Delhi High Court - Orders
Sarla Holdings Private Limited vs Pathways School Gurugram Parents ... on 5 October, 2020
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
$~1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) No. 413/2020 & I.A. Nos. 8918-20/2020
SARLA HOLDINGS PRIVATE LIMITED .....Plaintiff
Through : Mr. Rajshekhar Rao, Mr. Raghav
Kacker, Mr. Karthik Sundar, Mr.
Inder Mohan Singh, Mr. J.V. Abhay,
Mr. Maidini Phul and Ms. Prakriti
Sharma, Advs.
versus
PATHWAYS SCHOOL GURUGRAM PARENTS ASSOCIATION
& ORS. .....Defendants
Through : Mr. Anupam Kishore Sinha, Adv. For
D-1.
Mr. Suhail Sehgal, Adv. For D-2.
Mr. Aayush Malhotra, Adv. For D-3.
Mr. Purushottam, Adv. For D-6.
Mr. M. Abhijnan, Adv. For D-7.
Mr. Akash Singh, Adv. For D-8.
CORAM:
HON'BLE MR. JUSTICE RAJIV SHAKDHER
ORDER
% 05.10.2020 [Court hearing convened via video-conferencing on account of COVID-19] I.A. No. 8919/2020
1. Allowed. The plaintiff is permitted to file additional documents. 1.1 The additional documents will be filed within 30 days from today.
I.A. No. 8920/20202. Allowed, subject to just exceptions.
CS(COMM)No.413/2020 page 1 of 4 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:06.10.2020 16:05:19 CS (COMM) No. 413/2020 & I.A. No. 8918/2020
3. Issue summons in the suit and notice in the captioned application via all means including e-mail.
3.1 Mr. Anupam Kishore Sinha accepts service on behalf of defendant no. 1 while Mr. Suhail Sehgal accepts service on behalf of defendant no. 2. 3.2 Likewise, Mr. Aayush Malhotra accepts service on behalf of defendant no. 3, Mr. Purushottam accepts service on behalf of defendant no.6, Mr. M. Abhijnan accepts service on behalf of defendant no. 7 and Mr. Akash Singh accepts service on behalf of defendant no. 8.
4. I have heard learned counsel for the parties for a fair bit of time.
5. The plaintiff is aggrieved by the fact that defendant no. 1, which is a parents association concerning Pathways School Gurugram, is degrading its trademark "Pathways".
5.1 According to Mr. Rajshekhar Rao, who appears on behalf of the plaintiff, the plaintiff has been using the trademark "Pathways" and its acronym "PSG" since 2001. I am told by Mr. Rao that registration qua the aforementioned trademark was obtained in 2004. 5.2 According to Mr. Rao, there is already a parent-teacher programme going by the name "Pathways Parent Partnership" [PPP]. 5.3 It has also come through during the course of hearing that defendant no. 1 had filed a writ petition i.e. W.P. (C) No. 10305/2020 before the Punjab and Haryana High Court which has been disposed of. Certain orders have been passed in those proceedings to which a reference has been made by Mr. Suhail Sehgal, who appears on behalf of defendant no. 2.
CS(COMM)No.413/2020 page 2 of 4 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:06.10.2020 16:05:19
6. That being said, there are other submissions also made on behalf of the defendants concerning the maintainability of the instant suit. It is submitted by Mr. Sehgal that if the plaintiff has a grievance qua the name of defendant no. 1 association then, it should approach the Registrar of the Societies under the Haryana Registration and Regulation of Societies Act, 2012.
6.1 I may also indicate that Mr. Sehgal has raised objections with regard to the jurisdiction of this Court to entertain this suit. According to Mr. Sehgal, since the subordinate office of the plaintiff is located outside the territorial jurisdiction of this Court coupled with the fact that the cause of action has arisen outside the jurisdiction of this Court, this Court ought not to entertain this suit.
7. Apart from anything else, the central issue which arises for consideration is: whether a trademark action would lie against defendant no. 1 association given the fact that the mark Pathways/PSG is not used by it in the course of the trade?
7.1 Tentatively, it appears to me, at least at this juncture, that there can be no other meaningful way of describing a parent-teacher association concerning the Pathways School, Gurugram except to use the word "Pathways/PSG".
7.2 I must add that Mr. Rao has relied upon the following judgements rendered by the co-ordinate benches of this Court in support of his contention that such an action would be sustainable. i. St. Stephen's College, Delhi vs. St. Stephen's College Alumni Association & Ors., 2011 SCC OnLine Del 4184.
CS(COMM)No.413/2020 page 3 of 4 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:06.10.2020 16:05:19 ii. Sushma Berlia & Ors. vs. Kamal Kumar & Ors., 2014 SCC OnLine Del 7297.
8. I may also indicate that Mr. Sehgal, albeit without prejudice to rights and contentions of the defendants, has stated that if the suit can be brought to an end with a disclaimer from defendant no. 1 association that its formation has neither had the blessing nor the support or assistance of the management of Pathways School, Gurugram; defendant no. 1 will be willing to furnish the same.
8.1 Mr. Rao will take back this suggestion to the plaintiff and revert with necessary instructions.
9. Accordingly, at request of learned counsel for the parties, list the matter on 16.10.2020.
RAJIV SHAKDHER, J
OCTOBER 05, 2020
Aj/KK
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CS(COMM)No.413/2020 page 4 of 4
Signature Not Verified
Digitally Signed
By:VIPIN KUMAR RAI
Signing Date:06.10.2020
16:05:19