Delhi High Court
International Student Identity Card ... vs Abhishek Tiwari & Others on 27 February, 2017
Author: Vibhu Bakhru
Bench: Vibhu Bakhru
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 27.02.2017
+ CS (COMM) 113/2016
INTERNATIONAL STUDENT IDENTITY CARD
ASSOCIATION & ANOTHER ..... Plaintiffs
Versus
ABHISHEK TIWARI & OTHERS ..... Defendants
Advocates who appeared in this case:
For the Plaintiffs : Mr Hemant Singh, Mr Kunal Kher and
Mr Shashi P. Ojha.
For the Defendants : Mr Hrishikesh Baruah, Mr Pranav Jain,
Mr Kshitij Paliwal and Mr Shikhar Mittal.
CORAM
HON'BLE MR JUSTICE VIBHU BAKHRU
JUDGMENT
VIBHU BAKHRU, J IA Nos. 2169/2016 and 3865/2016
1. The plaintiffs have filed the above captioned suit, inter alia, seeking a decree of permanent injunction restraining infringement of their trademark, passing off, unfair competition, rendition of accounts, delivery up, etc. against the defendants.
2. The plaintiffs have filed I.A. No. 2169/2016 under Order XXXIX Rule 1&2 of the Code of Civil Procedure, 1908 (hereafter 'CPC') seeking an order restraining the defendants from using the trademarks "ISID", "Indian Student Identity Card" or any other trademark, which is deceptively similar to the plaintiffs' trademarks. The plaintiffs have also sought an order restraining the defendants from using the domain name CS (COMM) 113/2016 Page 1 of 27 "www.myisid.com". Defendant No.1 and 3 (hereafter collectively referred to as 'the defendants') have filed I.A. No. 3865/2016 under Order XXXIX Rule 4 CPC praying that the order dated 17.02.2016 - by virtue of which the defendants were restrained from using the mark/name/logo "ISID", the domain name "www.myisid.com" or any other mark identical/ deceptively similar to the plaintiff No. 1's mark "ISIC" - be vacated. Both the aforesaid applications were taken up and heard together.
3. Plaintiff No. 1, International Student Identity Card Association (hereafter "ISIC Association") is a limited responsibility association formed and existing under the laws of Denmark. Plaintiff No. 2, STIC Youth Travels Private Limited (hereafter "STIC"), is an Indian company and is the exclusive licensee of ISIC Association in India. STIC is authorized to represent, promote and distribute various cards of ISIC Association in India since the year 1974-75.
4. The plaintiffs as well as the defendants are engaged in the business of multipurpose identity cards. The said cards, inter alia, enable the students to access discounts on various products and services. The defendants issue cards, which are mostly co-branded with educational institutions for their respective students.
5. It is stated that ISIC Association holds rights over the trademarks, "International Student Identity Card" (hereafter 'ISIC Card'), "International Youth Travel Card" (hereafter 'IYTC Card') and "International Teacher Identity Card" (hereafter 'ITIC Card') along with copyright and design rights in the said names. It is stated that ISIC Card is distributed in over 130 countries through Licensed Authorities, Provisional CS (COMM) 113/2016 Page 2 of 27 Licensed Authorities and Appointed Offices, who issue the ISIC Cards to students through their own outlets - stores or online - and via wholesale distribution agreements with universities, financial institutions, etc.
6. It is stated in the plaint that ISIC Card was first introduced in the year 1953 "by students for students". It is averred that the ISIC Card has been endorsed by various governments, ministries of education and tourism, student organisations, etc. and also by the United Nations Educational, Scientific and Cultural Organization (UNESCO) since the year 1968.
7. The plaintiffs have placed on record a certificate by a Chartered Accountant stating that they had issued 22,140 ISIC Cards in 2012-2013; 18,838 in 2013-2014 and 23,559 in 2014-2015. The plaintiffs state that the turnover of STIC from the sale of ISIC Cards was ₹48,04,391/- in the year 2012-13 ; ₹41,73,896/- in the year 2013-14 and ₹41,18,525/- in the year 2014-2015.
8. It is averred in the plaint that owing to 60 years of continued worldwide use, the mark/logo/name "ISIC" and "International Student Identity Card" have gained global recognition and popularity and therefore, enjoy trans-border reputation. It is also stated that the said marks being highly distinctive, are exclusively identified with the plaintiffs and further that by virtue of Section 11(6), (7) & (8) of the Trademarks Act, 1999, the said marks are to be considered as well known marks.
9. The plaintiffs in paragraph 2 of the plaint have stated that ISIC Association (plaintiff No.1 herein) is the registered proprietor of the mark "ISIC" in India under registration Nos. 1732831, 1016530 and 1237372.
CS (COMM) 113/2016 Page 3 of 27However, this averment is, admittedly, incorrect as the registrations of the trademarks under registration Nos. 1016530 and 1237372 have lapsed some years ago. However, the registration in trademark under registration No. 1732831 in class 16 and 36 subsists. The said trademark is a sphere with the letters "isic" written in small case and in a slanting form. There are several other words such as "sports", "art", "music", "hostels" and "museums", written in the background. The plaintiffs describe the said trademark as a word mark with a device; however the trademark is a label (hereafter referred to as "ISIC Mark"), which includes the letters "isic" as described above.
10. It is stated by the plaintiffs that defendant Nos. 1 and 2 were employees of STIC, who were appointed by way of appointment letters dated 18.03.2014 and 21.05.2014 respectively. While defendant No. 1 was appointed as "General Manager - ISIC India", defendant no. 2 was appointed as "Manager Strategic Alliances - ISIC India". The plaintiffs claim that it has come to their knowledge recently that defendant No. 1 has established defendant No. 3 company, that is, Indian Student Identity Solutions Private Limited (hereafter "ISISPL") for competing in the same business as that of the plaintiffs and has adopted the trademark "ISID" (hereafter "ISID Mark") and "Indian Student Identity Card". It is stated that defendant No. 2 has also joined ISISPL as a Director after resigning from STIC on 16.07.2015.
11. It is further submitted by the plaintiffs that the domain name adopted by the defendants, that is, "www.myisid.com" is also identical/deceptively similar to the domain names "www.myisic.com" and "www.myisic.co.uk", already adopted by the plaintiffs since the year 2000.
CS (COMM) 113/2016 Page 4 of 2712. The defendants in their application filed under Order XXXIX Rule 4, CPC have prayed that the order dated 17.02.2016 be vacated. It is averred by the defendants that plaintiffs have deliberately suppressed material facts from this Court. It is stated that various e-mail exchanges between defendant No.1 and Mr Matt East of ISIC Association from 01.07.2015 to 06.08.2015 - twenty four in number - have been suppressed by the plaintiffs and only the e-mail dated 01.07.2015 has been placed on record. It is also stated that the present suit is hit by the principles of acquiescence and laches.
13. The defendants also state that the mark adopted by the defendants is completely different from that of the plaintiffs, inasmuch as the colour scheme, the words and phonetic expression of both the marks are completely different. It is further stated that the marks are even visually different. It is asserted that the adoption of the "ISID Mark" by defendants is honest and independent.
Submissions
14. Mr Hemant Singh, learned counsel appearing for the plaintiffs referred to various averments made in the plaint and contended that the ISIC Mark is a well-known trademark. He contended that the plaintiffs' ISIC Card has been associated with various multinational universities and is globally recognised. He earnestly contended that the defendants had adopted the ISID Mark with the object of encashing the goodwill associated with the ISIC Mark and the ISIC Card. He referred to the e-mail dated 01.07.2015 sent by defendant No.1 wherein defendant no.1 had admitted that he had floated a similar card. Mr Singh submitted that the said e-mail amounted to a clear admission that the business carried by CS (COMM) 113/2016 Page 5 of 27 the defendants was similar to that of the plaintiffs and the ISID Card was similar to the ISIC Card. He submitted that the ISIC Mark was a registered trademark and the ISID Mark was similar to that of the plaintiffs' mark and therefore the defendants were liable to be injuncted from using the same.
15. He also emphasised that the domain name "www.myisid.com" used by the defendants is also deceptively similar to the domain name used by the plaintiffs - "www.myisic.com".
16. He relied on the decision of the Supreme Court in K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., Madras & Anr.: 1969 (2) SCC 131 in support of his contention that if there is a striking phonetic similarity between the two marks and there is a real danger of confusion then an injunction to restrain the use of the deceptively similar mark would be issued. He relied on the decision of the Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.: (2002) 2 SCC 147 in support of his contention that the question as to whether a mark is deceptively similar to another mark would have to be viewed from the view of a man of average intelligence and imperfect recollection. He submitted that in the present case, the defendants had only changed one letter in the ISIC Mark (replaced 'C' with 'D') and, therefore, there was likelihood of confusion. He also relied upon the decision of the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta: AIR 1963 SC 449 in support of the above contention.
17. Mr Singh referred to the decision of the Supreme Court in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.: (2004) 6 SCC 145 in support of his contention that domain names were not merely website addresses but CS (COMM) 113/2016 Page 6 of 27 were also business identifiers and served to identify the business itself. He submitted that thus the defendants ought to be restrained from to using the similar domain name.
18. Mr Singh referred to the decision of the Supreme Court in Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and Others: (2006) 8 SCC 726 and the decision of this Court in United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. & Ors.: 2012 (50) PTC 433 (Del.) (DB) and on the strength of the said decisions contended that even though the plaintiffs' trademark was a label mark, the word "ISIC" was an essential feature of the mark and the defendants ought to be injuncted from using the ISID Mark, which was deceptively similar to that essential feature.
19. Mr Baruah, learned counsel appearing for the defendants countered the submissions advanced by Mr Singh and made submissions on broadly four fronts.
20. First, he submitted that the ex-parte injunction order dated 17.02.2016 was secured by the plaintiffs by suppressing material facts. He drew the attention of this Court to the exchange of e-mails between the parties to establish that the plaintiffs were aware of the use of the ISID Mark as early as in July, 2015 and further had negotiated with defendants for entering into a business association in respect of their portfolio of cards. He contended that the e-mails clearly established that the plaintiffs were aware of the defendants' use of the ISID Mark and had also accepted that both cards could co-exist simultaneously. He submitted that these e-
CS (COMM) 113/2016 Page 7 of 27mails had been suppressed by the plaintiffs for securing the injunction order and the same ought to be vacated on this ground alone.
21. Second, he submitted that the plaintiffs had acquiesced in the defendants' use of the ISID Mark, logo as well as the domain name since the plaintiffs were aware of the same and had also explored the possibilities of a business collaboration. He emphasised that the plaintiffs did not at any point object to the defendants' use of the ISID Mark; on the contrary, the plaintiffs had accepted its use by proposing to enter into a business collaboration, where defendants would be granted the licence for certain territories in India. He submitted that it was implicit in the e-mails exchanged that the plaintiffs had accepted and acquiesced in the defendants' use of the trademark in question.
22. Third, it was contended that there was no violation of the ISIC Mark. He contended that ISIC Mark was a label mark whereas the ISID Mark was a word mark. He submitted that the marks were also not phonetically similar since ISIC Mark was pronounced as 'I-Sec' and ISID Mark was referred to as I.S.I.D. He also submitted that the ISIC Mark was a green coloured sphere and included the letters ISIC written in a distinctive font in lower case, with round dots on the two I's. This was completely different to the ISID Mark. He also drew the attention of this court to the photographs of the various cards marketed by the defendants and pointed out that those cards bore no similarity with the cards marketed by the plaintiffs. He also submitted that there was no possibility of deception since the defendants sold their cards in association with various institutions, which were fully aware as to the product being purchased. He CS (COMM) 113/2016 Page 8 of 27 referred to various news paper reports to indicate that the defendants had been extensively marketing their product and had received due recognition.
23. He submitted that the letters "I" and "S" in the ISID Mark stood for "Indian" and "Student" and the letters "ID" was a common short form for Identity Cards. He submitted that the plaintiffs could not claim monopoly over the commonly used words such as ID or claim exclusive right to use initials of the words, "International" and "Student".
24. Lastly, Mr Baruah submitted that the plaintiffs' domain name "myisic" was not the domain name used by the plaintiffs' across the world and the ISIC Association used only the initials "isic" except in India and in United Kingdom, where the plaintiffs used the domain names "www.myisic.com" and "www.myisic.co.uk". He stated that this was so because the domain names "www.isic.com" and "www.isic.co.uk" were not available. He submitted that the use of 'my' as a prefix was one of the most common prefix used and the plaintiffs could not claim a monopoly over the said prefix.
Reasoning and Conclusion
25. At the outset, it is necessary to observe that the plaintiffs had filed the present suit claiming that ISIC Association was the registered owner of the trademark "ISIC" which was registered under the registration No. 1016530 in class 16; registration No.1237372 in class 36; and, registration No.1732831 under class 16 and 36. Admittedly, the said averment is incorrect as the two trademarks registered under registration Nos.1016530 and 1237372 had lapsed on 13.06.2011 and 16.09.2013 respectively and were not renewed thereafter. In the replication, the said facts have been CS (COMM) 113/2016 Page 9 of 27 admitted. Thus, the ISIC Association is the registered proprietor of the ISIC Mark bearing the registration No.1732831. Notwithstanding the controversy, whether ISID Mark is similar to the ISIC Mark, the fact that the plaintiffs have approached this Court by making a palpably incorrect statement would disentitle the plaintiffs for any discretionary relief.
26. There is also much merit in the contention that plaintiffs have suppressed the e-mails exchanged between the parties. It is seen that the plaintiffs have relied upon the e-mail dated 01.07.2015 sent by defendant No.1. However, the plaintiffs have suppressed the e-mails that followed the e-mail of 01.07.2015. Mr Singh contended that those e-mails were not relevant. In order to address the issue whether the said e-mails are relevant or not, it is necessary to briefly refer to some of the e-mails.
27. On 01.07.2015 defendant No.1 sent an e-mail to Mr Matt East, Chairman of the ISIC Association (plaintiff No.1) informing him that he had floated a similar card in India by the name of Indian Student Identity Card (ISID); this e-mail is relied upon by the plaintiffs to canvas that the defendants had admitted that the ISID Card was similar to ISIC Card and is also quoted in the plaint. The said e-mail reads as under:-
"Hi Matt, Greeting from India!. Hope this email finds you in good health! I am sure you are aware, post ISIC, and after a lot of soul searching, I floated a similar card in India by the name of Indian Student Identity Card (ISID). We launched ourself in 2 cities and 8 cities (via partners) and I am happy to share that after 8 month Into the business we stand at over 60,000 cards with over 20 institutions signed up. We are now in talks with various VC's to raise Series A funding to CS (COMM) 113/2016 Page 10 of 27 take ISID to the next level and make it the largest student card In India.
Having said that, my trust in ISIC brand still stands and I personally believe that ISIC can do much better in India. The Indian market is huge with over 450 million students and can easily accommodate 2 cards in the market. I would like to express my interest in partnering with ISIC Global. It would be great if we can get on a Skype call at your convenience and if you deem fit, keeping in mind your relation with STIC travels and its management. Hope to hear back from you! Cheers! Best Regards, Abhishek"
28. Mr East of ISIC Association responded to the aforesaid e-mail on 02.07.2015 as under:-
"Hi Abhishek, Nice to hear from you.
I understand from my colleagues that you have been active and I am also happy to have a call with you. Please be so kind as to propose a few time slots over the coming couple of days and/ or alternatively next week and I will confirm back to you a time and date. Could you please also send me some more details of your project and how you would envision working with ISIC prior to our call?
Thanks and best regards Matt"CS (COMM) 113/2016 Page 11 of 27
29. Defendant No.1 responded to the aforesaid e-mail confirming that he would send a brief update on what ISID had been doing in India and with a detailed plan of action for ISIC. Admittedly, defendant No.1 sent an e- mail on 07.07.2015 attaching therewith a power point presentation. The power point presentation contained various slides relating to the business of the defendants under the ISID Mark. The first slide contained the ISID Mark and the name of defendant No.3. The second slide indicated that India had a large student population and provided a large market. The said slide also depicted the ISID Card. The third slide was an introduction to the ISID Card. The fourth slide also indicated the ISID Card and its potential usage/applications. All the other slides also related to the business of defendant No.3 and, inter alia, indicated the marketing strategy for the ISID Card. The last two slides related to the ISIC Card and indicated that defendants proposed to market the said card to students travelling abroad. The said slide specifically indicated that the focus would be inter alia on "UPSELLING additional Card to ALL ISID students for students travelling abroad - leisure/study". The last slide indicated that the defendants sought "An Independent Exclusive License to issues ISIC License".
30. On 21.07.2015, Mr Matt East of ISIC Association sent an e-mail which indicated that Mr East was expecting a proposal of co-operation regarding volumes and commitment from defendant No.1. On 22.07.2015, defendant No.1 sent another e-mail which briefly indicated the business projections for the ISIC Cards.
31. On 27.07.2015, Mr East sent an e-mail briefly indicating as to how the working relationship between ISID and ISIC would develop. The said e-mails indicate that ISIC Association was willing to give, in the first CS (COMM) 113/2016 Page 12 of 27 instance, exclusivity to the defendants only in one or two geographical locations. It was suggested that said location be Dehradun and one other place. The said e-mail mentioned that subsequently the exclusivity could be expanded to encompass more cities / regions depending on the successful implementation in the initial locations. The e-mails also included some suggestion as to the pricing of the ISIC Card (license). In response to the above, defendant No.1 sent an e-mail on 29.07.2015 indicating that defendants were not interested in being an ISIC licensee only in respect of certain region or territory but wanted the ISIC license for entire India without exception. It is important to mention that in the said mail, defendant No.1 also stated that if defendants were to take the product, they would be required to hire a separate team and allocate additional resources. Defendant No.1 also reiterated that ISID would be more than happy to partner with ISIC Association.
32. Apparently, ISIC Association was not agreeable to give an exclusive license to the defendants. This was communicated to defendant No.1 by Mr Matt East by an e-mail dated 04.08.2015, which reads as under:-
"Hi Abhishek, Thank you for your email. Regrettably, what you are asking for is not possible for two main reasons:
• Ethically, it is not our style to drop a partner when there are difficulties and/or when a new potentially better partner appears;
• The figures you have quoted are far from India's
potential for the ISIC;
Two entities working independently from each other - In accordance to a territory principle and with sound long term contracts may not be able to work that well in a small CS (COMM) 113/2016 Page 13 of 27 country like Ireland or the Czech Republic but, In my view, they could operate perfectly well in an enormous country like India.
Please let me know by return whether you want to reconsider our proposal or whether we should end our correspondence here. In the latter case, thank you very much for your interest in ISIC and I wish you success, Best regards Matt"
33. A plain reading of the e-mails clearly indicate that the defendants had candidly shared the details of their business, their business model and the progress made by them in their endeavours. At the material time, the plaintiffs did not raise any objections as to the use of the ISID Mark. On the contrary, the e-mails indicate that ISIC Association was willing to grant exclusive license to the defendant No.3 albeit for limited locations.
34. It is clear that at that stage, ISIC Association had not expressed any apprehension that ISID Card would be confused with the ISIC card. The chairman of ISIC Association (Mr Matt East) had ended the e-mail dated 04.08.2015 by stating: "I wish you success". Thus, ISIC Association had not only not objected to the defendants carrying on their business but also wished them success.
35. The said e-mails have a vital bearing on the controversy in issue as the e-mails establish that the plaintiffs were not only aware of the website, the logo and the ISID Mark being used by the defendants but had not objected to the same. More importantly, the said e-mails prima facie establish that ISIC Association was agreeable to join hands with the defendants and grant license to market the ISIC Card in respect of a few CS (COMM) 113/2016 Page 14 of 27 locations. It is relevant to note that under the proposed collaboration, there was no condition for the defendants to discontinue carrying on the business in respect of ISID Cards under the ISID Mark. Apparently, the negotiations did not fructify as defendants wanted an exclusive license while the plaintiffs were not willing to accept defendant No.3 as their sole licensee in India. Indisputably, the said e-mails would have a vital bearing on the question whether the defendants' card (ISID Card) could co-exist with that of the plaintiffs, yet the plaintiffs have chosen to selectively produce only one e-mail and suppress the rest.
36. This Court is of the view that the plaintiffs have wilfully suppressed the aforesaid e-mails and this disentitles them to any discretionary relief. It is difficult to accept that this court would have passed an ex parte ad interim order if the aforesaid e-mails were disclosed by the plaintiffs.
37. There is yet another e-mail that has been suppressed by the plaintiffs; on 29.01.2016, defendant No.1 sent an e-mail to Mr Matt East of ISIC Association, which reads as under:-
"Hi Matt, Firstly, Wishing you a very Happy New Year! It was unfortunate last time that we could not come to consensus. However, I still firmly believe you and Tony and complete team of GTS Alive can be bring great value to crack the Indian market.
I write to you to explore a possibility of GTS Alive coming on board ISID as a strategic partner. For next level of growth, we are hitting the ground to raise our seed round of ~$300,000- ~$400,000. You would be aware that India now has a very robust start-up ecosystem and lot of Investment are being made in disruptive Ideas. Even though, we will raise the said amount in 6-8 CS (COMM) 113/2016 Page 15 of 27 months- as money is a commodity. I believe GTS coming on board would add great value and we could together become future leaders in the thriving Indian education market.
Do let me know your thoughts.
Cheers!
--
Abhishek Tiwari Business Head, ISID"
38. It is apparent from the above that the plaintiffs were aware that the business of defendant No.3 had increased and it was now proceeding to raise funds for further expansion. Apparently, no response to the said e- mail was sent by ISIC Association and instead the plaintiffs proceeded to file the present suit. It is also apparent from the aforesaid e-mail that the defendants did not perceive the use of ISID Mark or their business as infringing intellectual property rights of ISIC Association and felt comfortable in asking the ISIC Association to become strategic partner in their business. The plaintiffs have not disclosed that they were aware that defendants were now embarking on further expansion and were intending to raise funds. Although the plaintiffs had no grievance or objection to the defendants using the ISID Mark and as indicated above, had also explored the possibility of having an alliance, it appears that the plaintiffs were now bothered with the success of the defendants and their expansion plans and, therefore, proceeded to file the present suit. It was necessary for the plaintiffs to disclose that they were aware that the defendants were in the process of raising funds for their business. This was so because the ex parte ad interim injunction as sought would, probably, disrupt the same.
CS (COMM) 113/2016 Page 16 of 2739. The next issue to be addressed is whether there is any acquiescence on the part of the plaintiffs of the defendants' use of the ISID Mark.
40. As indicated above, the plaintiffs have always been aware of the progress made by defendants in their business and had not raised any objection to the same. Acquiescence is one of the defences available in a suit for infringement of trademark. In Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd.: (1994) 2 SCC 448, the Supreme Court had explained the defence of acquiescence as under:-
"Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches."
41. In Power Control Appliances (supra), the Supreme Court also referred to the following passage from the decision in the case of Electrolux LD. v. Electrix LD.: (1954) 71 RPC 23:
"Upon this matter, a great deal of learning has been referred to, and we have also had our attention drawn to a number of cases. The latter include the well-known statement in Willmott v. Barber by Fry, J. (as he then was) at p. 105. He said this:"It has been said that the acquiescence which' will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would 'make it fraudulent for him to set up those rights'. Let me pause here to say that I do not understand that, by the word 'fraudulent', the learned Judge was thereby indicating conduct which would amount to a common law tort of deceit. 'What, then, are the elements or requisites necessary to constitute fraud of that description?' In the first place 'the plaintiff must have made a mistake as to his legal rights'.CS (COMM) 113/2016 Page 17 of 27
Secondly, the plaintiff must 'have expended some money or must have done some act (not necessarily upon the defendant's land) on the faith of his mistaken belief'. Thirdly, the defendant, the possessor of 'the legal right, must know of the existence of his own right which is inconsistent with 'the legal right, must know of the existence of his own right which is inconsistent with' the right claimed by the plaintiff. If he does not know of it he is in the same position 'as the plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge' of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know 'of the plaintiff's mistaken belief of his rights. If he does not, there is nothing which' calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal 'right, must have encouraged the plaintiff in his expenditure of money or in the "other acts which he has done, either directly or by abstaining from asserting his legal right'. In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the positions of plaintiff and defendant as they are usually met with are there transposed, and that one of the parties who is there spoken of as the plaintiff corresponds with the present case with the Defendants, and vice versa."
42. It is plainly clear in the facts of the present case that the plaintiffs were fully aware of the defendants' use of the ISID Mark but did not raise any objection for use of such mark. On the contrary, ISIC Association entered into negotiations for a strategic alliance to further licence part of their business to the defendants. The fact that ISIC Association was agreeable to associate the defendants with its business clearly indicates that it had no reservation as to the defendants carrying on their business under the ISID Mark. If ISIC Association had any reservation as to the use of the ISID Mark, it is obvious that the same would have been expressed at the threshold, before suggesting any further association.
CS (COMM) 113/2016 Page 18 of 2743. Prima facie, this Court is also unable to accept that the use of ISID Mark by the defendants is dishonest or deceitful. The business model of the defendants is materially different. The defendants have sought to increase their business by co-branding ISID Card with various institutions and their focus is to make the card functional in the context of that institution such as for accessing the institution's library. Facially, there is little similarity between the ISID Card and the ISIC Card. Further, the conduct of the defendants also indicates that they had made no efforts to camouflage or keep their business secret from the plaintiffs; on the contrary they had candidly disclosed their business model, the progress made by them as well as their focus areas.
44. The defendants have also explained the genesis of the trademark ISID. Indisputably, the letters "ID" are commonly used as synonym for 'Identity Card'. The defendants' business is India Centric and their focus is Indian students. This explains the initials Indian Student.
45. The next issue to be addressed is whether the "ISID Mark" prima facie infringes the "ISIC Mark". Whereas "ISIC Mark" is a label mark, "ISID Mark" is a word mark. The said marks are reproduced below:-
Plaintiffs' ISIC Mark CS (COMM) 113/2016 Page 19 of 27 Defendants' ISID Mark
46. It is apparent from the above that visually the two trademarks are not similar. It is also well settled that registration of a label does not ipso jure confer any exclusive right on any part of the trademark. This is clear on a plain reading of Section 17 of the Trade Marks Act, 1999 which is set out below:
"17. Effect of registration of parts of a mark.- (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark-
(a) contains any part-
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, CS (COMM) 113/2016 Page 20 of 27 the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered."
47. In Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.: (1955) 2 SCR 252, the Supreme Court had observed that:-
"14. It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in Pinto v. Badman:
"The truth is that the label does not consist of each particular part of it, but consists of the combination of them all".
Observations to the same effect will be found also in In re Appollinaris Company's Trade Marks, In re Smokeless Powder Co. (supra), In re Clement and Cie and In re Albert Baker & Company (supra) and finally in the Tudor case referred to above which was decided by Sargant, J. This circumstance, however, does not necessarily mean that in such a case disclaimer will always be unnecessary. It is significant that one of the facts which give rise to the jurisdiction of the tribunal to impose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the mark as a whole does not confer any statutory right with respect to that part.
15. As we have already stated the possibility of the proprietor attempting to expand the operation of his trade mark cannot be ignored or overlooked. It is a thing which must be taken into consideration by the tribunal-be it the Registrar or the Court-in deciding upon the way it should CS (COMM) 113/2016 Page 21 of 27 exercise the discretionary power conferred on it. Reference has been made by the High Court to the observations of Eve, J. in the A.B.C. case referred to above and the question has been posed as to whether any good cause had been shown for the necessity of disclaimer in this case."
48. In Ramdev Food Products Pvt. Ltd. (supra), the Supreme Court had distinguished the aforesaid decision in the context where deception was alleged in respect of the prominent feature of a trademark. Thus, in cases where a part of a trademark is both prominent and unique, certain exclusivity would be conferred even in respect of that part, on registration of the trademark. This is so because any trademark, which is deceptively similar to a prominent and a unique part of the registered trademark, would itself carry with it the propensity to deceive and mislead people into believing an association with the registered trademark.
49. In the present case, the letters "ISIC" written in a particular font are undoubtedly one of the prominent features of the ISIC Mark; however, the use of such letters is common. ISIC is an abbreviation formed by the initial letters of the words, International Student Identity Card. The words, which the initials denote, are also of common usage. It may be possible for the plaintiffs to claim that the font and the manner in which the acronym ISIC is written, is distinctive; but then for any other mark to be held as infringing the acronym ISIC, the same would have to bear some similarity in the manner in which the word ISIC is depicted or written. However what the plaintiffs claim is the exclusivity in the use of the acronym ISIC, which is but an abbreviation of words that are common to the trade. The business being one of identity cards for students, it is difficult to imagine describing the business or the product without using the words Student and CS (COMM) 113/2016 Page 22 of 27 Identity Card. The letters ID are descriptive of the product - identity cards. Prima facie, the plaintiffs cannot by virtue of registration of the ISIC Mark claim monopoly in the use of the initial letters of the words that are descriptive of the business.
50. The plaintiffs' contention that three letters in ISIC and ISID are similar and common and, therefore, the two marks are deceptively similar is seeking to approach the issue in a very simplistic manner without any reference to the attendant circumstances. First of all, the question whether a mark is deceptively similar to the registered trademark would have to be decided on the anvil whether on account of similarity in the marks, there is any likelihood of confusion or deception. The test of such deception or confusion is similar to that applied in the case for passing off actions. In Mahendra & Mahendra Paper Mills Ltd. (supra), the Supreme Court had explained that the question whether there is any likelihood or deception or confusion must be considered in the context of various factors including nature of the market itself, the class of customers, the extent of reputation, the trade channels, the existence of any connection in course of trade, and others.
51. Now coming to the facts in this case, it is at once clear that the ISID Mark is materially different from the ISIC Mark and also materially different from the acronym ISIC, which forms a part of the ISIC Mark. Whereas ISIC is enclosed in a spherical circle coloured in Pantone Green, the ISID Mark is not enclosed in any circle and is written in black. Alphabets "I" in ISIC are represented with a distinct dot, however, in ISID, the upper section of alphabet "I" appearing after alphabet "S", is represented in the colours of the Indian tricolour.
CS (COMM) 113/2016 Page 23 of 2752. Indisputably, the question whether there is any likelihood of confusion or deception has to be viewed from a standpoint of a man of average intelligence and imperfect recollection [See: Corn Products Refining Co. v. Shangrila Food Products Ltd.: 1960 (1) SCR 968, also Satyam Infoway Ltd. (supra) and Mahindra & Mahindra Paper Mills Ltd. (supra)]. Prima facie, this Court is unable to accept that an average man with imperfect memory would be deceived to accept ISID Mark as related to the plaintiffs. This is so keeping in view the distinctive manner in which ISIC and ISID are written. Further the products - ISIC Card and ISID Card are also different and do not share any distinctive common feature.
53. The defendants have also produced a recording which indicates that the plaintiffs' card is referred to as I-SEC and phonetically ISID is pronounced by the pronouncing the letters I, S, I and D. Thus, there is also no phonetic similarly between the two acronyms.
54. Secondly, it is also essential to bear in mind that both ISIC and ISID are acronyms and as discussed earlier, the letters 'I' and 'S' stand for Identity and Students, which are common to the description of the business. ID is also commonly used short form for "identity card". Thus, there is no uniqueness or distinctiveness in the abbreviation forming the generic description of the product.
55. It is also not disputed that there are three multipurpose student cards in India. In addition to the plaintiffs' ISIC Card and defendants' ISID Card, there is yet another student card by the name of ISEC card, which stands for International Student Exchange Card. The acronym of this card CS (COMM) 113/2016 Page 24 of 27 also has only one letter different from ISIC - the third letter I is replaced with letter E.
56. Thirdly, one of the most important factor to be considered is the market for the products. As noted above, the product in question is an identity card to establish a student's identity and also grants the bearer (students) access to various discounts and facilities. In case of ISID Card, the defendants' mainly co-brand the Card with an institution; the particular institution accepts the services of the defendants and issues ISID Cards as identity cards for its students. The identity cards can be used for various purposes such as a library card or as a pass to certain areas in the institution such as science laboratories, hostel rooms, etc. The target market for the multipurpose student cards would be the institutions and students. Plainly, an institution entering into an agreement with the defendants would do the necessary due diligence before co-branding an identity card of their students. Likelihood of an institution being deceived into believing the defendants to be associated with plaintiffs is remote and practically non-existent.
57. The multipurpose student cards are also marketed as a life style product. It is difficult to accept how a student community, which is usually abreast with the latest information, could be deceived particularly in relation to a product that is sold as a student's life style product.
58. Prima facie, the plaintiffs also did not perceive the ISID Mark to be deceptively similar to the ISIC Mark, as they never raised any protest or expressed any reservation prior to filing the present action. As stated hereinbefore, plaintiff No.1 was willing to associate with the defendants in CS (COMM) 113/2016 Page 25 of 27 an arrangement where the defendants would market both the products of the plaintiffs as well as the ISID card. Clearly, if the plaintiffs' viewed that ISID Mark or ISID Cards would be mistaken to be ISIC Cards, the plaintiffs would have objected at the first instance or at least expressed reservation in some form or the other. The plaintiffs have also produced photographs of the two products - the ISID Card and card issued by ISIC. Indisputably, the cards are completely different and hardly have any common features. There is also no allegation that the two products look deceptively similar.
59. Although the plaintiffs have alleged that the defendants had breached their confidentiality agreement and have used such information, the same has 'prima facie' has not been established and in fairness, the learned counsel for the plaintiffs also did not seriously pursue with the said line of arguments.
60. The plaintiffs' grievance regarding the defendants' use of the domain name "myisid.com" also may not be sustainable, considering that the plaintiffs' domain name is "www.isic.com". It is only in two countries where the plaintiffs use the prefix 'my' to their domain name - in United Kingdom where the website is "www.myisic.co.uk" and in India where the website is "www.myisic.com". The plaintiffs have adopted the domain name "myisic" in the said two countries since the domain name 'isic.com' and 'isic.co.uk' were not available and had been adopted by another user. Secondly, the defendants have prima facie established that the use of the word 'my' as a prefix in a domain name is one of the most common pretext used.
CS (COMM) 113/2016 Page 26 of 2761. In this case, the pre text 'my' has been used as both the domain names, ISIC and ISID, were not available and had already been adopted by some other persons.
62. In the circumstances, this Court is prima facie unable to accept that the plaintiffs have established a case for interim injunction.
63. This Court has held that that the plaintiffs are not entitled to interim orders; nonetheless, since it is admitted that the defendants have been using "my" as a pretext only because the domain name ISID.com is not available, there can be no objection to changing the domain name by using any other pretext, which is not similar to the pretext used by the plaintiffs. This would allay any apprehension that customer may accidently access, the defendants' website, while attempting to access the website of the plaintiffs. Accordingly, the defendants are directed to adopt another pretext instead of 'my' to obviate any possibility of the customers accidentally accessing the defendants' website instead of the plaintiffs'.
64. In view of the above, the ad interim order dated 17.02.2016 is vacated. The parties are left to bear their own costs. The applications are disposed of.
VIBHU BAKHRU, J FEBRUARY 27, 2017 RK/MK CS (COMM) 113/2016 Page 27 of 27