Delhi District Court
Krs Educreations Pvt. Ltd vs Dr. Vivek Thakur on 28 February, 2023
IN THE COURT OF SHRI SANJAY SHARMAI :
DISTRICT JUDGE (COMMERCIAL COURT)
EAST DISTRICT
KARKARDOOMA COURTS : DELHI
CS (Comm) No. 406/2019
KRS Educreations Pvt. Ltd.
Through its Director Shri Vijay Kumar Aggarwal
A35, Gali No. 2,
Pandav Nagar,
Delhi 110092 ...... Plaintiff
Versus
1. Dr. Vivek Thakur
2. Dr. Seema Thakur
3. V2S2 Edutech Pvt. Ltd.
All at Shivashram
2A/372, Azad Nagar,
Kanpur
Uttar Pradesh 208002 ...... Defendants
Date of institution : 02.11.2019
Date of reserving judgment : 30.1.2023
Date of judgment : 28.2.2023
JUDGMENT:
The plaintiff has filed the present suit seeking permanent and mandatory injunction, recovery of damages for defamation and for illegal use of its trademark with cost. 1.1 It has been averred in the plaint that the plaintiff is a private limited company incorporated under the Companies Act and engaged in the business of preschool education having a chain of preschools in the name and style of 'Makoons', and is CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.1 of 23 having good reputation in Northern India. The plaintiff company is the registered owner of the trademark 'Makoons' bearing No.2809670 dated 13.9.2014 and is also having an official website as 'Makoons.com.'.
1.2 The plaintiff company entered into a Master Franchise Agreement with the defendant dated 14.12.2018 for the area of Eastern UP and both the parties agreed to abide by the terms and conditions of the said Agreement. It is alleged that after the signing of the said Agreement, defendant No. 1 developed malafide intentions and started ignoring the request of the plaintiff for smooth execution of the business and also started misbehaving and threatening the staff of the plaintiff. It is also alleged that the defendants failed to adhere to the terms and conditions of the said Agreement and started defaulting the same. They even failed to comply with the basic requirement to appoint Trainer for the staff and other franchisee. The plaintiff has averred that it spent substantial amount in advertisement in the Hindi daily to introduce the defendant officially in the area but the latter failed to officially launch their centre as per the company guidelines and failed to follow those guidelines. It is alleged that the defendants offered franchisee to everyone for which they were not authorized at all. It is further claimed that the defendants created a website with the domain name www.makoons.in in order to infringe the trademark of the plaintiff and to represent the public at large that the website is the official website of the plaintiff company. Thus, it is claimed, that the defendants defamed the plaintiff and infringed its trademark .
CS (Comm) No.406/2019KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.2 of 23 1.3 The plaintiff issued a showcause notice to the defendant for violations of the various conditions of the Agreement dated 16.8.2019 which was replied by the defendant and thereafter the plaintiff terminated the Franchise Agreement vide termination letter dated 19.11.2019. It is worth mentioning that as per the Agreement, the plaintiff could have terminated the agreement after a period of 90 days of the showcause notice which was followed.
1.4 The plaintiff has further alleged that during the pendency of the suit, the defendant changed the name of their company from V2S2 Edutech Private Limited to Makoons Education Private Limited in June 2020 to take benefit of the name of the plaintiff company and to deceive the public at large by showing that it is part of the plaintiff company. 1.5 In the circumstances, it has been prayed in the suit that the defendant be restrained from publishing, communicating and circulating advertisements by any mean for sale of franchise of the plaintiff, from using trademark of the plaintiff 'Makoons' and the website/domain name www.makoons.in, from opening, operating, advertising preschool in the name of Makayla and from communicating with the business partners of the plaintiff by sending emails etc.
2. The defendants were served on 28.11.2019 and have contested the suit. They filed a common written statement wherein they took a preliminary objection that the word 'Makoons' is a generic word and therefore, could be used by the defendant. It was also averred that the registration certificate CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.3 of 23 relied upon by the plaintiff is in the name of 'Makoons Kids Unplugged' and therefore, the plaintiff has falsely averred that the plaintiff is the owner of the registered trademark 'Makoons' only. It was also averred that in the Masters Franchise Agreement, the word used is only 'Makoons' whereas the legal proceeding certificate relied upon by the plaintiff shows that the trademark is registered as Makoons Kids Unplugged and therefore, the defendant can rightly use the trademark 'Makoons'. It was further averred that the website of the defendant www.makoons.in is being used by the defendant with the consent of the plaintiff company. The defendants have further alleged that since the plaintiffs have failed to provide services despite taking full payment, therefore, the defendants have right to use registered trademark Makoons Kids Unplugged and Makoons Hachlings Daycare till any settlement.
3. The plaintiff also filed replication to the written statement of the defendants, reiterating the contents of the plaint and denying the counter allegations.
4. The plaintiff filed an application under Order 39 Rule 1 & 2 CPC with the suit, praying for an adinterim injunction which was allowed vide detailed order dated 24.9.2021 and the defendants were restrained from using the registered trademark of the plaintiff 'Makoons'.
5. From the pleadings of the parties, following issues were framed on 08.11.2021 :
1. Whether the plaintiff is entitled for a decree of Rs. 10 lacs against the defendant towards damages for illegal use CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.4 of 23 of its trademark? OPP
2. Whether the plaintiff is entitled for a decree of Rs. 15 lacs against the defendant for the loss of reputation caused by defamatory emails published by the defendant? OPP
3. Whether the plaintiff is entitled for a decree of permanent injunction against the defendant, restraining it from publishing, communicating and circulating advertisements for sale of franchise of the plaintiff except in the permitted area? OPP
4. Whether the plaintiff is entitled for a decree of permanent injunction against the defendant, restraining it from using the trademark Makoons and the website www.makoons.in? OPP
5. Whether the plaintiff is entitled for a decree of permanent injunction against the defendant, restraining it from opening, operating or advertising preschool in the name of Makayla or any other preschool in the same field and from selling its franchisee?OPP
6. Whether the plaintiff is entitled for a decree of mandatory injunction against the defendant, for direction to delete domain name makoons.in and not to renew it in future as also for directing it to make public apology? OPP
7. Whether the defendant has been using the website makoons.in with the consent of the plaintiff? OPD
8. Relief
6. At the trial, the Director of the plaintiff namely Shri Vijay Kumar Aggarwal examined himself as PW1. He led his CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.5 of 23 evidence by way of affidavit Ex.PW1/A and proved the following documents :
Board Resolution passed in favour of PW1 as Ex.PW1/1.
Copy of Master Franchisee Agreement dated 14.12.2018 as Ex.PW1/2. (OSR) (Admitted document) Copy of Show Cause Notice dated 16.8.2019 sent by the plaintiff company as Ex.PW1/3. (Admitted document).
Screenshots of the facebook page of the defendants as Ex.PW1/4.
Printouts of the emails sent by the defendant as Ex.PW1/5 (colly.).
Printouts of website 'makoons.in' of the defendants as Ex.PW1/6 (colly.).
Screenshots of the website 'Makayla.in' of preschool Makayla run by the defendants as Ex.PW1/7.
Emails sent to the business partners of the plaintiff by the defendants as Ex.PW1/8 (colly.).
Certificate of registration of Trademark 'Makoons' issued by the Trade Mark Registry, Govt. of India as Ex.PW1/9.
Certificate under Section 65B of the Indian Evidence Act with regard to the computer generated documents as Ex.PW1/10.
Original Legal Proceeding Certificate regarding trademark 'Makoons Kids Unplugged' issued by the Trademarks Registry as Ex.PW1/11.
Printout of the registration details of trademark Makayla dated 26.12.2018 as Ex.PW1/12.
Photographs showing the defendant using name and trademark of the plaintiff in promoting the brand Makayla as Ex.PW1/13. (colly.).
Copy of letter of termination of the Master Franchisee dated 19.11.2019 alongwith postal receipt as Ex.PW1/14 (colly.).
Print out of email dated 19.11.2019 sending Letter of Termination of Master Franchisee through e mail as Ex.PW1/15.
Copies of invoices of cost incurred by the plaintiff in advertisement for promoting the brand Makoons as Ex.PW1/16.
Printout of Certificate of Incorporation pursuant to the change of name of defendant No. 3 to Makoons Education Pvt. Ltd. as Ex.PW1/17 .
CS (Comm) No.406/2019KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.6 of 23 Another Certificate under Section 65B of the Indian Evidence Act with regard to the computer generated documents as Ex.PW1/18.
7. Defendant No. 1 examined himself on behalf of all the defendants and closed the evidence. He tendered his evidence by way of affidavit Ex.DW1/A and relied upon the following documents which are as under :
Board Resolution dated 06.1.2020 in favour of DW1 as Ex.DW3/1.
Copy of Certificate of Incorporation pursuant to the change of name of defendant No. 3 company as Ex.DW3/2. (Downloaded from the website) Copy of MoU dated 07.12.2018 as Ex.DW3/3. Copy of Master Franchise Agreement dated 14.12.2018 as Ex.DW3/4.
Copy of Franchisee Agreement dated 23.1.2019 as Ex.DW3/5.
Screenshot of website ipindiaonline.gov.in showing the trademark 'Makoons India unplugged' and 'Makoons Hachlings Daycare' registered in the name of the plaintiff as Ex.DW3/6 (colly.).
Screenshot of WHOIS record of Makoons.org, makoonspreschool.in, makoonspreschool. com, makoonsvasundhrasec3.com, makoonsrajnagr. Com, makoonscrossings.com, makoonssahibabad.com, makoonspaschimvihar.com and makoonsmalviyanagar. com are Ex.DW3/7 (colly.).
Screenshot of Whatsapp chat with the representative of the plaintiff company namely Sandeep and Vijay showing the facebook page makoons.in is mentioned in my affidavit as Ex.DW3/8 (colly.). However, the said document is already marked as Ex.PW1/DB in the crossexamination of PW1.
The screenshot of Facebook page of Makoons Pre School Regional Office, Kanpur also showing the use of the website makoons.in as Ex.DW3/9 (colly.).
Copy of reply dated 18.9.2019 to the show cause notice dated 16.8.2019 alongwith postal receipt and track report as Ex.DW3/10 (colly.).
Copy of Notice dated 11.4.2019 received from ASCI as well as the copy of leaflet showing 'North India's No. 1 Preschool Brand' as Ex.DW3/11 (colly.). (However, the said document was already marked as CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.7 of 23 Ex.PW1/DC in the crossexamination of PW1). Copies of emails dated 08.3.2018, 23.4.2019, 04.6.2019 and 05.8.2019 as Ex.DW3/12 (colly.). The photographs of the plaintiff company after signing the MoU as well as Master Franchise Agreement at our office as Ex.DW3/13. (colly.). (However, the said document was already marked as Ex.PW1/DD in the crossexamination of PW1). Copy of petition filed by the plaintiff before the Ld. Regional Director, Northern Region as Ex.DW3/14. (However, the said document was already marked as Ex.PW1/DA in the crossexamination of PW1). Copy of objection alongwith the documents filed by defendant No. 3 to the application for the registration of Trademark 'Makoons' as Ex.DW3/15 (colly.). Certificate under Section 65B of the Indian Evidence Act as Ex.DW3/B bearing my signatures at point X.
8. I have considered the submissions made at Bar by Shri RK Ruhil - Ld. Counsel for the plaintiff, Shri Jugal Bagga - Ld. Counsel for the defendants and have carefully gone through the file as well as written submissions of the parties.
9. Ld. Counsel for the defendant took various legal objections which were though not pleaded in the written statement but it was submitted that legal objections can be taken at any stage. Hence, they are required to be decided. 9.1 Firstly, it was contended that as per the Trademark Certificate dated 13.9.2014, the trademark 'Makoons' is registered in the name of Shri Vijay Kumar Aggarwal who is Director of the plaintiff company whereas the suit has been filed by the company without any document to show that the said trademark was assigned or licensed to the company by Shri Vijay Kumar Aggarwal.
9.2 In reply, Ld. Counsel for the plaintiff submitted that CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.8 of 23 Shri Vijay Kumar Aggarwal is one of the Directors of the plaintiff company and the trademark owned by him would also belong to the company.
9.3 A Director is not only an official but also an employee of the company. A company is a legal entity but it has to act through someone and necessarily, it acts through its officials including the Director. It is an internal matter if the Director had assigned the trademark or license to the company. Unless there is an objection from the Board of Directors, the trademark owned by a Director can be used by the company and therefore, the company can also sue on the basis of the trademark or by its Director. Hence, the suit would not fail on that count. 9.4 It was next contended that the plaintiff has not placed on record the Master Data or Registration Certificate to show if the said company is even in existence. This fact was never challenged by the defendant in the written statement. However, in one of the documents, i.e. a company petition filed by the plaintiff Ex.PW1/DA relied upon by the defendant, the identification number of the plaintiff company has been mentioned and the Memorandum and Article of Association of the plaintiff company were also filed alongwith it. Hence, the existence of the plaintiff company cannot be disputed. 9.5 It was also contended that as per the Trademark Certificate in favour of the plaintiff, the trademark is 'Makoons Kids Unplugged' which fact was admitted by PW1 in the cross examination and for which a company petition Ex.PW1/DA was also filed and therefore, the present petition does not lie. This CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.9 of 23 contention shall be dealt while deciding the main issues. 9.6 Ld. Counsel took another objection that LPC of the trademark was not filed with the plaint but subsequently with the replication. It was submitted that it was contrary to the judgment in Amrish Aggarwal Vs. Venus Home Appliances CM(M) 1059/2018 dated 27.8.2019, wherein it was directed that LPC has to be filed necessarily with the plaint. However, Ld. Counsel for the plaintiff relied upon the judgment in Maan Pharmaceuticals Ltd. Vs. M/s Mindwave Healthcare Pvt. Ltd. (FAO (Comm) 78/2022) wherein it was held that "Though a Legal Proceeding Certificate is an important document which should be placed before the Court at the time of deciding preliminary applications, the same however, will not take away the statutory right of a plaintiff to seek injunction which it is otherwise entitled to." It was further observed that "In our opinion mere nonfiling of such a document is not a concealment of such material nature so as to disentitle the plaintiff to file a suit seeking an injunction wherein it apprehends infringement." 9.7 Even otherwise, a true copy of the Registration Certificate of Trademark was filed with the plaint and LPC was filed as soon as it was made available to the plaintiff. Hence, nonfiling of LPC with the plaint cannot be ground for rejection of the same.
9.8 It was further submitted that the defendant company V2S2 Edutech Pvt. Ltd. has been arrayed as defendant No. 3 whereas its Directors have been arrayed as defendants No. 1 and CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.10 of 23 2 in contravention of the judgment in Bata India Limited Vs. Chawla Boot House & ors. (2019) (78) PTC 505 Delhi. 9.9 A Notification was issued by the Hon'ble High Court of Delhi dated 04.5.2019 pursuant to an order passed in the said case. Under the said Notification dated 04.5.2019, directions were issued to the Registry of the High Court to ensure strict compliance of the judgment in Micolube India Ltd. Vs. Maggon Auto Centre & ors. 150 (2008) DLT 458 and seek an undertaking of the plaintiff in IPR cases where there are multiple defendants that defendant No. 1 being arrayed is the main contesting defendant in the suit.
9.10 The said directions in the Notification were only to the Registry of the High Court for the obvious reason that a cause list of the matters is circulated amongst the legal fraternity a day before. These directions were not meant for the District Courts and there was no specific directions to circulate the Notification or directions contained therein to the District Courts. The Ld. Counsel for the plaintiff also pleaded ignorance of the said Notification. In any case, since the said Notification and directions were not meant for the District Courts, the defendants cannot plead fraud or misrepresentation on part of the plaintiff on the basis of such directions. The matter is now at the stage of final disposal and the matter has to be considered on merits.
My findings on the issues are as under :
ISSUES No. 3 to 6 :
10. It is an admitted fact that a Franchisee Agreement was entered into between the parties on 14.12.2018 Ex.PW1/2 CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.11 of 23 (hereinafter referred to as the said Agreement). The said document has otherwise been admitted by the defendant. Under the said Agreement, defendant No. 3 was appointed as Master Franchisee of the plaintiff for Eastern UP. It is the contention of the plaintiff that just after the execution of the said Agreement, the defendants started defaulting with the terms of the said Agreement, though the plaintiff spent about Rs.60,000/ for advertising in newspaper Dainik Jagran dated 10.3.2019, introducing the defendants officially. It is alleged that the defendants failed to officially launch their Centre and flouted conditions No.2, 4, 7, 9, 10, 18, 19, 21 of the said Agreement and did not adhere to the same despite several requests from the plaintiff and as such, the plaintiff was constrained to issue a showcause notice dated 16.8.2019 Ex.PW1/3 which has also been admitted by the defendant. It is further alleged that after receiving the said notice, the defendant started putting false advertisement of selling franchisee for Rs.25,000/ without any permission of the plaintiff, in contravention of the Franchise Agreement.
10.1 The plaintiff has further alleged that the defendants started using a brandname 'Makayla' for the same business i.e. preschool and started using plaintiff's brandname in the communications of selling it with intention to show to the public that 'Makayla' is associated with the tradename of the plaintiff, which was again in contravention of the Franchisee Agreement. It is also alleged that the defendant also created a website with domainname www.makoons.in which was having deceptively CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.12 of 23 similar name of that of the plaintiff's website and trademark . It was represented that this website belongs to the plaintiff. It has further been submitted that during the pendency of the present suit, the name of defendant No. 3 company has been changed from V2S2 Edutech Pvt. Ltd. to Makoons Education Pvt. Ltd. in June 2020 to take benefit of the name of the plaintiff company and to deceive the general public showing that it is part of the plaintiff company. Thus, it is submitted that the defendants have dishonestly and illegally infringed the trademark of the plaintiff as well as its copyright/label.
10.2 The main contention of the defendant is that neither the plaintiff company nor Shri Vijay Kumar Aggarwal are the owners of the trademark 'Makoons' and the plaintiff company is only having a website with the name Makoons.com with 'Makoons' being a generic name. It is also stated that the plaintiff is having two trademarks, i.e. Makoons Kids Unplugged and Makoons Hachlings Daycare, whereas in the Master Franchise Agreement the said trademarks were never mentioned. It was also stated that the plaintiff is having many official websites with different suffixes after the word 'Makoons'. It was also submitted that in the company petition filed by the plaintiff Ex.PW1/DA for rectification of the name of the defendant company, it has been stated that the trademark 'Makoons' has been applied for and objections are still pending. It is stated that the defendants have used the website 'Makoons.in' with the consent of the plaintiff. It is further stated by the defendant that the plaintiff dishonestly blocked the officials emails given to the CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.13 of 23 defendant. It is also stated that various amount of money, totalling about Rs.13 lacs, was paid to the plaintiff after the execution of the Master Franchise Agreement but the plaintiff itself failed to comply with the terms and conditions of the said Agreement. It was also stated that the defendant replied to the showcause notice of the plaintiff dated 16.8.2019 vide reply dated 24.9.2019 but it was never mentioned in the plaint. 10.3 The fact remains that the Franchise Agreement was executed between the parties. However, the plaintiff felt that the defendants violated various terms of the said Agreement and put it to disrepute and as such issued a showcause notice. Though reply to the said notice was given by the defendants but the plaintiff was dissatisfied and ultimately terminated the Master Franchise Agreement vide termination letter dated 19.11.2019 Ex.PW1/14. The said letter was also sent through email Ex.PW1/15. It is a matter of record that no protest was made by the defendant against termination of the said Agreement, that is to say, the defendants never filed any suit for declaring the said termination illegal nor sought any damages even in the present suit by filing any counterclaim, meaning thereby that they accepted the termination without any demur. 10.4 It is relevant to quote para 11 of the Master Franchise Agreement dated 14.12.2018 which is as under :
"11. That the logo, insignia and trademark of the Franchisor are the sole property of the Franchisor. The Master Franchisee is however, permitted to use the logo, insignia, trademark only for the purpose of official correspondence, publicity and campaign for the business transactions relating to the business activities of the Franchisor. The use of the CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.14 of 23 trademark, logo and insignia shall be immediately stopped by the Master Franchisee on the termination/expiry of this Agreement. The Master Franchisee in no case shall claim any right over the insignia, logo and trademark of the Franchisor."
10.5 Hence, once the Agreement came to an end on 19.11.2019, the defendants had no right or legal authority to use the logo, trademark and insignia of the plaintiff. It was for these reasons that the application of the plaintiff under Order 39 Rule 1 & 2 CPC was allowed and the defendants were restrained from using, advertising, publicizing etc. the tradename 'Makoons' and were also restrained from using the website/domain name www.makoons.in. The said order dated 24.9.2021 was never challenged and has thus attained finality.
10.6 Similarly, in the Franchisee Agreement dated 23.1.2019 relied upon by the defendant Ex.DW3/5, in Clause 9.4, it is provided as under :
9.4 If at any stage, it comes to the notice of the Franchisor that Franchisee has directly or indirectly indulged in passing off its business secrets or has infringed its proprietary marks, the intellectual property or has permitted unauthorized usage or violation of intellectual property of the Franchisor then, the Agreement shall starlet terminate at the will of the Franchisor with a notice of three days in writing to the Franchisee."
10.7 It is an undisputed fact on record now that the defendant had published and called for franchisees from different people all through India to give Franchisee for a sum of Rs.25,000/ without the consent or permission of the plaintiff.
Though it was contended that it was so done with the consent of CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.15 of 23 the plaintiff but such consent could never be proved on record. Thus, the defendant violated the condition of the Franchise Agreement.
10.8 The main contention of the defendant had been that the plaintiff never owned the trademark 'Makoons'. It was pointed out that as per the Legal Proceeding Certificate Ex.PW1/11, the trademark registered in the name of Shri Vijay Kumar Aggarwal on 13.9.2014 was 'Makoons Kids Unplugged'. It was also submitted that as per the company petition Ex.PW1/DA the trademark 'Makoons' was applied only in the year 2021 much after filing of the present suit and therefore, the defendant had the right to use the said trademark as it was open and vacant.
10.9 It is again a matter of record that the trademark 'Makoons Kids Unplugged' and 'Makoons Hachling Daycare' were already registered with the plaintiff at the time of entering into Franchise Agreement with the defendant. The plaintiff is also the owner of several other similar trademarks with different suffix. In all such trademarks, the prominent word is 'Makoons' but the suffixes are different to denote the area or other field. The first syllable of any trademark is of prime importance and is always prominent. An unwary customer always recognizes a trademark by its first syllable. It is to be observed that the word 'Makoons' in the trademark of the plaintiff is in bold letters written with a particular style and colour pattern and the suffix with small font and different ink .
10.10 Reliance can be placed on the judgment in Amba CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.16 of 23 Lal Sarabhai Enterprises Ltd. vs Sara Pharmaceuticals and ors. 1982(2) PTC 214 Delhi. In that case, the plaintiff's trademark was Sara while the defendant was using trademarks as Saralyte, Saragyl and Sarapham. The Court held that "The first syllable of the trademark of the defendants contained the words SARA. It is distinguishing feature and the main part of the trademark. The first syllable of a trademark even otherwise, is generally considered the most important part especially in case of short words. The defendant's trademark thus, use the whole of the trademark of the plaintiff."
Similar view was taken in Amrutanjan Ltd. vs Amarchand Sobachand PTC (Suppl.) (I) 213 Mad. The disputed words in the said case were Amrut and Amar. 10.11 There are a number of judgments in which there was close similarity in the trade names of the plaintiff and the defendant and the defendant was accordingly injuncted from using the disputed trademark. Some of the said judgments are as under: Lakme Ltd. vs Subhash Trading & Ors. 1996 (16) PTC 567. The disputed trademarks were Lakme and Likeme.
In Izuk Chemical Works vs Babu Ram Dharam Prakash (MANU/DE/2011/2007), the words there were Moonstar and Superstar.
In Godrej Consumer Products Ltd. vs Alchemy Biotech (2013) SCC Online Bom 325, it was the words Ezee and Easy Wash and so on.
10.12 In the instant case, the defendant has copied the CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.17 of 23 entire first word as it is, i.e. 'Makoons' with all its font style and colour pattern. In light of the above judgments, this is a clear case of infringement of the trademark of the plaintiff. It is also not disputed that the plaintiff is the prior user of the trademark 'Makoons' which was registered in 2014 and this fact was even admitted by DW1 in the crossexamination deposing that it is correct that the plaintiff company was running preschool 56 years prior to execution of the Master Franchise Agreement. He further admitted that he was not using 'Makoons' in relation to any of his business prior to execution of Master Franchise Agreement.
10.13 In Laxmikant V Patel vs Chetanbhat Shah and Anr. (2002) 3 SCC 65, it was held that "Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the names innocently." In this case, the act of the defendant was not innocent but a deliberate act as they knew that the plaintiff was using the trademark 'Makoons' prior to it which was also registered in the name of the plaintiff. Hence, the defendant cannot and could not have used the trademark 'Makoons' in any manner whatsoever.
10.14 Similar is the position in regard to the website created by the defendant, i.e. 'Makoons.in'. DW1 deposed that he purchased the domain name 'Makoons.in' on 05.7.2019 with the verbal permission from the plaintiff. This permission was denied by the plaintiff. The defendant admittedly could not place on record any document showing the consent of the plaintiff to CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.18 of 23 purchase the said domainname nor could prove the oral consent of the plaintiff for purchasing the same. The defendants were provided two websites/email addresses for corresponding with the customers which were subsequently blocked after termination of the Agreement. Hence, the defendants could not have even purchased and used the domainname 'Makoons.in'. It was deposed by DW1 that the said website is still operational as on date. This again amounts to infringement of the trademark of the plaintiff. In Tata Sons Ltd. Vs. Mr. Manu Kishori & ors. 2001 III AD Delhi 545, the defendant used the name of the plaintiff company as the domainname for their website and were accordingly injuncted from using the name of Tata in any of their domainname name in any of their website.
10.15 In Rediff Communications Ltd. Vs. Cyberbooth AIR 2000 Bom 27, relied by Ld. Counsel for the plaintiff, the user of the website www.radiff.com was injuncted as it was held deceptively similar to the plaintiff's website www.rediff.com. The Court held that the internet domain names are of importance and can be valuable corporate asset and such domainname is more than an internet address and is entitled to protection equal to a trademark. It was held that with the advancement and progress in technology, the services rendered by internet site have also to be recognized and accepted and are being given protection from passing off. In the instant case, the plaintiff was already using the same website and the creation and user of the domainname 'makoons.in' again, amounts to infringement and passing off by the defendant.
CS (Comm) No.406/2019KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.19 of 23 10.16 The defendant also could not show any justification for changing the name of their company from V2S2 Edutech Pvt. Ltd. to Makoons Education Pvt. Ltd. This was done on 17.6.2020, i.e. during the pendency of the present suit and for obvious reasons to mislead the prospective customers and public in general that this company is an associate or franchisee of the plaintiff. Thus, these acts of the defendants are clearly violative of and amounts to infringement of the trademark of the plaintiff. 10.17 The defendants have further opened another school with the tradename 'Makayla' for offering similar education to preschool children. It was contended that this school was opened only for higher classes and to help the students when the plaintiff stopped support to its school. The photograph Ex.PW1/13 which was of a flex board affixed outside the premises of the defendants, show that the said school 'Makayla' was also for pre schooling, daycare and after school, that is to say, for similar services as was being imparted by the plaintiff under the trade name 'Makoons'. This act of the defendants was also in violation of the Franchisee Agreement. Further, by starting a parallel school in the name of 'Makayla', the defendant clearly intended the public to represent that it was somehow associated with the plaintiff company.
10.18 In the circumstances, the plaintiff has been able to establish a case of infringement of its trademark by the defendant and accordingly, the defendants herein are hereby restrained from publishing, communicating and circulating advertisement for sale of franchise of the plaintiff. They are further injuncted from CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.20 of 23 using the trademark 'Makoons' and the website 'www.makoons.in' in any manner whatsoever. The defendants are further restrained from opening, operating or advertising any preschool or daycare in the name of 'Makayla', any other pre school in the same field and from selling the franchise of the plaintiff. The defendants are further restrained and are directed to delete the domainname 'makoons.in' and not to renew it in future after publishing a public apology in a prominent newspaper in circulation in Eastern UP.
Issues No. 3 to 6 are answered accordingly.
ISSUE No. 7 :
11. It has already been held while deciding the above issues that the defendants could not prove the consent of the plaintiff in using the website ''Makoons.in'. Hence, this issue is decided against the defendants.
ISSUES No. 1 and 2 :
12. The plaintiff has sought damages of Rs.10 lacs for damages towards the illegal use of its trademarks. It has been held that the defendant continued using the trademark 'Makoons' even after termination of the Franchise Agreement. It is also observed that DW1 deposed that he is still using the domain name 'Makoons.in', meaning thereby that the defendants have violated the order of this Court dated 24.9.2021 injuncting them from operating the said website. The defendants not only used the trademark of the plaintiff but also tried to sell the franchisee to different people even after the termination of the Agreement. Hence, the plaintiff is entitled for damages. These damages CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.21 of 23 cannot be assessed as no cogent evidence was led by the plaintiff to show that it caused a loss of Rs.10 lacs to it. However, considering the conduct of the defendants, a notional damage of Rs.One lac is awarded to the plaintiff.
12.1 The plaintiff also claims Rs.15 lacs for the loss of reputation caused by defamatory emails published by the defendants. The said emails are Ex.PW1/8 and Ex.DW1/P2. The first email Ex.PW1/8 contains only a link to a Form as submitted by Ld. Counsel for the defendants which could also not be opened nor annexed with the plaint. Similarly, the other e mail Ex.DW1/P2 is only a reply of the defendant to the showcause notice. None of these emails can be said to be causing any loss of reputation to the plaintiff. Even otherwise, the law in this regard is very clear. To establish loss of reputation or defamation, the plaintiff is required to prove by leading evidence of any third person to show that by the acts of the defendant he was lowered in the esteem of others. No such evidence was led by the plaintiff. To say, by the plaintiff itself that its reputation was lost by any act of the defendants, would not be sufficient to prove the same. Hence, the plaintiff is not entitled to any damages on that count. These issues are accordingly decided.
ISSUE No.8/Relief :
13. In light of the above discussion and findings on the above issues, the suit of the plaintiff is hereby partly decreed in its favour and against the defendant. The defendants herein are hereby directed and restrained/injuncted from publishing, CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.22 of 23 communicating and circulating advertisement for sale of franchise of the plaintiff. They are further injuncted from using the trademark 'Makoons' and the website 'www.makoons.in'. The defendants are further restrained from opening, operating or advertising any preschool or daycare in the name of 'Makayla', any other preschool in the same field and from selling the franchise of the plaintiff. The defendants are further restrained and are directed to delete the domainname 'makoons.in' and not to renew it in future after publishing a public apology in a prominent newspaper in circulation in Eastern UP.
The defendants are further directed to pay damages of Rs.One lac to the plaintiff. Cost of the suit is also awarded to the plaintiff.
Decree Sheet be drawn accordingly. File be consigned to Record Room.
ANNOUNCED IN OPEN COURT ON 28th day of February 2023 (SANJAY SHARMAI) District Judge (Commercial Court) East District Karkardooma Courts, Delhi CS (Comm) No.406/2019 KRS Educreations Pvt. Ltd. vs. Dr. Vivek Thakur & ors. Page No.23 of 23