w w w . L a w y e r S e r v i c e s . i n



The British School Society v/s The British International School


Company & Directors' Information:- BRITISH INDIA CORPORATION LIMITED [Active] CIN = U17117UP1920GOI000162

Company & Directors' Information:- K N INTERNATIONAL LIMITED [Active] CIN = U45201UP2002PLC026841

Company & Directors' Information:- D B H INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1950PTC057209

Company & Directors' Information:- V AND S INTERNATIONAL PVT LTD [Active] CIN = U74899DL1992PTC049964

Company & Directors' Information:- S S A INTERNATIONAL LTD [Active] CIN = U15122DL1995PLC068186

Company & Directors' Information:- A T N INTERNATIONAL LIMITED [Active] CIN = L65993WB1983PLC080793

Company & Directors' Information:- D D INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909PB1995PTC016929

Company & Directors' Information:- T K INTERNATIONAL LIMITED [Active] CIN = U55101OR1982PLC001092

Company & Directors' Information:- N R INTERNATIONAL LIMITED [Active] CIN = L74999WB1991PLC051738

Company & Directors' Information:- K J INTERNATIONAL LIMITED [Active] CIN = L15142PB1993PLC011274

Company & Directors' Information:- A K S INTERNATIONAL LIMITED [Active] CIN = U74899DL1996PLC076327

Company & Directors' Information:- S P INTERNATIONAL PRIVATE LIMITED [Active] CIN = U70100WB1994PTC063228

Company & Directors' Information:- B. K. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74999DL2006PTC157013

Company & Directors' Information:- R S C INTERNATIONAL LIMITED [Active] CIN = L17124RJ1993PLC007136

Company & Directors' Information:- J C INTERNATIONAL LIMITED [Active] CIN = U51109WB1999PLC089037

Company & Directors' Information:- M T L INTERNATIONAL PRIVATE LIMITED [Amalgamated] CIN = U24219UP2001PTC025965

Company & Directors' Information:- T C N S INTERNATIONAL PRIVATE LIMITED [Amalgamated] CIN = U51311DL1996PTC080096

Company & Directors' Information:- K V S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U18101DL2003PTC120770

Company & Directors' Information:- G N INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909DL2001PTC110766

Company & Directors' Information:- S H A M INTERNATIONAL PRIVATE LIMITED [Active] CIN = U45200MH1994PTC079867

Company & Directors' Information:- M K INTERNATIONAL LIMITED [Active] CIN = U51909DL1996PLC083430

Company & Directors' Information:- V. G. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51101DL2007PTC162540

Company & Directors' Information:- D R INTERNATIONAL PRIVATE LIMITED [Active] CIN = U24132DL1996PTC079867

Company & Directors' Information:- R H INTERNATIONAL LIMITED [Active] CIN = U72900DL2007PLC159452

Company & Directors' Information:- G & G INTERNATIONAL PRIVATE LIMITED [Active] CIN = U17120DL2012PTC234047

Company & Directors' Information:- A & D INTERNATIONAL PRIVATE LIMITED [Active] CIN = U36109RJ2007PTC024176

Company & Directors' Information:- H G E INTERNATIONAL PRIVATE LIMITED [Active] CIN = U19115UP2011PTC045112

Company & Directors' Information:- K A I INTERNATIONAL PRIVATE LIMITED [Active] CIN = U13100OR2007PTC009647

Company & Directors' Information:- C G INTERNATIONAL PRIVATE LIMITED [Active] CIN = U99999MH1996PTC097577

Company & Directors' Information:- K C INTERNATIONAL LIMITED [Active] CIN = U74899DL1994PLC060402

Company & Directors' Information:- M P INTERNATIONAL PRIVATE LIMITED [Active] CIN = U29130MH1997PTC107943

Company & Directors' Information:- A S INTERNATIONAL LIMITED [Strike Off] CIN = U74899DL1993PLC056158

Company & Directors' Information:- H C S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U15312PB2012PTC036219

Company & Directors' Information:- L N G INTERNATIONAL LIMITED [Active] CIN = U51909DL1993PLC053438

Company & Directors' Information:- S. D. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74900UP2008PTC036047

Company & Directors' Information:- S AND I INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909DL1995PTC072210

Company & Directors' Information:- L T INTERNATIONAL LIMITED [Active] CIN = U74899DL1999PLC097892

Company & Directors' Information:- A. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51102GJ2008PTC053840

Company & Directors' Information:- S J M INTERNATIONAL LIMITED [Active] CIN = U52110DL1987PLC028571

Company & Directors' Information:- S B S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U18101DL1997PTC085878

Company & Directors' Information:- R. A. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51225DL2008PTC177405

Company & Directors' Information:- B G INTERNATIONAL PRIVATE LIMITED [Active] CIN = U50300PB2014PTC038889

Company & Directors' Information:- S F INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74999PB2000PTC023654

Company & Directors' Information:- R T S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U63022DL1997PTC089328

Company & Directors' Information:- I K INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1995PTC066267

Company & Directors' Information:- C K INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1991PTC045625

Company & Directors' Information:- L A INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909PB2010PTC033683

Company & Directors' Information:- H R V INTERNATIONAL PRIVATE LIMITED [Amalgamated] CIN = U74899UP1993PTC057665

Company & Directors' Information:- K P INTERNATIONAL PRIVATE LIMITED [Active] CIN = U24110GJ2007PTC050026

Company & Directors' Information:- V S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U85100MH1997PTC109647

Company & Directors' Information:- N N INTERNATIONAL PRIVATE LIMITED [Active] CIN = U01111DL1999PTC099094

Company & Directors' Information:- S R V INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74140DL2012PTC243060

Company & Directors' Information:- V. S. Y. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74999UP2008PTC035521

Company & Directors' Information:- U M I INTERNATIONAL LTD [Strike Off] CIN = U51909WB1990PLC049671

Company & Directors' Information:- A. R. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51900MH2010PTC228539

Company & Directors' Information:- B R INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1993PTC055562

Company & Directors' Information:- M J INTERNATIONAL PRIVATE LIMITED [Amalgamated] CIN = U74899DL1982PTC013231

Company & Directors' Information:- D N INTERNATIONAL LIMITED [Active] CIN = U36911TN1996PLC034205

Company & Directors' Information:- M. H. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U70102DL2007PTC164267

Company & Directors' Information:- H AND Z INTERNATIONAL LIMITED [Active] CIN = U10102AS1995PLC004509

Company & Directors' Information:- M G M INTERNATIONAL PVT LTD [Active] CIN = U74899DL1982PTC013580

Company & Directors' Information:- J J INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51109DL1992PTC047657

Company & Directors' Information:- H D INTERNATIONAL LIMITED [Active] CIN = U74899DL1994PLC060720

Company & Directors' Information:- K. A. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51101UP2012PTC049338

Company & Directors' Information:- J & G INTERNATIONAL PRIVATE LIMITED [Active] CIN = U18109DL2012PTC238392

Company & Directors' Information:- K R INTERNATIONAL PRIVATE LIMITED [Active] CIN = U17291DL2008PTC172188

Company & Directors' Information:- D. J. INTERNATIONAL LIMITED [Strike Off] CIN = U65910MH1999PLC119298

Company & Directors' Information:- S P INTERNATIONAL PVT LTD [Strike Off] CIN = U99999UP1965PTC003091

Company & Directors' Information:- J M INTERNATIONAL PVT LTD [Active] CIN = U45201WB1991PTC050829

Company & Directors' Information:- D P C INTERNATIONAL PVT LTD [Active] CIN = U74210WB1984PTC037378

Company & Directors' Information:- B M INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1992PTC048736

Company & Directors' Information:- S G INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51109WB1998PTC086547

Company & Directors' Information:- B N INTERNATIONAL PRIVATE LIMITED [Active] CIN = U15412WB1999PTC089316

Company & Directors' Information:- V A INTERNATIONAL PRIVATE LIMITED [Active] CIN = U01111DL2000PTC104712

Company & Directors' Information:- S. J. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U27310DL2007PTC169438

Company & Directors' Information:- N H B INTERNATIONAL PRIVATE LIMITED [Converted to LLP] CIN = U67190MH1997PTC107387

Company & Directors' Information:- P D K INTERNATIONAL PVT LTD [Active] CIN = U74140WB1992PTC056468

Company & Directors' Information:- G. S. C. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U29120MH1994PTC080380

Company & Directors' Information:- A J INTERNATIONAL PRIVATE LIMITED [Converted to LLP] CIN = U74899DL1994PTC060818

Company & Directors' Information:- J S M INTERNATIONAL LIMITED [Active] CIN = U85110KA1996PLC020046

Company & Directors' Information:- M K N INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909DL2002PTC117207

Company & Directors' Information:- N M INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74120MH2012PTC234492

Company & Directors' Information:- S S M INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909DL1997PTC089876

Company & Directors' Information:- A P J INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51909HR2010PTC040304

Company & Directors' Information:- T. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U72900DL1997PTC091049

Company & Directors' Information:- V R INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51101UP2011PTC043952

Company & Directors' Information:- A & F INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U00265KA1995PTC018998

Company & Directors' Information:- M E C INTERNATIONAL PRIVATE LIMITED [Active] CIN = U33111GJ1963PTC082423

Company & Directors' Information:- J K INTERNATIONAL PRIVATE LIMITED [Active] CIN = U01100MH2004PTC144492

Company & Directors' Information:- D. S. R. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74999UP2010PTC039954

Company & Directors' Information:- B L S INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74900UR2010PTC033210

Company & Directors' Information:- R B INTERNATIONAL LTD [Strike Off] CIN = U18101WB1993PLC059515

Company & Directors' Information:- P Y INTERNATIONAL PRIVATE LIMITED [Converted to LLP] CIN = U51102RJ1995PTC010133

Company & Directors' Information:- R C INTERNATIONAL LIMITED [Strike Off] CIN = U51909TG1991PLC012477

Company & Directors' Information:- N J INDIA INTERNATIONAL LIMITED [Strike Off] CIN = U70101UP2004PLC028722

Company & Directors' Information:- I AND A INTERNATIONAL PRIVATE LIMITED [Active] CIN = U72200TG1995PTC019936

Company & Directors' Information:- P V INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1998PTC094598

Company & Directors' Information:- I B INTERNATIONAL PRIVATE LIMITED [Under Process of Striking Off] CIN = U72200DL2000PTC105735

Company & Directors' Information:- A M INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U74899DL1995PTC066228

Company & Directors' Information:- K K M INTERNATIONAL PRIVATE LIMITED [Active] CIN = U17110MH1995PTC089836

Company & Directors' Information:- Z. H. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U21098MH2010PTC210735

Company & Directors' Information:- J R INTERNATIONAL PRIVATE LIMITED [Active] CIN = U51909TN2002PTC048744

Company & Directors' Information:- H P AND B G INTERNATIONAL PRIVATE LIMITED [Active] CIN = U50500DL1999PTC100851

Company & Directors' Information:- L S INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U74999DL2009PTC193390

Company & Directors' Information:- M B INTERNATIONAL PVT LTD [Strike Off] CIN = U52190DL2001PTC110572

Company & Directors' Information:- O K R INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U74900DL1996PTC077152

Company & Directors' Information:- B B C INTERNATIONAL PVT LTD [Strike Off] CIN = U25209WB1984PTC037383

Company & Directors' Information:- K S INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51909MH2001PTC134345

Company & Directors' Information:- A TO Z INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51101TN1992PTC022507

Company & Directors' Information:- C & A INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51900MH1982PTC026718

Company & Directors' Information:- J S INTERNATIONAL PVT LTD [Strike Off] CIN = U51900MH1982PTC027604

Company & Directors' Information:- A C INDIA INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74899DL1989PTC034784

Company & Directors' Information:- S. S. N. INTERNATIONAL PRIVATE LIMITED [Active] CIN = U29306DL1981PTC012616

Company & Directors' Information:- INDIA INTERNATIONAL COMPANY PRIVATE LIMITED [Active] CIN = U51228MH1955PTC009483

Company & Directors' Information:- A H INTERNATIONAL PRIVATE LIMITED [Active] CIN = U55101RJ2021PTC073171

Company & Directors' Information:- R K INTERNATIONAL PVT LTD [Strike Off] CIN = U63040PB1982PTC004926

Company & Directors' Information:- L & P INTERNATIONAL PRIVATE LIMITED [Active] CIN = U52100DL2016PTC292025

Company & Directors' Information:- J D K INTERNATIONAL PVT LTD [Active] CIN = U74899DL1982PTC014087

Company & Directors' Information:- R B N INTERNATIONAL PRIVATE LIMITED [Active] CIN = U52300DL2012PTC243998

Company & Directors' Information:- P AND P INTERNATIONAL PRIVATE LIMITED. [Strike Off] CIN = U24100OR1993PTC003244

Company & Directors' Information:- B P INTERNATIONAL PVT LTD [Strike Off] CIN = U31909HP1984PTC005785

Company & Directors' Information:- E C INTERNATIONAL PVT LTD [Strike Off] CIN = U99999DL1982PTC013146

Company & Directors' Information:- R A R E INTERNATIONAL PRIVATE LIMITED [Active] CIN = U31900DL2005PTC134395

Company & Directors' Information:- A SCHOOL INDIA PRIVATE LIMITED [Active] CIN = U80211TN2011PTC079455

Company & Directors' Information:- D I D INTERNATIONAL PRIVATE LIMITED [Converted to LLP] CIN = U28112MH2014PTC258750

Company & Directors' Information:- S R A INTERNATIONAL PVT LTD [Strike Off] CIN = U99999DL1980PTC010389

Company & Directors' Information:- R Z INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74900KA2012PTC064445

Company & Directors' Information:- M M INTERNATIONAL PVT LTD [Converted to LLP] CIN = U51312DL1977PTC008583

Company & Directors' Information:- A K INDIA INTERNATIONAL PRIVATE LTD [Strike Off] CIN = U45201DL1981PTC012389

Company & Directors' Information:- O P INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U55101PB2013PTC037499

Company & Directors' Information:- J & A INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51900PB2013PTC037302

Company & Directors' Information:- A P M INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U74900TN2014PTC095953

Company & Directors' Information:- Y. A. INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U74900RJ2012PTC040431

Company & Directors' Information:- D & A INTERNATIONAL PRIVATE LIMITED [Active] CIN = U74999MH2015PTC262713

Company & Directors' Information:- R L INTERNATIONAL PRIVATE LIMITED [Active] CIN = U18204UP2016PTC076344

Company & Directors' Information:- V P S INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U93030UP2014PTC066242

Company & Directors' Information:- J V INTERNATIONAL PRIVATE LIMITED [Strike Off] CIN = U51102DL2012PTC240197

Company & Directors' Information:- R I K INTERNATIONAL PRIVATE LIMITED [Under Process of Striking Off] CIN = U52590DL2015PTC283801

Company & Directors' Information:- Y & H INTERNATIONAL PRIVATE LIMITED [Active] CIN = U63000DL2014PTC266649

Company & Directors' Information:- S R L INTERNATIONAL PRIVATE LIMITED [Under Process of Striking Off] CIN = U20296AP2013PTC085533

Company & Directors' Information:- M D INTERNATIONAL LIMITED [Active] CIN = U74140MH1981PTC025007

Company & Directors' Information:- INTERNATIONAL CO PRIVATE LIMITED [Strike Off] CIN = U51109UR1935PTC000663

Company & Directors' Information:- A B C INTERNATIONAL PVT LTD [Strike Off] CIN = U99999DL1990PTC041062

Company & Directors' Information:- D C M INTERNATIONAL LTD. [Strike Off] CIN = U99999DL2000PTC004208

Company & Directors' Information:- B C I INTERNATIONAL LIMITED [Strike Off] CIN = U74900DL1977PLC008468

    CS(COMM). No. 408 of 2021, I.A. Nos. 11113 & 15652 of 2021

    Decided On, 09 December 2021

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE YOGESH KHANNA

    For the Petitioner: Sandeep Sethi, Sr. Advocate, Peeyoosh Kalra, C.A. Brijesh, Atif Shamim, Dhruv Grover, Advocates. For the Respondent: Dayan Krishnan, Sr. Advocate, Ravi Raghunath, Aakashi Lodha, Sukrit Seth, Sanjeevi Seshadhri, Advocates.



Judgment Text

1. IA No.15651/2021 is moved by the defendant under Order 39 Rule 4 CPC for vacation of the ad-interim order dated 03.09.2021.

2. With the consent of learned counsels for parties, arguments on this application have been heard without seeking its response from the plaintiff.

3. On 03.09.2021, this Court interalia directed as under:-

"9. Keeping in view the user of the plaintiff of the mark since 1963 and the reputation of the plaintiff, plaintiff has made out a prima facie case. The defendant is restrained by an ex parte injunction from using or asserting any right on the trademark 'THE BRITISH INTERNATIONAL SCHOOL'

“IMAGE”

or any other trademark similar to the plaintiff's trademark THE BRITISH SCHOOL/

“IMAGE”

The defendant will take steps within three months from the date of receipt of the injunction order."

4. The learned senior counsel for the defendant submit the mark of the defendant British International School of Chennai was registered on 16.07.2007 and whereas the mark of the plaintiff was registered only on 23.04.2013 and that there has been concealment of facts in the plaint. He refers to a documents filed by the defendant at page No.19 of documents vz. a copy of the Trademarks Journal 1852 dated 04.06.2018 class 99 which says The British School was registered on 23.04.2013 with a condition Registration of this trademark shall give no right to the exclusive use of the British School. The page No.20 of the documents of the defendant is the devise mark but with same condition, hence, it is argued the mark The British School is not exclusive to anyone, including the plaintiff herein. The learned senior counsel for the defendant then referred to the trademark registration of the defendant i.e. The British International School, Chennai dated 12.05.2016 without any condition.

5. Secondly, it was argued para No.30 of the plaint shows the plaintiff came to know about defendant’s mark in September 2020 is wholly incorrect as there were similar marks available even at the time of registration of plaintiff’s mark and he referred to the examination report dated 02.05.2014, pursuant to which, the application of the plaintiff for registration of the trademark The British School was accepted. In its reply to objections under Section 11 of the Trademarks Act, the plaintiff had rather submitted when the subject mark is compared with any of the cited marks, in its entirety, the same without a doubt, visually phonetically and structurally different from the cited marks and that there therefore, arises no likelihood of confusion being caused between the cited marks and the subject marks. The only common element between the subject mark and the aforesaid cited marks is the word British which is a common dictionary word. Thus it is argued it was rather admitted by the plaintiff, British School is a common word and thus it does not infringe the plaintiff’s right and that the plaintiff has no exclusive right to it.

6. Thus the learned senior counsel for the defendant argued a) the documents viz. the registration certificates comprising condition were never filed by the plaintiff; and b) the reply of the plaintiff to the objections per examination report itself reveals the word The British School is a common word. It is argued though such condition have been stated in para No.9 of plaint, but since the documents viz. the registration certificates were not filed, hence there is concealment of facts from the Court. It is alleged the impugned order is illegal on the face of it as the documents above were never shown to the Court at the time of passing of an ad interim order and secondly, the defendant being in the midst of an academic year, any injunction would go against the interest of the students and their parents and that the defendant is well within its right to use the word The British International School, Chennai.

7. In support of above arguments, reference is made to Columbia Sportswear Company vs. Harish Footwear & Another 2017 SCC OnLine Del 8122 wherein the Court held:-

“10. This position is not quite correct. Admittedly there are disclaimers qua three such registrations and as noted supra, they have been admitted by the plaintiff. This has however not been detailed by the plaintiff in his plaint. In para 40 an evasive statement has been made that in order to register an FIR on the plea of disclaimer, an opinion had been sought from the Registrar of Trademarks which opinion was in favour of the plaintiff. This is the end of the matter. There is no further details of any disclaimer; para 40 relied upon in the plaint does not disclose that a disclaimer had been set up by defendant No. 2 or that the disclaimer is alive and as such the aforenoted three registrations are not clear; there being a disclaimer admittedly attached to them. This in the view of this Court is a concealment which has been made by the plaintiff for which he has no explanation. xxxx”

8. Further in Registrar of Trade mark vs. Ashok Chandra Rakhit Limited 1955 2 SC 558 the Court noted:-

“8. xxxx The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimize, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks.”

9. Heard.

10. The impugned order is of dated 03.09.2021. Three months time was given to the defendant to change its name, however now they have come before this court to get the stay order vacated, in the tenth hour.

11. Section 18(4) of the Trademarks Act 1999, notes:-

“18. Application for registration.—

(1) to (3) xxx

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.

(5) xxx.”

12. The word disclaimer is not used in the new Act and instead is transposed the word condition. The plaintiff was granted the mark subject to certain conditions and such conditions are duly mentioned in para 9 of the plaint, hence there is no apparent concealment on the part of the plaintiff, as alleged.

13. Even in the impugned order dated 03.09.2021 such condition mentioned, hence the Court was conscious of such condition attached to the trademark of the plaintiff, yet passed an injunction order keeping in view the prior usage of the plaintiff since the year 1963 and the reputation attached to it.

14. Para No.7 of the impugned order rather clarifies the mark is being used by the plaintiff since the year 1963. The Court also considered the revenue generated and the promotional expenses incurred by the plaintiff through various years. Para No.8 of plaint speaks about it.

15. Even otherwise, such condition would never come in way of a long user or where the plaintiff asserts its right because of it. Para 9 of Ashok Chandra Rakhit Limited (supra) rather clarifies the disclaimer is only for the purposes of the Act and it does not mean the proprietor's right, if any, with respect to those parts or matters would not be protected, otherwise, than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way.

16. In Kishore Kumar vs M/s.Chuni Lal Kidarnath & Another 2010 SCC OnLine Del 91 the Court held:-

"16. A consideration of all the above factors reveal that the Court has to consider the mark as a whole, from the standpoint of a casual, and not too curious or fussy consumer ("unwary customer"). Such an individual would normally not be expected to minutely observe a trademark, but recollect its broad - perhaps essential features, based on impressions gathered. He would see the mark as a whole, regardless of the disclaimer. Such being the case, and concededly, the plaintiff having secured registration - even though it may not be subsisting, for having lapsed (but for which an application for renewal is said to be pending) the fact remains, that the mark was used since at least in 1999. There are invoices and advertisements showing that the plaintiff was using it for over ten years. The defendant appears to be suggesting that its brand EVEREADY is distinctive, and even well-known. That may be the position; yet here, what is material is that the plaintiff has been using HOMELITE for about 10 years. The mark was also on the trademark register. The defendant's argument that LITE cannot be appropriated, is irrelevant, since it has not denied using LITE in relation to a number of marks. xxxx.”

17. Now if one also look at the defendant’s reply in relation to examination report of its own mark, the defendant stated it had started using the said mark since the year 2005 i.e. 40 years after the adoption of the mark by the plaintiff. One may also look at the reply of the defendant it gave to the Cease and Desist notice wherein the claim of the plaintiff qua the user since 1963 etc. was simply denied and it was never alleged in reply the defendant was not aware of the plaintiff’s using The British School as its trademark since the year 1963. The defendant rather admitted of using the website http://www.britishschool.co.in i.e. exactly with the same name of plaintiff. One may also note the area of operation is same, in this case, education, hence in this field the chances of confusion need to be completely eliminated.

18. In Ritnand Balved Education Foundation vs Ranchhod M Shah & Others (2018) 253 DLT 685 this Court held:-

"25. It is a settled position under Trademark law that this area of law is meant to protect not just the rights of the owners, but also to avoid any confusion from being caused amongst the members of the public. There is no doubt that AMITY INTERNATIONAL SCHOOL of the Plaintiff is well known, and there are several branches of the said school. The use of an identical name by the Defendants would not merely confuse the students and parents but also those persons who wish to collaborate with the Defendants. There would be no way of knowing as to whether the AMITY INTERNATIONAL SCHOOL of the Defendants is the same as that of the Plaintiff or not. The area of operation i.e. education is one such area in which any chance of confusion should be completely avoided. This is because schools, universities and colleges have very expansive activities and operations. Students studying in educational institutions participate in events, competitions, cultural festivals, and sports meets across the country. The use of identical names for two schools, completely disconnected from each other, would result in enormous confusion and could also result in having a damaging effect on careers of children. The chances of mistaken identities are very high and especially in the educational field, such confusion ought to be avoided.

XXXX

29. While the words 'INTERNATIONAL' and 'SCHOOL' could be descriptive/generic in nature when taken on a standalone basis, when taken in conjunction i.e. 'AMITY INTERNATIONAL SCHOOL', the name is absolutely identical to the name of the Plaintiff's school. In a passing off suit, confusion and deception has to be avoided at all costs. This would apply with greater force in the field of education. Clearly when the injunction was suspended, it was done so on the basis of the submission that the Defendant No.6 school was in existence in 1986. After the filing of the pleadings and documents, it is clear that this is not the correct position. Insofar as Defendant No.6 is concerned, it came to existence in 2004 i.e. 13 years after the Plaintiff's 'AMITY INTERNATIONAL SCHOOL'."

19. Further in Delhi Public School Society vs DPS World Foundation and Another (2016) 230 DLT 5 this Court held:-

"38. There is no dispute that the suit has been filed by the plaintiff for infringement of the trademark/name “DPS”. It is also not in dispute that the plaintiff has registration of trademark/name “DPS” in class 16 paper, cardboard, photographs, stationary etc, 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 and the trademark/name 'Delhi Public School' in class 16, 35 and 36. In order to constitute Infringement under the provisions of Section 29 of the Trademarks Act, it would be necessary to show that the impugned trademark is identical or deceptively similar to the registered trademark and once the plaintiff is able to establish that the impugned mark is identical or deceptively similar to the registered mark, then, it is irrelevant whether the defendant No.1 is using the impugned mark in respect of the goods and services which are not similar in nature. In the case in hand, even if the registration of the trademark 'DPS' is not in class 41, the plaintiff having registration in other classes would be entitled to protection. It is registered in respect of goods such as printed matter, goods made from paper and card board, stationery, adhesives for stationery instructional and teaching material etc. as also in respect of food, drink, computer programming, scientific and industrial research. The mark/name of the defendant No. 1 'DPS World Foundation' or 'DPS World School', would surely, cause infringement of the registered trademark 'DPS' of the plaintiff.”

20. In Anjani Kumar Goenka & Another vs Om Education Trust and Another 2018 SCC OnLine Del 11370 the Court held:-

"13. Hence, the accepted test for seeing as to whether the trade mark of the plaintiffs is being violated is the test of an unwary purchaser having average intelligence and imperfect recollection. The issue would be as to whether an unwary purchaser with an average intelligence and imperfect recollection would be deceived by overall similarity of the two products. In the present case the registered marks of the plaintiffs are GD Goenka Worlds Institute, Goenka, Goenka School and GD Goenka Public School, etc. The defendant is running its school by the name of GOENKA INTERNATIONAL SCHOOL. The defendant has started running the school from the academic year 2015-16. Admittedly, CBSE has granted affiliation to the school in 2016 only. In contrast, the plaintiffs have been using the said mark since 1994. Clearly an unwary parent/student of average intelligence and imperfect recollection can be deceived by the overall similarity of the two names. Both the plaintiff and defendant are in the same field. This is bound to create confusion. Hence, unless injunction granted is confirmed the confusion would continue."

21. Similarly, in Sushma Berlia & Others vs Kamal kumar & Others (2015) 61 PTC 278 the Court held:-

"14. Similarity of the name 'APEEJAY' in the defendant No.2's association was sufficient to lead to the public to think that the defendants' association was the association of the plaintiffs. It might mislead the people into thinking that the defendants' association was a branch of the plaintiffs' school and sponsored by the school. If the defendants' association is guilty of any misdoing the same is likely to reflect discredit upon the plaintiffs' school."

22. I have also perused to the documents of the plaintiff which rather demonstrate in the year 1963 a group of British parents, supported by the British High Commissioner to India, started the plaintiff’s school and how in 1969 it moved to the current location at Chanakya Puri, New Delhi.

23. Thus the facts do clarify the plaintiff is a prior user of the mark 'The British School' since the year 1963 and since there has been no explanation of the defendant as to if it was never aware of the use of the trademark by the plaintiff or why it was using the similar trademark, the injunction must follow.

24. In The Timken Company vs Timken Services Private Limited (2013) 200 DLT 453 the Court observed:-

"8.5. There is a rebuttable presumption in favour of the plaintiff under Section 114 of the Indian Evidence Act that the defendant was aware of the plaintiff's trade mark at the time of adoption in 1989. The defence set up by the defendant that the defendant was not even aware about the plaintiff's name, trade mark and registration in 1989, when the defendant adopted the plaintiff's trade mark 'Timken' is unbelievable. The plaintiff has placed sufficient material on record to show that the plaintiff was a well- known mark as back as in 1989 when the defendant adopted the same. The defendant's knowledge of the plaintiff's trade mark and copyright can be inferred from the fact that the defendant not only adopted the same name but also adopted similar art work, font and colour as that of the plaintiff, which could not have been possible unless the defendant had knowledge and it chose deliberately to infringe the plaintiff's right. If the defendant was aware of the plaintiff's trade mark and copyright in 1989, and the defendant wilfully chose to infringe the plaintiff's right, the defendant is liable to be restrained from using the plaintiff's trade mark and copyright. The whole object of the Trade Marks Act and the Copyright Act is to stop the infringement of the trade mark and copyright."

25. Qua the effect of the reply to objections under Section 11 per examination report I may refer to Insecticides (India) Limited vs Parijat Industries (India) Pvt Limited CS (COMM) No.1279/20216 dated 09.07.2018 wherein it was observed:

"(S) xxx Thus, the representation of the plaintiff, on the basis whereof the plea of estoppel is raised by the defendant, being contrary to Statute, does not give rise in law to the plea of estoppel.

(U) Thus, neither the principle of admission nor the principle of estoppel deprive the plaintiff from seeking the relief, if were to be found to be entitled thereto.

(V) There is another aspect. The representation made in the letters dated 30th July, 2012 and 03rd March, 2015 supra was for the purposes of obtaining registration of the trade mark and can be invoked against the plaintiff only vis.-a- vis. the said registration and not to deprive the plaintiff from suing for passing off."

26. Thus, the facts of the case do show the plaintiff adopted the mark The British School in the year 1963 and hence, there has been an exemplary long use of this name i.e. for about 58 years; the plaintiff alleges of earning revenue in crores of Rupees and likewise is its expenditure in lacs on promotion. Admittedly the defendant adopted its mark in the year 2005 and never explained as to why it adopted this name or that the defendant was never aware of the mark of the plaintiff, prior to its own registr

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ation. The British School is an essential feature of the mark of the plaintiff and its adoption by the defendant shall certainly infuse confusion in the minds of the students as also their parents as they shall believe the defendant has connection with the plaintiff and thus, the defendant shall ride upon the goodwill of the plaintiff. Being a prior user and adopter, the plaintiff is entitled to get the defendant restrained to use the mark deceptively similar of plaintiff’s mark irrespective of the fact the defendant got its mark registered prior in time. The mark of the defendant when compared as a whole with the mark of plaintiff it certainly shall create confusion, especially, when both are in identical field viz. educational. The similarity in the name shall certainly cause damage not only to the career of students but also to the reputation of the plaintiff. 27. The delay in bringing an action would not come in way of injunction, see M/s.Midas Hygiene Industries Private Limited & Another vs Sudhir Bhatia & Others Civil Appeal No.107/2002 decided on 22.01.2004. 28. Lastly I may refer to a recent order dated 12.10.2021 in The British School Society vs. Sanjay Gandhi Educational Society & Another CS (COMM) No.509/2021 wherein this Court noted:- "9. The plaintiff has made out a prima facie case. The defendants are restrained by an ex parte injunction from using the plaintiff's trade mark THE BRITISH SCHOOL/TBS/ “IMAGE” or any other mark similar to the plaintiff's trademark in any manner whatsoever infringing and passing off the plaintiff's registered and well-known trade mark or in violation of any other rights in any other registered trademark of the plaintiff till further orders." 29. Thus, there is no force in the application of the defendant and it needs to be dismissed, hence is dismissed with an opportunity to comply with the interim order dated 03.09.2021 till the end of this academic session of 2021-22. CS(COMM) 408/2021, I.A. No.11113/2021 and 15652/2021 30. List for completion of pleadings before the learned Joint Registrar on 19.04.2022.
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