Aakash Educational Services Privte Limited vs.akash Educational & Charitable Trust & Ors - Court Judgment

CS(OS) 2043/2015 & I.A. 14096/2015 $~ * + % CORAM: HON'BLE MR. JUSTICE MANMOHAN Through: None versus IN THE HIGH COURT OF DELHI AT NEW DELHI AAKASH EDUCATIONAL SERVICES PRIVTE LIMITED ..... Plaintiff Through: Mr.Manish Singhal, Advocate AKASH EDUCATIONAL & CHARITABLE TRUST & ORS Date of Decision:

14. h September, 2017 ..... Defendants MANMOHAN, J: (Oral) JUDGMENT

1 Present suit has been filed for permanent injunction restraining infringement of trademark, copyright, passing off and claim for damages. The prayer clause in the suit is reproduced hereinbelow:-

"(a) Pass a decree for permanent injunction thereby restraining the defendants by themselves, their proprietors/partners, principal officers, Franchisees, agents and all other persons acting for and on their behalf from infringing registered trade mark nos. 1607150, 1761539, 1761544, 1761546, 1761551, 1761554, 1761558 & 2112130 in respect of the said services and under registration numbers 1761538, 1761542, 1761543, 1761545, 1761547, 1761550, 1761553 & 1761557 in respect of the said associated goods of the plaintiff by use of the infringing trade mark/service mark "AKASH", infringing trade name & infringing web-site comprising of the infringing trade CS(OS) 2043/2015 Page 1 of 10 any and/or "AKASH" mark/service mark other similar/deceptively similar trade mark/service mark/trade name thereto in respect of 'providing of education and training, educational, teaching and coaching institute‟ as well as providing of associated goods namely „instructional & teaching material & printed publications‟ and and/or any other similar/allied & cognate services/associated goods thereto; themselves, (b) Pass a decree for permanent injunction restraining the defendants by their proprietors/partners, principal officers, Franchisees, agents and all other persons acting for and on their behalf from using the infringing trade mark/service mark "AKASH" and/or any other similar/deceptively similar trade mark/service thereto either as a trade mark or as part of trade name/trading style, in respect of training; educational, teaching and coaching institute‟ as well as providing of associated goods namely „instructional & teaching material & printed publications‟ and and/or any other similar/allied & cognate services/associated goods thereto, which may constitute infringement of common law rights/proprietory rights of the plaintiff with respect to its prior used, established, reputed, well-recognized trade mark/service mark/trade name "AAKASH" in any manner whatsoever; „providing of education and nos.1& 2 by defendant themselves, (c) Pass a decree for permanent injunction thereby restraining the their proprietors/partners, principal officers, Franchisees, agents and all other persons acting for and on their behalf from using the trade mark/service mark “AKASH” as part of their from using any other similar/deceptively similar trade name/trading style thereto in respect of the said services/goods/business and/or in any manner which may constitute infringement of common law rights/proprietory rights of the plaintiff with respect to its prior used, established, reputed, well-recognized trade trade name and/or CS(OS) 2043/2015 Page 2 of 10 mark/service mark/trade name “AAKASH” in any manner whatsoever; (d) Pass a decree for permanent injunction thereby restraining the defendants by themselves, their proprietors/partners, principal officers Franchisees, agents and all other persons acting for and on their behalf from passing off its services/associated goods/business as those of the plaintiff in any manner; (e) Pass a decree for permanent injunction thereby restraining the defendants by themselves, their proprietors/partners, principal officers, Franchisees, agents and all other persons acting for and on their behalf from using the infringing art- work/representation/label/copyright as „complained of‟; “AKASH” (f) Pass a decree for permanent injunction thereby restraining the defendants by themselves, their proprietors/partners, principal officers, Franchisees, agents and all other persons acting for an on their behalf from using the trade mark/service mark “AKASH” as part of their infringing domain name „www.akashlearningcentre.com‟ and/or from using the „complained of‟ domain name in any manner and/or in the alternative, transfer the impugned domain name to the plaintiff; (g) Pass an order for destruction of all the blocks, dies, teaching material, printed material instructional & including information brochures, pamphlets, bills, receipt books, advertisement material, stationery and other incriminating material of the defendants bearing the infringing trade mark/service mark "AKASH", 'complained of' trade name & impugned web-site as „complained of‟; (h) Pass a decree for the sum of Rs. 20,01,000/- [Rs. Twenty Lacs one thousand only]. in favour of the plaintiff and against the defendants as damages; (i) An order for cost of the proceedings be also passed in favour of the plaintiff and against the defendants; CS(OS) 2043/2015 Page 3 of 10 (j) Any other relief(s) as this Hon‟ble Court may deem fit and proper under the facts and circumstances of the case be also passed the defendants.” the plaintiff and against favour of in 2. At the outset, learned counsel for plaintiff gives up prayer (h) of the prayer clause. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.

3. Vide order dated 17th July, 2015 this Court granted an ex-parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

"“From the pleadings as well as the documents placed on the record, I am of the view that the plaintiff has been able to make out a strong primafacie case for the grant of an ex parte ad-interim injunction in its favour as the plaintiff is the registered owner of the trademark AAKASH. Since the plaintiff has been using the said name for the last many years, the balance of convenience also lies in favour of the plaintiff. In case, the interim order is not passed and the defendants have continued to infringe the trademark of the plaintiff by flinching the goodwill and reputation of the plaintiff for which they are not entitled to, as per prima- facie view of this Court, the plaintiff will suffer an irreparable loss and injury. Hence, till further orders, the defendants are restrained from using the trademark/service mark AKASH in relation to the same services of the plaintiff and name www.akashlearningcenter.com which is similar to the trademark/domain name of the plaintiff. The defendants are granted 10 days time to change the name AKASH as well as the domain name, upon service of the summons of the suit and notice of the interim order. Compliance of Order XXXIX Rule 3 CPC be made within a week.” domain using the also from CS(OS) 2043/2015 Page 4 of 10 4. Since the defendants entered appearance only on one occasion and did not file their written statement within the stipulated time granted, their right to file written statement was closed and the defendants were proceeded ex-parte by this Court vide order dated 03rd February, 2016.

5. In the plaint, it has been averred that the plaintiff is engaged in the business of providing services relating to education and training, teaching and coaching institute, publication of books and study material including e-books, coaching through e-learning platforms as well as through video lectures on electronic devices as well as providing associated goods namely instructional and teaching material, printed publications, teaching apparatus and instruments.

6. It is stated in the plaint that the plaintiff/Company was incorporated on 15th October, 2007 and has been using a fanciful and distinctive trade mark/service mark “AAKASH” in respect of the aforesaid services and associated goods, through the predecessor-in-title of the said trademark/service mark, since the year 1988.

7. It is the plaintiff‟s case that the mark AAKASH is a dominant part of its corporate name and the said trademark is duly registered in classes 41 and 16, in relation to the services and goods in which the plaintiff is dealing. It is further stated in the plaint that the plaintiff also launched its website www.aakash.ac.in, wherein the trademark AAKASH forms the primary and essential part of the plaintiff‟s web portal. The plaintiff has also extracted the sales figure of its services and goods provided under its trademark AAKASH as well as advertisement expenses in the plaint. It is stated in the plaint that on the date of filing of the suit, the plaintiff had 112 study/coaching centers including CS(OS) 2043/2015 Page 5 of 10 franchisee centers all over India.

8. It is stated in the plaint that the artistic work of the plaintiff titled „AAKASH‟ had been created and was being used since 2011 being subject matter of application numbers 2112131 and 2112132 and the plaintiff also claims copyright over the same.

9. Learned counsel of the plaintiff states that the defendant no.1 is a Charitable Trust, whereas the defendant no.2 is one of the divisions of the defendant no.1. He further states that the defendant nos. 1 and 2 have adopted the infringing trademark AKASH as part of their respective trade name/trading styles, i.e. „AKASH Educational & Charitable Trust‟ and „AKASH Learning Center‟ respectively. He states that the defendant nos. 1 and 2 have adopted and started using an infringing website/domain name www.akashlearningcenter.com and that the address provided by the defendant nos. 1 and 2 on the infringing website is that of the defendant no.3.

10. Learned counsel for the plaintiff states that on 30th April, 2015, the plaintiff came across an advertisement published in the newspaper „Dharitri‟ by defendant no.3 whereby the plaintiff was shown as its „Learning Partner‟. He states that the defendant no.3 had published the advertisement with the plaintiff‟s distinctive trademark/label AAKASH without the consent and permission of the plaintiff. He further states that on 27th May, 2015, the plaintiff came across another advertisement published by defendant nos. 1 and 2 in two daily newspapers at Bhubaneswar under their respective infringing trademarks and names. He also states that on 30th May, 2015 and 01st June, 2015, the defendant No.3 published another advertisement in a daily newspaper at Bhubaneswar whereby the defendant no.2 under the aegis of defendant CS(OS) 2043/2015 Page 6 of 10 no.1 was shown to be the learning partner of the defendant no.3.

11. Learned counsel of the plaintiff contends that the defendants are acting in collusion with each other and the infringing trade mark/service mark/trade name AKASH being used by the defendant nos.1 and 2 in collusion and connivance with defendant no.3, comprising of the infringing trademark AKASH, is visually, phonetically and structurally similar/deceptively similar to the plaintiff‟s prior, established, registered, reputed and well recognized trade mark/service mark/trade name, i.e. AAKASH, in respect of identical/similar services/business namely providing of education and training through coaching/education institute in relation to medical, engineering, foundations and competitive qualifying/entrance examinations.

12. Learned counsel of the plaintiff states that the defendant nos.1 and 2 have also adopted an infringing/similar artwork/label, „AKASH‟ which is similar to the original, novel, proprietary and prior used art-work/label „AAKASH‟ of the plaintiff. He states that the defendants have malafidely adopted the entire theme and representation pattern of the plaintiff‟s trademark/label AAKASH, in their infringing label/art-work. He states that the defendants have displayed the divisions namely „Medical, engineering & Foundation‟ in an identical/manner as that of the plaintiff, which amounts to infringement of the plaintiff‟s copyright over the said work.

13. The plaintiff has filed its ex-parte evidence by way of affidavit of Sh. Raj Kumar Verma (PW1). The plaintiff‟s witness has proved the registration certificates of the plaintiff‟s trademarks as Ex.PW
(OSR) to Ex.PW1/23 (OSR) and the Legal Proceedings Certificate as Ex. PW1/24 to Ex.PW1/39. The legal proceedings certificates, with CS(OS) 2043/2015 Page 7 of 10 respect to art work, have been exhibited as Ex.PW1/40 and Ex.PW1/41 and the representation of the said art-work as Ex.PW1/42. The certificates of the Chartered Accountant regarding annual income/receipts from operations and advertisements have been proved as Ex.PW1/43 to Ex.PW1/50. The witness has also proved the receipts of the plaintiff with respect to services rendered under the trademark/service mark/trade name AAKASH as Ex.PW1/51 to Ex.PW1/93. The plaintiff‟s witness has proved the prospectus of the defendant nos. 1 and 2 as Ex.PW1/217 (Colly), the website printouts of defendant nos. 1 and 2 as Ex.PW1/218 (Colly), the printout from the website of defendant no.3 as Ex.PW1/219 (Colly), print-out from the website www.whois.com as Ex.PW1/220 (Colly) and the certificate under section 65B of the Evidence Act issued by the deponent as Ex.PW1/221. The PW1 has also proved the infringing advertisements dated 30th April, 2015, 27th May, 2015 and 30th May, 2015 as Ex.PW1/209, Ex.PW1/211 and Ex.PW1/215 respectively.

14. Having heard learned counsel for plaintiff as well as having perused the papers, this Court is of the view that due to extensive use over substantial period of time, the plaintiff‟s AAKASH mark and name has acquired reputation and goodwill in the marks in India. By virtue of section 28(1) of the Trademarks Act, 1999, exclusive rights have been created in favour of the plaintiff.

15. The adoption and use of the infringing trademark/service mark, AKASH, by the defendants as well as use of the infringing trade name by the defendant nos. 1 and 2 in respect of identical services/business amounts to infringement of the statutory rights of the plaintiff with CS(OS) 2043/2015 Page 8 of 10 respect to its trademarks.

16. From the evidence on record, it is apparent that without any explicit permission or authorisation to use the plaintiff‟s trademark and trade name, the defendants had malafidely copied the trademark AAKASH of the plaintiff and if the defendants are allowed to continue their illegal activities by infringing the registered trademarks of the plaintiff in respect of identical/similar services as well as passing off its services as those of the plaintiff, the exclusive proprietary rights acquired by the plaintiff under the statute as well as under the common law shall become redundant and aforesaid registrations shall become a nullity.

17. Further, as the plaintiff‟s evidence has gone unrebutted, said evidence is accepted as true and correct. The Supreme Court in Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR2003SC2508has held as under:-

".........In the absence of denial of plaint averments

"33. the burden of proof on the plaintiff is not very heavy. A prima facie proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the evidence adduced, and would do well to frame the “points for determination” and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the defendant is absent the court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced CS(OS) 2043/2015 Page 9 of 10 by irrelevant or inadmissible evidence."

18. Consequently, this court accepts the allegation that the trademark, logo and label AKASH used by defendants amounts to infringement of plaintiff‟s trademark and copyright in AAKASH. The use of the impugned mark by the defendants is bound to cause incalculable losses, harm and injury to the plaintiff and immense public harm. Accordingly, present suit is decreed in accordance with the paragraph 43(a), (b), (c), (d), (e), (f) and (g) of the plaint along with the actual costs incurred by the plaintiff. The cost shall amongst others include the lawyers‟ fees as well as the amounts spent on purchasing the court fees. Registry is directed to prepare a decree sheet accordingly. SEPTEMBER14 2017 rs MANMOHAN, J CS(OS) 2043/2015 Page 10 of 10