IA 2920/2016
1. By this order, I shall decide IA 2920/2016, which is an application under Order XXXIX Rule 1 and 2 CPC, 1908 wherein the plaintiff has sought the following reliefs:
a) pass an ex-parte ad-interim injunction against the defendants and in favour of the plaintiff, restraining the defendants, their life trustees, term trustees, advisories, members, franchisees, officers, employees, servants, agents, delegates, representatives, assignees, associates and all others acting for and on their behalf from offering their services, advertising, offering franchisees, selling goods and stationary, adopting, using and / or dealing in any manner with the registered trade mark / name 'DPS' and logo IMAGE (Plaintiff s registered mark) of the plaintiff or any other trade mark identical or deceptively similar to the registered trade marks of the plaintiff amounting to infringement and passing off the plaintiffs registered trade marks;
b) pass an ex-parte ad-interim injunction against defendants and in favour of the plaintiff restraining the defendants, their life trustees, term trustees, advisories, members, franchisees, officers, employees, servants, agents, delegates, representatives, assignees, associates and all others acting for and on their behalf from offering services, advertising, offering franchisees, selling goods, adopting, using and/or dealing in any manner with the trade mark / name 'DELHI PUBLIC SCHOOL' and the crest logo IMAGE (Defendant No. 1 s mark)of the plaintiff or any other trade mark identical or deceptively similar to it amounting to passing off the plaintiffs trade mark / name;
c) pass an ex-parte ad-interim injunction in favor of plaintiff and against the defendants, restraining the defendants, their trustees, members, franchises as the case may be and their officers, servants, agents, delegates, representatives, assigns, associates and all others acting for and on their behalf from using the impugned trade mark trade mark/name 'DPS', 'DELHI PUBLIC SCHOOL' and IMAGE (Defendant No. 1 s mark)
d) pass an ex-parte ad-interim injunction in favor of plaintiff and against the defendants, restraining the defendants, their trustees, members, franchises as the case may be and their officers, servants, agents, delegates, representatives, assigns, associates and all others acting for and on their behalf from directly or indirectly reproducing, using and/or dealing in any manner with the plaintiffs crest IMAGE (Plaintiff s registered mark) and IMAGE (Defendant No. 1 s mark) or any other crest identical or deceptively similar amounting to infringement of the plaintiffs copyright in the said crests;
e) directed the Telecom Regulatory Authority of India, Mahanagar Doorsanchar Bhawan (next to Zakir Hussain College) Jawaharlal Nehru Marg, New Delhi-110002 to shut down the websites www.dpsworldfoundation.com and e-mail address operated by the defendants; and
f) pass such further or other order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case.
Facts and submissions on behalf of the Plaintiff
2. It is noted and as contended by Mr. Sandeep Sethi, learned senior counsel for the plaintiff that the plaintiff society was registered under the Societies Registration Act, 1860 in the year 1948-49 as Delhi Public School with its registered office at F-Block,East of Kailash,New Delhi. In the year 1962 the name of the Society was changed to Delhi Public School Society. The defendant No. 2 was a life member of the Society till October 17, 2015, when he was removed from the membership. Between the period 1994-2004, the defendant No. 2 was the president of the Society. In the year 1948 the plaintiff first conceived and adopted the distinctive crest of the school at (1) of Annexure-A to this judgment, which comprises of a hand holding a torch (mashaal) along with the school motto 'Service Before Self and the words 'Delhi Public School written inside a shield device with other distinctive artistic features comprised therein. The said crest is registered under different classes including class 41, relating to education. The registration was in the year 2007. The said artistic Crest device was first created and designed by an employee of the plaintiff under a contract of service, and which Crest is an original artistic work and the plaintiff is the first owner of the same under the provisions of the Copyright Act, 1957. He states, that apart, plaintiff is also the first publisher of the said artistic work and on this account is the lawful and true owner of the same and has the exclusive right to use and reproduce the said artistic work to the exclusion of all others. Since then, the unique Crest of the plaintiff has become a mark which is identified with the name of plaintiff and is widely recognized in India as well as across borders and considered synonymous with the plaintiff and the various schools established by it. Mr. Sethi also states that in the year 1996- 1997 plaintiff conceived and adopted another Crest of the school at (2) of Annexure-A, which comprises of a torch (Mashaal) on a book along with the school motto 'Service Before Self written inside a shield device surrounded by creeper and the words 'Delhi Public School' written at the bottom with other distinctive artistic features comprised therein. The said artistic Crest device was first created and designed by the plaintiff and which Crest is an original artistic work and the plaintiff is the first owner of the same under the provisions of the Copyright Act, 1957. That apart, plaintiff is also the first publisher of the said artistic work and on this account also, plaintiff is the lawful and true owner of the same and has the exclusive right to use and reproduce the said artistic work to the exclusion of all others. Mr. Sethi would state, that the plaintiff was formed with an object to establish progressive schools or other educational institutions in Delhi and outside Delhi, open to all without any distinction of race, caste or special status. In order to achieve its objectives, plaintiff decided to establish its first school in the year 1949 under the name and style of "Delhi Public School", its abbreviation "DPS" and its logo/crest. The plaintiff established its schools at various places in India. Schools established by the Society itself are known as "Core Schools" and which are 11 in number. The Society has also entered into agreements with other societies/trusts for establishing schools at various places known as "Affiliated Schools" and these are more than 170 in number. He states, the plaintiff has established15 schools outside India, which shows the immense goodwill and reputation enjoyed by the plaintiff not only in India but also abroad. Approximately 3,00,000 students are studying in the schools running under the aegis of the plaintiff. Mr. Sethi would state that in order to secure statutory rights in respect of the aforesaid trade marks, the plaintiff has filed several applications for its registration in the office of the Registrar of Trade Marks. He has referred to page 32 of the plaint to show that the trademarks which have been registered and the applications of the trademarks, which are pending registration.
3. The plaintiff has also adopted the trade mark / name "Delhi Public School", "DPS", and the crest logo at (1) and (2) of Annexure-A to this judgment and are using the same for its core and affiliated schools. The plaintiff has earned immense goodwill and reputation amongst the parents, students, staff and public at large. The name Delhi Public School / DPS is well known for the quality education provided by the institutions set up by the plaintiff. According to him, the use of the marks DPS and Delhi Public School are so extensive that the said marks have always been perceived by the General Public as indicative of the source of the plaintiff and the aforesaid words are therefore associated by the general public with plaintiff and nobody else.
4. Mr. Sethi states that in the last more than 65 years of service in the field of imparting education, the plaintiff has produced lakhs of students who are occupying prominent and prestigious positions in government as well as private sector and are doing very well in life. The staff members of the school have also attained distinction in the field of education and have been awarded with the prestigious awards by the government. On July 16, 2015, for the first time, plaintiff came to know that the defendant no.1 is functioning under the trade name "DPS World Foundation" by adopting the identical trademark/name "DPS" and a deceptively similar logo/ crest mark at (3) of Annexure-A through a letter dated June 12, 2015 addressed by founding trustees of defendant No.1, to the alumni of the schools running under the aegis of plaintiff, informing them about the formation of defendant No.1, a trust, and terms and conditions for the membership of defendant No.1. He further states, defendant No.2 is the spouse of the chairperson of defendant No.1, who is key managerial personnel of defendant No.1, responsible for day to day management, control and operation of defendant No.1. Defendant No. 1 is the brain child of the defendant No.2, who while holding the position of the life member of the plaintiff, deceived the plaintiff by secretly forming the defendant No.1 and adopting plaintiffs trademarks. He states that the aforesaid crest/logo was extensively used by plaintiff during defendant No.2's tenure as president of the plaintiff.
5. According to him, on further investigation by the plaintiff, the plaintiff came to know that the defendants are also maintaining a website www.dpsworldfoundation.com wherein, the impugned trade mark of the defendants "DPS" and crest / logo at (3) of Annexure-A is prominently displayed. The plaintiff from the aforementioned link also came to know that on August 16, 2015 the defendant No. 1 was inaugurated and defendants' vision, inter alia, is to establish schools or other educational institutions, similar to that of the plaintiff and is using the aforesaid impugned trademarks in relation to the said services.
6. He would draw my attention to various documents like the registration certificate, objectives of the plaintiff, registration of the trademarks at page 32 of the plaint. He has drawn my attention to page 85 of the documents, which is a communication dated June 12, 2015 by the trustees of the defendant No. 1, wherein, the authors of the letter conceding that they are admirers/followers of the DPS Society had acknowledged of being touched by experience at some point of time in their life and also a part of them remained with the DPS and also referring to Dipsites Association which provided a platform for enhancement and consolidation of the DPS product, besides sustaining of the bond itself. He would highlight that the letter would reveal, a need was felt that a permanent platform of DPS foundation be created to provide for effective connect for all people who have been part of the DPS experience or indeed continued to be part of it. In other words, it is his submission that the said letter acknowledges, the need to promote the DPS ethos and ethics and expansion of DPS vision. According to him, the words DPS connotes, the schools established by the plaintiff society. He has drawn my attention to page 91 of the documents to highlight the reasons behind creating a DPS World Foundation, which according to him, has the genesis to the Delhi Public Schools run by the plaintiff. He would draw my attention to the membership being offered by the DPS World Foundation, at page 150, to trust s/societies intending to set up Delhi Public Schools in the country and even abroad. He would refer to various advertisements issued from time to time including the advertisement issued in the Times of India newspaper dated June 07, 2015, for recruiting staff, teachers, employees etc. for the school at Greater Noida. On 14.10.2015 defendants got similar advertisement published in Times Ascent for DPS World School, Patna. On November 4, 2015 defendants got similar advertisement published in Times Ascent for DPS World School, Alwar. Defendants on December 23, 2015 published an advertisement in Dainik Bhaskar newspaper for appointing teachers, librarian, accountant, peon etc. Defendant on January 27, 2016 published an advertisement in Times of India, New Delhi newspaper inviting applications for the post of principal/headmistress, teachers, accountant, receptionist, etc., for their branch in Noida Extension.
7. Mr. Sethi submits that upon the knowledge of the aforesaid infringing activities of the defendants, the plaintiff served a show cause notice dated July 24, 2015 to the defendant No.2 asking him as to why an action should not be taken against him, inter alia, amongst others for having his clandestine association in the creation of defendant No.1 and adoption of impugned infringing trade marks, for setting up schools across India and giving franchisee of such schools to other people, which was in contradiction to the position then held by him as a life member of the plaintiff. Defendant No.2 vide its reply dated August 21, 2015 admitted that he is associated with defendant No.1. He states none of the allegations have been denied. That vide notice dated September 17, 2015 issued by the plaintiff to the defendant No.2, the defendant No.2 has ceased to be a life member of the plaintiff from October 17, 2015. Defendant No. 2 has filed a suit bearing no. CS (OS) 3094/2015 against the plaintiff praying, inter alia, to declare notice dated September 17, 2015 as null and void. He submits, on further enquires plaintiff has come to know that the defendants are offering their patron membership for Rs.1,00,000/-and their franchise under the impugned trade marks for Rs.25,00,000/-in India and Rs.35,00,000/-abroad, and have till date entered into as many as 35 franchise agreements, details of which, could be culled out from the defendants.
8. It is his submission that the defendant No. 2 has been an eminent member of the plaintiff and held highest position in the Society. He also subscribes to the ethos and values of the Society and the schools run by it. The defendant No. 2 is not an outsider. While he was the member of the Society, he himself has filed various petitions seeking protection of its intellectual property against different parties. In that regard, he has drawn my attention to para 11 of the plaint. It is an attempt on the part of the defendants with mala fide intention to encash and ride upon the immense goodwill and reputation of the plaintiff. More particularly, in the educational field, with which, the plaintiff is associated for so many years. He states, the very objective of establishing defendant No.1 as DPS World Foundation, would reveal, an attempt to take unfair advantage in business and contrary to the honest trade practices in commercial matters. He has also drawn my attention to page 168 to show that the foundation intends to allow and grant revocable licences to the institutional members to use the name DPS World and DPS World School and its logo and motto during the period of memorandum of understanding with such institutional members. He would draw my attention to pages 245-266 of the documents to show, various schools established by the plaintiff society abroad with the similar logo. He also draws my attention to pages 257-259, which is a letter written by the defendant No. 2, wherein the defendant No. 2 has referred to the Delhi Public School Society as DPS Society . Similarly, he has drawn my attention to page 259 to highlight that the defendant No. 2 himself recognises the Delhi Public School as DPS. He refers to various agreements entered with the franchises for opening of Delhi Public Schools at various places in India and abroad. He refers to one of the agreements dated April 22, 1998, for opening of a school, signed by the defendant No. 2 himself on behalf of the plaintiff, with Texmaco Group, Indonesia, referring the Delhi Public School as DPS.
9. Mr. Sethi s submission is, the conduct of the defendants is to cause damage and injury both to the plaintiff s business and to its goodwill and reputation. The representation is not only limited to the origin of the services but to the quality as well, since the defendants could not match the outstanding educational services provided by the plaintiff and the tremendous amount of goodwill earned by the plaintiff by pioneering in the sphere of education in India and by way of its successful existence in this field for the past almost 65 years, having established around 200 schools in India and overseas. He states that because of unlawful adoption of the plaintiff s registered trade mark/name and logo of the defendants, it is sure that the potential students, staff and parents would believe that the defendants are endorsed by and franchisee of the plaintiff in regard to their services and the Defendants command and provide the same quality and reliability i.e. synonymous with the services of the plaintiff which as a matter of fact the plaintiff has built up over last several years. According to him, the general public would also believe that the Defendants are licensed or authorized by the plaintiff to use the plaintiff s trade mark / name and logo. He states, irreparable loss, injury and damage to the plaintiff in its business, goodwill and reputation and by use of the impugned trade marks by the defendants, value of the plaintiffs trade marks is getting diminished. He submits, it is an established principle under the law of infringement that in order to come to the conclusion that one mark is deceptively similar to another, the broad and essential features of the two are to be considered. He states, it would be enough if the impugned mark bears such an overall similarity to the other mark as would likely to mislead a person usually dealing with one to accept the other if offered to him. He states, it has further been held that marks are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Moreover, variation in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. He states, that under the scheme of the Copyright Act, 1957 and the provisions contained thereunder the offence of infringement of copyright is complete if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion that the subsequent work appears to be a copy of the original on a visual comparison of the two competing works. He states, it is equally well established that there might be and there will be obvious differences deliberately introduced to avoid a possible charge of infringement of copyright. However, a bad copy does not cease to be a copy. If the court on a consideration of all the relevant circumstances and the comparison of the competing artistic labels comes to a conclusion that basically and in substance one is a reproduction of the other, further modifications or variations will not alter that effect of infringement. He states, the Copyright Act, 1957, being a complete code in itself, any infringement under the said Act is liable to be injuncted forthwith without there being any other additional requirement as prescribed under the provisions of the Trade Marks Act, 1999, or the principles of common law.
10. Mr. Sethi would heavily rely upon Section 29 of the Trade Marks Act, 1999 to contend that the impugned trademark/logo and motto is in violation of the said Section. He states, the very fact that the defendants have lifted the word DPS , which is the registered trademark of the plaintiff, is enough to show the infringement of the same. That apart, it is his case, even the fact that the plaintiff had been in the education field, running the schools in the name and style of Delhi Public School would make a case where the defendants intend to pass off their schools being established as DPS World Schools as the schools of the plaintiff. He would rely upon the following judgments/orders in support of his submissions:
(1) Mantari Overseas Ltd. Vs. Mantari Industries Ltd. 1996 (PTC)(160) 142 on the aspect of similarity in Tradename/Corporate name.
(2) Laxmikant V. Patel Vs. Chetanbhat Shah and Another 2002 (3) SCC 65 in relation to his plea of pass off.
(3) Midas Hygiene Industries (P) Ltd. and Another Vs. Sudhir Bhatia and Others (2004) 3 SCC 90
(4) CS (OS) 1521/2008, Delhi Public School Society Vs. Gopal Prasad Das and Ors., date of decision: October 29, 2014
(5) Sushma Berlia Vs. Kamal Kumar, 2015 (147) DRJ 450
(6) Tata Sons Limited Vs. Hoop Anin and Ors., 188 (2012) Delhi Law Times 327
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(7) Ex-parte injunction order dated 28.08.2008 passed in favour of the plaintiff in CS(OS) No.1519/2008 in case titled as Delhi Public School Society vs. DPS Trust;
(8) Judgment dated 14.12.2012 passed in favour of the plaintiff in CS(OS) 1519/2008 in case titled as Deli Public School Society vs. DPS Trust;
(9) Ex-parte injunction order dated 28.08.2008 passed in favour of the plaintiff in CS(OS) No.1521/2008 in case titled as Delhi Public School Society vs. Gopal Prasad Das and Ors.;
(10) Judgment dated 29.10.2014 passed in favour of the plaintiff in CS(OS) No. 1521/2008 in case titled as Delhi Public School Society vs. Gopal Prasad Das and Ors.;
(11) Ex-parte injunction order dated 28.08.2008 passed in favour of the plaintiff in CS(OS) No.1518/2008 in case titled as Delhi Public School Society vs. DPS Trust and Ors.;
(12) Judgment dated 29.10.2014 passed in favour of the plaintiff in CS(OS) No.1518/2008 in case titled as Delhi Public School Society vs. DPS Trust and Ors.;
(13) Ex-parte injunction order dated 28.08.2008 passed in favour of the plaintiff in CS(OS) No.1520/2008 in case titled as Delhi Public School Society vs. DPS Trust and Ors.;
(14) Judgment dated 29.10.2014 passed in favour of the plaintiff in CS(OS) No.1520/2008 in case titled as Delhi Public School Society vs. DPS Trust and Ors.;
(15) Ex-parte injunction order dated 23.04.2012 passed in favour of the plaintiff in CS(OS) No.1092/2012 in case titled as Delhi Public School Society vs. DPS Ferozabad and Ors.;
(16) Order dated 30.09.2013 confirming the ex-parte order dated 23.04.2012 passed in favour of the plaintiff in CS(OS) No. 1092/2012 in case titled as Delhi Public School Society vs. DPS Ferozabad and Ors.;
(17) Judgment dated 11.09.2015 passed in favour of the plaintiff in CS(OS) No.1092/2012 in case titled as Delhi Public School Society vs. DPS Ferozabad and Ors.;
(18) Ex-parte injunction order dated 19.09.2011 passed in favour of the plaintiff in CS(OS) No. 114/2011 in case titled as Delhi Public School Society vs. DPS Bharatpur and Anr.;
(19) Order dated 07.08.2012 confirming the ex-parte order dated 19.09.2011 passed in favour of the plaintiff in CS(OS) No. 114/2011 in case titled as Delhi Public School Society vs. DPS Bharatpur and Anr.
(20) Shri Pankaj Goel vs. M/s Dabar India Ltd. 2008 (38) PTC 49 Para 19, 22, 24 and 25
(21) Globe Super Parts vs. Blue Super Flame Industries 1986 AIR (Del) 245 para 42
(22) Plasticiindia Foundation vs. Ajeet Singh and Anr. 95 (2002) DLT 235 para 10 to 12
(23) Ramdev Food Products (P) Ltd. vs. Arvind Bhai Patel and others AIR 2006 SC 3304
(24) Sanofi India Ltd. vs. Universal Neutraceuticals Pvt. Ltd. 2014 (215) DLT 585
(25) Evergreen Sweet House vs. Evergreen and others 2008 (38) PTC 325;
(26) Yahoo Inc. Vs. Akash Arora 1999 (78) DLT 285;
(27) Marico Limited vs. Pratik Goyal and Anr. 2014 (214) DLT 539;
11. On the other hand Mr. Amit Sibal would submit the following:
1) That the Defendant No. 1, a Trust registered under the Indian Trusts Act, is a platform to provide an effective connect to all people who have been a part of the DPS experience i.e. Dipsites Association (Alumni of Delhi Public School), Faculty of Delhi Public Schools, spouses of Alumni, parents of Delhi Public School students. He states the foundation has been envisaged with the noble objective to give the charter of excellence in education, social service and advancement of human values.
2) Several illustrious Dipsites and former teachers are part of the DPS World foundation in the capacity as life members, trustees, etc with an endeavor to bring them all together in the forum of the DPS Foundation. He states Members of the DPS foundation have a strong link with DPS value system and share the common heritage and legacy that all Dipsites are entitled to.
3) The Foundation is a DIPSITES knowledge initiative and an independent effort of Dipsites in which every Alumni has a participation.
4) The DIPSITES Association is also a registered body under the Societies Registration Act, 1860, and its aims and objectives consist of promoting the interest of the Alma Mater, to aid and assist the Managing Committees of the Schools in all matters, to promote contacts and to maintain a spirit of co-operation.
5) The Defendant No. 2 was the founding President of the said DIPSITES Association and is a Life Member/Patron of the same.
12. He states, the founding trustee of Defendant No. 1 i.e. the Foundation includes Ms. Louise Khurshid who is the spouse of a Dipsite and former President of the plaintiff Society and a parent to Dipsites thus, taking her association to the World of Dipsites to over 30 years. He states that Mr. Rajiv Soni is the President of the Dipsites Association and is also a Dipsite himself and Mr. Rajiv Bhatnagar is also a former Dipsite. The goodwill that the Plaintiff is seeking to appropriate to itself is actually a goodwill generated by the DIPSITES, be it students, staff or teachers without which the Plaintiff Society has no goodwill. Thus the entire goodwill and reputation that the Plaintiff Society is seeking to appropriate to itself belongs to each and every DIPSITE, the staff and teachers and not to anyone else. He further argues that DPS World Foundation is a creation of this group of people and it is for this reason that the DPS World Foundation proudly proclaims that it is "A DIPSITES KNOWLEDGE INITIATIVE AND AN INDEPENDENT EFFORT OF DPS ALUMNI (DIPSITES).NOT A PART OF DELHI PUBLIC SCHOOL SOCIETY, NEW DELHI. The said Advisory is in fact a proclamation of the Foundation that it is different and takes pride in disassociating itself from the Plaintiff Society. He argues that Defendant No. 1 has no intent to mislead anyone nor does it want to have any association with the Plaintiff Society in any manner, which can be gathered from the Advisory filed at Page 102 of the Plaintiff s Documents.
13. It is his submission that the Defendant No. 1 is not making any fraudulent gain or misrepresentation to any member of public, which is evident from the documents filed by the Plaintiff Society along with the Plaint at Page 217-218, 220-221, 223-224, 225-226 in the List of Documents. He states that the documents containing the advertisements published by the Defendant No. 1 Foundation and its members clearly and in unequivocal and unambiguous manner shows that the Defendant No. 1 disassociates itself with the plaintiff.
14. He would further submit that as far as Defendant No. 2 is concerned, he is one of the most well known and prominent alumni of the Plaintiff School and in fact today the Delhi Public School has become synonymous with Defendant No. 2 and every Dipsite today proudly represents himself/herself as a product of Mr. Salman Khurshid's school. He further states that Defendant No. 2 is an eminent lawyer who has contributed immensely to the Bar. Apart from being an eminent Lawyer, Defendant No. 2 is also a member of the All India Congress Committee and has served the Govt. of India in various capacities as Deputy Minister, Minister of State, as well as Cabinet Minister while holding the position of Minister for Corporate Affairs, Minister for Minority Affairs, Minister for Law and Justice and also Minister for Foreign Affairs.
15. He further states that the Crest Logo with Leaf was an idea conceived by Defendant No. 2 in his personal capacity. The idea was shared by Defendant No. 2 in his personal capacity with the then art teacher at Delhi Public School, Vasant Kunj and Defendant No, 2, who was then the President of the Plaintiff Society requested her to draw a logo with a crest based on his idea and description for his personal use. He further states that the Plaintiff Society had no permission or authority to use the said Logo, which was a creation of and conceived on the basis of the idea of Defendant No. 2 and the usage, if any, is purely illegal and unauthorized. He states that Defendant No. 2 was the first to use the Logo on his Letter Heads, which no other members have used at any given time.
16. He further states that the Art Teacher who made the drawing based on Defendant No. 2's idea has sworn an Affidavit stating that the Crest was drawn by her at the instance of and based on the idea of Defendant No. 2 and that all rights vest in favour of Defendant No. 2.
17. He states that in view of the submissions made herein above Defendant No. 1 reiterates that it is entitled to and is rightly using the name DPS World Foundation and is further more the owner of the copyright that lies in the crest logo as the same has been vested in it by the owner of the said Crest i.e. Defendant No. 2.
18. He further states that Defendant No. 1 Foundation is using the below Logo which is further designed by Defendant No. 2 keeping in view the ideals of the Foundation i.e. "STRIVING TOWARDS PERFECTION" and showing clearly that it has no relationship with Plaintiff Society by inscribing "A DIPSITES KNOWLEDGE INITIATIVE".
IMAGE (Defendant No. 1 s mark)
19. He would further submit that the Plaintiff Society has no right on the same for the reason that the Copyright vests in Defendant No. 2 and if the Plaintiff has used it at any given time, then the same is without any permission or authority of Defendant No. 2 and amounts to infringement of Copyright of Defendant No. 2.
20. He further states that the Plaintiff Society being a juristic person could not have conceived nor created the artistic Crest Logo and therefore Plaintiff s averments with regard to the same are devoid of logic and amount to suggestio falsi. He states that there is nothing in the pleadings to substantiate the Plaintiff s bald averments with regard to the Plaintiff being the First Owner or First Publisher of the artistic Crest Logo or for that matter who is the person who has designed the same for the obvious reason that the Plaintiff is not even aware of the same. He argues that no case can be made out for violation of copyright unless the name of the person is disclosed or asserted in the pleadings and hence the suit is liable to be dismissed on this ground itself, as far as the claims on Crest Logo is concerned.
21. He states that the Plaintiff s trademark certificate over the Delhi Public School Logo as set out under Class 16 reflects that the trademark is subject to the condition and limitation that the Plaintiff Society has, "No exclusive right over the device of Torch separately and Delhi Public School". He relies on letter of the Attorney of the Plaintiff dated August 25, 2008 wherein, the plaintiff has agreed to giving up the exclusive rights. Similarly, the Delhi Public School Logo as set out under Class 35 and 36 reflects that the trademark is subject to the condition and limitation that, "No right for Delhi Public School". He states that in this respect, the letter of the Attorney of the Plaintiff dated September 24, 2008 is being filed with the list of documents wherein they have agreed to give up the exclusive rights and also, the plaintiffs trademark certificate over the Delhi Public School Logo as set out under Class 41 i.e. Education, clearly and categorically records that it is subject to the condition and limitation of, "No right to Delhi Public School separately". He states that this assumes significance and leaves no manner of doubt that the Plaintiff Society has no exclusive right to Delhi Public School separately.
22. He has further stated that it is necessary to underline the fact that using variations of the Shield/Leaves/Torch in a Device is common practice and these elements are common to the Registered Logos/Marks of various organizations including international bodies like the UNICEF, UNDP, UNHCR, CISF, Wayne State University, Philippine School (Bahrain) and many more. This is because a Torch/ Creeper/ Leaves or a Torch surrounded by Creeper/Leaves symbolizes Learning, Discipline, Excellence, Concern for Environment, Victory etc. and many organizations which adopt these values use such elements in their Devices.
23. He would state that in India itself, several educational societies/institutions are using the registered logo and the trade name of the Plaintiff Society such as the Delhi Public School Ghaziabad, Vasundhra, Delhi Public School Pvt. Ltd, North Delhi Public School, Shalimar Bagh, Delhi, Delhi Public School, Sambalpur, Odisha which dilutes the strength of the Plaintiffs Trademark manifold, as it is not distinctive enough in a crowded market.
24. The Plaintiffs Registered Logo comprises of elements which are non-distinctive and often used by organizations to symbolize Learning, Discipline, Excellence, etc.
25. He has further stated that in such a situation where the supposed goodwill vested in the words 'Delhi Public School Society as well as in the Registered Logo stands diluted because of years of decimation of quality and the organization being infected with nepotism, corruption, and anti-democratic practices. The Plaintiff society has also given up the exclusive right and goodwill to the mark by not only accepting the order of the Registrar but also submitting the following in various proceedings:
that the "DELHI" "PUBLIC" and "SCHOOL" together or separately is common to use and it has been used by various applicants, therefore the registration of the mark in favour of more than one applicant is rightly allowed. (statement of a Licensee of the Plaintiff)
"That the Applicant hereby agrees to the condition of having No Exclusive Right over the devise of Torch Separately and on DELHI PUBLIC SCHOOL".
26. He has argued that the DPS World Foundation is using a logo with the motto "Striving toward Perfection" whereas the Plaintiff Society is using the motto "Service before Self. The DPS World Foundation has a torch/Mashaal on an open book, superimposed on a shield and surrounded by laurel leaves whereas the Plaintiff Society has a hand holding a Torch/Mashaal and the words Delhi Public School below this. It is necessary to indicate that the Defendant No. 1's Logo displays the words DPS World Foundation and below this it prominently and conspicuously states "A Dipsites Knowledge Initiative". He states that this would clearly demonstrate that Defendant No. 1 is a Dipsites Knowledge Initiative.
27. He submits that without prejudice and without admitting that the Plaintiff has any exclusive right on the words "DELHI" "PUBLIC" "SCHOOL" the Defendant No. 1 submits that at no point of time, on any material or any media, it has used the words 'Delhi Public School' as part of its Trade name or as part of its Logo or Motto, though Defendant No. 1 can name its schools as Delhi Public World School. He states that the Plaintiffs averments with regards to usage of the words 'Delhi Public School by the Defendant No. 1 amounts to misrepresentation of material facts. The Defendant No. 1 s name uses the word 'DPS World School' in which the alphabet D stands for 'Dipsites'. He further states that Plaintiff cannot by virtue of registration of word DPS, an acronym for Delhi Public School prevents any other organization or school from using such acronym. For Example Doon Public School would be known as DPS too, similarly there are several other schools whose acronym can stand as DPS.
28. He has stated that 'DPS' is only an acronym and using acronyms in the place of the full names of educational institutes is common practice, for example Indian Institute of Technology is called IIT and Indian Institute of Management is called IIM. Such use in common parlance cannot be said to confer monopoly rights under Trademarks regime on the acronym, particularly because acronyms, by their very definition, can stand for multiple things. He states that nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris.
29. He would further submit that the DPS World Foundation has not misrepresented on any of its documents, website, etc that it is in any manner connected or a part of the Plaintiff Society. Further the class of consumers who are likely to avail/enroll on the programmes i.e. Education of the DPS World Foundation would belong to a reasonably educated, informed and aware section of society which is an extremely relevant consideration while adjudicating an alleged claim of passing off. He submits infact, while dealing with cases of Trademark Infringement or passing off the courts must bear in mind the nature of goods or services offered and the class of consumers who can get misled. He further submits that Schools and Education Institutions are not like fast moving consumer items or medicines. A parent, while choosing the school for his/her kid would do a extensive due diligence and background check of the school before admitting the child where the future of the child would be groomed and nurtured. It would be a long relationship extending from nursery to class 12 i.e. almost a 14 year long association. Thus the parameter for judging such cases cannot be on the basis of fast moving consumer items. He further submits that in the present case, as has been stated in the foregoing para's, the Defendant No. 1 has neither made any misrepresentation nor is fraudulently trying to encash on the alleged goodwill of the Plaintiff Society. He submits that Defendant No. 1 has immense goodwill by virtue of its association with Defendant No. 2, being the brightest Dipsite.
30. He further submits that the plaintiff Society with a mala fide intent to mislead this Court, has stated in the Plaint that all their trademarks are registered, which is blatantly a false submission. He submits that neither DPS nor "Delhi Public School" are registered under class 41 for Education.
31. He states furthermore, the Plaintiff herein, by his own admission, became cognizant of the Defendant No. 1 in the month of July 2015. Despite such knowledge, the Plaintiff Society took no steps to protect their alleged Trademark and Word mark, which disentitles them from the discretionary remedy of an injunction.
32. The defendant No. 1 in its written arguments, states as under:
(i) that, the instant case is not for a FMCG product or a pharmaceutical product but relates to services in the field of Education. Education is neither a business nor a commercial activity, it is charitable in nature and hence has to be viewed differently as compared to cases involving commercial business ventures.
(ii) The case of the Plaintiff is for infringement of its Trademark (i) DELHI PUBLIC SCHOOL (unregistered in any of the classes), (ii) DPS (unregistered in Class 41 for Education) and the two Logos one being registered (iii) IMAGE (Plaintiff s registered mark)(at 1 of Annexure-A) (with disclaimers to Torch and word DELHI PUBLIC SCHOOL ) and the other being unregistered (iv) IMAGE (Plaintiff s unregistered mark). (at 2 of Annexure-A).
NO CASE OF INFRINGEMENT IS MADE OUT
(iii) As far as Defendant No. 1 is concerned, it is known as DPS World Foundation and its Schools are known as DPS World Schools . Defendant No. 1 is not using unregistered Trademark DELHI PUBLIC SCHOOL or Plaintiff s registered Logo, hence no case of Infringement or Passing off can be made out under Section 29 of the Trademarks Act, 1999.
(iv) Defendant No. 1 is using a Logo IMAGE (Defendant No. 1 s mark) (at 3 of Annexure A) which is neither identical nor similar to Plaintiff s registered Logo. The Defendant s Logo contains the words DPS World Foundation and Striving Towards Perfection inscribed within it whereas the Plaintiff s registered Logo contains DELHI PUBLIC SCHOOL and motto SERVICE BEFORE SELF (with disclaimers to Torch and the word DELHI PUBLIC SCHOOL). Even on comparision of the Registered Logo of the Plaintiff and that of Defendant s Logo are different both visually and even otherwise. Thus no case of Infringement under Section 29 of the Trademarks Act or Passing off can be made out on the basis of comparision with Registered Logo of the Plaintiff.
(v) As far as Plaintiff s claim on the unregistered Logo is concerned, the same is disputed on various counts i.e. (i) there is no specific pleading to the effect that who is the author of the copyright (ii) Copyright is claimed by Defendant No. 2 and Santosh Jain (admitted by Plaintiff in Rejoinder) (iii) the usage of the same is also not shown in India atleast after 2008 and the only document that has been relied upon is the usage in Dubai by DELHI PRIVATE SCHOOL, (iv) Delhi Private School is not a party nor Plaintiff can claim a right on the basis of usage outside India. (vi) DELHI PUBLIC SCHOOL is neither a derived word nor an invented word and is a classic example of Generic name. To be more precise, it is a purely descriptive word, which even the Plaintiff Society is aware of. Perhaps, it is also for this reason that the mark DELHI PUBLIC SCHOOL is not registered in any class and even the Plaintiff Society has given up the exclusivity by their various letters (Pages 36 to 51 of the List of Documents filed by the Defendant)
PLAINTIFF s CASE OF PASSING OFF ALSO NOT MAINTAINABLE
(vi) At best the Plaintiff s case hinges on Passing Off, though according to Defendants even the same is not maintainable as Plaintiff fails to bring its case within the realm of Passing Off and its test based on classic trinity namely (i) Misrepresentation (ii) Likelihood of Confusion and (iii) damage.
(vii) The Defendant No. 1 DPS WORLD FOUNDATION is a Trust, registered under the Indian Trusts Act, which is a Charitable Organization. As far as word DPS World is concerned, it is a Trust created by DiPStes (alumni of various DPS Schools, parents of DPS alumni as well as teachers and staff of various DPS Schools) having filial link to their alma mater and the DiPSites have rightfully identified themselves as DPS . The Plaintiff cannot take away the rights of the DiPSites to identify themselves by this name or usage of DPS World for Defendant No. 1 trust.
(viii) Alumni of Delhi Public Schools, it teachers, staff have a filial link to the various Delhi Public Schools and thereby the Name DPS World is derived from. The adoption of the name DPS World where DPS stands for DiPSites is honest and legitimate as the members have a filial link to their alma mater and there is an organic relationship which none can take away from DiPSites. Infact a DiPSites Society of Alumni has been in existence since 1982 in which the founding President was Defendant No. 2 and over which Plaintiff has no control. Every member of DiPSites are also members of Defendant No. 1.
(ix) The Charter at Page 141 of Plaintiff s Document clearly spells out the very basis on which the Defendant No. 1 has been formed and Page 145 Clause 1.2 spells out who can be a member of the Defendant No. 1 Foundation. The very basic difference between Plaintiff s Society and Defendant Foundation is that Plaintiff considers Education as a Commercial activity whereas Defendant truly believes that Education is a Philanthropic activity, which also underlines why the DiPSites joined hands to form the Defendant Foundation.
(x) Plaintiff Society nor its schools are identified as DPS. Various license Agreements filed by Plaintiff Society (Pages 106, 119 at Page 120, Page 128 at Page 129, Page 137 at Page 138 of Rejoinder Document of Plaintiff) shows that the license has been granted for use of purely generic and descriptive word Delhi Public School its Motto and Logo . Not a single document has been shown to prove that either the Plaintiff Society or the Schools are named as DPS. None of the document filed by the Plaintiff showing License agreement has mentioned DPS . No evidence of valid user has been produced by the Plaintiff for the word DPS.
(xi) Plaintiff has heavily relied upon some of the letters of Defendant No. 2 wherein Defendant No. 2 has used the words DPS to prove their case that it is known as DPS. Mr. Sibal would state, that the documents are internal correspondences and, the author for the sake of convenience has used abbreviation or acronyms, and therefore it cannot be the basis for claiming a Trademark. Plaintiff has not shown any document to show that any of their school is named as DPS .
(xii) As far as Leaf Crest Logo IMAGE (Defendant No. 1 s mark) of Defendant No. 1 is concerned the Plaintiff has no copyright. The copyright over the same is claimed by Defendant No. 2 and the logo has been drawn by one Ms. Santosh Jain based on idea and initial design of Defendant No. 2. Plaintiff admits that the logo has been drawn by Ms. Santosh Jain in the Rejoinder (pages 13, and 19 of the Plaintiff s Rejoinder) though in the suit the Plaintiff has not disclosed the name of the artiste and claimed that the logo was designed by Plaintiff i.e. a juristic person.
(xiii) The Plaintiff has not placed any document to show its usage in India and the only document they have placed is of a Dubai School at (Pages 88 and 89 of Rejoinder Document) which identifies itself as DELHI PRIVATE SCHOOL . Thus no case of passing off can be made out for a logo, which is not in use by the Plaintiff and the copyright of which is also not with Plaintiff.
(xiv) The defendant No.1 underlined the difference between trademark infringement in commerce and the usage of trademarks in the field of education. Further, the deliberation involved in selecting a school for one s ward is an exercise that consumes one s life during the deliberation, and there is much anxious hand ringing, stress and tears that the process involves and, a lot of due diligence is done in order to ensure an informed choice. The Relationship with a school is not a momentary one like a FMCG Product, but is a life long filial relationship, which continues to exists even after one has left his alma mater. Thus, there being no danger of confusion in such a case as the reasonable man in this situation will never have imperfect recollection rather, he would be armed with much more knowledge than can be gathered by merely looking at trade mark passively. In a catena of judgments the Courts have dealt with this aspect and have laid down that there can be no confusion in the case of trade marks in the field of education in both school and colleges.
* Skyline Education Institute v. S.L. Vaswani [(2010) 2 SCC 142] at Para 26
* S.K. Sachdeva v. Shri Educare Limited [2016 SCCOnline Delhi 473] at Para 21
* Shri Ram Education Trust v. SRF Foundation [2016 SCCOnline Delhi 472] at Para 19
* Khoday Distilleries v. Scotch Whiskey Association [(2008) 10 SCC 723] at Para 74-77
* Cadlla Healthcare Ltd. v. Cadila Pharmaceuticals [(2001) 5 SCC 73] at Para 16 and 35
(xv) It is the case of the Defendant that the highest protection available to any trademark, is its registration and exclusive usage, which by the own admission of the Plaintiff has been waived off. Also, the protection available to a mark is under the category/class under which it is registered and the same cannot be extended to all the classes/categories under the Trademark Act. It is an admitted position that the Trademark of the Plaintiff is under objections under Class 41 of the Trademark Act and the right for exclusive usage of the words Delhi Public and School has been surrendered by the Plaintiff under Classes 16, 35, 36, 41 and 42 way back in the year 2008. The same is also available on record of this Court (at pages 36-51) of the Defendants documents filed along with the Reply to Application under Order XXXIX Rule 1 and 2 filed by the Plaintiff.
(xvi) Plaintiff concedes that the Defendant No. 1 has employed an Advisory and words on crest about Foundation/Dipsites Initiative but has stated that the same is in small font. Hence, the complaint of the Plaintiff is about font and the same can be worked around (Rejoinder Pg. 39). The Advisory has been published right from the beginning putting defendants in better position than parties allowed to use trade marks by court subject to Disclaimers. (Shri Ram School case, Goenka School Case).
(xvii) Plaintiff also seems to be making false statement about Delhi Public School Ghaziabad. It s a society created by Plaintiff society members some more than two decades back and is still operational. Meanwhile the following are active: DELHI POLICE PUBLIC SCHOOL, Delhi Public School Pvt Ltd, Delhi Public Educational Society, Modern Delhi Public School, North Delhi Public School, all public sector Delhi Public Schools, DPS Kids etc.
NO CASE IS MADE OUT FOR COPYRIGHT INFRINGEMENT ON UNREGISTERED LOGO
(xviii) No Copyright vests in the Plaintiff with regard to the logo of the Defendant No.1 as it was designed and used by Defendant No. 2. The Logo used by the Defendant No.1 was prepared on the basis of the inputs and ideas given by Defendant No. 2 in his personal capacity to an Art Teacher for his use. The artist has given affidavit that she did it for Defendant No. 2. (Page 33-35 of the Documents filed by the Defendant along with its Reply). It is a very interesting aspect that in the Plaint and the Application the Plaintiff Society does not even say who made the drawing and merely states that a juristic person (Plaintiff Society) conceived and adopted another crest logo for the schools without a whisper regarding the author or their agreement with the author for the assignment of the artistic work to the Plaintiff. In this regard he pointed a coordinate bench of this Court in Tech Plus Media Private Ltd. vs. Jyotijanda and Ors. [2014 (60) PTC 121 (Del)] held at Para 20 that The plaintiff is a juristic person and is incapable of being the author of any work in which copyright may exist. However the plaintiff can be the owner of a copyright under an agreement with the author of the said worl. For the plaintiff to maintain the present suit, it is incumbent upon the plaintiff to disclose the said work and the author thereof and the agreement under which the author has made the plaintiff the owner of the copyright in the said work . He would state, the present and past letter heads of the Plaintiff Society has never used the crest after about 2004.
33. He would rely upon the following judgments in support of his contention:-
| S. NO | JUDGMENTS | CITATION |
| 1. | CADILA HEALTHCARE LTD. VS CADILA PHARMACEUTICALS LTD. | (2001) 5 SCC 73 |
| 2. | KHODAY DISTILLERIES LIMITED VS. SCOTCH WHISKEY ASSOCIATION | (2008) 10 SCC 723 |
| 3. | GOENKA INSTITUTE OF EDUCATION and RESEARCH VS. ANJANI KUMAR GOENKA and ORS. | ILR (2009) VI DELHI 415 |
| 4. | ARAVIND LABORATORIES VS MODICARE | 2011-4-L.W. 55 |
| 5. | SHANMUGAVEL VS ASSOCIATED PUBLISHERS (MADRAS) LTD. | 1995(II) CTC 260 |
| 6. | ST. STEPHENS COLLEGE VS ST. STEPHENS COLLEGE ALUMNI ASSOCIATION | (2011) SCC ONLINE DEL 4184; (2011) 183 DLT 567 |
| 7. | S.M. DYECHEM LTD. VS CADBURY (INDIA) | (2000) 5 SCC 573 |
| 8 | J.K. OIL INDUSTRIES VS ADANI WILMAR LIMITED | 2010 (115) DRJ 685 |
| 9. | WANDER LTED AND ANOTHER VS ANTOX | 1990 (SUPP) SCC 727 |
| 10. | SHRI RAM EDUCATION TRUST VS SRF FOUNDATION | 2016 SCC ONLINE DEL 472 |
| 11. | S.K. SACHDEVA VS SHRI EDUCARE LTD. | 2016 SCC ONLINE DEL 473 |
| 12. | RAJESH JAIN VS. AMIT JAIN and ORS. | 2014 SCC ONLINE DEL 1984 |
| 13. | HEINZ ITALIA and ANR VS. DABUR INDIA LTD. | (2007) 6 SCC 1 |
| 14. | SKYLINE EDUCATION INSTITUTE VS S.L. VASWANI and ANR | (2010) 2 SCC 142 |
| 15. | AMRITDHARA PHARMACY VS. SATYA DEO GUPTA | (1963) 2 SCR 484 |
| 16. | STAR INDIA PVT. LTD. VS. LEO BURNETT INDIA PVT LTD. | 2002 SCC ONLINE BOM 942 |
| 17. | M/S KIRORIMAL KASHIRAM MARKETING and AGENCIES PVT. LTD. VS. M/S SHREE SITA CHAWAL UDYOG MILL | 2010SCC ONLINE DEL 2933 |
| 18. | JAMES CHADWICK and BROS. LTD. VS. THE NATIONAL SEWING THREAD CO. LTD. | 1951 SCC ONLINE BOM 33 |
| 19. | S. SYED MOHIDEEN VS. P. SULOCHANA BAI | (2016) 2 SCC 683 |
| 20. | SHRI EDUCARE LTD AND ANR VS S.K. SACHDEVA AND ANR | Special Leave to Appeal (C) No(s). 4667/2016 Date of Decision:04/03/2016 |
| 21. | SATILILA CHARITABLE SOCIETY AND ANR. VS. SKYLINE EDUCATION INSTITUTE (I) (P) LTD. | 2005(30)PTC561(Del) |
| 22. | TECH PLUS MEDIA PRIVATE LTD. VS. JYOTIJANDA and ORS. | 2014 (60) PTC 121 (Del) |
| 23. | INDIA HABITAT CENTRE THROUGH ITS DIRECTOR VS. SUNITA AEREN, SANJEEV J. AEREN, INDIRAPURAM HABITAT CENTRE AND VICE CHAIRMAN, GHAZIABAD DEVELOPMENT AUTHORITY | MIPR 2008 (2) 0379 |
35. It is noted from the above that the plaintiff society was initially formed in the year 1948-49 when it started the Delhi Public School. In the year 1962, the name of the society was changed to Delhi Public School Society. The plaintiff established various schools in India and abroad. The schools established by the society are 11 in number and are known as core schools. It has also entered into an agreements with other societies/trusts for establishing various schools known as affiliated schools. It had also schools established outside India.
36. The case of the plaintiff is that the use of mark/name DPS are so extensive that the said mark/words have always been pursued by the general public as indicative of the source of the plaintiff and therefore, the aforesaid mark is associated by the general public with the plaintiff and nobody else.
37. The defendant No. 1 s trustees include the spouse of the defendant No. 2, who was a life member of the plaintiff society and held the position of the President of the plaintiff society for ten years. The defendant No. 2 was the founding President of the Dipsites Association (Alumni Association) which is in existence since 1982 and is a life member of the same. The case of the defendant No. 1 is that the goodwill that the plaintiff is seeking to appropriate itself, is actually the goodwill generated by Dipsites and as such, it belongs to each and every Dipsite, staff and teacher and not to anyone else. In other words, the alumni of Delhi Public School, its teachers/staff have a filial link to various Delhi Public Schools, and where the name DPS is derived from. The adoption of the name DPS World where DPS stands for Dipsites is honest and legitimate adoption as members have a filial link.
Plea of Infringement:
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.
Passing off:
39. Further, from the perusal of various documents filed and referred to during the submissions, the following is noted:
(i) In the circular dated June 12, 2015, the Founding Trustees of defendant No. 1 themselves referred to DPS at various places, which if read in context is, a reference to the Delhi Public School.
(ii) The DPS and Dipsites are referred to in different context i.e. as a School and as Alumni Association respectively,.
(iii) In letter dated August 21, 2004 (page 88), the words DPS refer to the Delhi Public School. Similarly, the brochure giving the history of DPS World at page 91, refers to the DPS in the context of Delhi Public School.
(iv) The membership form of defendant No. 1 which depicts DPS at different places is also in the context of Delhi Public School.
(v) The Charter of DPS World Foundation depicts DPS in the context of Delhi Public School. In fact, the same depicts DPS/Dipsites in the context of Delhi Public School and alumni of the schools.
(vi) The correspondence at page 257-261 of the plaintiff s documents referred to the Delhi Public School Society as DPS.
(vii) Similarly, in various agreements signed by the defendant No. 2 in his capacity as President of the Society refers to Delhi Public School Society as DPSS.
(viii) In the booklet issued on completion of 50 years of the existence of Delhi Public School, Mathura Road, New Delhi, the same is referred as DPS.
40. From the above, it is clear (at least at this stage) that, the mark/name DPS owe its origin to Delhi Public School and not to Dipsites as sought to be contended by Mr. Sibal. Further, it is noted that, the spouse of the defendant No. 2, who is the trustee of defendant No. 1, was herself not a Dipsite . That apart, the Institutional membership of the defendant No. 1 is also open to a Trust/Society intending to set up a DPS World School in India/abroad, with no earlier connection with Delhi Public School. So, to connect defendant No. 1 with Dipsites Association is not appealing. It is also noted, the aims and objectives of the Dipsites Association includes, to aid and assist the Managing Committees of the schools in all matters, which are the schools under the plaintiff. The aims and objective nowhere stipulates, establishment of schools.
41. It is a matter of record, in terms of the various judgments/orders passed with regard to the mark/name DPS , this Court has held that, schools established by the plaintiff society, are known as Delhi Public Schools and are popular by the branch names and the public at large and students, staff refers to the same as DPS .
42. Insofar as the submission of Mr. Sibal, relying upon the judgment of this Court in the case of J.K.Oil Industries (supra), wherein, this Court has held that, in order to bring home the tort of passing off, the plaintiff has to establish and prove the three tests i.e. (i) the defendant has made a false representation or implied deception. Mere confusion will not suffice; (ii) because of such false representation, an unwary consumer is deceived though, there is no necessity to prove intent; (iii) the false representation has injured the plaintiff s goodwill and not just its reputation, is concerned, suffice to say, the ingredients of passing off as referred to above, will have to be proved by the plaintiff by leading evidence during the course of the trial.
43. The test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel vs. Chetanbhat Shah and Another (supra), wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held, in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
It was held in Laxmikant V. Patel (supra) that the principles which apply to trademark are applicable to trade name also. Para 10 of the aforesaid judgment reads as under:-
The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
In this case, the Supreme Court further observed that:
Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
On a prima facie view, based on the documents, orders, this Court is of the view that, the plaintiff has made out a case for interim relief with regard to the usage of the trademark DPS . Further, the balance of convenience is also in favour of the plaintiff.
44. The reliance placed by Mr. Sibal, on the judgment of Satilila Charitable Society and Anr. (supra) to contend that the education has never been treated as trade or business in this country and since time immemorial, it has been treated as religious duty and charitable activity, is concerned, suffice to state, in the present day context, with privatisation, the position has changed. The fact that the defendant No. 1 has made membership open to the institutional members on payment of fee, surely, the belief that the education is religious duty and charitable activity, is weaning. In any case, such a plea need to be considered at a later stage, after the trial is concluded, based on evidence.
45. Insofar as the judgment of Shri Ram Education Trust (supra) is concerned, the Division Bench has primarily set aside the order of the learned Single Judge, by holding in para 15 and 16 as under:
15. The Plaintiffs have not been able to prima facie show that they are entitled to use the family name to the exclusion of the Defendant. Both the brother having common lineage, prima facie have common rights and cannot exclude the other. It is not disputed that the name SHRI RAM was first used by Late Sir Shri Ram, who established educational institutions such as Shriram College of Commerce, Lady Shriram College for Women, Shriram Institute for Industrial Research etc. The name SHRI RAM was adopted by the family in relation to their respective endeavours.
16. When the name SHRI RAM has admittedly been first adopted by the grandfather of the parties, the plaintiffs cannot appropriate the same to the exclusion of the defendant. The goodwill and reputation in the trademark adopted by the grandfather shall enure to the benefit of all the heirs, unless something to the contrary is shown so as to exclude the other heirs. One member of the family cannot, without something more being shown to the contrary, claim exclusive ownership of the mark. All the heirs of the person who first adopted a mark and put the same to use and earned goodwill and reputation shall, prima facie, have equal rights to adopt and use the same. Something more than mere prior adoption by one of the heirs would have to be shown so as to extinguish the rights of the other heirs .
The case so relied upon is not applicable to the facts of this case and is distinguishable.
46. Insofar as the contention of Mr. Sibal that Delhi Public School is neither a derived word nor an invented word and is a classical example of generic name, is concerned, suffice to state, the mark Delhi Public School , is registered as a trademark in different classes way back in the year 2007. That apart, the mark/name Delhi Public School was coined 65 years back. It needs to be seen that the trademark/name Delhi Public School has acquired a secondary meaning to transform it and give it a distinctiveness with an exclusive right with registered/prior user, which requires evidence to be laid during the course of trial. Be that as it may, in the case in hand, the issue is related to the trademark/name DPS , by which, the schools of the plaintiff are recognised. It is a matter of evidence that, DPS has attained distinctiveness, goodwill and reputation. That apart, the reliance placed by Mr. Sethi on several orders of this Court in support of his contention, wherein, this Court had held DPS enjoyed goodwill and reputation in the field of school education, is a relevant factor for determining the prima facie case in favour of the plaintiff.
47. Insofar as the submission of Mr. Sibal that there is a difference between the trademark usage in commerce and usage of trademark in education, is concerned, the same would not be correct in the present day context. Be that as it may, it needs to be ascertained in the trial, whether the usage of DPS would not create confusion in the mind of a parent while choosing the school of the plaintiff and the judgments relied upon by Mr. Sibal in Skyline Education Institute (supra), S.K. Sachdeva v. Shri Educare Limited (supra), Khoday Distilleries (supra) and Cadilla Healthcare Ltd. (supra) would not be relevant while deciding the issue of grant of interim relief.
48. The submission of Mr. Sibal that the defendant No. 1 has suo moto and right from its inception has been showing their disassociation with the plaintiff society by putting up an Advisory, which reads as under:
A Dipsites Knowledge Initiative and an independent effort of DPS Alumin (Dipsites). Not a part of Delhi Public School Society, New Delhi
49. Suffice to state, the Advisory as noted at page 102 is only on the website of the defendant No. 1. Such an Advisory has not been put in the various advertisements issued in newspapers. The advertisement reads as A Dipsites Knowledge Initiative which is different from the Advisory issued by the defendant No. 1 on its website. Still, it is a matter of evidence whether such an Advisory would not create confusion or is sufficient notice to the public at large that the defendant No. 1 is not associated with the plaintiff in any manner, or would not pass off its institution/schools as the plaintiff s schools. Further, it need to be seen, that, whether the Advisory is sufficient for the plaintiff to protect its common law right in trademark, when I note, in one of the advertisements, (at page 245 of the plaintiff s documents), the photograph of defendant No. 2 is shown, who, in terms of the stand of the defendant No. 1, is one of the most well-known and prominent alumni of the plaintiff school, and in fact, the Delhi Public School has become synonyms with defendant No. 2.
50. The submission of Mr. Sibal, by referring to various documents, that the plaintiff has given up the exclusive right on the mark Delhi Public School and its device Torch (Mashaal), is concerned, the same has been denied by the plaintiff in its rejoinder. Rather, it is the case of the plaintiff that the trademark certificate over the logo at (1) to Annexure-A, as set out in class 16 reflects that the trademark is subject to the condition and limitation that the plaintiff s society has no exclusive right over the device of Torch separately and Delhi Public School . It is the stand of the plaintiff that from the letter of the attorney of the plaintiff dated August 25, 2008, the plaintiff has not agreed to give up exclusive rights. Similar is the case with respect to the logo set out under class 35 and 36 and insofar as the logo set out under class 41 i.e. the education which records that it is subject to the condition and limitation of no right to Delhi Public School separately , the said condition is with respect to the label mark at (1) to Annexure-A and not in respect to word mark Delhi Public School .
51. One of the submissions of Mr. Sibal is that the delay would disentitle the plaintiff the relief inasmuch as the plaintiff by its own admission, became cognizant of the defendant No. 1 in the month of July 2015 and despite such knowledge, the plaintiff has not taken any steps to protect the trademark till February 2016, when the present suit was filed. Suffice to state, the reliance has been placed by Mr. Sethi on the judgment of the Supreme court in the case of Midas Hygiene Industries (P) Ltd. and Another (supra), wherein, this Court has held as under:
5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest .
52. That apart, in Ramdev Food Products Pvt. Ltd. (supra), in paras 106 to 111, the Supreme Court held as under:-
106. In M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. [(1994) 2 SCC 448], this Court stated:
"Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches......."
107. In an infringement of trade mark, delay by itself may not be a ground for refusing to issue injunction as has been observed by Lahoti, J. (as His Lordship then was) in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Others [(2004) 3 SCC 90] in the following terms:
"The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest." (Emphasis supplied)
108. The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lay by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief.
109. Kerr in his "Treatise on the Law and Practice of Injunction", Sixth Edition at pages 360-361 states as under:
"Mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action deceit.
But delay may cause the Court to refuse an interlocutory injunction, especially if the defendant has built up a trade in which he has notoriously used the mark..."
110. Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. [See Spry on Equitable Remedies, Fourth Edition, page 433].
111. Applying the aforementioned principles in the instant case, it is evident that the time gap between the issuance of the notice and filing of an application for grant of injunction was not a voluntary act on the part of the appellant herein. It had to wait for the outcome of various proceedings pending before different courts. The respondents having themselves taking recourse to judicial proceedings, as noticed hereinbefore, cannot now be permitted to set up the defence of acquiescence on the part of the appellant. Indisputably, in a case of infringement of trade mark, injunction would ordinarily follow where it is established that the defendant had infringed the trade mark and had not been able to discharge its burden as regard the defence taken by it.
53. It is also noted from that, a show cause notice was issued to the defendant No. 2 for having association in the creation of the defendant No. 1; adoption of impugned infringing trademark; for setting up the schools across India; franchise of such schools to other people which was in contradiction to the position then held by him as a life member of the plaintiff. Defendant No. 2 submitted his reply on August 28, 2015, wherein, according to the plaintiff, the defendant No. 2 has admitted that he is associated with the defendant No. 1. Vide notice dated September 17, 2015 issued by the plaintiff to the defendant No. 2, the defendant No. 2 ceased to be a life member of the plaintiff with effect from October 17, 2015. The defendant No. 2 has filed a suit, CS (OS) 3094/2015, declaring the notice dated September 17, 2015 as null and void. This suit has been filed in February 2016. In any case, the issue of delay is a mixed question of fact and law and needs to be decided in trial upon furnishing evidence.
Crest Logo:
54. There is no dispute that the plaintiff has registration in the crest logo at 1 of Annexure-A to this judgment. It is the case of the plaintiff that the crest logo at 3 of Annexure A infringes the crest logo/mark at 1 of Annexure-A and also the plaintiff copyright with regard to identical crest logo at 2 of Annexure-A.
55. There is also no dispute that the crest logo at 1 of Annexure-A is registered in class 41 (Education). It is to be seen whether the crest logo of the defendant No. 1 at 3 of Annexure-A is identical or deceptively similar to the crest logo at 1 to the plaintiff. Apparently, it does not appear to be identical or deceptively similar for the plaintiff to contend infringement of its registered crest logo at 1 of Annexure-A. The only common feature, is the Torch (Mashaal). The crest logo of the defendant No. 1 does not feature the hand. Additionally, it has a book in the background. That apart, the crest logo of the defendant has creepers on both sides, which are not there with the crest logo of the plaintiff. The crest logo of the defendant No. 1 is not identical or deceptively similar so as to infringe the registered crest logo of the plaintiff. I may note, here, that the defendant No. 1 has stated in its reply that it is neither using the registered crest logo of the plaintiff at 1 of Annexure A , nor it intends to use the same in future.
Crest logo at 2 and 3 of Annexure-A:
56. Insofar as crest logo at 2 of Annexure-A is concerned, the plaint records, that in the year 1996-97, the plaintiff conceived and adopted the crest of the school which comprises of a Torch (Mashaal) on a book along with the school moto Service Before Self written inside a shield device surrounded by creepers and the words Delhi Public School , written at the bottom with other distinctive artistic feature comprised therein. The said artistic device was first created and designed by the plaintiff and which crest is an original artistic work and the plaintiff is the first owner of the same under the provisions of the Copyright Act, 1957.
57. The defendant No. 1, in its reply, has taken a stand that the plaintiff has not named the persons, who has designed the same. It is stated, no case can be made out from infringement or passing off unless the name of the person is disclosed or ascertained in the pleadings. It is also stated that the idea and preliminary drawings were conceived by the defendant No. 2 and the crest logo was drawn by an Art Teacher from Delhi Public School, Vasant Kunj, in her private capacity. The defendant No. 1 relied upon an affidavit filed by the Art Teacher, wherein, the Teacher reiterated the said fact. In other words, it is the case of the defendant No. 1 that the defendant No. 2 is the rightful owner of the copyright so far as the crest logo is concerned. Further, the defendant No. 1 has highlighted the distinctive features between its crest logo and the plaintiff s crest logo.
58. In rejoinder, the plaintiff, denying the averments that the idea was conceived by defendant No. 2 in his personal capacity, has mentioned the name of Art Teacher as Santosh Jain, who designed the logo in 1996-97 in her official capacity on the instructions of the then, the President of the plaintiff, i.e. defendant No. 2. It is also stated, that the defendant No. 2 has never used the logo at 2 of Annexure-A in his personal capacity, but used the same in official capacity as an office bearer of the plaintiff. It is also stated that after defendant No. 2 ceased to be the President of the plaintiff, he continued to use the crest logo, fully knowing that it is the plaintiff s property.
59. Noting the averments made by the parties herein, the issues i.e. in what capacity, the defendant No. 2 gave instructions to Santosh Jain; what is the consequence of an employee designing a work in which copyright exists; the usage of the logo by the defendant No. 2 as President of the plaintiff; the usage of the logo by the plaintiff after the defendant No. 2 ceased to be the President of the plaintiff etc. need to be ascertained, which is possible by way of evidence to be adduced during the trial.
60. The plea of Mr. Sibal that the plaintiff being a juristic person, is incapable of being an author of the work in which copyright exists, by relying upon the judgment of this Court in TechPlus Media Ltd. (supra) is appealing, but the fact that the plaintiff has named the Art Teacher, who has designed the crest logo in the rejoinder, cannot be overlooked. Surely, the effect of such a stand in the rejoinder and not in the plaint, need to be considered, but, what is more appealing is the plea of Mr. Sibal that the last time, the plaintiff has used the crest logo at 2 of Annexure A was only in the year 2008 and not thereafter. Even though, Mr. Sandeep Sethi, relied upon page 248 of the plaintiff s document, which is a letter dated June 8, 2015 of the Delhi Private School in Dubai, to contend that the crest logo is still being used, suffice to state, the school concerned, was Delhi Private School in Dubai. There is no explanation, nor any document has been shown by the plaintiff to show that, even after 2008 till recently, the crest logo has been in continuous use in India. In the absence of any evidence to controvert the plea of Mr. Sibal, this Court, is of the view that, the discretion cannot be exercised in favour of the plaintiff on the aspect of crest logo while considering the application under Order 39 Rules 1 and 2 CPC.
61. The aforesaid conclusion being in the facts of this case, I do not think, it is necessary to deal with the judgments referred to by the counsel for the parties.
62. In view of the detailed discussion above, I am of the view that the application needs to be allowed on the following terms:
1. The defendants, their life trustees, terms trustees, members, franchisees, officers, employees, agents, delegates, representatives, associates and all other acting for and on their behalf, are restrained from offering their services, advertising, offering franchisees, selling goods, and stationery, adopting, using and/or dealing in any manner with the registered mark/name DPS or any other mark identical or deceptively similar to the registered mark of the plaintiff, amounting to infringement and passing off the plaintiff s registered trademark till the disposal of this suit;
2. The defendants, their life trustees, terms trustees, members, franchisees, officers, employees, agents, delegates, representatives, associates and all other acting for and on their behalf are restrained from using the impugned trademark/name DPS , or any other trademark identical or deceptively similar to it, amounting to passing off the plaintiff s trademark/name, till the disposal of the suit.
The application is disposed of.
CS (COMM) 154/2016
Let the written statement be filed by the defendants within four weeks. Replication by the plaintiff within three weeks thereafter.
List before the Joint Registrar on July 18, 2016.