Karnataka High Court
Manipal Academy Of Health And Education vs Manipal Academy Of Higher Education on 6 December, 2022
Bench: G.Narendar, Rajendra Badamikar
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 6TH DAY OF DECEMBER, 2022
PRESENT
THE HON'BLE MR. JUSTICE G.NARENDAR
AND
THE HON'BLE MR. JUSTICE RAJENDRA BADAMIKAR
COMMERCIAL APPEAL NO. 267 OF 2022
C/W
COMMERCIAL APPEAL NO. 284 OF 2022
IN COMAP NO.267/2022
BETWEEN:
Digitally MANIPAL ACADEMY OF
signed by C HEALTH AND EDUCATION,
HONNUR SAB AUTOMATIC HOUSE, 10/19,
Location: GROUND FLOOR,
High Court of EAST PATEL NAGAR,
Karnataka NEW DELHI - 110008.
REPRESENTED BY ITS
AUTHORISED SIGNATORY
MR. MOHAMMED SAMIULLA.
...APPELLANT
(BY SRI SIDDARTH DAVE, SENIOR ADV. ALONG WITH
SMT. IRFANA NAZEER, ADV.)
AND:
1. MANIPAL ACADEMY OF
HIGHER EDUCATION
A PUBLIC TRUST HAVING
ITS REGISTERED OFFICE AT
MADHAV NAGAR,
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
MANIPAL - 576104,
KARNATAKA,
REPRESENTED BY ITS
TRUSTEE DR H.S.BALLAL,
2. MANIPAL ACADEMY OF
HIGHER EDUCATION
(DEEMED UNIVERSITY)
MADHAV NAGAR,
MANIPAL 576104, KARNATAKA,
REPRESENTED BY ITS
AUTHORISED SIGNATORY
DR. NARAYAN SABHABIT.
3. MANIPAL INTERNATIONAL
SCHOOL CHANDAPURA,
BENGALURU,
CHANDAPURA - ANEKAL ROAD,
SURYANAGAR, PHASE 1,
ELECTRONIC CITY,
BENGALURU-560099, KARNATAKA.
4. MANIPAL E-COMMERCE LIMITED
N-701, NORTH BLOCK,
MANIPAL CENTRE 47,
DICKENSON ROAD, BANGALORE,
KARNATAKA 560042.
5. T SUDHAKAR PAI
N-701, NORTH BLOCK,
MANIPAL CENTRE 47
DICKENSON ROAD, BENGALURU,
KARNATAKA - 560042.
6. KURLON LIMITED
N-301, III FLOOR,
NORTH BLOCK, FRONT WING,
MANIPAL CENTRE 47, DICKENSON ROAD,
BENGALURU, KARNATAKA - 560042.
...RESPONDENTS
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
(BY DR. ABHISHEK MANU SINGHVI, SR. ADV. AND
SRI DHYAN CHINNAPPA, SR. ADV. ALONG WITH
SANJANTHI SAJAN POOVAYYA, ADV. AND
SRI VENKATA REDDY S.K, ADV. FOR R1 & R2,
SRI R.OM KUMAR, ADV. FOR R6,
V/O DATED 9/6/2022 NOTICE TO R3 TO R6 ARE D/W.)
THIS COMMERCIAL APPEAL IS FILED UNDER SECTION
13(1A) OF THE COMMERCIAL COURTS ACT, 2015 R/W ORDER
XLIII RULE 1(r) OF THE CPC, PRAYING TO SET ASIDE THE
ORDER DATED 22/04/2022 PASSED ON INTERLOCUTORY
APPLICATIONS BEARING I.A.NO. 1 TO 7, IN SUIT BEARING
COM.O.S.NO.960/2021 PASSED BY THE HONBLE X ADDL.
DISTRICT AND SESSIONS JUDGE (DEDICATED COMMERCIAL
COURT), BENGALURU RURAL DISTRICT, BENGALURU AND AS A
CONSEQUENCE THEREOF ETC.
IN COMAP NO.284/2022
BETWEEN:
T SUDHAKAR PAI
AGED ABOUT 69 YEARS
N-701, NORTH BLOCK,
MANIPAL CENTRE 47,
DICKENSON ROAD,
BENGALURU,
KARNATAKA-560042.
...APPELLANT
(BY SRI SIDDARTH DAVE, SENIOR ADV. ALONG WITH
SMT. IRFANA NAZEER, ADV.)
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
AND:
1. MANIPAL ACADEMY OF
HIGHER EDUCATION
A PUBLIC TRUST HAVING
ITS REGISTERED OFFICE AT
MADHAV NAGAR,
MANIPAL-576104,
KARNATAKA,
REPRESENTED BY ITS
TRUSTEE DR. H S BALLAL.
2. MANIPAL ACADEMY OF
HIGHER EDUCATION
(DEEMED UNIVERSITY)
MADHAV NAGAR,
MANIPAL-576104, KARNATAKA,
REPRESENTED BY ITS
AUTHORISED SIGNATORY
DR. NARAYAN SABHABIT.
3. MANIPAL INTERNATIONAL SCHOOL
CHANDAPURA, BENGALURU,
CHANDAPURA-ANEKAL ROAD,
SURYANAGAR, PHASE 1,
ELECTRONIC CITY,
BENGALURU-560099,
KARNATAKA.
4. MANIPAL E-COMMERCE LIMITED
N-701, NORTH BLOCK
MANIPAL CENTRE 47,
DICKENSON ROAD,
BANGALORE,
KARNATAKA-560042.
5. MANIPAL ACADEMY OF
HEALTH AND EDUCATION
AUTOMATIC HOUSE,
10/19, GROUND FLOOR,
EAST PATEL NAGAR,
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
NEW DELHI-110008,
REPRESENTED BY ITS
AUTHORISED SIGNATORY
MR MOHAMMED SAMIULLA.
6. KURLON LIMITED
N-301, III FLOOR
NORTH BLOCK, FRONT WING
MANIPAL CENTRE
47, DICKENSON ROAD,
BENGALURU,
KARNATAKA-560042.
...RESPONDENTS
(BY DR. ABHISHEK MANU SINGHVI, SR. ADV. AND
SRI DHYAN CHINNAPPA, SR. ADV. ALONG WITH
SRI VENKATA REDDY S.K, ADV. FOR R1 & R2.)
THIS COMMERCIAL APPEAL IS FILED UNDER SECTION
13(1A) OF THE COMMERCIAL COURTS ACT, 2015 R/W ORDER
XLIII RULE 1(r) OF THE CPC, PRAYING TO SET ASIDE THE
ORDER DATED 22/04/2022 PASSED ON INTERLOCUTORY
APPLICATIONS BEARING I.A.NO. 1 TO 7, IN SUIT BEARING
COM.O.S.NO.960/2021 PASSED BY THE HONBLE X ADDL.
DISTRICT AND SESSIONS JUDGE (DEDICATED COMMERCIAL
COURT), BENGALURU RURAL DISTRICT, BENGALURU AND AS A
CONSEQUENCE THEREOF ETC.
THESE COMMERCIAL APPEALS HAVING BEEN HEARD AND
RESERVED FOR JUDGMENT, COMING ON FOR
PRONOUNCEMENT OF JUDGMENT THIS DAY, G.NARENDAR J.,
DELIVERED THE FOLLOWING:
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COMAP No. 267 of 2022
C/W COMAP No. 284 of 2022
JUDGMENT
The matter was listed before this Court on 13.07.2022 and the learned Senior counsels Sri M N Sheshadri and Sri Ashok Haranahalli were heard on behalf of the appellant and the learned Senior counsel Dr. Abhishek Manu Singhvi and Sri Dhyan Chinnappa were heard on behalf of the respondent. Thereafter, on request of both the counsels, the matter was adjourned to 27.07.2022, thereafter to 11.08.2022. Thereafter, the appellants changed counsels. On account of change of counsels hearing was adjourned. Matter was re-listed on 03.09.2022 and 12.09.2022 and arguments were concluded by learned Senior counsel Sri Siddarth Dave appearing along with learned counsel Smt. Irfana Nazeer, on behalf of the appellant. The matter was heard and was reserved for judgment.
2. The appellants are defendants No.3 and 4 before the Trial Court and are before this Court being -7- COMAP No. 267 of 2022 C/W COMAP No. 284 of 2022 aggrieved by the order passed by the Trial Court on the Interlocutory Applications preferred by the applicants i.e., I.As. 1 to 6 and I.A.No.7, by the 3rd Defendant in Commercial O.S.No.960/2021 dated 22.04.2022.
3. The suit being one for injunctory reliefs in respect of the issues arising out of Intellectual Property Rights under the Trade Marks Act, 1999, the pleadings and the materials produced, in our opinion, are relevant for determination of the correctness of the order of interim injunction granted by the Trial Court, while allowing IAs 1 to 6. The Trial Court was pleased to allow the applications and thereby the ex-parte order of interim injunction granted on 21.02.2019 was made absolute and was further pleased to reject I.A.7 by the Third defendant, preferred under Order XXXIX Rule 4 for vacating the ex- parte interim order.
4. The plaintiffs have prayed for the following main reliefs in the suit :
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(a) "Pass a decree of permanent/perpetual injunction against the Defendants, their partners, directors, promoters, shareholders, managers, assigns, successors-in-interest, licensees, franchisees, companies, representatives, servants, distributors, agents, etc. restraining them jointly and severally, from infringing the Plaintiffs' registered trade mark by using the trade mark MANIPAL INTERNATIONAL SCHOOL and/or MAHE and/or MANIPAL ACADEMY OF HEALTH AND EDUCATION and/or any other word(s) identical or deceptively similar to the Plaintiffs' registered trade mark MAHE (DEEMED UNIVERSITY) /MANIPAL ACADEMY OF HIGHER EDUCATION (DEEMED UNIVERSITY)/MANIPAL UNIVERSITY singularly or in conjunction with any other words or monogram/logo as a trade mark, service mark, trade name, trading style/corporate name/domain name, or in any other manner whatsoever; on or in relation to or any goods and/or services whatsoever, advertising, business papers, etc.;
(b) Pass a decree of permanent/perpetual injunction against Defendants, their partners, directors, promoters, shareholders, managers, assigns, successors-in-interest, licensees, franchisees, companies, representatives, servants distributors, agents etc. restraining them jointly and severally, passing off their goods/ services/ business as and for the goods/services/business of Plaintiffs by -9- COMAP No. 267 of 2022 C/W COMAP No. 284 of 2022 restraining them from using MANIPAL INTERNATIONAL SCHOOL and/or MIS and/or MAHE and/or MANIPAL ACADEMY OF HEALTH AND EDUCATION and/or other marks comprising of MANIPAL or any other mark/name/words identical or deceptively similar to the Plaintiffs' trade mark(s)/name MIS/MAHE (DEEMED UNIVERSITY)/MANIPAL ACADEMY OF HIGHER EDUCATION DEEMED UNIVERSITY / MANIPAL UNIVERSITY / MANIPAL, singularly or in conjunction with any other words or monogram/logo as a trade mark, service mark, trade name, trading style, corporate name, domain name or in any other manner whatsoever; on or in relation to or any goods and/or services whatsoever, advertising, business papers, etc;
(c) Pass a decree of permanent/perpetual injunction against Defendants, their partners, directors, promoters, shareholders, managers, assigns, successors-in-interest, licensees, franchisees, companies, representatives, servants, distributors, agents etc. restraining them jointly and severally, from using Plaintiffs' trade mark(s)/name MAHE (DEEMED UNIVERSITY)/ MANIPAL ACADEMY OF HIGHER EDUCATION DEEMED UNIVERSITY/MANIPAL UNIVERSITY and/or other marks comprising of MANIPAL or any other mark/name/words identical or deceptively similar thereto, singularly or in conjunction with any other
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words or monogram/logo as a trade mark, service mark, trade name, trading style, advertising, business papers, etc; on or in relation to or any goods and/or services whatsoever; leading to acts of unfair competition by the Defendants with the Plaintiffs' goods and/or services;
(d) Pass a decree of permanent/perpetual injunction against Defendants restraining the Defendants from using, either directly or indirectly, the impugned word/name/trade name/trading style "MANIPAL GROUP", singularly or in conjunction with any other words, in relation to any goods or services or business or in any manner whatsoever;
(e) Pass a decree of permanent/perpetual injunction against Defendants restraining the Defendants from using either directly or indirectly, the impugned trade mark in relation to any goods or services or business or in any manner whatsoever other then lottery tickets. This relief is without prejudice to the Plaintiff Trust's submissions in Opposition No. MAS 58810 and the pending appeal proceedings being OA No. 71/2011/TM/CH that the impugned registration vide No.659807 is granted erroneously;
(f) Pass a decree of permanent/perpetual injunction against Defendants restraining the Defendants
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 from using the domain name "manipalschool- ecity.com" and pass an order/direction to the Defendant No.2 to transfer the domain name "manipalschool-ecity.com" in favour of the Plaintiff No.1;
(g) Pass a decree directing Defendants to deliver up to Plaintiffs for the purpose of destruction/erasure all infringing materials and materials constituting passing including but not limited to products, catalogues, pamphlets, brochures, billboards, stationery, business cards, bill books, vouchers, letterheads, signage, electronic material, reprographic material, packaging, labels or any other material bearing the trade marks/names MANIPAL INERNATIONAL SCHOOL and/or MIS and/or MAHE and/or MANIPAL ACADEMY OF HEALTH AND EDUCATION and/or other marks comprising of MANIPAL and/or any other mark/word deceptively similar to Plaintiffs' trade mark(s) / name MAHE (DEEMED UNIVERSITY) / MANIPAL ACADEMY OF HIGHER EDUCATION (DEEMED UNIVERSITY) / MANIPAL UNIVERSITY used for advertising, selling or marketing any goods and/or services;
(h) Pass a decree directing Defendants to deliver up to Plaintiffs for the purpose of destruction/ erasure all impugned materials including but not limited to products, catalogues, pamphlets, brochures, billboards, stationery, business cards, bill books,
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 vouchers, letterheads, signage, electronic material, reprographic material, packaging, labels or any other material bearing the word/name MANIPAL GROUP and or a trade mark/name deceptively similar thereto used for advertising, selling or marketing any goods and/or services.
(i) Pass a decree directing Defendants to deliver up to Plaintiffs for the purpose of destruction/erasure all impugned materials including but not limited to products, catalogues, pamphlets, brochures, billboards, stationery, business cards, bill books, vouchers, letterheads, signage, reprographic material, packaging, labels or any other material bearing the trade mark used for advertising, selling or marketing any goods and/or services other than those used in lottery tickets. This relief is without prejudice to the Plaintiff Trust's submissions in Opposition No. MAS 58810 and the pending appeal proceedings being OA No.71/2011/TM/CH that the impugned registration vide No. 659807 is granted erroneously.
(j) Pass a preliminary decree for rendition of accounts directing Defendants to produce before this Hon'ble Court or any person nominated/designated/appointed by this Hon'ble Court all accounts in general and details of all receipts in particular;
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
(k) Pass and pronounce a final money decree in favour of Plaintiffs for payment of damages as found payable after the rendition of accounts;
(l) Award costs of the present proceedings in favour of the Plaintiffs and against the Defendants; and
(m) Pass any other order(s) / direction(s) in favour of the Plaintiffs and against the Defendants that this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
5. In lieu of and in aid of the main prayer, several interim reliefs have been prayed for under I.As.1 to 6. The parties are referred to by their nomenclature before the Trial Court and the first plaintiff and the fourth defendant are referred to as MAHE-1 and MAHE - 2 for the sake of brevity and convenience.
6. The first appeal COMAP 267/2022 is preferred by the entity going under the name and style "Manipal Academy of Health and Education" (MAHE-2, for short) and is said to be promoted by the 3rd defendant, who is also said to be the promoter of respondents No.2 and 4
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 and the defendant No.5 is a family concern involved in the business of furnishings, mattresses and pillows. The respondent Nos.1 and 2 are plaintiffs 1 and 2.
7. The second appeal COMAP 284/2022 is by 5th respondent herein and the instant appellant is arrayed as 3rd defendant therein and both the appeals are preferred, being aggrieved by the common order dated 22.04.2022 passed on the IAs and hence both appeals are taken up for disposal by this common order.
8. We deem it appropriate to traverse the plaint pleadings and the pleadings in the written statement. In para 2, it is pleaded that the third defendant i.e., the appellant in the companion appeal, is intending to start a school in the name and style of "Manipal International School" with the mark MIS and it is pleaded that the same is identical and deceptively similar to the trade mark of the plaintiffs.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
9. In para 3, it is pleaded that the first plaintiff is a Pubic Trust engaged in the establishment, management, development and conduct of educational institutions in all its branches and stages, including but not limited to kinder-garden, primary and high schools, colleges, post graduate and doctorate courses in arts, science, commerce, engineering, medicine, pharmacy, dental, nursing, management, music, fine arts, architecture, etc., and in the establishment, management, development and conduct of hospitals for providing medical, surgical and nursing care or treatment for indoor and/or outdoor patients. Plaintiff No.1 manages and operates plaintiff No.2. That the first defendant is a school that is proposed to be commenced by the defendants No.2 and 3 and that the information has been gleaned from the website www.mca.gov.in and that the website the domain name, www.manipalschool.ecity.com, is being used by the first defendant.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
10. In para 5, the relationship between the third defendant and the promoters of the plaintiff is set-out. In para 6, the extract from the website is set-out. It is pleaded that the defendants have misrepresented themselves. In para 7, it is contended that the plaintiff trust was established solely by one Dr. Ramdas Pai. That the second plaintiff was also established by the said Dr. Ramdas M Pai. That the first plaintiff trust deed was executed on 19.5.1993 and was registered on 22.05.1993. That the said Dr. Ramdas M Pai had greatly contributed and pioneered the establishment of the University and town of Manipal, which has now become synonymous with medical and higher education. That in para 10, it is stated that pursuant to the registration of the trust on 22.05.1993 a Notification dated 1.6.1993 was published by the Central Government declaring the Manipal Academy of Higher Education (hereinafter referred to as MAHE-1, being the plaintiff) as a deemed University and following
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 institutions were established under the aegis of the deemed university:-
(a) Kasturba Medical College, Manipal and Associated teaching hospitals, Manipal;
(b) Colleges of Dental Surgery, Manipal (now known as Manipal College of Dental Sciences);
(c) College of Nursing, Manipal (now known as Manipal College of Nursing);
(d) Kasturba Medical College and Associates teaching institutions, Mangalore; and
(e) College of Dental Surgery, Mangalore.
11. On 24.04.2000, another Notification came to be issued by the Union Government bringing the Manipal institute of Technology and College of Pharmaceutical Science under the ambit of the second plaintiff. In para 12, the details of 29 Departments and Institutions are set- out. In para 13, it is pleaded that the Deemed University, MAHE-1 was popularly being referred to as the "Manipal
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 University". That the words "Manipal University" have become synonymous with quality education, that as on date, the plaintiff trust is managing 14 establishments and sister concern under its aegis. In para 14, it is pleaded that recognizing the quality of education provided and administered by Dr. Ramdas Pai Groups, the Government of Sikkim collaborated and established the Sikkim Manipal University by an act of the legislature and thereby a special significance came to be attached to the word "Manipal". The copy of Notification dated 15.1.1995, establishing the Sikkim - Manipal University of Health, Medical and Technological Sciences Act, 1995 is and produced along with the plaint.
12. In para 15, it is pleaded that the plaintiff trust, referred to and known as MAHE-1, has garnered reputation not only across the country, but on the international stage also, as one of the most prestigious institutes of learning. That since the year 2000 over
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 84,728 students of 57 different Nationalities have walked through the portals of the plaintiff University. That the plaintiff is engaging nearly 2500 faculty and over 10,000 support and service staff for the purpose of managing and running the various professional and academic institutions.
13. In para 16, it is pleaded that the University has off-campuses in Mangalore and Bengaluru and off-shore campuses in Dubai (UAE), Nepal and Malaysia. That MAHE-1 or Manipal University, is known for its high quality educational facilities like Simulation Lab with computer driven Manikins, an Innovation Centre, one of Asia's largest Health Sciences Libraries, one of the worlds' best Anatomy Museums, a business incubation centre and various other centres of excellence and also the University boasts of a plethora of international collaborations with the likes of the GlobalNxt University, Malaysia and the American University of Antigua and other academic collaborations and twinning programs with several
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 universities in the US, UK, Australia and other countries. That the recognition is on account of its unwavering dedication towards academic excellence and the same has resulted in establishment of a unique brand value which is representative of quality of the education institutes owned and controlled by the plaintiffs.
14. Para 18, details certain luminaries produced by the university and to name a few, Mr. Satya Nadella, CEO of Microsoft Corporation, Mr. Rajeev Suri, CEO of Nokia and Mr. Sampat Shivangi, Chairman of the Mississippi Board of Mental Health and a list of some famous alumni of MAHE (MAHE-1) deemed university is sought to be produced as document No.11. In para 19 the plaintiff details the various awards that it has been receiving and it is further pleaded that the said awards have added a glean and shine to the word "Manipal" which word has emerged as an essential feature of the trademark/service mark/trade name/logo/label of the plaintiff trust. That the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 goodwill generated, lends itself to the registered Trademarks.
15. In para 20, it is pleaded that the trade/corporate name, MAHE/Manipal Academy of Higher Education (MAHE-1) also known as Manipal University forms an essential and integral part of the plaintiffs trading style. That the plaintiff trust has amassed a colossal reputation, not only in the field of education but also among the people at large, due to its world-wide presence and high quality services and extensive promotional activities. The plaintiff trust has executed numerous educational projects under the name MAHE/Manipal Academy of Higher Education and/or Manipal University (MAHE-1). That the mark MAHE, is an integral mark of the plaintiff trust and it is pleaded that the same has acquired a secondary meaning qua the activities / goods / business / services, of the plaintiff trust.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
16. In para 21, it is pleaded that a brand assessment survey report in respect of awareness of brands in education and health space in India was conducted by Ernst & Young, and that the report is a reflection of the goodwill and reputation earned by the plaintiff trust under the mark "Manipal". A copy of which is produced as document No.13.
17. In para 22, it is pleaded that in addition to the mark MAHE, the word Manipal has been registered and used as a trademark / trade name / corporate name / logo / label and the word "Manipal" is an essential feature with regard to the educational services rendered by the plaintiff. That the mark "Manipal" has been continuously and openly being used since its adoption in 1993. In para 23, it is pleaded that the plaintiff trust has aggressively promoted the mark "MAHE/Manipal" in diverse educational activities and the words have been advertised through every mode of media.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
18. In para 24, it is pleaded that the plaintiff has registered a domain name "manipaledu" and its mark MAHE is prominently displayed on the website www.manipalgroup.com. In para 25, it is pleaded that enormous efforts and resources have been continuously expended to take the mark amongst masses and create awareness amongst the public about the trade/services and the mark.
19. In para 26, it is pleaded that on account of aggressive campaigning and promotions, the brand has acquired huge popularity and instant recognition, not only in India, but globally also. That nearly a lakh of the degree certificates, awarded by the numerous institutions, also prominently bear the mark, of which "Manipal" is an essential feature and the word "Manipal" used in conjunction with other words, has singularly become distinctive and exclusively associated with the plaintiff trust. In para 27 the details of amounts spent on
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 promoting the brand between 1993 to 2018 is detailed and it is claimed that the plaintiffs have spent nearly 2334.99 lakhs.
20. In para 28, it is pleaded that the plaintiff's services are also being extensively promoted even outside the country. That the domain name manipal.edu has been obtained and registered on 27.09.1999. That the founder of the group Dr. Ramdas Pai has also obtained registration of the domain name "manipalgroup.com" on 22.12.1997 and material in respect of the same are also produced.
21. In para 31, it is pleaded that the word/mark "Manipal" is an essential feature and is the most valued intellectual property of the plaintiff trust. The paragraph further details the trademark registration obtained by the plaintiffs in different classes, namely, Classes 16, 35, 41 and 42, which have been detailed therein.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
22. In para 32, it is submitted that the registration of the trade mark have been duly renewed and are valued and subsisting on the date of the suit. In para 34 it is pleaded that, caution notices have been published in newspaper and also oppositions filed with the Trade Marks Registry to the attempts to use the word "Manipal" by third parties. In para 35 it is pleaded that the plaintiff is the lawful owner and proprietor of the mark "MAHE" (MAHE-1) and is its user since 1993. That all activities of the trust have been under the trademark of which the word "Manipal" is an essential feature.
23. In para 36, it is pleaded that the word "Manipal" has become synonymous with the activities of the trust and that members of the trade and public alike are bound to associate the word mark "Manipal" with the activities of the services rendered by the plaintiff trust. In para 37, the annual admissions are set out and it is pleaded that between the year 2000 to 2018 are total of 92,450 admissions have been carried out and that the figures by
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 themselves, speak volumes of the reputation garnered by the plaintiff and also demonstrates the brand value the mark has acquired. That the word "Manipal" has achieved a secondary meaning in respect of the educational and healthcare services and has become synonymous with the quality of the educational services rendered by the plaintiff. It is further pleaded that the word "Manipal", earlier a village in Mangaluru district and now part of the Udupi district Municipal Corporation, has on account of extensive and continuous use, transcended the boundaries of its location and is exclusively associated with the plaintiffs' educational services and a proof in this direction is a publication in Economic Times "Thinking beyond IIMS"
which is reproduced at page 238 reads as under:
"38. MANIPAL has achieved secondary meaning in respect of educational services and denotes a particular level of quality only being provided by the Plaintiff Trust. The word "MANIPAL", earlier a village in Mangalore district and now a block under Municipality Corporation limits of Udupi District, has on account of extensive and continuous use, transcended the location meaning and is associated with Plaintiffs' educational services provided to the general public. In fact, as
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early as in the year 2004, Economic Times has published an article "Thinking beyond IIMS" which itself evidences the word MANIPAL having become synonymous of the Plaintiff's services. Relevant portion of the article has been reproduced hereinbelow:
".....Think education in India and you'll think of the Indian Institutes of Technology or Management - two traditions that have blossomed and blundered under the patronage of the Indian government.
Beyond these, there's little on the macro level that the country's education landscape offers. One brand that for 50 years has fought to break this hegemony is a little hilltop destination that consistently draws students from over 30 countries to its southern climes - a feat even the famed IITs and IIMs fall short of. The town is called Manipal, the institution, Manipal.
There's little to differentiate the two -
over 50% of Manipal's population is students. And it's around this group that the folklore of Manipal generating the highest telecom revenues per kilometer in the country or accounting for the highest density per km of two wheelers have grown."
(Emphasis Supplied)
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Printout of the article dated 21.5.2004 in the Economic Times is filed along with the present suit and is produced herewith as Document No.25."
24. In para 40, it is pleaded that the Dr. Ramdas Pai Group, has been running a school and styled as "Manipal School" in Mangaluru. That over the years the school has achieved distinction in its scholastic and co- scholastic areas and the details are found on the website www.manipalschool.edu.in. In para 41, it is pleaded that Dr. Ramdas Pai Groups is the promoter of the Manipal Hospitals, which is claimed to be one of the foremost multi-specialty health care providers, catering to both to Indian and foreign patients and that it is part of the Manipal Education and Medical Group. That Dr. Ramdas Pai Group, has established the Manipal Hospital and has since been running and managing the Manipal Hospitals situated in Bengaluru and presently is one of the largest healthcare brands and has its presence in seven Indian
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 cities and marked its international presence through two locations in Klang, Malaysia and Lagos, Nigeria and is known for its quality and affordable health care.
25. In para 42, it is pleaded that more than 12,000 professionals have graduated out of the ICICI Manipal Academy Program, which is a joint venture of the Group with ICICI Bank Ltd., under an MOU which also resulted in setting up of Manipal Academy of Bengaluru, with world- class residential campuses at Jaipur and Bengaluru and it partners with 25 leading banks and has trained over 25,000 professionals whose services are utilized by the leading banks, insurance and financial service organizations.
26. In para 43, it is pleaded that the mark "Manipal" is employed by all the entities under the group in their field of activities and thereby effectively rendering the mark "Manipal", as an integral mark for all the entities that fall under Dr. Ramdas Pai Group. It is pleaded that
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 the mark/word "Manipal has become inextricably associated by the members of public and trade circles with the plaintiff alone. That the aforesaid marks have become a household name and pervades the globe. That the mark has achieved the status of a "well-known mark" in terms of Section 2(zg) of the Act and hence the marks are entitled to absolute protection against any misuse/misappropriation. Some of the trade mark registrations of Manipal Education in Classes 35, 41 and 42 are detailed in para 43. That it is further pleaded, that as per the online database of Intellectual Property Office UK and European Union Intellectual Property Officer, universities across the globe such as Cambridge, Stanford, Harvard, Oxford, University of Berkley Georgetown University, London School of Economics etc., which have a geographical name as its trade mark or as part of its trade mark, have been accorded statutory protection on acquiring a secondary meaning.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
27. In para 43, it is pleaded that plaintiff had filed an opposition before the Registrar, Trademarks opposing the registration of the Defendant No.3's application for the Logo "Manipal Group" subject to amending the specification of goods in respect of "Lottery Tickets included in Class-16" only. The said opposition was rejected and the plaintiff has preferred an appeal which is pending before the Intellectual Property Appellate Board. In para 44, it is pleaded that the plaintiff has filed a suit in O.S. No.8204/2014 before the City Civil Court, therein inter alia seeking a permanent injunction restraining Manipal Academy of Health and Education Private Limited from infringing and passing off plaintiff No.2's marks and the same was sought to be withdrawn and to be re- presented, which came to be partially permitted and which was appealed by the plaintiffs to this Court and which order came to be set aside and matter was remitted back to the Trial Court and which were carried in appeal to the Apex Court by the plaintiff and in which appeal the Apex
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Court has granted an interim relief of status-quo. It is pleaded that none of the defendants are parties to the said suit.
28. In para 45, it is pleaded that the cause of action for the present suit arose when they came across the advertisement in the "Times of India" newspaper announcing the opening of the new school namely, Manipal International School. In para 46, it is pleaded that the petitioners did a research about the said school in order to gather more material and have extracted the claims found on the website. It is also pleaded that they came across an advertisement, wherein, the third defendant is projected as a chairman of the first defendant and was to inaugurate the Manipal International School. In para 47, it is pleaded that the third defendant/appellant in the companion appeal has misrepresented to the office of the Prime Minister in the communication addressed to the Principal Secretary, PMO.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
29. In para 48 it is pleaded that in the communication to the PMO the third defendant has chosen to use the acronym - MAHE and the trade mark - Manipal Academy of Health and Education which is identical with that of the plaintiff trust. That the letter dated 15.07.2004 is demonstrative of the malafide intent of the third defendant to ride upon the goodwill and reputation earned by the plaintiff and has tried to portray himself as a part of the Group running the Kasturba Medical College, Manipal and Manipal Hospital, Bengaluru which makes it evident that the defendants are attempting to piggy-back on the goodwill and reputation earned by the plaintiff trust and canvass the same as their own.
30. In para 49, reliance is placed on the defendants pleading in the proceedings before the Registrar of Trade Marks and that the pleadings clearly reveal that the third defendant was all along well aware of the use of the mark and the word "MAHE/Manipal and the statement of the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 third defendant has also been extracted in the said paragraph and the extraction reads as under:
"I submit that even though the marks are similar, the Opponents institution is an University, rendering services in the field of Education, which is nothing to do with my business."
31. In para 50, it is pleaded that the plaintiff though well aware of the activities of the plaintiffs is making efforts to identify and project themselves as an associate and create an interest amongst the general public, that they are associated with the plaintiff trust and institutions. Further reliance and extraction of the third respondent statement is also produced in the said paragraph.
32. In para 51, the defendants admitting the usage of similar mark is reproduced. In para 53, it is pleaded that despite the defendants being well aware of the fact that the plaintiff is a prior-registered user of the word "Manipal", they have adopted the same and have also
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 attempted to use a deceptively similar trade mark of the plaintiff. In para 54, it is pleaded that the adoption is deliberate and with a malafide and fraudulent intention. In para 55 plaintiff has pleaded about the dishonest intention and in para 56, 57, 58 pleadings are on similar lines.
33. In para 60, it is pleaded that the acts of the defendants are in violation of the plaintiffs' exclusive statutory and proprietary rights in the registered and reputed trade mark/name MIS/MAHE/Manipal Academy of Higher Education and/or other marks of which Manipal is the essential feature and render it liable for inter alia:
a) Infringement of trade mark;
b) Infringement by dilution;
c) Passing off;
d) Acts of unfair competition; and
e) Payment of Damages.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
34. In para 60, it is further contended that the Manipal group logo is coined with the intention of misapplication.
35. The plaint has been resisted by the respondents. The written statements are preferred by the defendants No.3 and 4 and in para 1 it is pleaded that the suit has been instituted against defendants No.4 and 5 only with the intention of harassing them. In para 2 it is alleged that the plaintiffs are guilty of suppression of material facts. In para 3 it is contended that the defendant No.4 Company was incorporated on 09.05.2007 as a private limited company and thereafter converted into a company incorporated for charitable purposes and that one Sri M Samiullah is its Chief Executive Officer and authorized representative.
36. In para 4, it is contended that the name Manipal is the name of a locality in the town of Udupi and is a name commonly used by a number of businesses in a
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 variety of industries and sectors. That the fourth defendant is promoted by the third defendant. That the third defendant and the author of the plaintiff trust belong to the illustrious families of the late T U A Pai and his late brother T M A Pai who jointly founded a number of businesses and institutions under the name and style of "Manipal".
37. In para 5 it is contended that the plaintiff's claim to the use of the word "Manipal" is no different or better than that of the 3rd defendant. That the plaintiff cannot claim exclusive right to use the word "Manipal". That the plaintiff has no right to set up a challenge to the right of the 4th defendant or the third defendant, muchless against any person from using the word "Manipal".
38. In para 6, it is contended that 4th defendant is one of 80 odd companies that have adopted the name "Manipal" as part of the company name. That the fourth defendant, is primarily engaged in advancing the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 charitable objective of disseminating health care services and education at highly subsidized cost. In para 7 it is contended that the 4th defendant has honestly conceived and adopted the term "Manipal" as part of its name since the date of its incorporation in the year 2007. That the adoption of the word "Manipal" for its own name as well as for its various trademarks is lawful, bonafide, honest and beyond question of anyone and that the pleadings in para 7 - a, b, c, d, e, f, g, h, I, j, and k are proof of the same. It is pleaded that the third defendant is involved in running the Manipal Career Academy established for the purpose of taking computer education to the remote parts of the State. It is further affiliated with the Manipal Schools and the third defendant has also set up Manipal Pre-University College. That the third defendant and his late father T Ramesh U Pai have also incorporated Manipal Academy of Health and Education Society, an association, incorporated under the Goa's Society Registration Act w.e.f. 1995 and the said society has successfully run schools under the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 name and style of "Manipal Public School". That the society has executed license agreement for setting up of Manipal Public School on 18.01.2005 and the establishment of the schools has been advertised in the newspapers and that the said Manipal Public School has also a registered trade mark in the records of the Trade Mark Registry. That the society has also entered into an arrangement to run the famous Bharati Bal Vidya Mandir, Raibandar Goa. That it has also entered into another arrangement for running the Bhatikar Model High School, established in 1935 and in this regard the defendants reserves its rights to produce the records to demonstrate the running of the schools as the records are not currently available with the fourth defendant.
39. That all the business and education initiatives of the third defendant i.e., the said T Sudhakar Pai, known as Manipal Education Foundation, Manipal Academy of Health and Education Society and the fourth defendant are
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 collectively referred to in the ordinary course of their activities as the initiatives of the Manipal Group ("educational initiatives"). That the fourth defendant also has run a website described as https://www.mahe.org.in and in the website, the activities are set out in detail. Extracts of the said website on the website of the Manipal Public School as well as Madhava Pai Memorial College are produced as Annexure D17. It is further pleaded that the records and documents pertaining to the educational initiatives of the 4th defendant are not in its possession, but in the possession of the respective affiliate/entities that are running the same and hence leave is prayed to produce the same later (underlining by this Court). That the above facts demonstrates that the third defendant and the Manipal Group has been continuously engaged in the field of education since the time of late T U A Pai.
40. That the third defendant and his father together with the authors of the plaintiff trust belong to the family
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 of "Pais of Manipal" and neither intended nor were allocated, exclusively the mark "Manipal" nor the connected various educational and business initiatives to any of the family members. That the family members of late TUA Pai i.e., the late T Ramesh U Pai and Sri T Sudhakar Pai established and managed several educational and health initiatives of the 'Original Pais of Manipal' including the following-
(a) Academy of General Education
(b) Hindu Orphanage
(c) College of Dental Surgery, Manipal,
(d) College of Dental Surgery, Mangalore,
(e) Manipal College of Education
(f) Vaikunta Baliga Law College,
(g) Manipal Hospital
(h) Dr. TMA Pai Health Complex
(i) Manipal Artificial Limb Centre
41. In para 9 it is contended that due to
irreconcilable differences between the descendants of Dr. TMA Pai and descendants of late TUA Pai, the businesses
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 and educational institutions of the original Pais of Manipal, came to be split among the said descendants with involvement and assistance of Mr. Dhirubai Ambani, Mr. Virendra Heggade, Dharmadikari of Dharmasthala and Mr. C Subramaniam, Former Union Minister of Union of India and Former Governor of Maharashtra. That in the course of the split, neither the authors of the plaintiff's Trust nor any other descendants of the original Pais of Manipal, were allotted the exclusive use of the mark "Manipal" nor did any of the said descendants successfully assert exclusive rights to the use of the said name (emphasis by this Court).
42. In para 10 it is contended that in view of the above, the plaintiff's claim of all exclusive rights or better rights to use of "Manipal" is unfounded, as no exclusive or better rights have been conferred on the plaintiffs. That the author of the trust had instituted CS Nos.19, 20 and 21 of 1996 before the Hon'ble Madras High Court against
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 the third defendant and its companies. That the said suits were rejected and the judgments of the Madras High Court has attained finality and hence it is contended that the fourth defendant has absolute and unqualified right to use the trade mark "Manipal".
43. In para 11 it is contended that the word "Manipal" refers to a name of a place/locality in the town of Udupi and that 80 odd companies are registered in the records of the Registrar of Companies, in the name of "Manipal", which is commonly used and cannot be exclusively appropriated by the plaintiff. And furthermore, the third defendant has been using the word along with his father and grand father continuously for the purposes of educational services and hence the fourth defendant has legitimate right to use the said name.
44. In para 12 it is contended that the fourth defendant is not only entitled to, but has actually entered into franchise agreements with various persons across the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 country to set up and run a number of schools under the name and style of "Manipal Global School" and "Manipal International School". That the affiliate company of the fourth defendant has honestly adopted and registered the trademark "Manipal Group", that the fourth defendant itself has applied for registration of the trademarks "Manipal International School" and "Manipal Global School"
(emphasis by this Court).
45. In para 13 it is contended that MIS, set up by the fourth defendant, has even become well-known for its standard of education and infrastructure and the same is borne out by the fact, that the launch of the Manipal International School at Electronic City, Bangalore was widely covered by the Times of India on 29.01.2019 as admitted in the plaint. That the said Manipal International School has also won numerous awards and has received extensive press coverage (underlining by this Court). It is contended in para 14 that owing to the charitable motives
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 and intent of the third defendant and his father, the late T Ramesh U Pai, all the educational initiatives of the third and fourth defendants have focused exclusively on disseminating education as a form of social service and not as a business initiative.
46. The defendants berate the plaintiff for not appreciating the modest and humble approach of the third and fourth defendant and instead have attempted to compare the defendants' charity based approach, to its educational initiatives, with its own business savvy approach, focused heavily on extensive marketing and promotion of its educational institutions and unaffordable fee structure, to belittle not only the right of the defendants to use the mark "Manipal" but also to undermine their efforts to disseminate education at subsidized prices.
47. In para 16 it is contended that the approach of the defendants, is more in line with the vision of the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 original 'Pais of Manipal', who saw health and education as key to India's freedom from colonial rule and success, and the plaintiffs have no right to prevent the defendants No.3 and 4. It is further pleaded that the marks, in which the third and fourth defendants' educational initiatives operate, is a different sphere, than that of the plaintiff's intended market and hence on that ground also there is no confusion caused by the usage of the mark "Manipal".
48. In para 17 it is contended that the fourth defendant has continuously used the mark "Manipal" since the date of its incorporation. That the objectives of the fourth defendant are borne out by the Auditor's Report dated 20.06.2019 which provides for financial summary of the years 2017-18, 2018-19 and the extracts of the annual return for the year 2018-19.
49. In para 18 it is contended that the fourth defendant's trademarks, including but not limited to "Manipal International School", "Manipal Academy of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Health and Education", "Manipal Group and "MAHE", have also been in active and continuous usage as evidenced by the fee receipts for the "Manipal International Schools" it operates in the Ananthpur for the year 2019-20.
50. In para 19 it is contended that the suit O.S. No.8204/2014 was instituted against the defendant No.4 against infringing the mark "Manipal", but plaintiffs were not successful and their attempt to convince the Court to grant interim injunction having failed they preferred an application under Order 7 Rule 10 which resulted in an order by the trial Court, which came to be challenged before the High Court in MFA Nos.916 & 917 of 2017 and MFA Nos.2271 and 2272 of 2017, in which, the order of the Civil Court was set aside by the High Court which in turn resulted in filing a special leave petition, which is pending even as on date.
51. In para 20 it is contended that the plaintiff having failed in their attempts to secure an order of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 interim injunction against 4th defendant have now engaged in forum shopping and it is further pleaded that the plaintiffs have suppressed the information about the judgment of the Madras High Court rendered in C.S. Nos.19 to 21 of 1996 with the sole intention of misleading the Trial Court into granting the reliefs of permanent and temporary injunction.
52. In para 21 it is contended that the fourth defendant has a legitimate right to use the marks impugned in the above suit and the plaintiffs have not approached the court with clean hands and hence are disentitled for any equitable reliefs.
53. In para 22 it is contended that the fourth defendant was incorporated in 2007 and its predecessor Manipal Academy of Health and Education Society was constituted in 1995. That the third defendant who is a family member of the late TUA Pai is entitled to use the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 mark and the plaintiff does not have any right to restrain him or the fourth defendant from using the same.
54. In para 23 it is contended that the plaintiff despite being aware of the registration of the trademark "Manipal Public School" in 2005 itself the plaintiffs have not claimed any remedy. That the trade mark "Manipal International School" is an extension of fourth defendants' right to use the term or word "Manipal". That the plaintiffs having acquiesced with the usage of the word "Manipal" along with the "Public School" or in conjunction with the words "Public School" cannot now turn around and challenge the right of the defendant to use the mark "Manipal International School".
55. In para 24 it is contended that the trademark registered is not just the word "Manipal", but "Manipal Academy of Higher Education" and merely a part of the trademark which consists of generic word or descriptive of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 a place, that the registration of such mark does not confer any exclusive rights to its components.
56. In para 25 it is contended that the 5th defendant is neither necessary nor a proper party to the proceedings and the fifth defendant is a well known brand for its fleet of upholstery and furniture products and is critically acclaimed for its quality of goods. In para 26 it is contended that yet another company going by the name of "Manipal E Commerce Limited" has been incorporated on 08.01.2018, which is not arrayed as party to the above suit. It is further contended that the domain name "Manipal School-ecity.com appears to have been registered in the name of one Manipal E-Commerce Limited on 24.11.2018, whereas the 1996 company, by virtue of amalgamation with defendant No.5 in the year 2011 ceased to be in existence as on the date of registration of the domain name being 24.11.2018. The contents in paragraphs 22 to 28 are argumentative in
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 nature. The reply to the plaint averments are set out thereafter.
57. On perusal of the replies it is seen that the plaint averments are answered by the standard phrases, "Hence not traversed" or is "also are denied as false" and the "plaintiff is put to strict proof of the same" or by reiterating the contentions of continuous usage of the trademark by the third and fourth defendants. The plaintiffs allegation that the third defendant having attempted to project themselves as part of the Group is denied as false.
Submissions on behalf of the Appellant:
58. It is contended that the first appeal is by the 4th defendant and the companion appeal is preferred by the 3rd defendant, who is a Director in the 4th defendant's Institution. That the 1st plaintiff and the 4th defendant are the main players in this battle. That they share the same
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 lineage, popularly known as "Pais of Manipal". The learned senior counsel, referring to the family tree, points out, that the founder of the 1st plaintiff Dr. S. Ramdas Pai and the father of the 3rd defendant share a common ancestor i.e. one T. Ananta Pai and the 3rd defendant is the heir of the second son of the said Sri T. Ananta Pai and the founder of the first plaintiff trust is the 3rd son of the said Sri T. Ananta Pai. That initially, a Society called Manipal Academy of General Education Society was founded in 1943 and thereafter, in 1948 the Manipal High School Trust came to be registered and the High School came to be established. That TMA Pai and father of the first plaintiff's founder and Sri T. Upendra Pai set up the KMC Manipal and KMC Mangalore in 1953. That in 1979, the 3rd son of T.A. Pai passed away.
59. That on account of discord in the family, the Ambani Accord came about on 03.11.1993 leading to a division of the properties and the properties allotted, are
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 detailed. A copy of the Accord is produced along with I.A. for production of additional documents. The said Accord was followed by the Heggade Accord. In the interregnum, the Medical Colleges which were under the control and the share of Dr. Ramdas Pai were conferred a deemed university status by the UGC, by which time, the trust was running Medical College, Dental College, Pharmacy College, Engineering college, etc. The Heggade Accord came to be followed by the Subramaniam Award which is also produced along with I.A. as an additional document and it is contended that under the said award educational institutions, that is, the institutions excluded under the umbrella of the Deemed University or MAHE Trust, were allotted to the family of Ramesh Pai. In 1995, the Manipal Academy of Health and Education Society was registered (MAHE-2). The other MAHE i.e. Manipal Academy of Higher Education, (MAHE-1) a Trust was established in 1993 and was under the control of Ramdas Pai.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
60. It is contended that MAHE-2 was running the Bal Bharatiya Vidya Mandir School at Goa and Bhatikar Model High School. It is contended that in 2005, the MAHE-2 split into two arms. One wing to run profitable institutions and another wing to run non-profit institutions and that defendant Nos.3 and 4 applied and obtained registration of the logo Manipal Public School and the brand name of Manipal Group. That this registration was unchallenged by the plaintiff. That in 2006, MPS Lucknow was established by defendant Nos.3 and 4. In 2009, MPS Khatrijar and in 2019 MIS (Manipal International School) Bengaluru and MIS (Manipal International School) Anantpur were established by defendant Nos.3 and 4 and in 2022, MIS Darbhanga were established by the appellants.
61. It is contended that the suit of the plaintiffs is a clear abuse of the process of law. That the plaintiffs having unsuccessfully approached the High Court of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Judicature at Madras and having been unsuccessful, are by the present suit attempting to reopen the issues already adjudicated and hence, it is contended that it is a fit case for this Court to lift the corporate veil and act against the plaintiffs. It is contended that the present suits are hit by the law of estoppel.
62. That the attempts by the plaintiffs to scuttle the use of the word "Manipal" is more than 2 ½ decades old. The suits in Madras High Court in C.S. Nos.19-21/ 1996 seeking to injunct the appellant, from using the word "Manipal" and claiming that the defendants were not part of the Manipal Group, was instituted against the appellant and his father and another brother i.e. Mr. T. Ramesh Pai and T. Shantaram Pai and the suit came to be dismissed and the appeals preferred by the plaintiffs came to be withdrawn with liberty. That though liberty was reserved, no fresh suit was filed within the period of limitation of three years.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022
63. That the saga spilled over to Bengaluru, after a hiatus of 12 years, resulting in institution of the original suit O.S. Nos.8203-04/2014, where yet again attempts were made to scuttle the use of the mark Manipal or from claiming to be part of the Manipal Group. In the said suits the application under Order VII Rule 10 of CPC came to be filed praying to return the plaint for representing the same before the jurisdictional court at New Delhi, which came to be allowed with an order that the same can be filed where the principal place of both the business houses was located. Aggrieved, the plaintiffs preferred M.F.A. Nos.917/2017 and 2272/2017 before this Court and the same was heard and the appeals came to be partly allowed (which was authored by Hon'ble Justice GNJ) and matter was remitted back for fresh consideration. Aggrieved, the plaintiffs carried it in appeal by way of an SLP No.10699/2019 before the Hon'ble Apex Court and the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Hon'ble Apex Court was pleased to pass an interim order of the following nature:
".............In the meantime, status quo, as it exists today, shall be maintained by the parties."
64. That the SLP is still pending and the order of status-quo is holding the field. That it has been falsely represented by the plaintiff that none of the defendants of the suit were parties in the said suit. That subsequently, defendant Nos.4 and 5 came to be impleaded as parties. That in complete disregard to the order of the status-quo ordered by the Hon'ble Apex Court, the present suit originally numbered as O.S. 1244/2019 and re-numbered as O.S. 960/2021 came to be filed.
65. That the suits were originally directed against defendants No.1, 2 and 3 and thereafter, defendants No.4 and 5 were impleaded. That the present suit is a clear and continuous case of abuse of the judicial process and the plaintiffs are guilty of having approached the Court with
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 unclean hands and equally guilty of suppression of material facts.
66. It is contended that Manipal Group was the success story of the Pai family and was built with equal contributions from all members of the family. That the appellants are concurrent users of the Trade Mark, on account of they having been part of the family, that built the legacy and that being the case, the appellants are equally entitled to use the mark and brand and being a family name, cannot be appropriated by one branch to the exclusion of others.
67. It is contended that the contributions of Sri T.U. Ramesh Pai, in the establishment and growth of educational institutions is unparalleled. That he was instrumental in setting up KMC and Academy of General Education (Umbrella Group of 25 Educational institutions). That he was a Member of the Goa University, Syndicate Member of Mysore University, Senate Member of Madras
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 University, Senate Member of Mangalore University and Chairman of Vidhyadhira Theerth Charitable Trust. That he co-founded numerous healthcare enterprises like; Dr. TMA Pai Health Complex (Udupi) Dr. TMA Pai Rotary Hospital, Mangalore, Manipal Hospital, (Bengaluru), Rural Maternity and Child Welfare Centre, Karkala Health Project and Maternity Hospital and the Manipal Hospital in the Manipal Artificial Limb Centre.
68. It is contended that the founders of the plaintiffs trust and the 3rd defendant, sharing common ancestors and being very much part of Pai family, neither of them is entitled to exclusive use of the word the brand "Manipal Group" or the logo MAHE and more importantly, the word "Manipal". That the trial court has failed to appreciate this critical aspect of the litigation which was foundational to dispute resolution. That no right to exclusive use of the word "Manipal" is conferred on the Plaintiff, in any of the Accords. Be it the Ambani Accord or
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 the Heggade Accord or the Subramaniam Award, no exclusive right is conferred on the plaintiffs. It is contended that the prima-facie finding of the Trial Court that there is no proof of usage of word "Manipal" in the educational activities of the appellants is baseless and would submit that the registration of the mark Manipal Public School and the Deed of Modification of 1975 which reflects the appellant as one of the trustees of Manipal High School and which is running an educational institution in 1948 is proof enough.
69. That the registered Trade Mark "Manipal Public School" is in vogue since 01.04.2004. That the 3rd and 4th defendant were running schools in Uttar Pradesh and Bihar since 2006 and 2009 and this fact being within the knowledge of the plaintiffs their false claim of ignorance, regarding establishment of Manipal International School is accepted and the trial court erred in placing reliance on the same. That the Trial Court failed to appreciate the fact
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 that the injunction would directly affect the students who have been admitted in the schools established between 2006 and 2021. The trial court has not appreciated the hardship that would not only be caused to the appellants but also to the innocent bystanders like the children and their parents and which loss, cannot be compensated monetarily. That presently, there are 250 students enrolled in MIS Bengalore Rural, 100 students in MIS Darbhanga and 500 students in MIS Ananthapur, whose future is threatened by the grant of temporary injunction.
70. The learned senior counsel Sri Siddarth Dave would vehemently contend that the gravamen of the charge and the soul of the plaintiffs case is that they do not want the appellants to use the word "Manipal" either as a prefix or suffix, along with the nomenclature of their ventures. He would contend that Section 9 of the Trade Marks Act, 1999 is a threshold bar to the suit and is an absolute ground for refusal of registration of Trade Mark
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 as the same bars the registration of any word which is not distinctive and the word "Manipal" is a generic word. He would further take the Court through Section 17 and Section 2(b) and would contend that in view of the provisions of the aforesaid sections, it is impermissible to allow the word "Manipal" to be kept in captivity by the plaintiffs. He would contend that the fraud has been played on the Courts and the Court in order to secure the exclusive use of Manipal he would also take the Court through Section 30 and elaborate on the limits of the use a word which is statutorily limited.
71. He would contend that the allegation of deception is wholly one sided and the conclusion drawn by the Trial Court is on account of the trial court failing to appreciate the provisions of Section 30. He would further contend that there is no impediment as the Trade Mark are not similar and are distinguishable and in support of the above, he would place reliance on Nandhini Deluxe
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 case and Parle's case. That, in none of the suits has the plaintiff raised any objection to the use of the word "Manipal" in the name of Manipal High School being run from 1948 and that the objection appears to be naming another school as Manipal International School.
72. He would further contend that the plaintiffs are running a Deemed University, whereas the 3rd and 4th defendant are merely running schools and both are incomparables and the Trade Mark being dissimilar, there is no infringement that can be discerned and he would further submit that the registration of Trade Mark is confined to certain services only. That the suit claims run contrary to the statutory provision. The appellants have placed reliance on the following rulings:-
S No Case Name / Citation Relevant
Paras
1. Lal Babu Priyadarshi v. Amritpal Singh 19, 22
(2015) 16 SCC 795
2. ITC Ltd. v. Registrar of Trademarks 34, 35, 37
AIR 1977 Cal 413 (DB)
3. Santosh Kumar v. Central Warehousing 4
Corporation
AIR 1986 SC 1164
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4. Parle Products v. J.P. & Co. 9
(1972) 1 SCC 618
5. Vishnudas Trading v. Vazir Sultan Tobacco Co. 47, 48
Ltd.
(1997) 4 SCC 201
6. Nandhini Deluxe v. Karnataka Co-op Milk 1, 3, 25, 26,
Federation 30
(2018) 9 SCC 183
7. Renaissance Hotel Holdings Inc v. B Vijaya Sai 50, 73, 74
(2022) 5 SCC 1
8. Sohan Lal v. Amin Chand 8
(1973) 2 SCC 608
9. Bagla & Co. v. Bagla Cosmetics 10
2000 SCC Online Del 439
10. Black Diamond Track Part Pvt. Ltd. v. Black 21, 22, 26,
Diamond Motors Pvt. Ltd. 28
(2021) SCC Online Del 2630
11. Advocate General, State of Bihar v. MP Khair 7 - 10
Industries
(1980) 3 SCC 311
12. Delhi Development Authority v. Skipper 35, 47, 49,
Construction 52 - 57
(1995) 3 SCC 507
13. Frost International Ltd. v. Milan Developers & Builders Ltd.
2022 SCC Online SC 394
14. T Arivandandam v. T.V.Satyapal 1977 AIR 2421 Contention of the Respondents:
73. Per contra, the learned senior counsel Dr. Abhishek Manu Singhvi appearing on behalf of the plaintiffs would contend that the plaintiffs have been a
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consistent, unwavering and current user of the word "Manipal" in the field of education and health for the last nearly 30 years. He would brush aside the contention that the word "Manipal" is a family name and hence, no exclusivity can be claimed. He would submit that they are known as Pais of Manipal and not the other way round. He would nextly, contend that the use of a geographical name is not absolutely prohibited and elaborating further, he would submit that a geographical name may also acquire secondary significance and consequent distinctiveness.
74. He would refer to the geographical name of Champagne and Sambhal to contend that though Champagne is the name of the geographical location, it has acquired a secondary significance associated with a particular product which is manufactured in the region.
75. Elaborating further, he would submit that the names Mercedes & Benz and Mahindra & Mahindra, are surnames which have acquired a similar distinctiveness.
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76. He would point out that the defendants have not associated the word "Manipal" in their ventures in the health and education. He would be dismissive of the contention with regard to the Manipal High School. He would contend that the statement "I am running school" is patently erroneous and would submit that they are not running or administering even a single school.
77. He would contend that the school MHS, is run by a trust and the appellant in the connected appeal is one among the six trustees and hence being only one among the six trustees, he has no exclusivity or proprietary right over the name and brand of the trust.
78. He would contend that it is the appellants who are guilty of suppression and misrepresentation. He would contend that, neither the defendant No.3 nor defendant No.4, are running any school and in fact have granted licences and the schools are run by franchisees and rights
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 have been transferred for consideration to third parties, that is, to establish and run institutions using the word "Manipal" as a prefix or in other words the Manipal International School.
79. He would take the court through various documents, more particularly, registered Trade Marks, the registration of the 1st plaintiff trust. The statement tabular sheet, detail the humongous expenses incurred in promoting the mark and the brand name. That the brand "Manipal" has been consciously developed by the plaintiffs and such a brand, one which has secured not only a national recognition but also recognition on the international stage, is now facing erosion of its credibility on account of the franchisees granted by the defendants No.3 and 4 that too, to strangers and third parties to appropriate and use the word "Manipal". He would contend that "prior user" trumps even registration and both prior user and prior registration of the mark and logo
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 are with the plaintiffs. He would further object to the contention of the appellant that the plaintiffs have practiced fraud. He would submit that there is neither a plea nor a claim raised before the Trial Court. He would contend that in the absence of a plea, it is impermissible to even enter upon the said contention. He would take the Court through the various registration certificates issued by the Trade Mark registry to buttress his argument. Reply by the Appellants:
80. At this stage the appellants have resorted to change of counsels and Sri Siddharth Dave, learned senior counsel appeared and submitted on behalf of the appellants in reply.
81. Per contra, it was contended by the learned senior counsel Sri Siddharth Dave that the parties are not strangers and are uncles and cousins and both sides hail from Manipal. That this is not a case of infringement of a
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Trade Mark by the outsiders. He would take the court through a genealogical tree and would submit that the common ancestors of both the plaintiffs and defendants is one Sri Tonse Anant Pai. That the first Accord came about in 1993 leading to division of properties and the second Accord of the Subramanya award came about in 1994 to further smoothen the division of assets of the group, but neither of the awards partitioned, either the word "Manipal" nor assigned it to any one of the groups. He would contend that the word "Manipal" is the thrust of the plaintiffs case and they seek to place a premium and have hold on the word Manipal. He would contend that so long as the appellants, who also hail from Manipal, being part of the family they cannot be injuncted from using the word "Manipal" or associating the word "Manipal" with their business or other entities. He would also take the court through various orders of the Madras High Court. He would submit that the attempt by the plaintiff in the form of suits before the Madras High Court in 1996 and
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 thereafter, suits in 2014 and thereafter, the present suit is a contumacious act, bordering on contempt and amounts to forum shopping. That the trial judge erred in granting a relief which is omnibus in nature. He would further vehemently contend that injuncting the defendants from using the word "Manipal" at the interim stage, is wholly impermissible.
82. Per contra, the learned senior counsel Dr. Abhishek Manu Singhvi would submit that the plaintiffs are the users of the word "Manipal" since 1993 and that it is a use of which that has remained uninterrupted till today. That the Trial Court has found use of the word "Manipal" by the plaintiffs trust since 1993 and he would take the court through the notes of arguments filed into court. More importantly, page 12 in para 10 and taking the Court through the details, he would submit that the details are sufficient to demonstrate the solidity of the claim of the plaintiff. Elaborating, he would submit that the trust was
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 created in May, 1993. That subsequently, the Government of India, (MHRD) and UGC conferred deemed to be University status to Medical college. That the Government of Sikkim recognizing their contribution in the field of education enacted an Act notifying the establishment of Sikkim Manipal University by an Act of State Legislature notified on 16.01.1995. That till date over a lakh of students have passed through the portals of the various institutions run by the second plaintiff/University. That there are about 2500 faculty and more than 10000 support and service staff employed by the plaintiffs No.1 and 2. He would submit that as on 2018 a sum of Rs.152.52 crores has been spent on building brand "Manipal". He would contend that the sheer numbers quoted, one, indicative of the Popularity the brand has acquired and the endless and untiring effort and a humongous amount of money spent that has gone into, in building the brand.
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83. That the second respondent University has off- campuses in Mangalore and Bengaluru and offshore campuses in Dubai, Malaysia. That Manipal School, Mangalore is also run by Dr. Ramdas Pai. That the Manipal Hospitals came to be established by the Dr. Ramdas Pai Group, the founder of the first plaintiff trust and that the Manipal Hospitals have a presence in seven Indian cities and an international presence in Malaysia and in Nigeria. He would submit that these minimum details would suffice to infer in favour of the plaintiffs.
84. He would contend that the Trial Court has not granted an injunction without recording the reasons. On the contrary, the trial court has rendered a prima-facie finding that the word "Manipal" is no more a name of the place and publici juris but prima-facie it appears to have acquired a secondary meaning for the services rendered by the plaintiff in the field of education and healthcare and thus concluded that the marks used by the plaintiff are
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 well-known Trade Marks as defined under Section 2(zg) of the Trade Marks Act.
85. Further, countering the contentions on behalf of the defendants, the learned senior counsel would submit that the contention of the appellant that the word "Manipal" is publici juris is wholly erroneous as they themselves have applied for registration of the Trade Mark Manipal and that the very act of seeking registration, cuts at the root of their argument. He would further contend, that the contention of the Appellants that the word "Manipal" is a geographical name and does not acquire a secondary significance or distinctiveness, requires to be rejected outright. He would place reliance on the illustrative cases of Champagne & Shambal.
86. The learned senior counsel would submit that it is indisputable that the Trade Mark registration has been granted to the plaintiff for Clause-41 which covers the field of education. He would submit that it is immaterial
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 whether the violator is running a School or Primary School or Middle School as schools fall in the same genre of education and related services. That the plaintiff is not only running the Manipal Academy of Higher Education, but the group is also running the Manipal School at Mangalore. He would contend that the defendant is trying to create a subject category in Clause-41 where, none exists nor is it permitted under the Act and that the same is in the teeth of the provisions of Section 29(2) of the Trade Marks Act and would submit that an infringement would include a use of the mark even in respect of similar goods and services.
87. He would contend that the material placed on record nowhere demonstrates that Manipal International School being run by third parties, as neither generated any independent goodwill or reputation and there is no material to support the same and the adoption of the mark
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"Manipal" by the defendants is deliberate and hence, a dishonest act.
88. Taking the Court further through the provisions of Section 29(4) of the Act, he would contend that use of the mark would amount to a violation even for good and services that are dissimilar. He would further submit that the test for holding, as to whether the same amounts to passing off or not, is not whether the parties are in the same line or business, but the question would be; whether there is a likelihood of it creating a confusion in the mind of the public/consumers and the defendants have successfully misled the public by their adoption and use of the registered mark of the plaintiff. He would submit that if the defendants are not injuncted, it would preclude the plaintiffs from expanding into the area of school education which services clearly fall within Clause-41 in respect of which, a registration of mark is granted to the plaintiff.
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89. As regards the order of the status-quo granted by the Hon'ble Apex Court, he would contend that the proceedings leading to the appeal before the Hon'ble Apex Court, the cause of action was the infringement caused by the defendants therein in trying to infringe the Trade Mark of the first plaintiff i.e. MAHE by promoting an other trust with a similar abbreviations, but which reads as Manipal Academy of Health and Education. But the cause of action for the instant suit is the Manipal International School. That the issue pending before the Hon'ble Apex Court arises out of an interpretation of the law laid down by the Hon'ble Apex Court in the case of Indian Performing Rights Society Limited Vs. Sanjay Dalia & Another1, and has nothing to do with the infringement complained of in the instant suit. That the cause of action for the instant suit i.e. O.S. 1244/2019 and re-numbered as O.S. 960/2021 and as reiterated the cause of action is the 1 (2015) 10 SCC 161
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 commencement of the alleged Manipal International School in Bengalore i.e. in 2019.
90. With regard to the suit earlier instituted in the Madras High Court, he would submit that the Appellate Bench of the High Court, had permitted withdrawal of the suit by the plaintiff that with the withdrawal, the findings therein also stood effaced by the order of the Appellate Bench. He would contend that even otherwise respondents No.1 and 2 and the plaintiffs were not parties in the 1996 suits. That the 1996 suites were preferred by nine Group Companies of the Mohandas Pai Group. The cause of actions for the 1996 suit and 2019 suit are entirely distinct. That it has also been noted by the Appellate Bench that in view of the withdrawal of the suit that findings given at the interlocutory application stage would not operate as res-judicata. Hence, the reliance on the proceedings of 1996 is futile.
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91. As regards the adoption of a geographical name, he would submit that the same is not new to the field of education and he would proceed to name several universities of international fame such as Cambridge, Stanford, Harvard, Oxford, University of Berkley Georgetown University, London School of Economics etc., as few of the universities which are identified by the name of geographical area where they are located, and he would contend that even if the word is generic one the same may acquire a secondary meaning and distinctiveness. He would also quote the cases where in grant of Trade Mark involving geographical names have been up upheld. He would refer to the cases of Mangalore R.K. Beedies Vs. Mohammed Hanif2, The Nilgiri Dairy Farm Vs. S.A. Rathnasabhapathy3, Sunder Nagar Association Regd. And Another Vs. Welfare Cultural Club (Regd) and Another4, 2 ILR 1993 Kar 2393, 3 (1975) 2 Kant LJ 505 4 (1995) 15 PTC 270
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 M/s Bikanervala Vs. M/s New Bikanerwala5. Elaborating further, he would contend that all these cases are distinct as they have dealt with cases involving grant of Trade Mark registration involving a geographical area. Further drawing the attention of the Court to the voluminous documents produced by the plaintiff in support of the case. He would contend that the same are sufficient material to infer the balance of convenience in favour of the plaintiffs. He would lastly contend that the defendants deserve to be injuncted as they have deliberately set-out to piggyback on the name and fame acquired by the plaintiffs Trade Mark and which name and fame has been diligently acquired over a period of three decades.
92. The respondents have placed reliance on the following rulings:-
SL. DESCRIPTION PAGE No. NOS. SCOPE OF INTERFERENCE 1. Wander Ltd. And Anr. Vs. Antox India P. Ltd. 1-9 1990 (Supp) SCC 727 : Para 13 & 14 5 (2005) 30 PTC 113 - 80 - COMAP No. 267 of 2022 C/W COMAP No. 284 of 2022 2. Neon Laboratories Ltd. Vs. Medical 10-20 Technologies Ltd. (2016) 2 SCC 672 : Para 5 & 12 3. M/s Inphase Power Technologies Private Ltd. 21-56 And Others Vs. M/s ABB India Ltd. ILR 2017 Kar 522 : Para 35, 36 & 37
CONDUCT DISENTITLING A PARTY FROM RELIEF
4. Gujarat Bottling Co. Ltd. And Others Vs. 57-89 Coca Cola Co. and Others (1995) 5 SCC 545 : Para 47 SUPPRESSION
5. Udai Chand V. Shankar Lal and others 90-94 (1978) 2 SCC 209 : Para 8, 9 & 10 DIRECTION FOR CHANGE OF SCHOOL NAME
6. The British School Society Vs. Sanjay Gandhi 95-106 Educational Society & Another 2022 SCC OnLine Del 1165 : Para 41, 42 & 44 THRESHOLD FOR INFRINGEMENT IN CASES OF EDUCATIONAL INSTITUTIONS
7. Ritnand Balved Education Foundation vs. 107-113 Ranchhod M. Shah and Ors.
2018 SCC OnLine Del 11910 : Para 25 & 29 PRIOR USER WILL PREVAIL
8. Neon Laboratories Ltd. Vs. Medical 10-20 Technologies Ltd.
(2016) 2 SCC 672 : Para 8, 9, 11 & 12
9. Satyam Infoway Ltd. Vs. Sifynet Net 114-127 Solutions (P) Ltd.
(2004) 6 SCC 145 : Para 13 CONTINUED USE OF IMPUGNED MARK AT ITS OWN PERIL
10. M/s Hindustan Pencils Private Ltd Vs. M/s 128-151 India Stationery Products Co. & Another (1989) 38 DLT 54 : Para 38 TEST FOR PASSING OFF AND SIMILAR ACTIVITY
11. The Timken Company Vs. Timken Services 152-180 Private Ltd.
(2013) 200 DLT 453 : Para 8.33, 8.37, 8.41 & 8.53
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12. Daimler Benz Aktiegesellschaft Vs. Eagle 181-185 Flask Industries Ltd.
AIR 1994 Del 239 : Para 5 & 15 IN CASE OF INFRINGEMENT, INJUNCTION MUST FOLLOW ESPECIALLY, WHERE ADOPTION IS PRIMA FACIE DISHONEST
13. Midas Hygiene Industries P. Ltd. And Anr. 186-188 Vs. Sudhir Bhatia and Ors.
(2004) 3 SCC 90 : Para 5 ONE MARK, ONE SOURCE, ONE PROPRIETOR
14. M/s. Power Control Appliances and Others 189-208 vs. Sumeet Machines Pvt. Ltd.
(1994) 2 SCC 448 : Para 41 DOCTRINE OF PROMINENT/ESSENTIAL FEATURES OF TRADEMARK AND USE THEREOF CONSTITUTING INFRINGEMENT AND/OR PASSING OFF
15. Max Healthcare Institute Limited v. 209-218 Sahrudya Health Care Private Limited 2017 SCC OnLine Del 12031 : Para 20 & 21 SECTION 29(9) OF THE ACT AND DISTINCTIVE ELEMENTS
16. Renaissance Hotel Holdings Inc. v. B. Vijaya 219-250 Sai (2022) 5 SCC 1 : Para 37, 39 & 44 TRAFFICKING IN TRADEMARK IS NOT PERMISSIBLE
17. Vishnudas Trading As Vishnudas Kishendas 251-275 Vs. Vazir Sultan Tobacco Co. Ltd, Hyderabad and Another (1997) 4 SCC 201 : Para 23 RIGHTS ON ACCOUNT OF PRIOR USE IS SUPERIOR TO STATUTORY RIGHT TO REGISTRATION AND SECTION 28(3)
18. S.Syed Mohideen v. P.Sulochana Bai 276-297 (2016) 2 SCC 683 : Para 27, 30, 30.4, 30.5, 31.2 ESSENTIALS OF PASSING OFF
19. Cadilla Healthcare Ltd. v. Cadilla 298-320 Pharmaceuticals Ltd.
(2001) 5 SCC 73 : Para 10 and 35
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 IN CASES OF CONTINUING TORT (SUCH AS PASSING OFF AND INFRINGEMENT OF A REGISTERED TRADEMARK), THE PLAINTIFF GETS A FRESH CAUSE OF ACTION.
20. Bengal waterproof Limited v. Bombay 321-333 Waterproof Manufacturing Company and Anr.
(1997) 1 SCC 99 : Para 10
VOL-II
SL. DESCRIPTION PAGE
No. NOS.
GEOGRAPHICAL NAMES HAVING ACCORDED PROTECTION
1. Mangalore R.K. Beedis Vs. Mohammed Hanif 1-21 (1993) SCC Online Kar 132 Para 24
2. Nilgiri Dairy Farm Vs. S.A. Rathnasabhapthy 22-37 (1975) SCC Online Kar 22 Para 19, 25 and 60
3. M/s Bikanerwala Vs. M/s New Bikanerwala 38-52 (2005) 30 PTC 113 Para 6, 31 and 32
4. Geepee Ceval Proteins and Investement Pvt. 53-62 Ltd. Vs. Saroj Oil Industry (2003) 27 PTC 190 Para 7, 8 and 9
5. Hindustan Radiators Co. Vs Hindustan 63-75 Radiators Ltd.
1987 PTC 73 Para 2, 5, 7 and 12
6. Sunder Nagar Association Vs. Welfare 76-78 Cultural Club (1995) 15 PTC 270, Para 4 SURNAME BEING ACCORDED PROTECTION ON ACQUIRING DISTINCTIVENESS
7. Mahendra and Mahendra Seeds Pvt. Ltd. Vs. 79-99 Mahindra & Mahindra Ltd.
(2003) 26 PTC 434 Para 39
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8. Mahendra & Mahendra Paper Mills Ltd. Vs. 100-114 Mahindra & Mahindra Ltd.
(2002) 2 SCC 147 Para 7 and 25 A GENERIC WORD MAY ACQUIRE DISTINCTIVENESS
9. T.V. Venugopal vs. Ushodaya Enterprises 115-150 (2011) 4 SCC 85 Para 75, 90 and 93 TRIAL AND HEARING OF THE SUIT IN MATTERS RELATING TO TRADEMARKS, COPYRIGHTS AND PATENTS SHOULD BE ON AN EXPEDITED BASIS
10. Shree Vardhman Rice and General Mills Vs. 151-152 Amar Singh Chawalwala (2009) 10 SCC 257 Para 2, 3 and 4
11. Glenmark Pharmaceuticals Limited Vs. Merck 153-158 Sharp and Dohme Corporation and Anr.
(2015) 6 SCC 807 Para 7, 8 and 10
12. Dhariwal Industries Ltd. & Ors. Vs. MSS 159-167 Food Products (2005) 3 SCC 63 Para 15 A PARTY HAVING APPLIED FOR REGISTRATION OF A WORD AS A TRADE MARK CANNOT ARGUE THAT THE MARK IS DESCRIPTIVE OR GENERIC.
13. Indian Hotels Company Ltd. vs. Jiva 168-183 Institute, 2008 SCC Online Del 1758 Para 39 GENERAL PRINCIPLES GOVERNING THE GRANT OF INJUNCTIONS:
93. The law in this regard is no more res-integra and the same has been well settled and oft reiterated by
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the Hon'ble Apex Court. The Hon'ble Apex Court as early as in 1992 in the case of Dalpat Kumar And Another Vs. Prahlad Singh And Others6, has been pleased to hold in para 5 which reads as under:-
"5. Therefore, the burden is on the plaintiff by evidence aliunde by affidavit or otherwise that there is "a prima facie case" in his favour which needs adjudication at the trial. The existence of the prima facie right and infraction of the enjoyment of his property or the right is a condition for the grant of temporary injunction. Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference by the Court would result in "irreparable injury" to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be 6 (1992) 1 SCC 719
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no physical possibility of repairing the injury, but means only that the injury must be a material one, namely one that cannot be adequately compensated by way of damages. The third condition also is that "the balance of convenience" must be in favour of granting injunction. The Court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that which is likely to be caused to the other side if the injunction is granted. If on weighing competing possibilities or probabilities of likelihood of injury and if the Court considers that pending the suit, the subject matter should be maintained in status quo, an injunction would be issued. Thus the Court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit.
94. On a reading of the above, it is apparent that the court dealing with the prayer for injunction has to come to a prima-facie conclusion that; the plaintiff has demonstrated a prima-facie case which calls for adjudication and (2) the plaintiff has demonstrated the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 existence of a prima-facie right and (3) the plaintiff has demonstrated the prima-facie infraction of his right and that the infraction of the right is a condition precedent for grant of temporary injunction and lastly, the Court prima- facie conclude that failure to interfere would result in irreparable injury to the party seeking relief and that the injury must not be one that could be adequately compensated by way of damages and the balance of convenience must be in favour of the party apprehending the injury and the Court must exercise sound judicial discretion in enumeration of mischief and injury that is likely to be caused by the failure to grant injunction.
95. This Court now proceeds to examine as to whether the order of the Trial Court impugned in the appeal satisfies the mandate of law as enunciated by the Hon'ble Apex Court.
96. As noted supra, order of the trial Court reflects the detailed consideration of the plaintiffs pleadings in
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 paras 2 to 23. In paras 24 to 26, the Commercial Court has summarized the plaintiffs contentions regarding the cause of action. In paras 27 and 28, recorded the contentions of the plaintiff that the infringement are deliberate and motivated. In para 30 it records the grant of Ex-Parte temporary injunction. In paras 31 to 38, it has recorded the contentions of the 3rd defendant. In paras 39 to 49 it has recorded the contentions canvassed on behalf of the defendants No.4 and 5. In para 50, it has recorded the rulings relied upon both by the plaintiffs and defendants and in para 52, it has framed the following point for consideration, which are as under:-
"52. Now the points arise for my consideration are:
1) Whether the plaintiffs have made out prima facie case of infringement of his registered trademark, passing off and unfair competition by the defendants?
2) Whether the balance of convenience lies in favour of the plaintiffs?
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3) Whether the plaintiffs will be put to irreparable loss if the reliefs sought under the I.A.No.I to VI are not granted?
4) Whether the defendant No.3 has made out sufficient grounds to vacate the exparte T.I. granted against him?
5) What order?"
97. In para 55, it has extracted the list of documents filed on behalf of the plaintiffs and in para 56 extracted the list of documents filed on behalf of the defendants and in para 57 it has recorded the admitted or undisputed facts. In para 58, it has appreciated the facts relating to the family of one Sri. T.A.Pai who is the common ancestor and the various branches of the family. It has also appreciated the fact of split in the family and the Accords or Settlements arrived at between the warring parties at the intervention of luminaries. In paras 59 to 61, it has appreciated the crux of the dispute and issues subsisting between the parties. In paras 62 and 63, it has
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 appreciated the filing of suits before the High Court of Judicature at Madras and the filing of appeals and leave granted by the Appellate Bench. That the findings at the interlocutory stage do not operate as res-judicata. In para 64, it has summarized the claims of the plaintiffs with regard to the creation of the trust, registration of the mark for word and devise in Clause, 16, 35, 41 and 42 and has also appreciated the list of 18 institutions in India and two institutions outside India that are run by the second plaintiff-University. The invitation by the State of Sikkim to the plaintiff to establish a University. It has appreciated the statistics regarding number of students who have passed through the plaintiff's University. It is also alive to the fact of several famous personalities who are alumnus of the University. In para 65, it has summarized the various awards conferred on the plaintiffs in recognition of their efforts in the field of health and education and has observed that the awards are reflection of the good will acquired by the plaintiffs. It has also appreciated the
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Brand assessment survey report by a leading organization called Earnst and Young, as far back as in April, 2016. It has also appreciated the article published by the Economic Times on 14.02.2019 and has also appreciated the article which speaks about the pioneering of the plaintiffs and the institution in the field of education and healthcare and has also brushed aside the objection to consideration of the said reports published in the newspaper on the premise that there is nothing brought on record to disbelieve the same. In para 66, it has appreciated the various other documents like prospectus certificates, degree certificates, Marks Cards, invitations etc. in which the mark MAHE/Manipal Academy of Higher Education/Manipal Inspired by Life, are displayed. It has also appreciated the web address of the plaintiff. It has also appreciated the advertisement bills on the promotion material. It has recorded that the same prima-facie reveal that the plaintiff has been spending huge amount towards marketing and establishing their Trade Mark Manipal Academy of Higher
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Education/MAHE/Manipal University/Manipal Inspired by Life. It has also appreciated the web address on the websites and recorded domains have been created as for back as 27.09.1999. In para 67, it has appreciated the plaintiffs opposition, to the attempt by a third party to have the Trade Mark, Manipal, registered in its favour. In para 68, it has appreciated the plaintiffs case of Dr. Ramdas Pai Group running a school name of 'Manipal School', Mangalore. The domain name of the website is also appreciated, the establishment of a institution by Dr. Ramdas Pai Group, in collaboration with ICICI Bank Limited and known as ICICI Manipal Academy for Banking and Insurance in 2008. That the domain name ima.manipal.edu and which institution, it has recorded, has established partnerships with several leading banks, financial companies and financial institutions for the purpose of training professional. In para 69, it has examined and appreciated the letter of intent dated 23.07.2018 issued by the Government of India (HRD)
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Department recognizing the second plaintiff as an institution of eminence deemed to be University. In para 70, it has appreciated the plaintiffs contention that the defendant No.2 originally named as Manipal Control Data Electronic Commerce Limited MCDEC Limited and it got changed its name to Manipal E-Commerce Ltd., in 2003 and later got itself amalgamated with Defendant No.5. It has also examined the documents relating to registration of the domain name by one Murali Mohan for E-Commerce Ltd., on 24.11.2018 and updated on 23.01.2019 and on these basis, it justifies the impleadment of defendant No.2 and has prima-facie observed that Defendant No.2 is the person behind the first defendant. In para 71, it has appreciated the advertisement issued in the Times of India newspaper regarding the opening of Manipal International School wherein, it has, proclaimed itself as a legend in the field of education and has further claimed that it is a part of the Manipal Group which has been imparting world class education for over last eight decades. In para 72, it has
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 appreciated the documents produced by the plaintiff (exhibits are a photo of defendant No.3 inaugurating a ceremony). Appreciating the media proclamation, it has prima-facie recorded that material on record do not reveal the existence of a company being run in the name of Manipal Group and it has also observed that there is nothing on record to demonstrate the third defendant as a Chairman of the alleged Manipal Group and in that view it has observed that prima-facie the suit cannot be construed as a malafide or a fraudulent attempt or an abuse of the court. In para 73, it has appreciated the documents produced on behalf of the defendant. It has recorded that the documents demonstrated that the 4th defendant was incorporated on 09.05.2007 and that the defendant No.3 and one Kowlagi Kishore Kumar are its Directors and that subsequently, it has been changed to a Charitable company from 14.03.2018 onwards and 4th defendant has applied for Trade Mark registration for the word "Manipal International School on 04.11.2015 in
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 Clause-41. The application is signed by the 3rd defendant in his capacity as Director of the 4th defendant. The said application came to be objected and registration was refused by the Examiner of Trade Mark by 20.04.2020 and it has also extracted the reasons for rejecting the application. In para 74, it has appreciated the incorporation of the defendant No.5 Company. In para 75, it has appreciated plaintiffs opposition to the application filed by the defendant No.3 and has extracted the counter statement of the defendant No.3 which reads as under:-
"75. The Plaintiffs have produced copy of counter statement filed by the defendant No.3 for the Opposition No.MAS 58810 filed by the plaintiff No.2 against the Application No.659807 by the defendant No.3 for the registration of trademark 'Manipal Group' in Class 16 wherein, the defendant No.3 has stated as under:
"1. I have been trading under the name and style of Manipal Group and engaged in the business of stockist and distribution of State Lotteries ever since the year 1994. I submit that during the course of the said business I have honestly conceived and adopted the trade mark MANIPAL GROUP since the year 1994. I have done
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extensive and continuous business under the above trade mark since 1994 and the said trade mark has become associated with my business in respect of Stockiest and distribution of State Lotteries.
4. As regards para 1(a), I submit that the MANIPAL ACADEMY OF HIGHER EDUCATION TRUST, MANIPAL, is a part of various educational charitable and financial institutions established by late Dr. Madhav Pai. The main objects of the trust are to support and promote as advancement of educational activities in all its branches and to promote the Konkani language and are and culture of the Konkani speaking people, which is nothing to do with my business. In any event I submit that the above Institution was formed and maintained by the family of Pals in which I am also one of the member of the family and hence I am entitled to use the word MANIPAL GROUP for my business.
7. With reference to the Notice of Opposition, I submit that till date not even a single instance of confusion has been proved by the Opponents. I submit that no body in the earth will confuse the trust, formed to support and promote the advancement of educational activities in all its branches and to promote the Konkani language and art and culture of the Konkani speaking people, is nothing to do with my business.
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Therefore, I submit that Section 11 of the Act will not be a bar for the registration of my trade mark."
98. In para 76, it appreciates the registration of the Trade Mark Manipal Group in Clause 16. In para 77, it has appreciated the letter addressed by the defendant No.3 to the Principal Secretary, in the office of the PMO, New Delhi and has extracted the relevant and in Para 78, it has recorded that the hospitals claimed to be run by defendant No.3 in his letter to the PMO, are in fact run by the plaintiffs and has observed that an attempt has been made to convey an impression that the author is backed by the Group running the hospital therein. It has also appreciated the documents being google extracts produced by the plaintiff, which demonstrate that the word "Manipal" is synonymous to the plaintiffs institutions. In para 79, it has recorded the admissions by the defendants No.3 to 5, that they are using the word mark "Manipal" as their trade name, trade style, domain name and trade mark and has further appreciated their contention
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 regarding the alleged distinction and their views and has appreciated the contentions of defendants No.3 to 5. In para 80, it has appreciated the Memorandum of Association and Articles of Association of the 4th defendant Company which has formed in 2007. In para 81, it has recorded a prima-facie finding that the objectives of the 4th defendant are similar to the objectives of the plaintiff trust. In para 82, it has appreciated the Deed of Modification of Manipal High School Trust which was earlier formed on 21.02.1950 by Dr. TMA Pai the then Registrar of the Academy of General Education of Manipal. It has further appreciated the news articles regarding the contributions of one Ramesh Pai and his uncle Dr. TMA Pai and in para 83, it has recorded Annual Magazines for the year 1996-97 and 2018-19 and the extract of Manipal PU College. It has recorded that the said school was started in 1948 under the name of Manipal High School and it was upgraded to a Junior college in 1972 and renamed as Manipal Pre University College in 1986. The Trial Court is
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 also alive to the contributions of the founders and the demise of one of its propounders and the installation of the third defendant as correspondent in 2008. In paras 84 and 85, it has discussed the registration and establishment of Manipal Academy of Health and Education and the registration of Trade Mark "Manipal Public School" and has also extracted the display on the webpage and placing reliance on the contents, it has prima-facie observed that the same would go to show that the word Manipal has not remained as mere name of the place and has further held that there is no material produced by the defendants to demonstrate the establishments of school in the distant past to claim concurrent usage. In para 86, it has discussed the execution of franchisee agreement by the 4th defendant in favour of certain third parties in Telangana State for the establishment of the school at Anantapur. It has also examined the audit report and observed that, it did not reflect any revenue in the year 2017-18 and revenue of 39 lakhs for the revenue year 2018 to 2019.
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 The third defendant and one K. Kishore Kumar recorded as Directors of the Company. That the fee receipt reflects the collection of fee by the school and are not reflected in the Company records and has observed that the same reveals functioning of the schools by the franchisees in Chennai and Hyderabad. In paras 87 and 88, it has discussed the filing of O.S. No.8527/2019 on account of the plaintiffs publishing the Ex-Parte interim order granted by the court. In para 88, it has appreciated the fact, that out of the Trade Marks registered under Clause 41 and 16, most of them belong to the plaintiff including the registration mark and word "Manipal". In para 89, it has appreciated the contention of the defendant that there are several other private entities which are using the word "Manipal" and the absence of opposition to the same. In para 90, it has appreciated the defendants arguments that the word "Manipal" is a generic name and publici juris and neither registrable nor enforceable and rejecting the argument, it has prima-facie held that the word "Manipal" is a
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 geographic name and it has acquired a secondary meaning and distinctiveness and that the word "per-se" has not acquired reputation, goodwill and distinctiveness but for the efforts of the plaintiffs.
99. In para 91, it has prima-facie recorded the finding that the materials produced by the plaintiffs reveal that they are the registered proprietor of the Trade Mark Manipal Academy of Higher Education, Manipal Academy of Higher Education Deemed University, MAHE, MAHE Deemed University, Manipal University for word and device in Clause 16, 35, 41 and 42 and for a "Manipal Label", Manipal Inspired by Life" in Clause - 41 and 42 and has further recorded a finding that the essential and eminent feature of the aforesaid Trademark is "Manipal". It has further recorded that the plaintiffs have been using the said mark continuously for three decades and that the Trademark are duly renewed. It has further observed that such registration prima-facie indicates as to the validity of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 the Trademark of the plaintiffs under Section 31 of the Act and has arrived at a prima-facie conclusion that the word "Manipal is no more a name of a place or a publici juris, but appears to have acquired a secondary meaning for the services rendered by the plaintiff in the field of education and healthcare. It has prima-facie disbelieved the defendants contention that the popularity, reputation, goodwill and distinctiveness are due to a joint efforts of Pais of Manipal. It has further recorded a finding that neither the 3rd defendant nor his father appear to have established educational institutions and hospitals after 1993, on the contrary it has recorded that the plaintiffs have been moving further and developing and starting institutions in the field of education and healthcare and hence, has been pleased to prima-facie reject the contention. In para 92, it has appreciated the material and rendered a prima-facie finding that the marks used by the plaintiffs fall within the meaning of 2(m) and 2(zb) of the Act, that the plaintiff No.2 is the registered proprietor of
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 the marks. It has also prima-facie recorded a finding that the claim of concurrent use by the defendants on account of registration of the mark was limited to the field of lottery tickets and not in the field of education and healthcare and which also is sub-judice before the Appellate Authority.
100. In para 93, it has appreciated the provisions of Section 29 of the Act and in para 94, it has discussed and recorded that the essential feature in the name of the defendants No.1 and 4 is "Manipal" and in this regard it has placed reliance on the admitted use of the domain name, the email and on the said basis has rejected the contention that defendant No.2 was no more existence. It has also observed that the 5th defendant is the registrant of the domain name mahe.org.in and it has identified that the 3rd defendant who is also a Director in defendants No.2, 4 and 5, as the key person behind the establishment of defendant No.1. It has further summarized and
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 observed that the material indicate, that the defendants No.3 and 4 intend to provide services in the field of education in the name of the first defendant and which is prima-facie identical with the registered trademarks of the plaintiffs. It has also recorded that the domain name used by the 5th respondent is identical with the registered trademark of the plaintiff. It has further observed that the defendants have not placed material to show their long, continuous and simultaneous use to take shelter under the concept of a concurrent user. It has also prima-facie observed that there is nothing on record to show that the defendants have been in the use of the word mark "Manipal" in the field of education and healthcare after 1993 except in the inauguration of Manipal International School in 2019. In para 95, it has not accepted the defence that the reputation and goodwill of the word "Manipal" has been on account of a joint efforts of a Pai family and it cannot be attributed to Dr. Ramdas Pai alone. In this regard, it has placed reliance on the extensive use
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 of the mark by the plaintiff, in the field of education and healthcare, post 1993 i.e. post Ambani Accord. In para 96, it has discussed in detail the effect of using a geographical name and the objection that registration cannot be obtained for the word "Manipal" alone and the acronyms MIS for registration of the domains and view adopted by Delhi High Court in Jolen Inc. Vs. Shobanlal Jain & Others7 case. In paras 96 and 97, a discussion of the contentions advanced and the reasons to either accept or reject the contentions are found. In paras 98, 99 and 100, it has recorded that the material before the Court is sufficient to believe at this juncture that the mark "Manipal" has acquired a secondary meaning for the services rendered by the plaintiff in the field of education and healthcare and not in other fields and in that view, it has deemed it necessary to grant the injunctive relief. In para 99, it has discussed comparative hardships and has held that it is always open for the defendants who have 7 (2004) SCC Online Mad 883
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 started a new venture to commence and carry on business in a different name or a changed name, and that the same would not cause any irreparable hardship to them. Reasons and conclusion by this Court:
101. From a reading of the above, it is apparent that the trial Court has conducted a detailed exercise and has not merely appreciated the rival contentions but has also recorded cogent and possible reasons either for accepting or rejecting contention. It has also examined the various rulings and has passed an order which it deemed equitable in the facts and circumstances, prima-facie demonstrated by the parties. It has also examined the relative hardship that would be suffered and thereafter has proceeded to grant a relief.
102. The learned senior counsels have virtually replicated before this Court the arguments that they canvassed before the Trial Court also. It would not be out
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 of place if we observe that even at a first glance, we are faced with a wealth of pleadings and material on the part of the plaintiffs resisted by penury on the part of the defendants.
103. It would be profitable to observe at the outset that the distinct feature of argument canvassed. That the schools allegedly claimed to be run by the defendant or in fact schools that are been run by the third parties, who it is claimed are franchisees or in other words holders of rights assigned by the defendants, appears to be the factor which has provoked this litigation. We are constrained to make this prima-facie observation in view of the focal arguments by the parties. The focal contention canvassed is that it is "all in the family" and that the individuals behind the organizations are related to a common ancestor and whose progenies have been responsible for the word "Manipal" being associated with the family and on account of which the word has acquired
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 extensive name, reputation and goodwill. But it is also the contention of the appellant that the word "Manipal" has not acquired any secondary meaning or distinctiveness and it is merely a name of a geographical area. Such approbation and reprobation prima-facie considerably weakens the defence of the appellants. Similarly, in one breath they claim the word "Manipal" has not acquired any significance but it is on record that they have also made application for registration of the word "Manipal" as a mark under the Act. If it is the firm opinion of the defendants (that the mark is unregisterable) that the word "Manipal" cannot be registered as a mark, then the onus was on them to explain the application for registration of the "word" as a mark.
104. The plaint pleadings in para 7, 10, 12, 15, 16, 18, 19, 21, 22, 23, 26, 27 and 36 are not empty pleadings but have been prima facie backed by materials produced in support of the pleadings. The plaint pleadings
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 demonstrates a prima facie case of the plaintiff assiduously building the brand from 1993 onwards. These pleadings and the supporting documents prima facie demonstrates that the balance of convenience lies in favour of the plaintiff. The pleadings in para 36 of the plaint wherein the news article has been extracted would prima facie go to show the popularity of the institutions being run by the plaintiffs wherein the article would mention that 50% of the town's population consists of students. The pleadings in defence i.e., in the written statement and objections are not supported by any prima facie material.
105. The defence that the word "Manipal" has not been allocated to any of the groups during the separation of assets cuts at the very root of the defendansts case. Firstly, it has not been demonstrated that the word "Manipal" was registered has a mark or atleast developed as a trade mark by the unified group. Secondly, there is
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 no rebuttal material produced by the defendants to rebut the assertions of the plaintiffs regarding registration of the mark and the expansive spending for promotion of the same. That apart the defendants have categorically admitted that they are using a similar mark. If this admission is viewed in the backdrop of the discussion supra, then it leads the Court to the inevitable conclusion that if the injunction is not granted it may cause irreparable damage which may not be possibly compensated in terms of money. Though the defendants made a tall claim regarding running of schools a detailed examination of the material is not very supportive nor is there any definitive evidence, prima facie demonstrating that the defendants have indeed been running schools. That apart it is an admitted fact that the schools are run by third parties and are not under the control of the defendants. It is also an admitted fact that the defendants have been making attempts and which attempts appears to be surreptitious, post 1993 in trying to ape the marks
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 and the acronyms and have even admitted to applying for registration of a similar mark. In that view if the order of the trial Court granting injunction is not affirmed and upheld it could possibly cause, not only an erosion of the brand value of the mark registered and used by the plaintiff, but would indirectly be aiding the defendants in prima facie what appears to be a case of passing of by creating a confusion in the minds of the general public and in the trade circles.
106. After having appreciated the contentions and after having perused the documents, we are of the opinion that the documents make out a prima-facie case on behalf of the plaintiffs. The material produced by the plaintiffs prima-facie discloses the sustained efforts and expenditure by the plaintiffs to promote the mark "Manipal" and brand MAHE not only across the country but also on international shores and we find absence of similar efforts by the defendants more over the absence is glaring. Similarly,
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 prima-facie we find that the efforts of the plaintiff has been recognized in the form of rewards, awards, citations etc. by the public and authorities, which prima-facie appears to be reflective of the adulation enjoyed by the plaintiff and an even more striking feature of the material produced by the plaintiff is that, the efforts and measures to promote the mark and brand in the field of health and education, has been continuous. On the other hand, the material placed by the defendants in support of their case would demonstrate a start, stop approach and prima-facie is not demonstrative of its contention of being a continuous and concurrent user. Their contention that Manipal is a family name is belied by the material they have attempted to place before this Court by way of an additional documents. The family is described as Pais of Manipal and nowhere (they known as Manipal family) and none of the literature produce would disclose them as Manipal family. It is pertinent to note at this stage that the respondents have not placed any material to
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 demonstrates control over the administration of the schools, said to be run by them. The minimum requirement would have been to state particulars of the staff strength, students strength, the quantum of salary, the expenditure incurred and the profit or loss suffered, the amount spent on promotion etc. even though certain material like paper advertisements have been produced by the plaintiff in support of its claim of cause of action which advertisement feature. The schools claim to be run by the defendants no particulars are forthcoming from the side of the defendants. In the absence of such particulars of the side of the defendants, the Trial Court cannot be faulted for having appreciated such similar material placed before it by the plaintiff and which by themselves make out a case of balance of convenience being infavour of the plaintiff. The same claim to have been spent by the plaintiff for popularizing the mark and brand is in the region of 152 crores and such a similar or lesser or higher figure is conspicuously absent in the pleadings or
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 submissions of the defendant. This is one of the circumstances which would be a prima-facie indicator of the direction in which the Court would be required to lean. More particularly, in cases involving violation of IPR rights. It would also be a pointer towards a person who would suffer more hardship and injury if injunction is not granted. The heavy reliance of the defendants on the Manipal Public School run by the trust, has in our opinion been effectively countered by the plaintiffs and it has been prima-facie demonstrated that the 3rd defendant is merely one of the six trustees and the third defendant does not enjoy any exclusive rights or privileges in respect of the word "Manipal". Be that as it may, these findings are subject to trial and are only prima-facie findings and not a proclamation on the merits of the matter. The scope of Appellate Court has been settled by the Hon'ble Apex Court in the case of one, Wander Ltd. And Anr. Vs. Antox
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 India P. Ltd.8, wherein, in paras 13 and 14, the Hon'ble Apex Court has observed and hold as under:-
"13. On a consideration of the matter, we are afraid, the appellate bench fell into error on two important propositions. The first is a misdirection in regard to the very scope and nature of the appeals before it and the limitations on the powers of the appellate court to substitute its own discretion in an appeal preferred against a discretionary order. The second pertains to the infirmities in the ratiocination as to the quality of Antox's alleged user of the trademark on which the passing-off action is founded. We shall deal with these two separately.
14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would 8 1990 (Supp) SCC 727
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normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph.
"... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton '...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'."
The appellate judgment does not seem to defer to this principle."
107. We are in concurrence with the prima-facie findings recorded by the Trial Court on the various contentions placed by the parties and as detailed supra. The findings appear to draw strength from the material placed before the Trial Court by the parties. The findings rendered by the trial court being reasonably possible
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 inferences on the strength of the material, we are of the considered opinion that the order under appeal does not warrant any interference.
108. This Court has appreciated the material only to the extent to examine if the findings rendered are possible and if are backed by the material on record. Re- examination would reveal that prima-facie there is no material which controverts the findings rendered by the trial Court after appreciating the material on record. The appellants have not been able to demonstrate any perversity either in the appreciation or in the reasonings assigned by the Court to allow the application and grant the relief and to reject the application by the third defendant.
109. In conclusion, we prima-facie opine that the plaintiffs have indeed made out a prima-facie case warranting interference by the Courts to prevent hardship
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COMAP No. 267 of 2022C/W COMAP No. 284 of 2022 and injury that may be suffered by the plaintiffs in the event interim relief of injunction is not granted to them.
Accordingly, appeals stand dismissed. In view of the peculiar circumstances, the parties are directed to bear their own cost.
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JUDGE Sd/-
JUDGE YKL List No.: 1 Sl No.: 1