Delhi District Court
S K Educations Pvt Ltd vs Apna Bachpan Playway School on 21 December, 2024
DLCT010004152020
IN THE COURT OF SH. M. K. NAGPAL, DISTRICT
JUDGE (COMMERCIAL COURT)-13, CENTRAL
DISTRICT, TIS HAZARI COURTS, DELHI
CS (Comm.) No. 79/2020
CNR No. DLCT01-00415-2020
IN THE MATTER OF:
M/S S. K. Education Pvt. Ltd.
Through it's Authorized Representative
Ms. Kusum Lata,
9988/B-1, Sarai Rohilla,
New Rohtak Road,
Delhi-110005.
..... Plaintiff
VERSUS
APNA BACHPAN PLAYWAY SCHOOL
Through its Owner/Incharge/Director/Manager
Sh. Varinder Singh
At: Main Bir Road, Near Gaurav Enclave,
Bathinda-151001, Punjab.
.......... Defendant
Date of Institution : 13.01.2020
Date on which Judgment was Reserved: 10.12.2024
Date of Judgment : 21.12.2024
JUDGMENT
1. This is a commercial suit filed by plaintiff company through its authorized representative (AR)/Director Ms. Kusum Lata seeking a decree for permanent and mandatory injunctions, infringement of its trademarks, copyrights and passing off against CS (Comm.) No. 79/2020 1/31 DLCT010004152020 the defendant as well as for recovery of some amount and damages from defendant.
CASE OF THE PLAINTIFF
2. It is the case of plaintiff company that it is a registered company under the Companies Act, 1956 having its registered office at the above mentioned address and it is involved in field of educational activities and is the franchisor/proprietor of play schools under the name of 'BACHPAN' & 'BACHPAN.... a Play School' and also in the field of higher education under the brand name 'Academic Height's Public School' (AHPS).
3. It has been averred by plaintiff company that it contemplated and started the play school education under brand name 'Bachpan' and 'Bachpan a Play School' in the year 2002 and at a time when the market was being ruled by unprofessional household pre-schools and parents questioned the very wisdom behind sending children to a play school. It is also stated that plaintiff company at that time had a vast and rich experience in the field of education and it formulated a strategy for future growth of this young edifice of education by entering into pre- primary education and launching play schools in the above name to cater the educational and upbringing needs of children between 2-5 years. It is also submitted that it was done after research in the realm of pre-school education and realizing that most brands were not able to provide a resourceful and effective platform that was necessary to ascertain and develop the inherent, but CS (Comm.) No. 79/2020 2/31 DLCT010004152020 undeveloped talent that was hidden within each child. It is also averred by plaintiff company that its idea was to provide pre- primary education system in a playful atmosphere and to make children to apply their mental and physical skills while playing, learning and enjoying in a playful atmosphere and for this purpose, the plaintiff company had established and developed innovative techniques and activities for providing pre-primary education. It has further been averred by plaintiff company that it is amongst the pioneers in providing professional and structured pre-school education.
4. It is also case of plaintiff company that in the year 2002- 2003, it had opened up franchises all over India for running of play schools under the above name for small children and for admission in the category of Play Group, Nursery and KG and also for establishing Activities Centre for them. It is also averred by plaintiff company that uniqueness of its play schools in the above names/marks and the concept about it was duly reflected in its brochures of admission to the said schools and the ideology of plaintiff was reflected therein and it was also to the effect that 'We offer every child an environment where their dreams are flourished, their thinking process is stimulated, their learning abilities are awakened and they willing to experiment with knowledge'. It is also averred by plaintiff company that its play schools under the above name are considered as a revolution, where 'Bachpan' is conceived not just as a school, but as a CS (Comm.) No. 79/2020 3/31 DLCT010004152020 platform to nurture excellence in every child under its umbrella and to cultivate the Indian dreams. The fact that Bachpan has a nationwide presence in almost every state of passing and acceptance amongst INDIA, it speaks volume of their presence in every house hold."
5. It is also the case of plaintiff company that to achieve the said objectives, its play schools provide the children with unique thematic rooms where each and every room is built with a theme according to age etc. of the children and offers a wide range of activities. It has been averred by plaintiff company that it has evolved its own method of teaching and programmes for small children and it is having its own books and tools etc. for separate levels in order to infuse the sense of integrity in a child and it also provides school uniform with unique color combination, which helps in removing the sense of discrimination and inferiority or superiority from the tender and innocent minds of children. It has been averred by plaintiff company that as a result of above, it has been able to make out a territorial presence of its franchisee play schools all over India and has been successful in establishing about 800 franchisee play schools all over India. It is also averred by plaintiff company that at present around 1100 play schools with its above trade names 'BACHPAN' and 'BACHPAN ...a Play School' are being run across India and its above trade mark/name has acquired a big name and has become indelible part of its business and identity since the year 2003.
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6. It has further been averred by plaintiff company that far reaching presence of its play schools all over India and in such large and extensive number itself manifests the popularity, success, and also the goodwill acquired or earned by it by using the above trade marks/names over the years. It has been averred that plaintiff has now become one of the fastest growing chains of play schools in India and having such extensive presence all over India. The details of above marks 'BACHPAN' & 'BACHPAN... a Play School' applied for registration by plaintiff under various Classes with the office of Registrar of Trade Marks are found stated in para 17 of the plaint and these are also being reproduced herein below:-
Registration Class Word Mark Goods & Descriptions No. 1250366 41 BACHPAN (Label) Education providing education through play school 1640000 41 BACHPAN Education providing education through play school 2071574 20 BACHPAN Manufacturing of all kinds furniture, (DEVICE) mirrors, picture frames; Goods (not included in other classes) of Wood, Cork, Reed, Cane, Wicker, Horn, Bone, Ivory, Whalebone, Shell, Amber, Mother-OFPEARL, Meerschaum and Substitutes for all these materials or of Plastics.
1201003 16 BACHPAN Books, Periodicals, Printed Matter, Instructional and Teaching Material, Relating to Nursery Classes.
1640001 16 BACHPAN WITH Books, Periodicals, Instructional
LABEL and Teaching Material, Relating to
Nursery Classes.
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DLCT010004152020
7. It is also the case of plaintiff company that its services under the above marks are extensively used and advertised in print and audio-visual media and the company had spent lacks of rupees into the inputs in relations of these marks and in the form of resources, manpower and other factors that have been pivotal in establishing the name, goodwill and presence of plaintiff's schools all over India. The details of amounts spent by plaintiff company on advertisements over the years between 2013-2014 to 2017-2018 are also found stated in para 18 of the plaint and advertisement expenditure of the company is though shown as Rs.
95,98,692/- in the year 2013-2014, but thereafter it had gone in crores and had been increasing every year.
8. It has also been averred by plaintiff company that its goodwill, name and reputation is even reflected from the overwhelming reach and volume of its above marks as available on internet and the plaintiff has further got registered its domain name by using the mark or name BACHPAN in their domain name bachpanglobal.com for providing information about activities of the plaintiff and about the concept and methodology of 'BACHPAN... a Play School'.
9. It is further the case of plaintiff company that in the month of January-February, 2013, it came to know that the defendant is running play school from the premises mentioned in title of the suit under the mark 'APΝΑ BACHPAN PLAYWAY SCHOOL', CS (Comm.) No. 79/2020 6/31 DLCT010004152020 which mark is structurally, visually and phonetically similar to its trade mark BACHPAN and plaintiff company has then sent a notice dated 28.03.2019 followed by reminder letters dated 23.04.2019 and 10.05.2019 to defendant demanding it to cease and desist from using the said impugned mark or even any other trade mark, which is identical with or deceptively similar to its trade mark BACHPAN, in relation to any business or services being provided by it and also for disclosure of full name and particulars of the proprietor/directors of the defendant's firm/society running the said school and further demanding damages to the extent of Rs. 5,00,000/-. It has been submitted that the said notice was duly served upon defendant, but it had failed and neglected to comply with the same and hence, the plaintiff had also served one legal notice dated 10.07.2019 upon defendant pointing out the above infringement of its trade marks/names, but defendant failed to even send any reply thereto or comply with the said notice.
10. It has been averred by plaintiff company that adoption and use of the trade name 'APNA BACHPAN PLAYWAY SCHOOL' by defendant is intentional and with a fraudulent intent to ride upon the name and goodwill of plaintiff and it amounts to infringement of the trade marks/names 'BACHPAN' & 'BACHPAN.... a Play School' being used for running of its play schools. It is also the case of plaintiff company that the above misrepresentation is bound to cause a confusion in CS (Comm.) No. 79/2020 7/31 DLCT010004152020 minds of the parents who may go to enroll their children in above play school of defendant under an assumption and belief that the same is linked, connected or belongs to the plaintiff company and being the registered owner of above said marks 'BACHPAN' and 'BACHPAN...a Play School' and also being its prior adoptor, the plaintiff company is entitled to protection and relief as spelt out in Sections 134 and 135 of the Trade Marks Act, 1999. It has also been submitted specifically that the defendant is required to be restrained from using the above deceptively similar mark as the same will not only cause loss of reputation and goodwill to plaintiff, but also the financial losses to it and its other franchisees existing in the State of Punjab. It has further been averred by plaintiff that defendant has adopted and started using the above trade name 'APNA BACHPAN PLAYWAY SCHOOL' knowing very well that plaintiff is running its play schools under the trade names/marks 'BACHPAN' and 'BACHPAN...a Play School' continuously and regularly since the year 2003.
NON-COMPLIANCE OF PROVISIONS OF SECTION 12A OF THE COMMERCIAL COURTS ACT AND ITS EFFECT, IF ANY
11. It has been observed on perusal of record that along with plaint of this suit, the plaintiff company has also filed some miscellaneous applications, including an application under Order 39 Rule 1 & 2 read with Section 151 CPC seeking an ex-parte ad-interim injunction order and also another application under CS (Comm.) No. 79/2020 8/31 DLCT010004152020 Order 26 Rule 9 read with Section 151 CPC seeking appointment of a Local Commissioner to visit the premises of defendant.
12. However, though the present suit is found to have been filed as a commercial suit, but the plaintiff company did not resort to Pre-Institution Mediation process for amicable settlement of their disputes in this case, as provided by Section 12A of the Commercial Courts Act, 2015. One of the Ld. Predecessors of this court had even taken note of the above fact and it is found submitted before this court on 13.02.2020 by Ld. Counsel for plaintiff that the Pre-Institution Mediation in this case was not resorted to as an urgent relief was being sought by plaintiff.
13. These applications of plaintiff company came to be decided by this court vide a common order passed on the above date and an ex-parte and ad-interim injunction order was passed in favour of plaintiff company and restraining the defendant from using word/label/mark 'BACHPAN' or any other deceptively similar mark/logo to the registered trade mark of plaintiff and a Local Commissioner was also appointed by court to visit the given premises of defendant and to seize the logos/books/ stationary and other packaging material etc. of defendant bearing the impugned mark/label. The said commission was also duly executed and some infringing goods or articles are found to have CS (Comm.) No. 79/2020 9/31 DLCT010004152020 been seized by the Ld. Local Commissioner and the same were released on superdari to defendant in terms of the said order.
14. It has also been observed from record that though this court had taken note of the factum of not resorting to a Pre- Institution Mediation process by the plaintiff company vide its above order dated 13.02.2020, but no formal order is found to have been passed by the court regarding the compliance of said provisions or its requirement in the present case. It has been held by the Hon'ble Supreme Court in case Patil Automotion Private Limited Vs. Rakheja Engineers Private Limited, 2022 SCC Online SC 1028 that the provisions of Section 12A of the Commercial Courts Act, 2015 are mandatory to be complied with in every commercial suit, but the above direction or requirement has been held mandatory only after the cut off date 20.08.2022 given in said order. Since the present case is found to have been instituted by plaintiff company on 13.01.2020 i.e. after the above said cut off date 20.08.2022, it is held that resort to Pre-Institution Mediation process in this case was not necessary or mandatory. Moreover, in view of the subsequent judgment of Hon'ble Supreme Court in case of Yamini Manohar Vs. TKD Keerthi, SLP (Civil) Diary No(s). 32275/2023, the plaintiff was not even required to seek any exemption from complying with the said provisions in view of the above urgent interim reliefs contemplated and sought by it through the said interim CS (Comm.) No. 79/2020 10/31 DLCT010004152020 applications, which even came to be allowed by this court through its order dated 13.02.2020.
SERVICE OF SUMMONS UPON DEFENDANT AND IT BEING PROCEEDED EX-PARTE
15. Summons of the suit as well as of accompanying applications were then duly served upon defendant and a memo of appearance as well as written statement on its behalf came to be filed before this court on dates 08.03.2021 and 24.08.2021 respectively. An application seeking permission to use the goods seized by Ld. Local Commissioner was also moved subsequently on behalf of defendant and this application came to be decided vide order dated 12.10.2021 and defendant was permitted to use the said goods in a way that there was no indication of its association with the plaintiff company or its trade mark. However, no reply to the above interim application of plaintiff under Order 39 Rules 1 & 2 read with Section 151 CPC is found to have been filed by the defendant.
16. However, another application under Order 39 Rule 2A CPC was subsequently filed on record by the plaintiff company alleging some violation or breach on the part of defendant of the above ex-parte ad-interim order of stay dated 13.02.2020 passed in this case. The said application of plaintiff is found to have been registered separately as Misc. DJ No. 429/2022 in this court, after the suit is found to have been CS (Comm.) No. 79/2020 11/31 DLCT010004152020 transferred to this court along with the said application. It has been observed that though the suit file was received in this court on transfer, but the miscellaneous file in respect to said application was received from Ld. Transferee Court after a considerable delay.
17. It is also observed on perusal of record that the defendant was subsequently proceeded ex-parte in this case vide order dated 05.01.2024 and though an application for setting aside the said order was moved by him on 07.02.2024, along with a fresh vakalatnama filed on his behalf, but the said application was ultimately dismissed for want of prosecution vide order dated 10.04.2024 of the court.
CASE OF DEFENDANT
18. As stated above, though the defendant stands proceeded ex-parte in the case, but before that, one written statement was duly filed on record by defendant and the same is found supported by an affidavit of one Sh. Varinder Singh in his capacity as an AR of the defendant. Besides taking some formal objections regarding non-maintainability of the present suit and dis-entitlement of plaintiff for the equitable relief of injunction, the stand of defendant on merits was that the trademark/ name/logo 'APNA BACHPAN PLAY WAY SCHOOL' being used by it is a different mark as there is no structural, phonetic or visual similarity or resemblance between the said CS (Comm.) No. 79/2020 12/31 DLCT010004152020 trademark/name/logo and the trademarks/names/devices/labels of 'BACHPAN' & 'BACHPAN.... a Play School' being used plaintiff company for running of its schools.
19. It was further the submission of defendant that in light of the above fact, there was no question of any infringement of the above trademarks/names/devices/labels of plaintiff company by it because of user of the trademark/name/logo 'APNA BACHPAN PLAY WAY SCHOOL' and hence, no question also arose of the abuse or misuse of reputation or goodwill of plaintiff company by it or suffering of any loss in respect thereto by plaintiff as a result of user of its above trademark/name/logo. It was also the submission of defendant that adoption and user of the said trademark/name/logo 'APNA BACHPAN PLAY WAY SCHOOL' by it was not a fraudulent adoption and rather, the same had been adopted honestly and bonafidely and it had even applied for registration of the above said trademark/name/logo with the Trade Mark Registry in Class 41.
REPLICATION
20. In its replication, the plaintiff company had reiterated the contents of its plaint and had denied the contrary submissions made and stand taken by defendant in its written statement.
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21. However, it is found admitted by plaintiff company in its replication that the defendant had applied for registration of its above trademark/name/logo 'APNA BACHPAN PLAYWAY SCHOOL', but it is the submission of plaintiff company that the same stands objected by it and due to the said objection, the registration of above mark of defendant has yet not been allowed by the Trade Mark Registry. It is also found stated in replication of plaintiff that in some other suit filed by defendant in a Civil Court at Bhatinda, Punjab, the defendant had made a false submission that it had already procured registration of the above trademark vide No. 4042224.
EVIDENCE & LIST OF DOCUMENTS OF PLAINTIFF
22. Though pleadings in this case stood completed, but it has been observed that no formal issues for disposal of the present suit were framed by the court and it was apparently for the reason that defendant was proceeded ex-parte in the case subsequent to filing of its written statement.
23. In support of its case, the plaintiff company is found to have examined on record only one witness and it has examined its AR Ms. Kusum Lata as PW1. The part examination-in-chief of this witness was recorded by the court on 06.08.2024 and she had tendered her examination-in-chief through an affidavit Ex.PW1/A and along with the said affidavit, she also tendered and relied upon the following documents:-
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1. True copy of extracts of Board Resolution dated 26.04.2019 as Ex.PW1/1.
2. True copy of ISO Certificate of Registration of the plaintiff as Ex.PW1/2 (OSR).
3. True copy of Certificate of Merit of plaintiff as Ex.PW1/3 (OSR).
4. True copy of Certificate of Participation in Mumbai International Book Fair, 2002 as Ex.PW1/4(OSR).
5. True copy of Certificate of Registration bearing No. 1201003 dated 23.05.2003 (wrongly mentioned as 23.05.2016 in evidence affidavit of witness) as Ex.PW1/5 (OSR).
6. True copy of Certificate of Registration bearing No. 1250366 dated 29.10.2005 as Ex.PW1/6(OSR);
7. True copy of Certificate of Registration bearing No. 1640001 dated 07.02.2011 as Ex.PW1/7 (OSR).
8. True copy of Certificate of Registration bearing No. 2071574 dated 27.07.2012 as Ex.PW1/8(OSR).
9. True copy of Certificate of Registration bearing No. 1640000 dated 30.03.2010 as Ex.PW1/9(OSR).
10. True copy of Certificate for legal use bearing No. 2139 dated 08.02.2013 issued by Registrar of Trade Mark, along with true copy of entry in Registrar of Trade Marks relating to Registration Trade Mark No. 1201003 in Class 16, as Ex.PW1/10 (colly) (OSR).
11. True copy of Certificate for legal use bearing No. 2170 dated 13.02.2013 issued by Registrar of Trade Mark, along with true copy of entry in Registrar of Trade Marks relating to Registration Trade Mark No. 1250366 in Class 41, as Ex.PW1/11 (colly) (OSR).
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12. True copy of Certificate for legal use bearing No. 2137 dated 08.02.2013 issued by Registrar of Trade Mark, along with true copy of entry in Registrar of Trade Marks relating to Registration Trade Mark No. 1640000 in Class 41, as Ex.PW1/12 (colly) (OSR).
13. True copy of Certificate for legal use bearing No. 2138 dated 08.02.2013 issued by Registrar of Trade Mark, along with true copy of entry in Registrar of Trade Marks relating to Registration Trade Mark No. 1640001 in Class 16, as Ex.PW1/13(colly) (OSR).
14. True copy of Certificate for legal use bearing No. 2140 dated 08.02.2013 issued by Registrar of Trade Mark, along with true copy of entry in Registrar of Trade Marks relating to Registration Trade Mark No. 2071574 in Class 20, as Ex.PW1/14(colly) (OSR).
15. True copies of newspaper clippings in Dainik Jagaran and Dainik Bhaskar containing advertisement of plaintiff as Ex.PW1/15 (colly) (OSR) and newspaper clipping of Amar Ujala as Mark-A (this newspaper clipping was de-exhibited as original thereof was not produced at the time of examination of witness).
16. True/carbon copies of invoices of advertisement dated 29.03.2019 and 29.05.2019 as Ex.PW1/16 (colly) and copy of invoice dated 07.05.2018 is now marked as Mark-B (this invoice was de-exhibited as original thereof was not produced at the time of examination of witness).
17. The computerized copies of income tax return acknowledgment for the assessment years 2014-15, 2015-16, 2016-17, 2017-18 and 2018-19 along with profit & loss accounts, share capital, fixed assets, investment, other income, general expenses etc. as Ex.PW1/17 (colly).
18. True copy of list of play school of the franchisee in States of India as Ex.PW1/18 (OSR).
19. Office copy of legal notice dated 10.07.2019, along with speed post receipt, as Ex.PW1/19 (colly).
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20. True copy of internet generated proof of delivery as Ex.PW1/20.
21. True copies of cease and desist letter dated 28.03.2019 and its reminder dated 23.04.2019, along with courier receipt, as Ex.PW1/21 (colly).
22. True copy of fee receipt of 'Parth' Class 'Nursery' dated 11.10.2019 as Ex.PW1/22.
23. True copies of prospectus, admission form, visiting card with impugned mark "Apna Bachpan Playway School" as Ex.PW1/23 (colly). The copies of four photographs as Mark-C (colly) (de-exhibited as original thereof was not produced at the time of examination of witness).
24. True copy of order dated 06.10.2010 passed by Sh. Yogesh Khanna, the then Ld. ADJ, Delhi in case No. 518/2010 as Ex.PW1/24.
25. True copy of order dated 30.05.2011 passed by the Hon'ble High Court of Delhi in C.S. (OS) No. 1384/2011 as Ex.PW1/25.
26. True copy of order dated 12.07.2010 passed by the Hon'ble High Court of Delhi in C.S. (OS) No. 1364/2010 as Ex.PW1/26.
27. True copy of judgment dated 22.05.2019 passed by the Sh. Ankur Jain, Ld. ADJ-10 (Central), THC, Delhi in TM No. 20/2013, along with decree sheet, as Ex.PW1/27.
24. During the course of recording of her above examination-in-chief and on oral request made by Ld. Counsel for plaintiff, some further documents in connection with registration of the above trademarks/names/devices/labels of plaintiff and the Legal Proceeding Certificates (LPCs) issued in respect thereto were also taken on record. However, further examination of the CS (Comm.) No. 79/2020 17/31 DLCT010004152020 witness was deferred by court at request of Ld. Counsel for plaintiff as it was stated that a certificate under Section 65B of the Indian Evidence Act in respect to authenticity of some electronic documents on record could not be filed by the plaintiff.
25. The said certificate was subsequently taken on record by the court vide order dated 04.09.2024 on an application under Order 11 Rule 1(5) CPC moved on behalf of plaintiff and the same is found to have been tendered by PW1 in evidence through her subsequent testimony recorded in court on 03.10.2024 and she got exhibited the same as Ex.PW1/28 and ex-parte evidence of plaintiff company was also closed by PW1 and matter was adjourned for ex-parte final arguments. After hearing part final arguments addressed by Ld. Counsel for plaintiff on 14.11.2024, the matter was directed to be fixed for further arguments, if any/consideration.
26. However, while considering the case record, this court had felt it necessary to seek some clarifications from Ld. Counsel for plaintiff as it was observed that validity of LPCs issued to the plaintiff company in respect to its above trademarks/names/ devices/labels stood already expired and in response thereto, another application Order 11 Rule 1(5) CPC came to be filed on behalf of plaintiff company and the latest LPCs, along with status of renewal of the trademarks of plaintiff, were taken on record by the court vide order dated 10.12.2024 as CS (Comm.) No. 79/2020 18/31 DLCT010004152020 additional documents because the same were felt necessary for a just disposal of the case and on same date, the ex-parte evidence of plaintiff was re-opened and the said documents were tendered in evidence through further examination of PW1 recorded by the court. The above additional documents or latest LPCs tendered through the testimony of PW1 dated 10.12.2024 are as follows:-
1). True copy of latest Legal Proceedings Certificate, along with E-registration page showing the status of registration of trademark registered vide application no. 1201003 in respect of goods/services falling under class 16 as well as with renewal certificate, as Ex.PW-1/29 (colly).
2. True copy of latest Legal Proceedings Certificate, along with E-registration page showing the status of registration of trademark registered vide application no. 1250366 in respect of goods/services falling under class 41 as well as with renewal certificate, as Ex.PW-1/30 (colly).
3. True copy of latest Legal Proceedings Certificate, along with E-registration page showing the status of registration of trademark registered vide application no. 1640000 in respect of goods/services falling under class 41 as well as with renewal certificate, as Ex.PW1/31 (colly).
4. True copy of latest Legal Proceedings Certificate, along with E-registration page showing the status of registration of trademark registered vide application no. 1640001 in respect of goods/services falling under class 16 as well as with renewal certificate, as Ex.PW1/32 (colly).
5. True copy of latest Legal Proceedings Certificate, along with E-registration page showing the status of registration of trademark registered vide application no. 2071574 in respect of goods/services falling under class 20 as well as with renewal certificate, as Ex.PW1/33 (colly).
After further examination of PW1, the plaintiff CS (Comm.) No. 79/2020 19/31 DLCT010004152020 company had again closed its evidence and the matter was fixed for ex-parte final arguments.
DIRECTION FOR AMENDMENT OF MEMO OF PARTIES
27. It is necessary to mention here that though one Sh. Varinder Singh had filed his affidavit as an AR of the defendant in support of its written statement and further though it was found reflected in the copies of documents filed by defendant with its written statement that Sh. Varinder Singh as proprietor of the defendant 'APNA BACHPAN PLAY WAY SCHOOL' had applied for registration of the said mark vide application No. 4042224 filed with the Trade Mark Registry, but still no steps were found to have been taken up by plaintiff seeking amendment of memo of parties and for bringing on record the name of Sh. Varinder Singh as proprietor of the defendant school. Hence, vide order dated 20.12.2024 passed at the final stage, this court had directed for amending the memo of parties to this effect and for filing of an amended memo of parties incorporating the name of Sh. Varinder Singh as proprietor of defendant school and the said memo now stands filed on record.
ARGUMENTS AND APPRECIATION
28. I have heard the arguments advanced by Sh. Rohit Vashisht, Ld Counsel for plaintiff company and have also perused the case record.
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29. As already discussed, the plaintiff company in support of its case has examined on record only its AR Ms. Kusum Lata as PW1 and her examination-in-chief was tendered through an affidavit Ex. PW1/A. It is observed that in the said affidavit, she has almost deposed on lines of the plaint of this suit and has, thus, supported the case of plaintiff as set out therein. Since the defendant stands already proceeded ex-parte in the case and no cross-examination of PW1 was conducted on his behalf, the entire depositions made by this witness on record have gone unchallenged, uncontroverted and unrebutted. The oral depositions made by this witness regarding the status of plaintiff company and its registration for issuance of an ISO 9001 certificate and further the above witness being an AR of the plaintiff and having authority to institute the present suit, to sign the pleadings and to appear before this court as a witness stand duly substantiated and corroborated by contents of the documents Ex. PW1 and Ex.PW1/2.
30. Amongst the other documents, PW1 has also brought in evidence copies of the trademark registration certificates of plaintiff company as Ex.PW1/5 to Ex. PW1/14 and also the certificates of renewal of said marks, along with LPCs related thereto, through her testimony made before the court as Ex.PW1/29(colly) to Ex.PW1/33 (colly) and on perusal of these documents, it has been observed that the plaintiff company had got registered the above marks 'BACHPAN' & 'BACHPAN.... a CS (Comm.) No. 79/2020 21/31 DLCT010004152020 Play School' either as a word mark, label or device under different Classes i.e. Classes 16, 20 and 41 and through different registration applications, as stated above. The mark 'BACHPAN' is found to have been applied by plaintiff company for the first time as a word mark vide application No. 1201003 on 23.05.2003 and the other mark 'BACHPAN.... a Play School' as a device mark was applied on 18.11.2003 vide application No. 1250366, though the other marks were applied by plaintiff lateron. These documents duly corroborate and substantiate the oral testimony of PW1 and the case of plaintiff company regarding adoption of the said marks by plaintiff in the year 2002 and its user for running of play schools under the said marks/devices/labels since then and it has been established on record that the said marks/devices/labels are still valid. Even the ISO certificate of registration of plaintiff company Ex.PW1/2, the Certificate of Merit of plaintiff Ex.PW1/3 and the certificate Ex.PW1/4 issued to plaintiff regarding its participation in Mumbai International Book Fair corroborate and substantiate the claim of PW1 that the plaintiff company has earned a good name and reputation in the field of education and had been running play schools under the above trade marks/devices/labels etc. Further as is also clear from the list Ex.PW1/18, it is having its franchisees in 25 States/UTs and in the State of Punjab alone the number of its franchisees is 39.
31. As already discussed, the defendant in his written statement has claimed that the trademark/name/logo APNA CS (Comm.) No. 79/2020 22/31 DLCT010004152020 BACHPAN PLAY WAY SCHOOL was adopted by him honestly and the same is being used by him for running his above play school and he has also applied for registration of the said mark with the trademark registry. It has been observed that photocopy of some record pertaining to one application for registration of the said trademark applied under Class 41 vide application No. 4042224 (Temp. Ref. No. 2925886) has also been filed by defendant along with his written statement and this record contains the image of said trademark being used by him. Though, he has not come forward to lead his evidence in this case and to formally prove the said documents, but these documents can certainly be read in evidence against him as he himself had filed the same and cannot deny the contents thereof.
32. As per the claim made by defendant in his above registration application, the said mark is being used by him or his predecessor in title since 01.02.2018 in respect to the goods and services mentioned in the application and falling under Class 41. The image of the device mark applied by defendant through the said application is as under:-
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33. One other image/logo appearing in the said record filed by defendant is as under:-
The fee receipt dated 11.10.2019 Ex.PW1/22 issued by the school of defendant and brochure of his school Ex.PW1/23 also substantiate the case of plaintiff company regarding user of the above impugned mark/label/logo by defendant in the running of his school and in respect to the documents pertaining to said school.
34. Even if the above admitted case of defendant is considered, the above mark/device/logo applied by him through the above application No. 4042224 has yet not been registered and it has been specifically claimed by plaintiff company in its replication that it has already raised an objection to proposed registration of the said mark applied by defendant and its objection is still pending. Hence, mere filing or pendency of the above application of defendant with the trademark registry is not sufficient to hold that he has been conferred or granted any rights or title to use the said trademark/device/logo resembling or similar to the registered trademarks/labels/devices 'BACHPAN' & 'BACHPAN.... a Play School' of plaintiff vide five different CS (Comm.) No. 79/2020 24/31 DLCT010004152020 applications and that too, when the plaintiff is claiming adoption and user of the said trademarks since around the year 2002/2003 and the defendant has claimed user of the trademark/device/logo APNA BACHPAN PLAY WAY SCHOOL by him or by his predecessor in title only since 01.02.2018.
35. Hence, the evidence on record is sufficient to hold that plaintiff company is not only the registered owner and proprietor of the trademark 'BACHPAN' & 'BACHPAN.... a Play School', but also the prior adopter of the said trademarks/labels/devices in name of 'BACHPAN' and therefore, it is entitled to protection from infringement of its legal as well as common law rights in respect to user of the said trademarks/devices/labels in terms of provisions contained in Sections 28 & 29 of the Trade Marks Act, 1999 and to claim the reliefs in terms of Sections 134 & 135 of the said Act, 1999 as it has the exclusive rights to use the said trademarks/labels/devices in view of its rights vested therein under the provisions of said Act. Moreover, since the plaintiff is registered owner and proprietor of the above marks/devices/ labels, even on application of the principle of quia timet, the plaintiff company can be held entitled to the above relief of injunction in order to protect it from infringement of its statutory or common law rights on the mere basis of apprehensions of violation or infringement of the said rights.
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36. As far as the defence taken by defendant in his written statement that his impugned trademark/logo/device APNA BACHPAN PLAY WAY SCHOOL is different from the trademarks/labels/devices 'BACHPAN' & 'BACHPAN.... a Play School' being used by plaintiff, it is observed from a perusal of the oral and documentary evidence on record that the above impugned mark of defendant is not a different mark, but there is substantial and material similarity and resemblance between the said mark/device/logo being used by defendant and the registered trademarks/devices/labels of plaintiff as the defendant had adopted and copied the prominent word/mark BACHPAN of the plaintiff and is using the same in respect to same class of goods and services in relation to running of a play school and falling in Class 41. The images of above marks/devices/labels of plaintiff in name of 'BACHPAN' and 'BACHPAN ...a Play School' are also being reproduced herein below:-
It can be observed on a bare perusal of the impugned mark/device/logo and its image being used by defendant and the marks/devices/labels/logos got registered and being used by plaintiff that the word BACHPAN is the dominating part or CS (Comm.) No. 79/2020 26/31 DLCT010004152020 prominent word of the said marks of parties and the same is structurally, phonetically as well as visually similar in the said marks and thus, the impugned mark/device/logo being used by defendant for running of its play school can be said to be resembling or deceptively similar to the trademarks/devices/labels being used by plaintiff. Again, since the plaintiff is the prior user and registered owner of the said marks/devices/labels/logos in name of BACHPAN, the defendant cannot be held to be an honest adopter of the said mark being used by him.
37. Further, this court is also convinced from the oral and documentary evidence led on record that user of the impugned mark/label/device APNA BACHPAN PLAY WAY SCHOOL by defendant may create a confusion or impression in the minds of parents intending to admit their children in school of defendant that the said school of defendant is linked to or associated with the plaintiff company. Hence, if the defendant is permitted to continue to run the said school in the above impugned trade name/mark/device/logo, then the same will certainly cause harm and damage to the plaintiff company, not only in financial terms but also to its goodwill and reputation and it will further adversely affect the business of other franchisee schools of plaintiff company in the State of Punjab. As stated above, as many as 39 franchisees of plaintiff company have been stated to be there in the State of Punjab only.
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38. Thus, in view of above discussion, it is held that the running of above school of defendant in the name of APNA BACHPAN PLAY WAY SCHOOL amounts to an infringement by defendant of the rights of plaintiff in respect to its registered trademarks/devices/labels in name of 'BACHPAN' & 'BACHPAN.... a Play School' and hence, the suit of plaintiff company is being decreed and a decree for permanent injunction is directed to be passed in favour of plaintiff company and against the defendant restraining him from using the impugned mark/logo/label/device APNA BACHPAN PLAY WAY SCHOOL for running of his school at the given premises or at any other address or in respect to any goods or services being provided in relation thereto or even from using any other mark/label/ device/logo etc. which is deceptively similar or resembles to the registered marks/labels/devices/logos of plaintiff in name of 'BACHPAN' & 'BACHPAN.... a Play School' in respect to running of a play school or in connection with any goods or services being provided by him.
39. Further, a decree for mandatory injunction is also directed to be passed in favour of plaintiff company and against the defendant thereby directing the defendant, his officers, servants, employees and agents etc. to hand over and deliver up to plaintiff company all the books, stationary, furniture or other articles bearing the above impugned trademark/device/label/logo in name of APNA BACHPAN PLAY WAY SCHOOL or even any CS (Comm.) No. 79/2020 28/31 DLCT010004152020 other mark/label/device/logo etc. which is deceptively similar or resembles to the registered marks/labels/devices/logos of plaintiff in name of 'BACHPAN' & 'BACHPAN.... a Play School', in respect to running of a play school or in connection with any goods or services being provided by him.
40. As far as the relief of damages of Rs. 5,00,000/- being claimed by plaintiff company from defendant on account of acts infringement and passing off in respect to the said marks/devices/labels is concerned, it has been observed that the plaintiff company has not led on record even an iota of evidence in support of its claim for damages as they had not brought on record any oral or documentary evidence to show the volume or extent of the business of defendant, the number of students in his school or his earnings therefrom or even the losses which the plaintiff or its franchisees in Punjab might have suffered due to the above infringement of its rights by defendant in respect to the said marks. Hence, in the absence of there being any evidence on record on this issue, the claim of plaintiff for passing of a decree of Rs. 5,00,000/- or even for any other amount as damages has remained unsubstantiated and unproved and it cannot be decreed.
41. Now coming to the above contempt application filed by plaintiff company under the provisions of Order 39 Rule 2A CPC on account of alleged violation of the above ex-parte ad- interim order dated 13.02.2020 of this court, it has been observed CS (Comm.) No. 79/2020 29/31 DLCT010004152020 that though the said application was registered separately, but no reply to the same is found to have been filed on behalf of defendant as he was subsequently proceeded ex-parte in the case. It is observed that this application was filed by plaintiff on 07.02.2024 i.e. the date when the defendant had moved an application for setting aside of the ex-parte order dated 05.01.2024 passed against him. It is found to have been alleged by plaintiff company in this application that despite passing of the above restraint order, the defendant was still running its school using the above impugned trademark/name/device/label APNA BACHPAN PLAYWAY SCHOOL and copies of some printouts or photographs taken from the school building were enclosed with the said application. Since the file of this application was being put up and proceeded along with the file of main suit of plaintiff, the plaintiff company was also expected and required to lead its evidence in proof of the alleged violation of above said order of this court being committed by defendant, but it has failed to do so and to lead any evidence on record to this effect. PW1 has not even deposed about the above said copies of printouts or photographs in her evidence affidavit Ex.PW1/A or during her examination before the court nor any other evidence for proving the same has been led by plaintiff on record. Even the person who might have taken the above photographs has not been examined by the plaintiff company in its evidence and during the course of arguments, Ld. Counsel for plaintiff has fairly conceded that the plaintiff has no evidence in its possession to establish any CS (Comm.) No. 79/2020 30/31 DLCT010004152020 violation or contempt of the above order of this court by defendant. Hence, in view of the above, the application under Order 39 Rule 2A CPC of plaintiff is being dismissed.
42. This suit of plaintiff stands decreed and the above contempt application of plaintiff stands dismissed accordingly in terms stated above. Let a decree sheet be drawn accordingly. However, the plaintiff is being awarded costs of the present suit.
43. File be consigned to record room after due compliance.
Announced in the open court Dated: 21.12.2024 (M. K. Nagpal) District Judge, Commercial Court-13 Digitally Central District, Tis Hazari Courts, signed by Delhi/21.12.2024 MK MK NAGPAL NAGPAL Date:
2024.12.21 17:03:20 +0530 CS (Comm.) No. 79/2020 31/31