.* IN THE HIGH COURT OF DELHI AT NEW DELHI Judgment pronounced on:
11. h May, 2015 % + I.A. No.12216/2014 in CS (OS) No.1980/2014 SRF FOUNDATION & ANR ..... Plaintiffs Through Ms.Anuradha Salhotra, Adv. with Mr.Sumit Wadhwa, Adv. versus RAM EDUCATION TRUST ..... Defendant Through Mr.N.K.Anand, Adv. with Ms.Vaishali Mittal & Mr.Siddhant Chamola, Advs. CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J.
1. By this order, I propose to decide the application being I.A. No.12216/2014 under Order XXXIX Rule 1 and 2 CPC filed by plaintiffs seeking interim injunction against the defendant restraining it from using mark/name SHRI RAM in respect of running the schools. The plaintiffs have filed a suit for permanent injunction, passing off, account of profits under the Trade Marks Act, 1999 (hereinafter referred to as the “Act”).
2. The brief facts of the case as per plaint are : i) The plaintiff No.1 is a registered non-profit society engaged in several social and community development initiatives including running of schools under the name of The Shri Ram School. The plaintiffs claim that they are the prior user of the mark/name SHRI RAM in respect of the schools as far as the parties in suit are concerned. The plaintiff No.2 is engaged in setting up schools in India and abroad. ii) The plaintiff No.1 established The SHRI RAM SCHOOL in the year 1988 in Vasant Vihar, New Delhi. It is the case of the plaintiffs that the school has been designed to provide each student a diverse education in a safe and supportive environment that promotes sound values, self-discipline, motivation and excellence in learning. From a modest beginning in five tents with sixty four eager children, the school has grown to strength in excess of seven hundred children and a hundred and eight staff. THE SHRI RAM SCHOOL – Moulsari, Gurgaon is the senior school of THE SHRI RAM SCHOOL – Vasant Vihar. THE SHRI RAM SCHOOL – Aravali, Gurgaon was established in the year 2000 in DLF City Phase IV, Gurgaon. iii) It is alleged by the plaintiffs that in order to fulfil its objective to meet the shortage of good schools in India, plaintiff No.2 entered into an agreement with Educomp Infrastructure and School Management (EISML), a subsidiary of Educomp Solutions to set up five schools over the next 2-3 years under the name “THE SHRIRAM MILLENIUM SCHOOL” which would imbibe the core ideals enshrined in the pedagogical philosophy of plaintiff No.1’s THE SHRI RAM SCHOOLS. The overall guidelines and framework of the curriculum, courses, contents, teaching, methodology, academic policies and pedagogic strategies of these schools were to be the same as the plaintiff No.1’s schools under the name “THE SHRI RAM SCHOOLS”. iv) Under the Agreement with EISML, the plaintiff No.2 opened THE SHRIRAM MILLENIUM SCHOOL, Noida in April, 2010 and THE SHRIRAM MILLENIUM SCHOOL, Faridabad in April, 2012. v) In the year 2011 the plaintiff No.2 jointly with the Haryana Police Department set up THE SHRI RAM POLICE PUBLIC SCHOOL in Bhondsi, Haryana for the children of Police Personal and the General Public. The plaintiffs at present are associated with schools at six different locations. vi) It is alleged that the plaintiffs’ schools under the name SHRI RAM have carved out a unique space as institutions of excellence and are well known for their value based innovative caring and child-centered approach to educate young children and the institutions are popularly known as THE SHRI RAM SCHOOLS. In the year 2002, THE SHRI RAM SCHOOL, Vasant Vihar was ranked number 04 amongst all schools of Delhi by Outlook India. The said school was rated the ‘Best Day’ school in the country by an independent 15 city survey carried out by Education World Magazine in the years 2008, 2009 and 2011. In 2010, THE SHRI RAM SCHOOLS in Delhi and Gurgaon were recognized as the “Number One” schools in Gurgaon and Southwest Delhi by The Hindustan Times. In 2011, THE SHRI RAM SCHOOL, Aravali was ranked as the “Number One” school in India by the Delhi based Center for Forecasting and Research Private Limited and the Education World Magazine. Further THE SHRI RAM SCHOOL, Vasant Vihar was ranked 6th in the list of “Top Schools in India” for the year 2013 in the ranking released by IndiaRanker.com. vii) The plaintiffs’ use of the word “SHRI RAM” in relation to schools since the year 1988 i.e. for almost 25 years, the same has become exclusively identified with the schools of the plaintiffs and/or the core values and educational philosophy of the plaintiffs said schools. An application for registration of the trademark THE SHRI RAM SCHOOL was filed by the plaintiffs on 6th June, 2008 under No.1696277 in Class 41 which is pending with the Registrar, Trade Marks. viii) The top rankings by independent surveys, quality education and national and international awards has garnered extensive reputation and goodwill to the plaintiffs. The plaintiffs have incurred substantial expenditure in setting up its Shri Ram Schools in the year 1988. ix) In or around June 2011, the defendant opened the SHRI RAM GLOBAL PRE SCHOOL at the address Trinity House, 4106, Ashoka Marg, Near DLF Galleria, DLF Phase IV, Gurgaon, Haryana 122002. The said school was opened right next to the plaintiff No.1’s The Shri Ram School, Aravali at Hamilton Court Complex, DLF Phase IV, DLF City, Gurgaon-122002. Immediately on the opening of the said school and the proximity of the two schools, the principal of the plaintiff’s school started getting a number of enquiries from parents including as to whether the School is a part of The Shri Ram School or admission in the SHRI RAM GLOBAL PRE-SCHOOL guaranteed an automatic admission to THE SHRI RAM SCHOOL. As the SHRI RAM GLOBAL PRE-SCHOOL had been opened by a trust founded by the brother of the plaintiff’s, Mr. Arun Bharat Ram, Chairman of the Board of Governors of plaintiff No.1 wrote a letter to his brother i.e. Trustee of the defendant apprising him of the substantial reputation of ‘The Shri Ram School’ run by the plaintiffs. x) Instead of giving up the use of the trademark SHRI RAM the defendant expanded its operations under the trademark SHRI RAM and opened the SHRI RAM CENTENNIAL SCHOOL, Dehradun at Knowledge Village Sherpur, Shimla Road, Dehradun - 248197, SHRI RAM CENTENNIAL SCHOOL, AGRA at Village Sikandarpur, Dayalbagh, Agra, UP - 282005, SHRI RAM CENTENNIAL SCHOOL, INDORE at 90 C, Bombay Hospital Service Road, Behind Bombay Hospital, Vasant Vihar Colony, Vijay Nagar, Indore, Madhya Pradesh 452010. The defendant is also proposing to open SHRI RAM GLOBAL PRIMARY WING in Sector 45, Gurgaon barely 240 meters from the head office of the said SRF Limited. The plaintiffs accordingly put up notices in Indore, Gurgaon and Dehradun informing the general public that THE SHRI RAM SCHOOL had no relation or connection with these schools. xi) The plaintiff No.1 received a letter dated 17th February, 2014 from M/s. Factum Lawyers & Co. on behalf of the defendant claiming to "hold unmatched goodwill; reputation and standing in the market through its educational institutions, schools running under the brand name of SHRI RAM GLOBAL SCHOOL/SHRI RAM CENTENNIAL SCHOOLS" even though these schools were opened nearly two decades after the establishment of THE SHRI RAM SCHOOL in 1988 and none of the schools of the defendant have been able to reach the recognition, milestone or ranking, as achieved by the schools of the plaintiff. The legal notice called upon the plaintiff No.1 to withdraw the advertisements and to tender a public apology for releasing these advertisements in two leading newspapers of the metros wherever such advertisements have been released failing which appropriate legal action would be taken. xii) On 2nd May, 2014 the plaintiff No.1 received a copy of the order dated 28th April, 2014 of The Competition Commission of India rejecting a complaint filed by the defendant against the plaintiff No.1 inter alia alleging that the plaintiff No.2 had intentionally placed the hoardings.
3. Counsel for the plaintiffs submits that the plaintiffs have no objection if the said mark/name SHRI RAM is used by the defendant in relation to any other different activities or services except in relation to the services of school on the reason that as far as running of school bearing the mark SHRI RAM is concerned, they are prior user and have acquire unique goodwill, name and reputation and it would create confusion and deception if allowed to the defendant who was aware about the same on the date of adoption and it is done by the defendant in order to make misrepresentation.
4. The plaintiffs have filed large number of documents in support thereof. The details of few documents are mentioned below:(i) Document evidencing the extensive expenditure incurred by the plaintiffs in establishing its Shri Ram School in 1988. (ii) Year 2000 School Book of THE SHRI RAM SCHOOL, Vasant Vihar showing that the first batch of students passed out in the year 2000 who joined in the year 1988 e.g. PALLLAVI SARAN, head girl joined the school in the year 1988. (iii) Print out from www.outlookindia.com ranking the plaintiffs SHRI RAM SCHOOL, VASANT VIHAR as the 4th best school in India in the year 2002. (iv) Interview of Mrs. Manju Bharatram to Times of India dated 2nd July, 2005 giving reasons for starting of THE SHRI RAM SCHOOL. (v) Newspaper article from Times City dated 18th May, 2006 showing that the plaintiffs The Shri Ram Schools had a 100 percent pass result. (vi) Print out from the web-site www.hindustantimes.com showing the result of the 2010 HT-C FORE SURVEY of South West Delhi’s top Schools in which plaintiffs SHRI RAM SCHOOL, Vasant Vihar was ranked number 1. (vii) Print out from the web-site www.hindustantimes.com showing the result of the 2010 HT-C FORE SURVEY of Gurgaon’s top Schools in which SHRI RAM SCHOOL, Aravali was ranked number 1. (viii) Print out from the web-site www.rediff.com showing the result of a Pan India Survey in the year 2011 conducted by the Centre for Forecasting & Research Pvt. Ltd. and Education World Magazine in which THE SHRI RAM SCHOOL, Delhi was ranked first in the country. (ix) Print out from the web-site www.indiaranker.com giving the updated list as of 1st June, 2013 of the Top Schools in Delhi. THE SHRI RAM SCHOOL, Vasant Vihar is at No.6 and THE SHRI RAM SCHOOL, Aravali is at No.12. (x) Newspaper cutting of Times of India showing that Shivali Malhotra and Bhavya Kulshreshta both students of The Shri Ram School, Aravali topped ICSR scoring 98.75%. (xi) Photocopy of a newspaper article from Sunday Hindustan Times, New Delhi dated 20th May, 2012 containing percentage range of top scorers from two prominent ICSE, ISC schools of which one was plaintiffs’ The Shri Ram School. (xii) Newspaper article from Times of India, New Delhi dated 18th May, 2011 showing that the students of the plaintiffs The Shri Ram School, were toppers in all streams of Class XII and also Class X in the Gurgaon region. (xiii) Newspaper cutting of Times of India showing that Abishek Gupta, a student of The Shri Ram School, (DLF III) topped in commerce with 97.25%. (xiv) Newspaper cutting of Times of India showing that Nehal Garg, a student of The Shri Ram School, Aravali topped the District Gurgaon in commerce scoring 97.25%. (xv) Photocopy of certificate issued by Education World for “India's Most Respected Schools Survey Awards, 2011” to The Shri Ram School, Aravali.
5. Counsel for the plaintiffs has stated that there is a panic amongst the public at large who are unable to recognize who is having which school. The founder of plaintiff No.1 is Arun Bharat Ram and Mr. Vivan Bharat Ram is the founder of the Trust of defendant. Both are real brothers being the sons of Dr. Bharat Ram and grandsons of Late Sir Shri Ram.
6. Arun Bharat Ram in his e-mail messages and websites has admitted that the plaintiffs are educational services provider who has a legacy of interest in education in India by his grandfather Shri Ram who has reputed educational institutions such as the Shri Ram College of Commerce in 1926 and the Lady Shri Ram College in 1956 in Delhi. He is the Chairman of Shri Ram Education Foundation and manages Shri Ram College for Women.
7. The defendant is represented by Mr. N.K. Anand, Advocate, who argued that the use of the name/mark SHRI RAM is a bonafide use. The plaintiffs cannot have the monopoly rights over the mark SHRI RAM. It is the name of the grandfather of the founding members of the plaintiffs’ schools and defendant’s trust. The plaintiffs cannot claim the prior user in respect of the educational institution like school if the College under the mark SHRI RAM is being run prior to the use of plaintiffs.
8. It is argued by Mr. Anand that the reputation and goodwill that is enjoyed by the Shriram brand in present times was first established by the efforts and endeavours of Late Sir Shri Ram, who was renowned for his endeavours in the industrialization and modernisation of education in India. Late Sir Shri Ram’s contributions towards upliftment of educational services and facilities in India are widely acknowledged and respected across India. The legacy of educational excellence as established by Late Sir Shri Ram was furthered to greater heights by the successive generations of the Shriram family. Mr.Anand, has referred the following few dates and events in order to show that the plaintiff cannot claim the proprietorship and are not entitled to claim the monopoly of the mark/word Shri Ram. The following are the details of events which is not disputed by the plaintiffs:- S.No.Date Relevance 1. 1920 Establishment of the “Commercial High School” by Sir Shri Ram.
2. 1939 Responsibility of management of the Anglo Sanskrit Victoria Jubilee Senior Secondary School undertaken by Sir Shri Ram.
3. 1947 Establishment of the Shriram Institute of Industrial Research by Sir Shri Ram.
4. 1951 The Commercial High School was renamed as the Shriram College of Commerce in recognition of the contributions of Sir Shri Ram.
5. 1957 Establishment of the Lady Shriram College for Women by Sir Shri Ram in memory of his wife. Establishment of the Mawana Sugar Works Primary School to cater to the educational needs of employees of the Mawana Sugar Works.
6. 1964 The Commercial Education Trust was renamed as the Shri Ram Education Foundation.
7. July 1, 1974 Mawana Sugar Works Primary School was renamed as the Shriram Primary School.
8. 1989 First Division in the Shri Ram Family amongst Shri Murli Dhar, Shri Charat Ram and Shri Bharat Ram (sons of Sir Shri Ram) 9. April 18, 1990 Letter addressed by Shri Bansi Dhar acknowledging the goodwill vested in the Family Name Shri Ram.
10. 1992 Appointment of Mrs. Sukanya Bharat Ram as Member in the Governing Body of the Lady Shriram College for Women. Shriram Primary School was renamed as Shri Ram Junior High School.
11. 1997 Establishment of Mangaur Impex Private Limited 12. May 1, 1998 Division in the family of Shri Bharat Ram amongst his sons conferring parallel rights to further the legacy of the Shri Ram family.
13. 1999 Shri Ram Junior High School was further renamed and given its present name, i.e. the Shriram School, Mawana 14. 2000 Eventual Change of Name of Mangaur Impex Private Limited to Shriram Global Enterprises Limited Establishment of Shriram Centre for Computer Education Ltd. promoted by Shriram Global Enterprises Ltd. Shriram Centre for Computer Education Ltd. renamed as Shriram Global Technologies and Education Ltd.
15. March 31, 2002 Resignation of Mr. Vivek Bharat Ram as Managing Director of SRF Limited, the holding company of the Plaintiff.
16. 2003 Shriram Global Technologies and Education Ltd. entered into a Joint Venture with New Horizons Worldwide Inc., and was renamed as New Horizons India Ltd.
17. May 6, 2004 Letter addressed by Shri Charat Ram to his son, Mr. Siddharth Shriram advising for the sharing the goodwill as vested in the “Shriram” brand amongst all members of the Shri Ram family.
18. January 17, 2008 Trademark Application No.1642131 for the Shield Device for “Shri Ram School of Business” in class 41 filed by Shriram Global Enterprises Limited (associate affiliate of the Defendant) 19. June 6, 2008 20. January 13, 2009 Examination Report issued in respect of the Plaintiff’s Application No.1696277 in class 41 cites the Shield Device of the Defendant’s affiliate (Application No.1642131) 21. March 29, 2010 The Shield Device (Application No.1642131) for the “Shri Ram School of Business” in class 41 secures Trademark Registration vide certificate No.856741.
22. April 23, 2010 Establishment of the Shri Ram Education Trust (the Defendant) 23. 2011 The Joint Venture “New Horizons India Limited” was renamed as Shri Ram New Horizons. Trademark Application No.1696277 for the mark “The Shri Ram School” in class 41 filed on behalf of the Plaintiffs. Establishment of the “Shri Ram Global Pre-School” by the Defendant in furtherance of its Family lineage in Gurgaon.
24. December 2012 25. 2014 CS (OS) No.1980/2014 21, Letter addressed by the Principal of the Lady Shriram College for Women to Ms. Sukanya Bharat Ram, thanking her for her services and contributions in the development of the reputation of the College as Member of the Governing Council. Hoardings and advertisements of a disparaging nature set up by cities drawing dissociation from the Defendant’s schools.
26. February 2014 17, Legal Notice addressed by the Defendant to the Plaintiffs in protest of the Hoardings and Advertisements issued by the Plaintiffs.
27. March 20, 2014 Reply to the Legal Notice addressed by the Plaintiffs to the Defendants.
28. April 28, 2014 Order of the Competition Commission of India in Case No.15 of 2014 dismissing the complaint against the Plaintiffs filed by the Defendant.
29. July 8, 2014 Plaint along with Application under Order 39 Rules (1) and (2) filed by the Plaintiffs against the Defendant being CS (OS) 1980 of 2014 before the Hon’ble High Court of Delhi.
9. It is alleged by the defendant that the subsequent division had occurred in the family of Shri. Bharat Ram, commonly known as the Bharat Ram Group in the year 1998, whereby parallel rights were conferred to his sons as the legacy of the Shri Ram Family while ensuring that values and ethics propounded by Late Sir Shri Ram and Shri. Bharat Ram were protected and furthered in the future.
10. Mr. Anand has referred many documents and relevant dates about the educational activities of family members and grandfather of active persons of both the parties. The details of which are mentioned herein below : I. A Trust for education was established in the year 1920 under the name "Commercial Education Trust", the name of which was later changed to "Shri Ram Education Foundation" in the year 1964. This trust oversaw the administration of seven educational institutions, including the Shri Ram College of Commerce as well as the Lady Shri Ram College for Women, the relevant details of which are mentioned herein below: (i) Shri Ram College of Commerce : The institution was established in the year 1920 by Sir Shri Ram under the name "Commercial High School". It was later elevated to function as an "Intermediate College" in the year 1926. The same was further elevated as a Degree College in the year 1930 and college offering Post - Graduate studies in the year 1934. This educational institution was later renamed the "Shriram College of Commerce" in the year 1951 in recognition of the contribution made by its founder, Sir Shri Ram. (ii) Lady Shri Ram College for Women: This educational institution was established by Sir Shri Ram in memory of his wife in the year 1957, under whose Chairmanship the educational institution continued to function until his demise in the year 1962. II. In addition to establishing the Commercial Education Trust and managing the Anglo Sanskrit Victoria Jubilee Senior Secondary School, Sir Shri Ram further contributed to education and its development in India by establishing the Shriram Institute of Industrial Research in the year 1947. III. The legacy of educational excellence as established by Sir Shri Ram stood furthered by his successors as the second son of Sir Shri Ram, Shri. Bharat Ram had served as the Chairman of the Board of Governors of the esteemed Lady Shri Ram College for Women. Shri Charat Ram, son of Sir Shri Ram had also contributed to his father's legacy of educational excellence and related services in India. He had established the Shri Ram Centre for Industrial Relations, Human Resources, Economic and Social Development in the year 1963. IV. Shri Bansi Dhar, son of Shri Murli Dhar and grandson of Sir Shri Ram. He was instrumental in the development of Shri Ram College of Commerce as he was a member of the Governing Council in addition to being the Treasurer of the said educational institution. He was also responsible for the development of other educational institutions such as the Shriram Institute of Industrial Research in the capacity of its Vice Chairman and the Lady Shri Ram College for Women. V. The Shriram Family is also credited with tremendous contribution to the field of the performing arts. It is submitted that Ms. Sheila Bharat Ram, wife of Shri. Bharat Ram had established the Shriram Centre for Performing Arts/ Indian National Theatre Trust. Ms. Sumitra Charat Ram, wife of Shri Charat Ram had established the Shriram Bhartiya Kala Kendra in the year 1952. The Shriram Bhartiya Kala Kendra imparts training in Indian classical dance styles including Kathak, Bharatanatyam, Odissi, Chhau, as well as training in Hindustani Classical music. VI. It is mentioned that SRF Limited had established the SRF Foundation, plaintiff No.1 herein. As Managing Director of SRF Foundation, the founder and chairman of the defendant herein was actively involved in the affairs of SRF Limited. Further, Smt. Sukanya Bharat Ram, Trustee of the defendant Trust herein had also served as a member on the Governing body of the Lady Shri Ram College for Women for a period of 20 years from 1992 to 2012. She is also a member on the Board of Trustees of the Kasturba Gandhi National Memorial Trust, which provides inter alia educational services to rural communities in North Delhi. VII. In the year 1989, through a Scheme of Arrangement, the Shri Ram Family witnessed its first division, a tripartite division amongst the sons of Sir Shri Ram i.e., Shri Murli Dhar, Shri Charat Ram and Shri Bharat Ram thereby granting parallel rights to carry forward the rich legacy of Sir Shri Ram. Subsequent division had occurred in the Family of Shri. Bharat Ram, commonly known as the Bharat Ram Group in the year 1998, whereby parallel rights were conferred to his sons as the legacy of the Shri Ram Family while ensuring that values and ethics propounded by Sir Shri Ram and late Shri. Bharat Ram were protected. Reliance is also placed upon letter dated 6th May, 2004 addressed by Dr. Charat Ram to his son, Shri Siddharth Shriram wherein he recognized the tremendous goodwill enjoyed by the "Shriram" brand. Through this letter, Dr. Charat Ram had advised for sharing of such goodwill and for avoiding all disputes. The contents of the letter are reproduced herein below: "... "Usha" and "Shriram" are brands that enjoy tremendous goodwill and are synonymous with Shriram group entities. There has been decades of harmony between these enterprises, and the brands have been used by many of the Shriram enterprises for their respective brands. This has benefited the enterprises and in the process also enriched the brands. All the enterprises have contributed towards the goodwill of the brands through usage on quality products and earning the trust of the customers. Any dispute can only damage the brand and in turn the reputation of Shriram enterprises built up through years of hard work". VIII. Thus, it is evident that the elders in the Shriram family including inter alia Shri. Bharat Ram of the DCM Shriram Group as well as Sh. Charat Ram of the Usha Group shared the same views as their founding father Sir Shri Ram, that the Shri Ram Family should retain all such rights to make use of their family name and must protect the family name from falling into the hands of outsiders. Thus being a Founder and Chairman of the defendant, vide his letter dated 26th September, 2011 had reminded the Chairperson of the plaintiff No.1 of the stellar contribution of members of the Shriram Family in upholding and further strengthening the reputation and goodwill enjoyed by the educational institutions established by the Shriram Family. There was a fear in the minds of the plaintiffs that at one time, the share holdings may divest in the hands of outsiders. The plaintiffs felt it necessary to ensure that the use of the word "SHRI RAM" remains within the family as was the desire of the founding fathers of the said family. Therefore, it is submitted that the plaintiffs and the defendant herein have concurrent rights to make use of their family name "Shriram" in relation to their schools.
11. It is submitted that the use of the name “Shri Ram” by the defendant in relation to running the services of schools is in furtherance of the common family name of the plaintiffs and the defendant, which constitutes a bonafide use under the provisions of the Trade Marks Act, 1999 as the elders in the Shri Ram family had always professed a principle of “Live and Let Live” while advising family members to maintain peace and harmony in the family. Further, the elders in the Shri Ram family shared the common view that all members of the Shri Ram family possess concurrent rights to make use of their family name. Dr. Bansi Dhar in a letter dated 18th April, 1990 had clearly advised that no member of the Shri Ram family must be restricted from making use of the tremendous goodwill vested in the name Shri Ram. Further, Dr. Charat Ram, son of Late Sir Shri Ram vide letter dated 6th May, 2004 addressed to his son Mr. Siddharth Shriram had clearly stated that the collective efforts of various enterprises in the Shriram Family had enriched the brand Shri Ram over the years and that any dispute between such enterprises must be prevented.
12. It is submitted by the defendant that the names of the defendant’s schools that is “Shri Ram Global School”, “Shri Ram Centennial School” and “Shri Ram Global Pre-School” are sufficiently distinctive from the name of the plaintiff’s Schools, i.e. “The Shri Ram School” and “Shri Ram Millennium School”. The names of the defendant’s schools make use of additional elements as suffix which distinguishes clearly the schools of the defendant from those of the plaintiffs. The defendant also makes use of a particular Shield Device in relation to its schools and educational institutions, which is completely different and distinguishable from the mark of the plaintiffs. With regard to goodwill, reputation and prior user claimed by the plaintiffs that due to prior establishment of the plaintiff’s Shri Ram Schools on the initiative of Mrs. Manju Bharat Ram in the year 1988, the name Shri Ram and the consequent goodwill vested in it in relation to schools is the sole property of the plaintiffs is incorrect and unacceptable. Various factions of the Shri Ram family have not only made use of the Family Name prior to the plaintiffs but have also obtained trademark registrations for the name “Shri Ram”.
13. It is submitted that the Shri Ram Family, in its efforts to uplift educational excellence in India had established ‘The Shri Ram School Mawana” in the year 1957. The said school running under the Chairmanship of Mr. Siddharth Shriram predates the establishment of the plaintiff’s schools by over 30 years. Therefore, neither are the plaintiffs the only faction of the Shri Ram family which has been in the field of running schools in India nor are they the first amongst the Shri Ram family to do so.
14. With regard to confusion and deception, it is argued by the defendant’s counsel that the plaintiffs have placed reliance upon letters and e-mails allegedly emanating from the general public. The same are in the nature of inquiries raised internally either by the employees of SRF Ltd., the holding company of the plaintiff or by members of the plaintiffs’ schools themselves. The E-mail dated 27th March, 2014 from one Ms. Payal Gulati highlighted the difference in between the devices of the plaintiff’s marks and the defendant’s by stating that the other school “does not have the Shri Logo”.
15. However, it is not denied on behalf of defendant that the plaintiffs are the prior user of the mark/name SHRI RAM in relation to running the schools between the parties. But, it is stated that the plaintiffs are not the exclusive proprietor of the same. It is admitted that the defendant established its first school, namely the Shri Ram Global Pre-School in Gurgaon in the year 2011. Subsequently, the defendant has established its schools in various cities of the country including New Delhi, Dehradun, Indore, Rohtak, Siliguri among others.
16. It is informed by Mr. Anand that at present, the defendant runs nineteen schools under two banners namely, the Shri Ram Global Schools and the Shri Ram Centennial Schools by itself or under the contracts with third parties. The defendant is holding the registered trademark under the name SHRI RAM.
17. In a nut-shell, the case of the defendant is that the defendant's right to use the name SHRI RAM for schools emanates from the common lineage from the legacy of Late Sir Shri Ram. Thus, the plaintiffs’ action is not sustainable. There are other factions of the Shri Ram family using the name SHRI RAM for schools particularly other members of the family in Mawana. There is bonafide use of the family name SHRI RAM by the defendant who is using the mark SHRI RAM in different ways along with logo and thus there is no confusion amongst the general public. It is not denied that Late Sir Shri Ram did not run any school under the name SHRI RAM.
18. It is admitted on behalf of the plaintiffs that purpose of the scheme of arrangement of 1998 was to provide a framework to arrive at the division of the family assets and meet the family liabilities. Thus the inherent right to use the name SHRI RAM vests with each member of the Shri Ram family but such right is subject to restricting oneself to its domain of business and not encroaching upon/infringing others right and the letter of Dr. Bansi Dhar only dealt with his view against any restriction to use of the name DCM and SHRI RAM by a particular group of the Shri Ram family i.e. no faction of the Shri Ram family could object to the use of the name SHRI RAM by another faction, however, the same would in effect be subject to limiting the use of the name SHRI RAM to their respective and exclusive domain of business so as to avoid competition and confusion regarding trade origin.
19. It is submitted by the plaintiffs that there is no bonafide use of the family name SHRI RAM by the defendant as many misleading statements of the defendant are malafide attempts on its part to associate itself and its SHRI RAM schools with the plaintiff's wellknown SHRI RAM schools in Delhi and Gurgaon so as to piggy bank on its reputation and goodwill and gain illicit profits out of the same. The defendant in fact is using the name/mark SHRI RAM as a trade mark.
20. With regard to dissimilarity between the school name of the defendant and the plaintiffs, it is argued by the plaintiffs that the use of an identical name SHRI RAM for its schools by the defendant evidently makes it similar to the name of the plaintiff's well-known SHRI RAM schools.
21. The use of the words “Centennial” and “Global” by the defendant in conjunction with the name SHRI RAM for its schools do create confusion and deception as THE SHRIRAM MILLENNIUM SCHOOL and SHRI RAM CENTENNIAL SCHOOL are deceptively similar. The term “Centennial” used by the defendant in conjunction with the name SHRI RAM for its schools is synonymous with the term 'Millennium” used by the plaintiffs in conjunction with the name SHRI RAM for its schools. Even the use of the Shield device would not make any difference as the foremost and essential feature of the defendant's school name is the word 'SHRI RAM”.
22. Pertaining to the email dated 27th March, 2014 from Ms. Payal Gulati it is submitted by the plaintiffs that the same does not highlight the difference in the devices of the plaintiffs and defendant's mark. Rather, this email evidences the fact that the devices used along with the name SHRI RAM are irrelevant for the purpose of creating dissimilarity between the marks and that the essential and the prominent feature of both marks is the name SHRI RAM, because otherwise Ms. Gulati on seeing the Shield Device of the defendants would have understood that the defendant's SHRI RAM schools do not originate from the plaintiffs and thus, would have not written the aforesaid email.
23. It is argued that the confusion has further occurred by defendant's franchisee's own admission in the defamation suit that the general public refrained from seeking admission in the defendant's SHRI RAM school in Indore pursuant to being made aware of the non-connection between the plaintiffs’ SHRI RAM schools and the defendant's SHRI RAM schools. This in effect means that before being made aware of the non-connection, the general public believed the defendant's SHRI RAM schools to be connected/associated with the plaintiffs’ SHRI RAM schools.
24. It is stated by the plaintiffs that the defendant as per Exhibit E of its Brand License and Franchisee Agreement dated 26th September, 2012, was charging a one-time fee of Rs. 1.15 Crore from its franchisee for the licensed right to start SHRI RAM branded schools in a particular territory followed by an additional amount of Rs. 5 Lakhs per pre-school that is opened by the franchisee within its franchise territory after the first pre-school.
25. I have also gone through the records of the present case including the plaint, written statement and documents filed therewith. I have also considered the submissions advanced by the learned counsel for the parties at the bar. Some of the points mentioned in the written submissions filed by the parties were not part of their respective pleadings. Now, I shall proceed to discuss various aspects which fall for consideration in the present case.
26. The plaintiffs claim to be prior user of the mark SHRI RAM in respect of the schools since the year 1988. The defendant on the contrary does not dispute the said position but raises a defence that the mark SHRI RAM is not merely proprietary interest of the plaintiffs for manifold reasons including that the defendant is real brother of the plaintiffs and belongs to Shri Ram family and is closely connected with the field of the education operating under the mark SHRI Ram. It is also the case of the defendant that there are documents suggesting that the family members can use the word SHRI RAM to promote the same and thus the defendant is entitled to use the mark SHRI RAM being a family member. I have considered the submissions advanced by the learned counsel for the parties on the aspect of the proprietorship of the mark SHRI RAM. I am of the view that there is a material available on record which indicates that the family members of the Sir Shri Ram has been using the mark SHRI RAM in respect of the diverse kind of the business and services including education in colleges. There is no material on record which prima facie suggests that a faction of the family members as per family settlement has been specially allowed to run the school or the groups emanating from Shri Ram family which limits their rights to use the mark SHRI RAM in respect of the particular field of the business. It is though altogether different matter that there may be a line in the business which has been adopted by the Shri Ram family in good senses by not intruding in each other’s business for all this period. Still, for prima facie purposes, it cannot be said that the plaintiffs have been provided with the mark SHRI RAM solely for running the schools as per any written document executed by the family members. CS (OS) No.1980/2014 It is now to be considered as to whether the Page 24 of 62 plaintiffs have any right to run the school exclusively under the name SHRI RAM. It has come to record that prior to plaintiffs’ schools who have acquired unique goodwill and reputation, none of the family member of Late Bharat Ram had started school under the said name but no doubt family members were actively involved in the educational institutions apart from other activities. It has also brought to my knowledge that one of other faction of family relation has been running school prior to the plaintiffs. But, the objection was raised by the plaintiffs’ counsel that the said plea is not taken in written statement and it was pointed out by the counsel that prior to the plaintiffs use, the said school under the name SHRI RAM was opened for the education of employees children of Sugar Mill only which has no goodwill and name who is running the said school outside Delhi in remote area in a small way.
27. It is necessary to refer the sample scanned copy of their representation in order to understand in which manner the parties are using the name/mark SHRI RAM as well as respective logos : Plaintiffs’ Mark Defendant’s Mark It is apparent from the above mark, the name/mark SHRI RAM is being used by both the parties is common and the same is also an essential part of their services, though the logos are different.
28. First question before this Court is as to whether the use of the mark/name SHRI RAM in the manner depicted are deceptively similar or not. The said issue has been discussed by the Division Bench of this Court in the case of The Himalaya Drug Company vs. M/s. S.B.L. Limited, 2013 (53) PTC1which reads as under :
“20. It is settled law that where the defendant's mark contains the essential feature of the plaintiff's mark combined with other matter, the correct approach for the court is to identify an essential feature depending particularly "on the court's own judgment and burden of the evidence that is placed before the Court". In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks.
21. The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole". In the decision reported as (1951) 68 RPC103 105, De Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words "Vick's VapoRub" as the essential feature, registered in Jamaica, and the defendants used a similar label with the words "Karsote Vapour Rub" as the essential feature, and it was shown that the expression "VapoRub" had become distinctive of the plaintiff's goods in Jamaica, an action for infringement was successful. (See De Cordova v. Vick Chemical Co. (supra), (1941) 58 RPC147 Saville Perfumery Ld. v. June Perfect Ld., AIR1972SC1359 1362, M/s. National Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited and AIR1991Bom 76, M/s. National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and Another)”. From the principles laid down in the cases referred in the judgment above, it is clear that the mark SHRI RAM is being used as essential feature in their logos and the same are deceptively similar.
29. The next submission of Mr. Anand is that there are few admissions made by the plaintiff No.2 in the Trade Marks Registry in its reply to the examiner report in the application filed for registration of a trademark SHRI RAM in order to waive the objection under Section 9 of the Act. Mr. Anand admits that the said plea was not taken in the written statement and reply to the injunction application. In order to satisfy my conscious, I allowed him to take this objection. He referred the said reply filed by the plaintiff No.2 to the examination report. The same is read as under :
“We respectfully submit that ‘Shri Ram’ is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark ‘Shri Ram’. As evident from the search report attached with the examination report, several ‘Shri Ram’ formulative marks are peacefully coexisting on the Registrar of Trade Marks. The subject matter is a fancy justaposition of the words ‘Shri Ram’ and ‘Educare’.”
“Re the remaining cited marks i.e. SHRIRAM (Registration Nos.1238981 and 1515318), SHRI RAM SCHOOL OF BUSINESS WITH LABEL (Registration No.1642131), SHRI RAM CHANDRA MISSION (Registration Nos.1288968 and 1288972, we wish to invite the learned Registrar’s attention to the well established judicial principle of entirety. According to the said judicial principle, conflicting marks should not be broken into separate components and read for the sake of comparison; they should be dealt with as a whole. Accordingly, we aver that ‘Shri Ram’ is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark ‘Shri Ram’. We submit that ‘Shri Ram’ is common to the trade. It is the combining elements that make the conflicting marks distinguishable from each another. The marks taken as whole are different each other such that there is no likelihood of confusion and deception between them by their coexistence.”
Mr. Anand submits that in view of the said admission, the plaintiffs are not entitled for interim relief as prayed for.
30. The counsel for the plaintiffs has informed to the Court that the plaintiffs have withdrawn their application number 1696276 by letter dated 15th April, 2014 prior to the filing of this suit on 8th July, 2014. It is submitted that the plaintiffs have derived no advantage in application number 1696276 from the argument put forth in the letter dated 8th June, 2012 as the same was subsequently withdrawn. The said letter dated 8th June, 2012 was not written in any adversarial proceeding and was withdrawn prior to the filing of this suit without affecting any third party right or the rights of the plaintiffs. It was written due to oversight. In fact, the mark SHRI RAM was registrable if the same was distinctive on the date of application. Counsel submits that the defendant itself has filed the application for registration which is now registered trade mark, hence the objection of the defendant is without any force and both the marks are deceptively similar otherwise, the trade marks office ought not to have raised the objection about the conflicting of two marks of the parties. In view of aforesaid, now it is to be examined as to whether on merit the mark was distinctive on the date of filing of the suit or it was a registerable mark or not.
31. Admittedly, the plaintiffs have been using the said mark/name since 1988 for running the schools who are providing services. The definition of the mark includes the name under Section 2(m) of the Act which reads as under :
“2(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;”
32. The names and surnames have been protected by this Court and various other High Courts as well as by Supreme Court in the following cases: i) In the case of Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. [2002 (2) SCC147, the Supreme Court observed that “It is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities.”
ii) The following observations of this Court in Dr. Reddy’s Laboratories Ltd. versus Reddy Pharmaceuticals Limited, 2004 (29) PTC435(Del.), which was also affirmed by the Division Bench are very relevant in this regard:
“15. The plea raised by the defendant that it has a bona fide statutory right to use the trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected for the reason that the trade mark "Dr. Reddy" in spite of not bring registered has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceutical not only in India but abroad also. This trade mark is now distinctively associated with the plaintiff's company. Its long and continuous user by the plaintiff is prima facie established. The use of trade name/mark "Reddy" by the defendant is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other "Reddy" has a right to start a rival business by using the same trade name on the plea that it is his surname. This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to associate in their business ventures persons having similar surnames wind ants was held to be an act of passing off the goods and it was observed that the use of such family name as a trade mark was not permissible. The plea of the defendants that the surname of the partners of its firm could be used to carry on trade in their own name was rejected. It was held that prima facie the defendants were intentionally and dishonestly trying to pass off their goods by use of name "Bajaj" and as such the plaintiff had made out a case for grant of injunction.
19. Section 35 of the TMM Act is also of ho help to the defendant as the use of name "Reddy" on pharmaceutical preparations by the defendant is not shown to be bona fide. The drugs and pharmaceutical preparations being manufactured by the plaintiff may be having different names but that does not disentitle the plaintiff to claim protection in regard to its trade mark "Dr. Reddy" which has earned substantial trade reputation and goodwill. This trade mark has acquired a distinctive reputation. Use of an identical or deceptively similar trade mark may mislead the customers on account of similarity. "Dr. Reddy" and "Reddy" are similar trademarks phonetically and are capable of creating confusion. There is identity of goods, identity of trade mark and identity of consumers. The defendant is not at all an honest and concurrent user of the trade mark "Reddy" and it is apparent on record that it has started using the trade mark "Reddy" on its pharmaceutical preparations in bad faith knowing fully well that the plaintiff company has enormous trade reputation and goodwill in the trade mark " Dr. Reddy" which is completely associated with plaintiff and has acquired a secondary meaning in business circles.”
33. It is a question of fact, to be decided on the evidence, whether a name or mark has acquired a secondary meaning so that it denotes or has come to mean goods made by a particular person and not goods made by any other person, even though such other person may have the same name. If it is proved on behalf of a claimant that a name or mark has acquired such a secondary meaning, then it is a question for the Court whether a defendant, whatever may be his intention, is so describing his goods that there is a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the claimant.
33. The effect of said so called letter written by the plaintiff No.2 to the trade mark office is to be examined by this Court. It is settled law that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights. This has been explained by the Division Bench of this Court in the case of Century Traders vs Roshan Lal Duggar & Co, AIR1978Del 250 wherein it was observed:
“First is the question of use of the trade mark. Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout "THE State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected."(Emphasis Supplied) 34. The said view is also supported from the judgment of the Division Bench of Bombay High Court in the case of Sunder Parmanand Lalwani and Others v. Caltex (India) Ltd., AIR1969Bombay 24, which has been held vide paras 32 and 38 as follows:
"2. A proprietary right in a mark can be obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our Trade Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J.
in 1956 RPC1 In the matter of Vitamins Ltd's Application for Trade Mark at p.12, and particularly the following: "A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated". Law in India under our present Act is similar.”
35. The said views emanating from the courts in India clearly speak in one voice which is that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act. (Emphasis Supplied) 36. The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark / name in the business. The use of the mark/ carrying on business under the name confers the rights in favor of the person and generates goodwill in the market. Accordingly, the latter user of the mark/ name or in the business cannot misrepresent his business as that of business of the prior right holder.
37. The prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/ former user.
38. It is also recognized principle in common law jurisdiction that passing off right is broader remedy than that of infringement. This is due to the reason that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as that of business of other person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act.
39. The defendant has also referred the E-mail dated 28th September, 2011 by stating that there are admission/ no objection on the part of plaintiffs to use the name SHRI RAM for running the schools. The extract of the said E-mail reads as under: "I want to mention that if you ever wanted to divest or reduce your shareholding, you would then be reduced to minority shareholding in your company. You must remember that the 'Shri Ram' brand might then go to wrong outsiders. One would have no control over how they would use this brand."
40. Even otherwise, let us take the face value of the said letter written by the plaintiff in Trade Mark Registry making some admissions to the effect that no monopoly can be claimed and the mark SHRI RAM applied is not similar to the mark of the defendant’s mark. But at the same time, if Court would find that it is a distinctive mark then the same is protectable under the law, the said admissions are totally immaterial as per settled law as well as with regard to Email dated 28th September, 2011.
41. The law of admission has its genesis from the rules of evidence wherein it is well settled that the admission is best evidence and no further evidence is required once the admission is clear and unambiguous. However, the admissions are usually made of some facts and not of pure questions of law. As observed by Phipson in his Law of Evidence (1963 Edition, Para
678) as the weight of an admission depends on the circumstances under which it was made, these circumstances may always be proved to impeach or enhance its credibility. The effect of admission is that it shifts the onus on the person admitting the fact on the principle that what a party himself admits to be true may reasonably be presumed to be so, and until the presumption is rebutted, the fact admitted must be taken to be established. An admission is the best evidence that an opposing party can rely upon, and though not conclusive is decisive of matter, unless successfully withdrawn or proved erroneous.
42. The admission in the context of Indian Evidence Act, 1872 shall always be of facts due to the definition of the admission under Section 17 of the Act and the same is confined to statement which may suggest inference as to fact or relevant fact. A logical corollary to this which follows is that the admissions shall always be of facts or relevant facts but cannot be of law. If one examines the concept of admissions on the basis of law of pleadings as envisaged under the Code of Civil Procedure, it is realized that the cardinal rule of pleadings is that the pleadings should contain the facts, material facts and not the law. There again, it is not practical or feasible to give rise to any such admission of the law or legal position. Afortiori, it follows that the admission of the legal position or legal principle which may or may not be correct is no admission in law and it is inconsequential in law.
43. In the case of Ram Bharosey vs Ram Bahadur Singh, AIR1948Oudh 125, the Court had observed that the admission by a party on pure question of law is not binding on him. The same view was also taken by the Nagpur Bench in the case of Gulabchand vs. Bhaiyalal, AIR1929Nag 343. There cannot be an estoppel against the law or statutory provisions. When one is concerned with the statutory right or constitutional guarantee, there cannot be any estoppel against the same as held in the case of A.C. Jose Vs Sivan Pillai & Ors, (1984) 3 SCR74 44. Once there is no estoppel against the statute, the admissions or concessions made by the counsel for the parties under the wrong understanding of law cannot operate to the detriment of the party making such admissions and it is only on the basis of correct legal position, the rights of the parties are to be determined. This proposition has been laid down in the case of Union of India And Ors. vs Mohanlal Likumal Punjabi & Ors, (2004) 3 SCC628wherein the Supreme Court observed as under:
“In our view the concession, if any, is really of no consequence, because the wrong concession made by a counsel cannot bind the parties when statutory provisions clearly provided otherwise. It was observed by Constitution Bench of this court Sanjeev Coke Manufacturing Co v. Bharat Coking Coal Ltd (1983 (1) SCC147 that courts are not to act on the basis of concession but with reference to the applicable provisions. The view has been reiterated in (1988 (6) SCC538 and Central Council for Research in Ayurveda and Sidhha & others versus Dr. K Santhakumari (2001 (5) SCC60. In para 12 of Central Council's case (supra) it as observed as follows: "In the instant case, the selection was made by the Departmental Promotion Committee. The Committee must have considered all relevant facts including the inter se merit and ability of the candidates and prepared the select list on that basis. The respondent, though senior in comparison to other candidates, secured a lower place in the select list, evidently because the principle of "meritcum-seniority" had been applied by the Departmental Promotion Committee. The respondent has no grievance that there were any mala fides on the part of the Departmental Promotion Committee. The only contention urged by the respondent is that the Departmental Promotion Committee did not follow the principle of "senioritycum-fitness". In the High Court, the appellants herein failed to point out that the promotion is in respect of a "selection post" and the principle to be applied is "merit-cum-seniority". Had the appellants pointed out the true position, the learned Single Judge would not have granted relief in favour of the respondent. If the learned counsel has made an admission or concession inadvertently or under a mistaken impression of law, it is not binding on his client and the same cannot ensure to the benefit of any party."
(Emphasis supplied) 45. Again in Uptron India Ltd vs. Shammi Bhan and Anr. 1998 (6) SCC538 the court also explained the said principle as one of species of the principle that there cannot be any estoppel against the statute. It was held that a case decided on the basis of wrong concession of a counsel has no precedent value. That apart, the applicability of the statute or otherwise to a given situation or the question of statutory liability of a person/institution under any provision of law would invariably depend upon the scope and meaning of the provisions concerned and has got to be adjudged not on any concession made. Any such concessions would have no acceptability or relevance while determining rights and liabilities incurred or acquired in view of the axiomatic principle, without exception, that there can be no estoppel against statute.
46. In view of the above discussion, it is clear that the admissions made of law or legal provisions are inconsequential, they cannot operate as an estoppel against the person making it. The courts are not to act upon the admissions of wrong legal principles made by the parties. Rather, the court has to adjudicate rights and liabilities of parties basing on the true legal position emerging from the interplay of the provisions of the statute and not upon any such wrong admissions.
47. Therefore, it is evident that if the mark SHRI RAM was/is distinctive as per law and both rival marks are similar, in case any admission is made by the plaintiffs the same has no consequence. The same cannot operate to the detriment of the plaintiff No.2. The said admission whatsoever does not help the case of the defendant who itself had applied for registration of the mark SHRI RAM which is registered in the name of the defendant. It is not understood if the said plea is taken then why the defendant has filed the application for registration of the said mark who made its admission of distinctiveness of the same mark at the time of registration. It appears from the E-mail apparently that Arun Bhagat Ram warned his brother not to share the name SHRI RAM with the third party otherwise the quality of the name is likely to be tarnished. However, despite of the same, the name SHRI RAM was allowed by the defendant to the third party by way of licensing agreements/contract. Even otherwise, he has not allowed the defendant to use the name SHRI RAM in the said E-mails. Prima facie I do not find specific admission on the part of the plaintiffs to share the mark SHRI RAM with the defendant for running the schools.
48. The next submission of Mr. Anand is that one of the family members is operating school in Mawana prior to the plaintiffs, thus, the plaintiffs cannot claim the exclusive rights to the use of the mark SHRI RAM.
49. It is also argued by the plaintiffs’ counsel that the reliance on the existence of The Shri Ram School, Mawana is untenable for the fact that this school's presence is limited to a town in Uttar Pradesh, with limited access reputation/goodwill. to the general public and lacks It is not denied that the said school was established as the “Mawana Sugar Works Primary School” in the year 1957 and not as the Shri Ram School, Mawana. The use of the name SHRI RAM by this school prior to the plaintiffs was as a primary school. This school is yet to become full-fledged as it currently caters to students till only Class XI. The school is located within the campus of Mawana Sugar Limited Factory. The plaintiffs submit that the school was established to cater to the educational requirements of the employees of Mawana Sugar Works and not the general public. It is submitted that no such plea was taken in the written statement.
50. It is contended by the plaintiffs that the defendant itself became aware of the Mawana school much later as there is no mention of the same in the pleadings. It is only the plaintiffs faction of the Shri Ram family that started schools under the name SHRI RAM. No other faction has been in the business of running schools under the name SHRI RAM. Therefore, the goodwill in the name SHRI RAM in the field of schools in India is indeed a result of the efforts of plaintiffs. Hence, the defendant cannot be allowed to use the identical name SHRI RAM for its schools, amounting to the continuing detriment of the plaintiffs who have built up a goodwill and reputation in the name SHRI RAM for its schools after years of hard work. It is specifically argued by the plaintiffs that Mawana School has no goodwill and reputation, it was originally established for the purpose of giving education to the children of the employees, and is now being used for other children after the use of the name SHRI RAM by the plaintiffs and the said plea does not help the case of the defendant. In view of settled proposition of law that in case of an action of passing off the rights of prior user are to be considered between the parties at the interim stage.
51. It is the case of the plaintiffs that they have created the enormous goodwill and reputation in the mark SHRI RAM vis-a-vis schools. The plaintiffs are not claiming goodwill in the name SHRI RAM to all fields of education. They are limiting their claim of goodwill in the name SHRI RAM only to Schools and no other field of education. The goodwill in THE SHRI RAM SCHOOL is not the result of any effort on behalf Late Sir Shri Ram. Late Sir Shri Ram did not run any school under the name SHRI RAM. The defendant has not given any evidence to show that there is any other member of the family which is running a school which has a reputation in the SHRI RAM name except evidence is of one school in Mawana which has no reputation.
52. In the case of Century Traders (supra) the said aspect to some extent has been discussed in para 14. The extract of the same reads as under :
“(14) Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned Single Judge and led him to commit an error.”
Under these circumstances, the plea raised by Mr. Anand, learned counsel for the defendant about the third party user has no merit. The said school Mawana has no commercial activities prior to the use of the plaintiffs and it is run by the party in the restricted area, no evidence contrary to the contention has been produced by the defendant. Even the said objection was not taken up in the written statement or reply to the interim application.
53. It is necessary that in order to succeed in an action for passing off, four main primary requirements have to be satisfied by a party who intends to seek the relief of injunction : i) Prior user; ii) Party who is claiming right must be the proprietor of the mark. iii) Confusion and deception; and iv) Delay, if any 54. As far as prior user is concerned, it is not denied by the defendant that the plaintiffs are the prior user of the mark SHRI RAM in relation to services of school between the plaintiffs and defendant. With regard to Mawana School operated by third party, the plea of the defendant has been rejected in earlier part of my order. Thus, it is clear that the plaintiffs are the prior user of the name/mark SHRI RAM in relation to the services of schools. Confusion and Deception and Passing Off 55. In the present case, the defendant has many schools in the same vicinity as the school of the plaintiffs. The details of the school under the name SHRI RAM are given as under : Plaintiffs Defendant A. The Shri Ram School, Hamilton Shri Ram Global Pre School Court Complex, Phase-4, DLF4106 DLF Phase-4, Gurgaon, Aravali, Gurgaon, Haryana. Haryana B. The Shri Ram Early Years, Vipul Shri Ram Global Pre-Primary Greens, Sector 48, Sohna- Wing, 4401, DLF Phase-4, Gurgaon Road, Gurgaon, Haryana. Gurgaon, Haryana. Similarly, if the plaintiffs have school in Delhi, the defendant has also opened school in Delhi in February, 2015 i.e. after filing the present suit. i) In the case of Laxmikant V. Patel vs. Chetanbhat Shah & Anr., (2002) 3 SCC65 the Court in paras 8 and 10 held as under :
“8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant companys name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. 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 the 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.
56. Salmond & Heuston in Law of Torts (20th Edn., at p.395) call this form of injury as “injurious falsehood” and observe the same having been “awkwardly termed” as “passing off” says as under :
“The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.”
57. As per Kerly (Law on Trade Marks and Names, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edn., at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient.
58. In the case of B.K. Engineering Co. vs. Ubhi Enterprises, 1985 (5) PTC1 the Court in paras 49, 51 and 52 held as under :
“49. A fair and honest trader will not give misleading name to his product to the continuing detriment of a plaintiff who has built up his goodwill in the business after years of hard work for example, 13 or 14 years, as in this case. It is this intangible right to property which the law seeks to protect. xxxx xxxx xxxx 51. The modernisation of the tort of passing off lies in this that what was previously a misrepresentation of goods has now become a misappropriation of another man's property in the business or goodwill, or misappropriation of another's personality. You cannot make use of the plaintiff's expensive labour and effort. You cannot deliberately reap where you have not sown. You cannot filch a rival's trade. Passing off is thus a remedy for injury to goodwill.
52. .......The modern character of the,tort of passing off was clearly brought out in Cadbury (supra). At p. 218 Lord Searman said : "THE tort is no longer anchored, as in its early nineteenth century formulation, to the name or trade-mark of a product or business. It is wide enough to encompass other descriptive material, such as slogans or visual images which radio, television or newspaper advertising campaigns can lead the market to associate with the plaintiff's product, provided always such descriptive material has become part of the goodwill of the product. And the test is whether the product has derived from the advertising a distinctive character which the market recognoises."
In view of settled law, facts and circumstances of the present case, it is apparent that chances of confusion and deception cannot be ruled out.
59. Further, it is apparent in the present case that the commencement of its use in the year 2011 by defendant by opening its first school in Gurgaon is in close proximity to the plaintiffs’ Shri Ram School, Aravali. When the defendant adopted the name SHRI RAM for its schools, the plaintiffs SHRI RAM schools were named the best school in Gurgaon and South West Delhi as well as in India. The defendant calls its students “Shri Ramite” which is same to the name given to the students of the plaintiffs Shri Ram schools since as early as the year 2000. The defendant claimed that it has a School in Delhi when it does not.
60. It is also evident from the material placed on record that the defendant had never been in the field of running schools until the year 2011 when it started its first school. The plaintiffs are the only faction of the Shri Ram family which has been in the field of running schools. The defendant's trustees have been on the board for other educational institutions such as Lady Shri Ram College and Sri Ram College of Commerce. The defendant has adopted the trademark SHRI RAM after 23 years of use of the name SHRI RAM by the plaintiffs for its schools and it has created confusion and deception amongst the students, parents and large number of people in India when two sets of schools are operating under the same name.
61. The learned counsel for defendant does not dispute the fact that the name/surname are protectable under the law. Once the name/surname which are distinctive and used on commercial manner or put into commerce, the same are protected as per the various judgments delivered by the courts including Supreme Court. Few decisions are mentioned herein below :i) In the case of Mahindra and Mahindra (supra) the defendant was restrained from using the name/mark Mahindra which is the own name of the defendant. ii) In the case of Dr. Reddy’s Laboratories Ltd. (supra) the defendant’s surname was Reddy, still the interim order was passed on account of malafide user. iii) In the case of B.K. Engineering Co. (supra) the defendant was restrained from using the mark BK being an abbreviation of their deceased mother's name Balwant Kaur. iv) In the case of M/s. K.G. Khosla Compressors Ltd. and Ors. vs. Khosla Extrakting Ltd. and Ors., 1986 (6) PTC211 the defendants were restrained from using the mark Khosla being surname of the Director of the defendant company. v) In the case of Bajaj Electricals Limited vs. Metal & Allied Products and Anr., AIR1988Bom 167, the defendants were restrained from its surname Bajaj in relation to allied and cognate goods. vi) In the case of M/s Virendra Dresses vs. M/s Varindra Garments AIR1982Delhi 482, the defendants were restrained to use the name Varindra, which was name of owner of the defendant firm.
62. Learned counsel for the defendant has referred the following decisions in support of his submissions : i) Bagla & Co. vs. Bagla Cosmetics, 2000 (20) PTC355ii) Jaggi Ayurvedic Pharmacy vs. Jaggi Ayurvedic Research Foundation, 2010 (42) PTC769(Del.) iii) Precious Jewels & Anr. vs. Varun Gems, (2015) 1 SCC160iv) Goenka Institute of Education & Research vs. Anjani Kumar Goenka & Ors., 2009 (40) PTC393(Del.) v) Jay Engineering Works Ltd. vs. Chinar Trust and Anr., 2005 (31) PTC639vi) Godrej Sara Lee Ltd. vs. Reckitt Benckiser (I) Ltd., 2006 (32) PTC307(Del.) a) With regard to the case of Bagla and Company (supra) the said case does not help the defendant as in the present case the business of running schools is not an offshoot of any original family business commenced by the Patriarch Late Sir Shri Ram together with his sons under the SHRI RAM name in relation to school. It is a fact that Late Sir Shri Ram did not run any school under the name SHRI RAM. The Plaintiffs were the prior, first and the only faction of the Shri Ram family to begin using the mark SHRI RAM for schools. The plaintiffs have no objection if the defendant may use the mark/name SHRI RAM in relation to other activities except running the services of schools. b) The second case referred by Mr. Anand is Jaggi Ayurvedic Pharmacy (supra); the facts of this case are different from the facts of the case at hand. The trademark in question in this case i.e. JAGGI, was the family surname whereas in the case at hand the trademark in question is the name of the grandfather of the parties i.e. SHRI RAM, and not their surname. The use of the trademark JAGGI was started by the predecessor of the parties to the suit for his ayurvedic clinic which name was subsequently adopted by the sons and grandsons of the predecessor for their respective ayurvedic businesses whereas in the case at hand it is a fact that Late Sir Shri Ram did not run any school under the name SHRI RAM. The plaintiffs were the first and the only faction of the Shri Ram family to begin using the mark SHRI RAM for schools and create a goodwill in the word SHRI RAM in relation to schools. c) The third case referred by Mr. Anand is Precious Jewels (supra); the facts of this case are different from the facts of the case at hand. The trademark in question in this case i.e. RAKYAN, was the family surname whereas in the case at hand the trademark in question is the name of the grandfather of the parties i.e. SHRI RAM, and not their surname. Section 35 of the Act is therefore not applicable. That use of the trademark RAKYAN was started by the predecessor of the parties to the suit for the business of “jewellery” which name was subsequently adopted by the successors of the family for their respective jewellery businesses i.e. 15 different jewellery businesses in total. Whereas in the case at hand it is a fact that Late Sir Shri Ram did not run any school under the name SHRI RAM. The plaintiffs were the first and the only faction of the Shri Ram family to begin using the mark SHRI RAM for schools. The defendant at the time of use was fully aware about the use of the plaintiffs. Even when the plaintiffs come across the user, the defendant was informed. d) In the case of Goenka Institute of Education & Research (supra) the Court observed that both the parties started using the name GOENKA as part of its institutions i.e. Appellant had been using the name GOENKA as part of the name of its trust since 1995 in different state i.e. Rajasthan who claimed prior user as well as concurrent rights and the respondent had been using the name GOENKA as part of its school name since the year 1994. In the case at hand, the defendant's first SHRI RAM pre school was established in the year 2011, whereas the schools under the name SHRI RAM started in or around 2013-2014 and the defendant trust under the name SHRI RAM was started in the year 2010 as compared to the use of the name SHRI RAM by the plaintiff's for its schools since the year 1988. The defendant had started its school within the same area having full knowledge about the well established school running by the plaintiffs. Therefore, the facts are materially different. e) In the case of Jay Engineering Works Ltd. (supra) the court held that the applicant and both the respondents have a common ancestor (the term is being used in a general sense). They are legal known industrialist who is also the founder of some of the premier educational institutions of Delhi. This is reflected in the application where it is stated in Para 11 “The Petitioner and the Respondent have been associated in business and commonly known as Usha – Shriram Group of Companies.”
It is further stated in para 12 that both the parties have been marketing their products under the marks Usha and Usha Shriram and acted together and jointly along with other group companies to restrain other parties from using 'Usha'. The facts in the present case are dis-similar. f) In Godrej Sara Lee Ltd. (supra) the plaintiff had mislead the Court by stating that it became aware of the disparaging activities of the defendant in September, 2005 when in actuality the advertisement had been running since February, 2005. The plaintiff was thus held to be guilty of concealment of material facts and the interim order was vacated. The facts in the said matter were totally different as each day delay in the action of disposing of product of the plaintiff on the television advertisement is crucial. In the said matter, the plaintiff alleged in the plaint that it came to know of the disparaging advertising in September, 2005. The court observed that it could not be possible as the alleged disparaging advertisement was shown on commercial television on large scale since February, 2005 on this account the interim order was lifted 63. “Bonafide use” normally means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader. The words “bonafide use” is the governing words and heart and soul of the said Section. The party cannot blindly read this Section that under the statute, he is entitled to use his own name, surname in respect of same goods and services. No different meaning can be given to this Section, if the use is not bonafide and the same is tainted and dishonest. Under these circumstances, this Section 35 of the Act would not apply in the facts of the present case.
64. Even otherwise no doubt proprietorship right claimed by the plaintiff is to be determined after the trial in the matter as to whether the mark SHRI RAM belongs to the plaintiff in respect of running the school or not or the defendant being the family member is entitled to claim any right to use the same. It is a matter of fact however prima facie this Court finds that the use of the name SHRI RAM in relation to running of the schools particularly in the same area is not bonafide.
65. In the case at hand, the plaintiffs have disclosed to the Court the fact that they became aware of the defendant's infringing activities in the year 2011, which was brought to the notice of the defendant’s trustee by the plaintiffs’ chairman at a personal level as it was then a off pre-school. But immediately on becoming aware of the rampant opening of schools by the defendant under the name SHRI RAM in the year 2014, plaintiffs initiated the present suit. There is a force in the argument of the plaintiffs’ counsel to extent that despite of communication, the defendant has been continuing to open the new schools by itself or through contract with the third party.
66. It also appears from the material placed on record that in respect of running the schools, no doubt the plaintiffs are the prior user than the defendant. One thing is also clear between the family members that they would have always an understanding between themselves that the confusion or deception does not occur. If the name SHRI RAM is used for the last more than 65 years for college there is no Shriram College by any other family members. Similarly for the past 58 years, no other college under the name of Lady Shriram has been established by any member of the family. It means that all parties have maintained discipline so that no actual deception and confusion is occurred and no harm would cause to other party/relation.
67. No doubt that the father’s of both the parties and grandfather were involved in the field of education bearing the mark SHRI RAM prior to the schools of the plaintiff but it is a matter of fact, no school was run by them on commercial scale prior to the date of the plaintiffs who have no objection if the defendant may claim legacy of grandfather Sir Shri Ram in relation to other activities of education except for running the school. The defendant has also issued large number of licenses and appointed franchisees and is getting license fee, despite of e-mail written by the brother not to allow them, otherwise quality of education and name of Shri Ram would be affected, but the defendant did not care about it.
68. It is pertinent to mention here that after filing the present suit, the defendant had entered into contract with their parties uptil March, 2015 disclosing that the construction of twenty one more schools which are to be operated from the period of 1st September, 2015 to 1st April, 2020 under the name of Shri Ram Global Pre-School, Shri Ram Centennial School at various parts of India despite of pendency of the suit. The said information was provided by the counsel for defendant when the matter was put up for clarification. It is clear that the plaintiffs have been able to prima facie established the case of confusion, deception and prior user.
69. But at the same time there exists a unexplained delay of about 3 years in approaching the court which prima facie indicates towards the inference as to acquiescence. This is due to the reason that as per plaintiffs own saying in the suit the defendants adopted the mark SHRI RAM in respect of the school in the Gurgaon region in the year 2011. If the plaintiffs and defendants schools are established within the same region/ area in Gurgaon and the plaintiffs are affected by the said misuse of the same, the plaintiffs ought to have given the legal notice alarming the defendant about the proprietary rights over the mark SHRI RAM owned by the plaintiffs.
70. The plaintiffs have not adopted the said recourse but remained quiet knowing well that the defendant being its brother has been using the mark SHRI RAM in respect of the schools in the year 2011 through defendant without objecting to its misuse at the earnest opportunity given the fact that both the schools are located at the proximity to each other. It is only in the year 2014, when the defendant expanded the schools in other areas which according to the defendant are 19 in number, the plaintiffs approached this court objecting to the use of the mark SHRI RAM by the defendant. The caution notices issued by the plaintiffs are also the notice to the public not to mislead in believing that the defendant school is belonging to plaintiffs. But the plaintiffs never objected by specifically directing the notice to the defendant in the year 2011 until the year 2014. The said no objection for the continuous period of 3 years given the proximity of relation between the founding members of the plaintiffs and defendant being real brothers and the admitted knowledge of the plaintiffs in the plaint can be good enough for the prima facie purposes as assent or sitting by or encouragement allowing the defendant to expand/ grow its business without objecting to the misuse of the same all this while leading to prima facie inference of the acquiescence. The said plea of unexplained delay leading of the acquiescence is thus a relevant consideration for the passing off action, the grant of the relief in which rests on the equitable considerations and is affected by the principle of applicability of the acquiescence.
71. The grant or non grant of injunction has to be measured within the parameters of three tests laid down by this court. However, the court must weigh the comparative hardship of one party as against the another and has to decide whether the injunctory relief is warranted or whether interim directions would suffice. Injunctions should not result in extreme prejudice to the defendant. The balance of convenience doctrine is of essence in cases for consideration of the issue of grant of injunction.
72. In American Cyanamid Vs. Ethican (interlocutory) 1975 RPC513(at 541, 542), it was observed that it was sufficient if a ‘triable issue’ was there. According to Lord Diplock, the Court must also be satisfied if there is a “serious question to be tried” : therefore it should not try to assess relative merits by looking into prima facie case in the affidavit evidence but should instead turn at once to the balance of convenience; if damages to be awarded at the trial can adequately compensate plaintiff and the defendant could pay them, injunction could be refused; if not, injunction could be refused; if not, injunction could be granted; if defendant could be compensated by way of damages later by plaintiff, injunction by way of damages later by plaintiff, injunction could be granted; where there is doubt about the adequacy of damages to one or both ; any factor which may affect balance of convenience is to be considered. If the balance is even, the relative strength of the case is to be considered.
73. The principle of law relating to temporary injunction during pendency of the suit is well recognized in the decision of the Supreme Court in the case of Dalpat Kumar vs. Prahlad Singh AIR1993SC276 The relevant portion of the observations of the Supreme Court in the said case states as under:
“…..It is settled law that the grant of injunction is a discretionary relief. The exercise thereof is subject to the Court satisfying that; (1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant. (2) The court’s interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue before the legal right would be established at trial; and (3) That the comparative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it. The Supreme Court further held:
“……Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The court further has to satisfy that non-interference by the court would result in ‘irreparable injury’ to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequence of apprehended injury or dispossession of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely on that cannot be adequately compensated by way of damages. The third condition also is that ‘the balance of convenience’ must be in favour of granting injunction. The court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. If on weighing competing possibility or probabilities of likelihood of injury and if the court considers that pending the suit, the subject matter should be maintained in status quo, an injunction would be issued. Thus the court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit.”
74. In M/s. Gujarat Bottling Co. Ltd. and others Vs. Coca Cola Company and Others, AIR1995SC2372 it was observed as under:
“46……. The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies. See : Wander Ltd. and Anr. v. Antox India P. Ltd. [1990]. Supp. SCC727at pp. 731-32. In order to protect the defendant while granting an interlocutory injunction in his favour the Court can require the plaintiff to furnish an under taking so that the defendant can be adequately compensated if the uncertainty were resolved in his favour at the trail.”
75. The injunction being an equitable remedy, the court has to exercise its discretion from various facets which arise in particular set of circumstances in each matter. There may be cases in which grant of an injunction will only meet the ends of justice and an alternative safeguard for the preservation of rights of the challenging party cannot at all be thought of. Thus, balance has to be strike down in the present case in view of peculiar facts of the present case otherwise, great hardship would not only cause to the defendant but also to the students and their family members who have already paid their fees and have taken admission in the school. Their interest and equity is involved. It would be appropriate that the defendant be put to terms and restricted interim orders for future purposes are passed of the defendant instead of issuance of injunction.
76. By disposing of interim application, the following orders are passed : i) The defendant is allowed to continue the schools under the mark SHRI RAM as of today’s date, however the defendant shall within the period of six months display/use the disclaimer in their signboard and all stationary material that they have no connection or relation with the plaintiffs’ school. ii) They are forthwith restrained from using the mark SHRI RAM in relation to running of schools which are under construction under the Contract to be opened from the 1st September, 2015 to 1st April, 2020 as per the details provided by the defendant. However, it is clear that for future school which are yet to be run, the defendant would be entitled to give bonafide description in the nature that the school is run by Vivan Bharat Ram under the legacy of his grandfather Shri Ram iii) The trial in the matter is expedited. iv) The order passed in the application shall have no bearing when the matter would be finally decided after trial and the finding arrived on the issue of delay would not be binding on other cases pending against the third parties as the interim orders for existing schools are not passed in view of peculiar facts and circumstances of the matter.
77. The application being I.A.No.12216/2014 is disposed of accordingly. I.A.No.14188/2014 78. In view of detailed order passed in I.A. No.12216/2014, the abovementioned application for clarification of order dated 9th July, 2014 is also disposed of being infructuous. CS (OS) No.1980/2014 79. List the matter before the Joint Registrar for completion of admission/denial of documents on 1st July, 2015. (MANMOHAN SINGH) JUDGE MAY11 2015.