described by the plaintiff
as ―impugned activities‖.
20.
In paragraph 39 of the plaint,
the plaintiff has claimed that this Court has the jurisdiction to adjudicate
the present suit. The said paragraph reproduced below:-
CS(Comm) 698/2018 Page 6 of 23
―39. That the Hon'ble Court has the territorial jurisdiction
to try andadjudicate the present suit. The defendants are committing the
impugnedacts within the
jurisdiction of this Hon'ble Court by
conducting,soliciting, conducting their impugned
activity under the impugneddomain
name/trademark/trade name/logo in relation to impugned school,educational goods
and impugned services in Delhi besides other parts ofthe country. The impugned
domain names of the defendants areinteractive in nature and are also accessible
in Delhi, through which thedefendants are carrying out their afore mentioned
impugned activities.The impugned activities of the infringement and passing off
are alsobeing committed on the parts of the defendants within the
territorialjurisdiction ofthis Hon'ble Court. The plaintiff has tremendous
goodwilland reputation in its said trade mark/label/trade name/logo in
Delhiwhich is being tarnished by defendant impugned activities of thedefendants
in Delhi. The plaintiffs said proprietary rights are beingprejudicially
affected in Delhi due to the defendants impugned activities.The cause ofaction
for filing the instant suit, either in whole or in part arose within the
territorial jurisdiction of this Hon'ble Court. The plaintiff is based in Delhi
and is carrying on its said school, educationalgoods and services under the
said trademark/trade name/label/logo inDelhi. In view of the above it is
submitted that this Hon'ble Court, assuch, has the territorial jurisdiction to
try and adjudicate the present suitby virtue of Section 62 (2) ofthe Indian
Copyright Act 1957 and Section134 (2) ofthe Trade Marks Act 1999.‖
21.
It is apparent from the reading
of the aforementioned paragraph that the plaintiff claims that this Court has
the jurisdiction to try the suit on the basis that (i) defendants are
conducting their activities under the domain name in Delhi besides other part
of the country; (ii) that domain names of the defendants are interactive and
are also accessible in Delhi; (iii) that the
CS(Comm) 698/2018 Page 7 of 23
plaintiff has tremendous goodwill and reputation related to the
trademarks in Delhi which is being adversely affected by the activities of the
defendants in Delhi; and (iv) that the plaintiff is based in Delhi and is
running an educational institution in Delhi, therefore, this Court would have
territorial jurisdiction by virtue of Section 62(2) of the Indian Copyright
Act, 1957 and Section 134(2) of the Trademarks Act, 1999.
22.
Mr Bansal, learned counsel
appearing for the plaintiff submitted that the plaintiff had adopted the
tradename ―Delhi International School‖ in 2003 and has also registered the
trademark ―Delhi International School (Label)‖ in addition to the word marks
DIS and DIS Kids. He submitted that the defendants are not prior user of the
said trademarks. He further contended that the plaintiff was entitled to
maintain the action of passing off against the defendants.
23.
In regard to the contention that
three defendants are separate and the suit is ex facie bad for mis-joinder of parties, Mr Bansal sought to
contend that the cause of action was regard to its trade mark and was thus the
same. He also contended that that would misjoinder of parties would not be a
ground for dismissal of the plaint. He referred to an earlier decision of this
Court in AruneshPunetha vs. Boston Scientific Corporation:
MANU/DE/2980/2005 and on
the strengthof the said decision, contended that in cases of mis-joinder of
causes of action of the parties, the Court could exercise its power under Order
II Rule 6 of the CPC and direct that separate trials be conducted in respect of
each causes of action. Mr Bansal was also pointedly asked to refer to the
plaint to point out any of the activities which the plaintiff claims that the
defendants have conducted in Delhi, and he fairly conceded that the plaint did
not specifically disclose
CS(Comm) 698/2018 Page 8 of 23
any such activity except that the domain names of the defendants
wereclaimed to be interactive, and thus, it is claimed that the defendants were
also conducting their activities in Delhi.
24.
Mr Bansal also further stated
that the plaintiff was entitled to maintain the infringement suit on the basis
of the ―Delhi International School (Label)‖ which was a registered trademark.
He submitted that the
words ―Delhi International School‖ were a prominent part of the said
label and the use of the trademark/trade name ―Delhi International School‖ by
the other defendants would also amount to infringement of the said trademark.
25.
Mr Sinha, learned senior counsel
appearing for defendant no. 2 contended that the suit was essentially for
infringement of trademarks, however, the plaint did not disclose that any other
registered trademark of the plaintiff was infringed in any manner. He further
stated that the said suit was ex facie
bad on account of mis-joinder of parties and, thus, was liable to be dismissed.
Reasoning
and Conclusion
26.
Before proceeding further, it
would be relevant to refer to Order I Rule 3 and Order II Rule 3 of the CPC.
The same are set out below:-
“3. Who may be joined as defendants
All
persons may be joined in one suit as defendants where--
(a)
any right to relief in respect
of, or arising out of, the same act or transaction or series of acts or
transactions is alleged to exist against such persons, whether jointly,
severally or in the alternative; and
CS(Comm) 698/2018 Page 9 of 23
(b)
if separate suits were brought
against such persons, any common question of law or fact would arise.
3. Joinder of causes of action
(1)
Save as otherwise provided, a
plaintiff may unite in the same suit several causes of action against the same
defendant, or the same defendants jointly; and any plaintiffs having causes of
action in which they are jointly interested against the same defendant or the
same defendants jointly may unite such causes of action in the same suit.
(2)
Where causes of action are
united, the jurisdiction of the Court as regards the suit shall depend on the
amount or value of the aggregate subject-matters at the date of instituting the
suit.‖
27.
It is apparent from the plain
reading of Order I Rule 3 of the CPC that all persons may be joined in one suit
as defendants where the right to relief arises out of the same acts or
transactions which are alleged to exist against such persons and where if
separate suits were brought, common question of fact or law would arise.
Plainly, in the present case, the petitioner has separate causes of action
against each of the defendants and
the
plaintiff’s relief does not arise from the same set of transactions or
series of
transactions. Further, common question of fact and law do not
arise as
the claims made by the plaintiff rest on each of the defendants
using names or trademarks, which are alleged to be infringing the
petitioner’s
trademark. Further, the allegation of passing off would also
have to
be considered in the context of facts relating to the defendants
separately.
28.
In Iswar Bhai C. Patel &Bachu Bhai Patel v.
Harihar Behera and
Anr.: AIR
1999 SC 1341, the Court had noted that misjoinder can be of
CS(Comm) 698/2018 Page 10 of 23
three types and a suit would be bad in misjoinder ―if different causes of action
are joined separately against different defendants‖. In the present case, there can be little doubt that
the suit filed by the plaintiff is bad for misjoinder.
29.
In PremLalaNahata&Anr. v. Chandi
Prasad Sikaria: (2007) 2 SCC 551, the Supreme Court had
considered the issue regarding misjoinder. The relevant extract of the
said decision are set out below:-
―11. Order 2 deals with frame of suits. It provides
that every suit shall be framed as far as practicable so as to afford grounds
for final decision upon the subjects in dispute and to prevent further
litigation concerning them. It is also insisted that every suit shall include
the whole of the claim that a plaintiff is entitled to make in respect of its
subject-matter. There is a further provision that the plaintiff may unite in
the same suit several causes of action against the same defendant and the
plaintiffs having causes of action in which they are jointly interested against
the same defendant, may unite such causes of action in the same suit. It
provides that objection on the ground of misjoinder of causes of action should
be taken at the earliest opportunity. It also enables the court, where it
appears to the court that the joinder of causes of action may embarrass or
delay the trial or otherwise cause inconvenience, to order separate trials or
to make such other order as may be expedient in the interests of justice.
12. Thus, in a case where a plaint suffers from the defect of misjoinder of
parties or misjoinder of causes of action either in terms of Order I Rule 1 and
Order I Rule 3 on the one hand, or Order II Rule 3 on the other, the Code
itself indicates that the perceived defect does not make the suit one barred by
law or liable to rejection. This is clear from Rules 3A, 4 and 5 of Order I of
the Code; and this is emphasised by Rule 9 of Order I of the Code
CS(Comm) 698/2018 Page 11 of 23
which provides that no suit shall be defeated by
reason of non-joinder or misjoinder of parties and the court may in either case
deal with the matter in controversy so far as it regards the rights and
interests of the parties actually before it. This is further emphasised by Rule
10 of Order I which enables the court in appropriate circumstances to
substitute or add any person as a plaintiff in a suit....
xxxxxxxxxxxxxxxx
15. It is well understood that procedure is the handmaid of justice and not
its mistress. The Scheme of Order I and Order II clearly shows that the
prescriptions therein are in the realm of procedure and not in the realm of
substantive law or rights.That the Code considers objections regarding the
frame of suit or joinder of parties only as procedural, is further clear from
Section
99
of the Code which specifically
provides that no decree shall be reversed in appeal on account of any
misjoinder of parties or causes of action or non-joinder of parties unless a
Court finds that the non-joinder is of a necessary party. This is on the same
principle as of Section 21 of the Code which shows that even an objection to
territorial jurisdiction of the Court in which the suit is instituted, could
not be raised successfully for the first time in an appeal against the decree
unless the appellant is also able to show consequent failure of justice. The
Suits Valuation Act similarly indicates that absence of pecuniary jurisdiction
in the Court that tried the cause without objection also stands on the same
footing. The amendment to Section 24 of the Code in the year 1976 confers power
on the Court even to transfer a suit filed in a Court having no jurisdiction,
to a Court having jurisdiction to try it. In the context of these provisions
with particular reference to the Rules in Order I and Order II of the Code, it
is clear that an objection of misjoinder of plaintiffs or misjoinder of causes
of action, is a procedural objection and it is not a bar to the entertaining of
the suit or the trial and final disposal of the suit. The Court has the liberty
even to
CS(Comm) 698/2018 Page 12 of 23
treat the plaint in such a case as relating to two suits and try and
dispose them off on that basis.
16.
Order VII Rule 11(d) speaks of
the suit being "barred by any law". According to the Black's Law
Dictionary, bar means, a plea arresting a law suit or legal claim. It means as
a verb, to prevent by legal objection. According to Ramanatha Aiyar's Law
Lexicon, 'bar' is that which obstructs entry or egress; to exclude from
consideration. It is therefore necessary to see whether a suit bad for
misjoinder of parties or of causes of action is excluded from consideration or
is barred entry for adjudication. As pointed out already, on the scheme of the
Code, there is no such prohibition or a prevention at the entry of a suit
defective for misjoinder of parties or of causes of action. The court is still
competent to try and decide the suit,though the court may also be competent to
tell the plaintiffs either to elect to proceed at the instance of one of the
plaintiffs or to proceed with one of the causes of action. On the scheme of the
Code of Civil Procedure, it cannot therefore be held that a suit barred for
misjoinder of parties or of causes of action is barred by a law, here the Code.
This may be contrasted with the failure to comply with Section 80 of the Code.
In a case not covered by Sub-section (2) of Section 80, it is provided in
Sub-section
(1) of Section 80 that "no suit shall be
instituted". This is therefore a bar to the institution of the suit and
that is why courts have taken the view that in a case where notice under
Section 80 of the Code is mandatory, if the averments in the plaint indicate
the absence of a notice, the plaint is liable to be rejected. For, in that
case, the entertaining of the suit would be barred by Section 80 of the Code.
The same would be the position when a suit hit by Section 86 of the Code is
filed without pleading the obtaining of consent of the Central Government if
the suit is not for rent from a tenant. Not only are there no words of such
import in Order I or Order II but on the other hand, Rule 9 of Order I, Rules 1
and 3 of Order I, and Rules 3 and 6 of Order II clearly suggest that it is open
to the court to proceed with the suit
CS(Comm) 698/2018 Page 13 of 23
notwithstanding the defect of misjoinder of parties
or misjoinder of causes of action and if the suit results in a decision, the
same could not be set aside in appeal, merely on that ground, in view of
Section 99 of the Code, unless the conditions of Section 99 are satisfied.
Therefore, by no stretch of imagination, can a suit bad for misjoinder of
parties or misjoinder of causes of action be held to be barred by any law
within the meaning of Order VII Rule 11(d) of the Code.
17.
Thus, when one considers Order
VII Rule 11 of the Code with particular reference to Clause (d), it is
difficult to say that a suit which is bad for misjoinder of parties or
misjoinder of causes of action, is a suit barred by any law. A procedural
objection to the impleading of parties or to the joinder of causes of action or
the frame of the suit, could be successfully urged only as a procedural
objection which may enable theCourt either to permit the continuance of the
suit as it is or to direct the plaintiff or plaintiffs to elect to proceed with
a part of the suit or even to try the causes of action joined in the suit as
separate suits.‖
30.
It is apparent from the above
that the Supreme Court did not accept the contention that a suit which is bad
for misjoinder of parties or misjoinder of causes of action would be barred by
any law for the purposes of Order VII Rule 11 of the Code of Civil Procedure,
1908. It was clarified that in such a situation, the Court has a discretionary
power to order separate trials of the claims in respect of two or more causes
of action or for confining the suit to only some of the causes of action and
excluding others or by ordering the plaintiff or the plaintiffs to elect which
cause of action is to be proceeded with.
31.
It was contended on behalf of the
defendants that this Court would have no jurisdiction to try the cause of
action in relation to passing off, as
CS(Comm) 698/2018 Page 14 of 23
no part of that cause of action has arisen in the territorial
jurisdiction of this Court. The defendants run their respective schools in
different parts of the country and none of them have any persons in National Capital
Territory of Delhi. The plaintiff has, essentially, claimed that the causes of
action in regard to passing off is arise in Delhi on account of the allegation
that the defendants have an interactive domain names through which the
defendants are passing off within the territorial jurisdiction of this Court.
The claim may be without merit. However, it is settled law that the question of
jurisdiction must be decided on a demurer. In Exphar SA and Another
v. Eupharma Laboratories Ltd. and Another: (2004) 3 SCC 688,
the
Supreme Court had observed as under had observed as under:-
―when an objection to jurisdiction is raised by way
of demurrer and not at the trial, the objection must proceed on the basis that
the facts as pleaded by the initiator of the impugned proceedings are true. The
submission in order to succeed must show that granted those facts the court
does not have jurisdiction as a matter of law. In rejecting a plaint on the
ground of jurisdiction, the Division Bench should have taken the allegations
contained in the plaint to be correct.‖
32.
In view of the above, although
this Court can appreciate the averments made in the plaint as well as the
defence raised by the defendants for forming the prima facie view, it would not be apposite to dismiss the plaint
under Order VII Rule 11 of the CPC as being barred by law.
33.
The question whether in the
present case, separate trials are required to be conducted under Order III Rule
6 of the CPC or whether the plaintiff ought to be called upon to restrict the plaint
to a single cause of action or to pass any other orders on account of
misjoinder, is left open.
CS(Comm) 698/2018 Page 15 of 23
34.
In view of the above, the present application is
dismissed.
I.A. No. 8137/2014
35.
This is an application filed by
defendant no.2, inter alia, praying
that the ex parte order dated
17.12.2013 passed in I.A. 20471/2013 be set aside.
36.
By the order dated 17.12.2013, this Court had
passed an ad interim
order restraining the defendants from using the name ―Delhi International
School‖ and ―DIS‖ logo and the domain name which is deceptively similar to the
plaintiff’s domain name.
37.
As noticed above, the applicant (defendant no.2)
had established a
school in Indore under the name of ―Delhi International School‖. It is stated
that the applicant had applied for conversion of agricultural land for being
used for educational purposes under the MP Land Revenue Act, 1959 and the same
was allowed by the order dated 19.12.2003. It is stated that thereafter, the
construction work was carried out and the applicant commenced running the
school under the name of ―Delhi International School‖, Indore in the year
2004.It is stated that provisional affiliation was granted to the applicant on
02.02.2005 and there are 2,178 students studyingfrom nursery to Class twelve in
the school run by the applicant. The said school is also affiliated with the
Central Board of Secondary Education. The applicant had also applied for
registration of its Trade mark ―Delhi International School‖ and the label with
the name ―Delhi International School‖ as its Tradename on 24.05.2004.
38.
It is apparent from the averments
that defendant no.1 has been running its school since several years prior to
the plaintiff instituting the present plaint. The plaintiff is the registered
proprietor of the trademark
CS(Comm) 698/2018 Page 16 of 23
―Delhi International School‖ Label and ―DIS‖ Logo; however, as noticed above,
it does not have any registration with regard to the name ―Delhi International
School‖ as a word mark.
39.
A plain reading of the order
dated 17.12.2013 indicates that the said order was passed on an assumption that
the petitioner was a registered proprietor of the name ―Delhi International
School‖. It is pointed out by the
defendants that the said assumption is incorrect as the plaintiff is not
the registered proprietor of the said name.
40.
It is also relevant to note that
the plaintiff has filed a consolidated suit by joining several causes of
action. The plaintiff alleges that infringement of its trademark by the three
defendants and had also alleged
that the defendants are passing off. Insofar as the plaintiff’s claim regarding
infringement of trademark is concerned, it is seen that the plaintiff is not
the registered proprietor of the name ―Delhi International School‖.
41.
It is difficult to accept that any of its
registered trademarks have
been
infringed by the use of the name ―Delhi International School‖.
42.
Mr Bansal, learned counsel for the plaintiff had
contended that the
words ―Delhi International School‖ are a prominent part of its label
and, therefore, use of the said name would also amount to infringement of its
trademark. Prima facie, this Court is
not inclined to accept the aforesaid contention. The plain visual of the logo
indicates that the words ―Delhi International School‖ is not the prominent part
of the said logo.The logo is a complex one with several features such as an
open book, olive leaves, crown and a sash bearing the name ―Delhi International
School‖.
CS(Comm) 698/2018 Page 17 of 23
43.
It would be relevant to refer to
Section 17 of the Trade Marks Act, 1999, which is set out below:-
―17.
Effect of registration of parts of a mark.—
(1)
When a trade mark consists of
several matters, its registration shall confer on the proprietor exclusive
right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything
contained in sub-section
(1), when
a trade mark—
(a) contains
any part—
(i)
which is not the subject of a
separate application by the proprietor for registration as a trade mark; or
(ii)
which is not separately
registered by the proprietor as a trade mark; or
(b) contains
any matter which is common to the trade or
is otherwise of a non-distinctive character, the
registration thereof shall not confer any exclusive right in the matter forming
only a part of the whole of the trade mark so registered.‖
44.
It is apparent from the plain
reading of Section 17(1) of the Trade Marks Act, 1999 that a registration of a
trademark would confer on the proprietor exclusive right to use the trademark
as a whole. Thus, the plaintiff can claim rights to use the Delhi International
School label as well
as the DIS logo but cannot claim the rights to use the words ―Delhi
International School‖ as its registered mark.
45.
In addition to the above, the
present suit is bad for misjoinder of defendants as well as the causes of
action. The plaintiff has also premised the present suit on an allegation of
passing off, however, there is no material placed on record, which would
indicate that any of the defendants
CS(Comm) 698/2018 Page 18 of 23
have succeeded in deceiving any person to believing that they are
connected with the plaintiff or the schools run by them are affiliated with the
plaintiff. The plaintiff has merely made a bald statement that the defendants
are soliciting and conducting their activities in Delhi. This claim is also prima facie unsustainable. It is also
relevant to note that a plain reading of the plaint indicates that the
plaintiff has rested its case of passing off only on the basis that the domain
names/website of defendants are interactive.
46.
The nature of interaction, if
any, that the websites offer would be material to determine the question of
passing off within the territorial jurisdiction of this court. In Banyan
Tree Holding (P) Limited v A Murali Krishna Reddy and Anr: 2010(42)
PTC 361 (Del),the Division Bench of this Court has highlighted that
extent of interactive site was also important and had observed as under:
―it is not enough merely to show that the website
hosted by the Defendant is an interactive one. It would have to be shown that
the nature of the activity indulged in by the defendant by the use of the
website was with an intention to conclude a commercial transaction with the
website user.‖
47.
In Cyber Sell Inc, an Arizona
Corporation v Cyber sell Inc. a Florida Corporation: 130 F3d 414(1997),a
case had arisen where the Arizona Corporation had put its
commercial services on advertisement
over the internet under the service mark ―Cybercell‖. Consequently, a Florida
Corporation having the same name as above brought an infringement action
against Arizona Corporation. TheUnited States Court of appealsconsidered the
aforesaid issue and observed as under:
CS(Comm) 698/2018 Page 19 of 23
―Here, Cybersell FL has conducted no commercial
activity over the Internet in Arizona. All that it did was post an essentially
passive home page on the web, using the name "CyberSell," which
Cybersell AZ was in the process of registering as a federal service mark. While
there is no question that anyone, anywhere could access that home page and
thereby learn about the services offered, we cannot see how from that fact
alone it can be inferred that Cybersell FL deliberately directed its
merchandising efforts towards Arizona residents.
Cybersell FL did nothing to encourage people in
Arizona to access its site, and there is no evidence that any part of its
business (let alone a continuous part of its business) was sought or achieved
in Arizona. To the contrary, it appears to be an operation where business was
primarily generated by the personal contacts of one of its founders. While
those contacts are not entirely local, they aren‟t in Arizona either. No
Arizonan except for Cybersell AZ "hit" Cybersell FL‟s web site. There
is no evidence that any Arizona resident signed up for Cybersell FL’s web
construction services. It entered into no contracts in Arizona, made no sales
in Arizona, received no telephone calls from Arizona, earned no income from
Arizona, and sent no messages over the Internet to Arizona.The only message it
received over the Internet from Arizona was from Cybersell AZ. Cybersell FL did
not have an "800" number, let alone a toll-free number that also used
the "Cybersell" name. The interactivity of its web page is limited to
receiving the browser's name and address and an indication of interest -
signing up for the service is not an option, nor did anyone from Arizona do so.
No money changed hands on the Internet from (or through) Arizona. In short,
Cybersell FL has done no act and has consummated no transaction, nor has it
performed any act by which it purposefully availed itself of the privilege of
conducting activities, in Arizona, thereby invoking the benefits and
protections of Arizona law.
We therefore hold that Cybersell FL’s contacts are
insufficient to establish "purposeful availment"
CS(Comm) 698/2018 Page 20 of 23
CybersellAZ has thus failed to satisfy the first
prong of our three-part test for specific jurisdiction. We decline to go
further solely on the footing that Cybersell AZ has alleged trademark
infringement over the Internet by Cybersell FL’s use of the registered name
"Cybersell" on an essentially passive web page advertisement.
Otherwise, every complaint arising out of alleged trademark infringement on the
Internet would automatically result in personal jurisdiction wherever the
plaintiff's principal place of business is located. That would not comport with
traditional notions of what qualifies as purposeful activity invoking the
benefits and protections of the forum state. See Peterson v. Kennedy, 771 F.2d
1244, 1262 (9th Cir.1985 (series of phone calls and letters to California
physician regarding plaintiff's injuries insufficient to satisfy first prong of
test).‖
48.
In the aforesaid case, a three
pronged test was adopted by the Court to decide whether a district court may
exercise specific jurisdiction over a non-resident defendant:
―(i) The non-resident defendant must do some act or
consummate some transaction with the forum or perform some act by which he
purposefully avails himself of the privilege of conducting activities in the
forum, thereby invoking the benefits and protections;
(ii)
The claim must be one which
arises out of the results from the defendants forum-related activities; and
(iii) exercise
of jurisdiction must be reasonable.‖
49.
In view of the above, this Court is, prima facie,of the view that the
defendants’
domain name/website, even if it is found to be interactive in
some
aspects, would not give rise to an action of passing off within the
territorial
limits of this Court as it is difficult to accept that the students
living in
Delhi would want to seek admissions in schools runs by the
CS(Comm) 698/2018 Page 21 of 23
defendants in other parts of the country. This Court is prima facie of the view that the
averments have been affirmed in the plaint only with the purpose of asserting
that this Court has territorial jurisdiction to entertain the suit.
50.
InM/s Allied Blenders and
Distilleries Pvt. Ltd v. Prag Distilleries Pvt. Ltd. &Anr.:FAO (OS)
No.49/2017,decided on 01.03.2017, the Division Bench of this
Court had reiterated the principle that the question of jurisdiction must be
considered on a demurer and accepting
all averments made in the plaint be correct. However, the Division Bench had
also observed that the Court could appreciate the averments for the purposes of
forming a prima facie view. The
relevant extract of the judgment is set out as under:
―12. It must be clarified that the considerations
with regard to territorial jurisdiction in the context of Order VII Rule 10 of
the Code are entirely different from those in an application under Order XXXIX
Rules 1 & 2 of the Code or when a finding is to be returned on the issue of
territorial jurisdiction. Under Order VII Rule 10 of the Code, only the
averments in the plaint are to be seen and that, too, on the assumption that
they are correct. While considering an application under Order XXXIX Rules 1
&
2 of the Code, not only the
averments in the plaint but also other material including the defendant’s reply
and written statement are to be seen. For establishing the existence of a prime
facie case (a condition precedent for an ad interim injunction order), the
plaintiff would obviously have to demonstrate, albeit at a prima facie level,
that the apprehension was reasonable and credible. Here, a mere averment in the
plaint would not do. And, the assumption that the averments in the plaint are
correct would alsonot be available. Where the issue of jurisdiction is to be
decided at the trial, the standard of proof would be even higher.‖
CS(Comm) 698/2018 Page 22 of 23
51.
In view of the above, the application is allowed
and the ad interim
order
dated 17.12.2013 is vacated.
52.
Accordingly, I.A. 1495/2014 filed
by defendant no.3 under Order XXXIX Rule 4 of the CPC seeking vacation of the
interim stay granted by the order dated 17.12.2013 does not survive; and the
plaintiff’s application (I.A. 20471/2014), filed under Order XXXIX Rule 1 and 2
read with Section 151 of the CPC seeking interim injunction against the
defendants, also stands disposed of in view of the above.
CS (COMM) 698/2018
53.
List on 04.04.2019.
VIBHU BAKHRU, J
MARCH 28, 2019
RK
CS(Comm) 698/2018 Page 23 of 23
