IN THE HIGH COURT AT CALCUTTA ORDINARY ORIGINAL CIVIL JURISDICTION ORIGINAL SIDE PRESENT : THE HON’BLE JUSTICE PATHERYA G.A.No.108 OF 200.C.S.No.7 OF 200.FRANKFINN AVIATION SERVICES PVT.LTD.VERSUS THE FRANKLYN INSTITUTE OF LANGUAGE For the Petitioner : Mr.Sayantan Bose, Adv., Mr.Pawan Maheswari, Adv., Ms.Sanchalita Sarkar, Adv.For the Respondent : Mr.S.N.
Mukherjee, Sr.Adv., Mr.Tilak Bose, Adv., Mr.Debnath Ghosh, Adv.Heard on :
16. 3-2009, 20-3-2009, 26-3-2009, 31-3-2009, 08-4-2009, 24-4-2009, 27-7-2009, 09-3-2010 and 05-4-2010.
Judgement on :
31. t August, 2012.
PATHERYA J.
: In a suit for infringement and passing off action, an application has been filed for interim relief.
The case of the petitioner is that it is registered in the label “Frankfinn”.
and has also applied for the wordmark “Frankfinn”.The infringement alleged is in “services”.
as the petitioner imparts english education through a tie-up with BBC active since 1993.
Such name has been adopted to carry on the petitioner’s business.
The respondents conduct classes in spoken english since 2005.
Two notices of cease and desist were issued to the respondent each of which has not been replied to.
Therefore, in January, 2008, the instant suit has been filed and interim relief sought by this application.
The defence taken is that the suit is not maintainable as the respondent firm has been taken over by Franklyn Advisory Services PVT.LTD.prior to filing of the suit on 6th February, 2007.
The word “Frank”.
is a common dictionary word.
The name of the petitioner and the respondent is phonetically different and continuous use is since 2003.
The fields of activity are also different.
The user, admittedly, is shown since 2005 while the petitioner is a prior user.
There exists no reason for the respondent to use Franklyn and the explanation given is unbelievable.
Therefore dishonest adoption is evident.
Monies have been spent by the petitioner.
The aeroplanes shown in the respondent’s advertisement is suggestive of the services imparted and therefore the petitioner is entitled to restrain orders for passing off action.
Dishonesty in the acts of the respondent is evident.
Section 29(4) is applicable as the application for registration in the wordmark is pending.
The petitioner is registered in the label “Frankfinn”.
therefore, has an exclusive right to use the word as it is a part of the label.
Reliance is also placed on Sections 17 and 29(9) of the 1999 Act.
From a reading of the Memorandum and Articles of Association of Franklyn Advisory Services PVT.Ltd., it will not be evident that the business was transferred or the object is to teach english.
In fact, from the petition it will appear that both the petitioner and the respondent are engaged in rendering “services”.
to the hospitality sector too.
Therefore, orders be passed as sought.
Counsel for the respondent in opposing the said application submits that the “services”.
rendered by the parties are in two different fields.
The “services”.
rendered by the petitioner is restricted to the aviation industry.
This will be evident from the reading of the prospectus.
The services rendered by the respondent is for conducting courses in spoken English and call Centre Training for different period of time and on that basis a fee is charged.
The maximum is for a period of 12 months and the said caters to a separate class.
Reliance is placed on 2000 FSR 76.
The respondent firm prior to the filing of the suit has been taken over by Franklyn Advisory Services PVT.LTD.therefore the suit is not maintainable.
“Frank”.
is a common english word and none can claim monopoly over it as is sought to be done.
The respondent has applied for registration of its label in Class 16, therefore there can be no infringement.
Franklyn is not written in italised style as Frankfinn.
There is a difference in the way both are written.
Section 29(1) is not applicable as it postulates infringement of a registered trademark.
For all the said reasons, no order be passed on this application.
In reply counsel for the petitioner submits that in its advertisement it has informed that its students also serve the hotel industry.
In fact from a reading of the sectors to which service is rendered by students of the petitioner and the respondent it will appear that the sectors are common.
There has been no take over of the defendant by Franklyn Advisory Services PVT.LTD.The said is an independent body with a separate legal entity.
Reliance is placed on 2009 (1) CHN 85.for the proposition that the commercial world has changed from “one company one product”.
to multiple products or services.
Therefore, orders be passed.
Counsel for the respondent submits that 2009 (1) CHN 85.is distinguishable.
Having considered the submissions of the parties the petitioner has filed this action for infringement and passing off of the label “Frankfinn”.
in which it is registered.
The said registration is in class 16 and not in class 41, therefore no restrain order can be passed on the ground of infringement.
In fact admittedly the defendant is also not using the registered label of the petitioner.
To constitute passing off there must be similarity (i) in the word mark or label mark or in a composite mark, (ii) the degree of resemblance must be phonetically similar and similar in idea, (iii) similarity in the goods or services, (iv) possibility of the class of purchasers who are to avail of the services or goods being confused or deceived.
In the instant case the petitioner has claimed a close association with the word “Frank”.
and anyone using the said word with a suffix or prefix will be subjected to passing off action.
The word “Frank”.
is a common english word and not a creation of the petitioner therefore the petitioner cannot claim monopoly over the same and except for the word “Frank”.
there is no similarity phonetically too.
The class to which the petitioner and the respondent cater are separate and distinct.
The petitioner caters to the hospitality sector and mainly to the aviation sector.
This is evident from the photograph of the airhostess depicted in its brochures and advertisement.
The girl in a skirt and a blouse with a rolled scarf in the neck can be identified with an airhostess, while the respondent caters to that class who wants to learn English for various purposes and is not restricted to one sector viz.
the aviation sector.
In fact both the petitioner and respondent cater to an intelligent section of society in whose mind there can never by any confusion.
Therefore the test of an unwary customer from the village being deceived or confused can never arise.
There is also no similarity in the way Frankfinn and Franklyn are written while Frankfinn is written in a stylised manner below which is written in bold that it is an Institute of Airhostess Training, this is lacking in Franklyn which is an English training based institute.
The decision reported in (2009) 1 CHN 85.will not apply to the instant case as admittedly the petitioner is not a multinational Company with diversified products or services.
For all the said reasons this application warrants no order and is accordingly dismissed.
(Patherya J.)