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