Delhi District Court
M/S Global Avenue vs Mrs. Anita Mahajan on 14 July, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL), DELHI
TM No.06/08/07
Unique Case ID No. 02401C0754432007
1. M/s Global Avenue,
685, Gaushala Road,
Near Vishvakarma Dwar,
Najafgarh, Delhi-110043
Through its partner Shri Atul Chandra Dubey
2. Shri Atul Chandra Dubey
S/o Shri Y. N. Dubey,
52, Ram Vihar,
New Delhi ..........Plaintiffs
Versus
Mrs. Anita Mahajan
W/o Shri Virender Kumar Mahajan,
Plot No. 7 & 8, M-Block,
Main Raja Puri Road, Opposite Sector-4,
Near Parichay Show Room,
Dwarka, New Delhi. ..........Defendant
Date of Institution of Suit : 06.08.2007
Date of Reserving Judgment : 07.07.2010
Date of Pronouncement : 14.07.2010
Suit No.06/08/07 1 of 41
JUDGEMENT
1. This is a suit for permanent and mandatory injunctions, infringement of trade mark and copyright, passing off, rendition of accounts under the provisions of the Trade Marks Act, 1999 and also for a money decree of Rs.3,05,000/- (Rupees three lacs five thousand only) towards compensation/damages for breach of contract alongwith cost of the suit filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff no.1 is a registered partnership firm duly registered with the Registrar of Firms, Delhi and Shri Atul Chandra Dubey who is also the plaintiff no.2 being one of the registered partners of the plaintiff firm is well conversant with the facts and circumstances of the case and is also legally competent to sign, verify the pleadings and also to institute the suit on behalf of the plaintiff firm and the suit is being filed with the consent of all other partners who have collectively decided to do so. Since 1st September, 2004, the plaintiff firm is engaged in imparting technical training and education and has devised various Degree/Diploma courses of its own keeping in view the prevalent standards in this line and needs of the students community. The plaintiff is presently running its education Suit No.06/08/07 2 of 41 centres in Delhi as well as in other States of India of its own and also through its franchisees with whom written agreements are executed and these education centres are being run under the name and style of "GURU NANAK DEV POLYTECHNIC" which is the trade name of the plaintiff. The plaintiff firm is associated GURU NANAK DEV VIDYA PEETH, a registered society with the Registrar of Societies, Delhi on 14.02.2006 and some of the office bearers of the Society are also the partners of the plaintiff firm. The trade name "GURU NANAK DEV POLYTECHNIC" was first adopted and used by Shri Atul Chandra Dubey, plaintiff no. 2, a partner of the plaintiff firm who got this trade name duly registered with the Sub-Registrar, Delhi on 14.06.2006 and through the said registered documents, plaintiff no.2 had claimed that he had been using the above trade name since 1st September, 2004. The plaintiff as such adopted the said trade name and has been functioning under the said trade name of "GURU NANAK DEV POLYTECHNIC" from the date of its inception/formation as a partnership firm. This name is being used by the plaintiff for all its education centres, irrespective of the fact that they are being run by the firm directly and or through any other franchisee of the plaintiff and that this trade name has earned fame, reputation and goodwill over the period Suit No.06/08/07 3 of 41 of time in the line of education,technical training and also for conducting technical and other job oriented courses. The plaintiff firm has also applied for the registration of the above trade name and logo with the Registrar of Trade Marks which application has been accepted and the matter of registration is in progress.
3. It is further stated in the plaint that the defendant had entered into a Franchise Agreement with the plaintiff firm on 01.06.2005 and she was authorised to run an education centre as a franchisee of the plaintiff in terms of the said agreement under the name and style of "GURU NANAK DEV POLYTECHNIC" from the agreed premises situated at Plot No. 7& 8, M-Block, Main Raja Puri Road, Opposite Sector-4, near Parichay Show Room, Dwarka, New Delhi and the said agreement was valid for a period of two years ending on 31.05.2007. In gross violation of the terms of the above agreement, the defendant started running her own institute under the name and style of "Active Institute of Management"
from the same premises. As per the terms of the agreement, the defendant was not authorised to run any other institution directly or indirectly from the same premises from where the centre of "GURU NANAK DEV POLYTECHNIC" was Suit No.06/08/07 4 of 41 running. The defendant had involved herself in this illegal and unauthorised activity with a view to instigate various other Franchisees of the plaintiff so that they may also join her in her unauthorised and illegal activities to run a parallel institute under the name and style of "Sri Guru Nanak Dev Polytechnic"
and/or "Shree Guru Nanak Dev Polytechnic" which resembling name was intentionally created by her in gross violation of the Franchise Agreement. The defendant started passing off the trade name of the plaintiff in order to create deception and confuse the student community and the public at large so that they may think that the institute of the defendant was in fact an institute of the plaintiff. The other franchisees of the plaintiff, however, did not join hands with the defendant. It is also stated in the plaint that the defendant being a franchisee of the plaintiff and had clearly known and understood and was also very well aware of the fact that the Trade Name "GURU NANAK DEV POLYTECHNIC" was the "intellectual property" of the plaintiff and that the defendant had no right to use the said name or any other similar, identical and or any other resembling name of the same by prefixing or suffixing any other words in the said trade name of the plaintiff. Under the aforesaid facts and circumstances and also keeping in view the various other defaults committed by the plaintiff in Suit No.06/08/07 5 of 41 payments of various periodical charges and the acts of violations of the terms and conditions of the Franchise Agreement, the plaintiff terminated the said agreement on 28.04.2007 through a written communication. A legal notice dated 14.05.2007 was also issued to the defendant wherein she was called upon to cease and desist from using the trade name and logo of the plaintiff by affixing and/or suffixing any other word and/or by making any other material alteration in the logo of the plaintiff and a public notice dated 20.05.2007 was also published in the Rashtriya Sahara with a view to apprise the pubic at large in general and student community in particular notifying that the defendant was no longer associated with the plaintiff firm and that her franchise agreement has also been terminated and that she has no legal right or any authority to represent the plaintiff in any manner whatsoever. Inspite of aforesaid legal notice and the public notice, the defendant has not bothered to stop the misuse and or illegal use of the Brand/Trade name of the plaintiff and has started and is still running an education centre under the name of "SHREE GURU NANAK DEV POLYTECHNIC" by prefixing the word "SHREE" before the trade name of the plaintiff and she is also using the logo of the plaintiff with minor alterations which resembles the logo of the plaintiff and that she has been passing Suit No.06/08/07 6 of 41 off the trade name of the plaintiff for her own personal gain unauthorised and illegally in the market. The defendant is in fact deceiving the student community with her illegal acts and is also causing financial loss to the plaintiff and the defendant is doing all this fraudulently and dishonestly with a view to grab the established business reputation, name, fame and goodwill earned by the plaintiff over the years. It is stated that the plaintiff has learnt that the defendant is presently running an education centre under the name and style of "SHREE GURU NANAK DEV POLYTECHNIC" by pre-fixing the word SHREE in the trade name of the plaintiff and by using the logo of the plaintiff after minor alterations in the same from the aforesaid premises and that the defendant is also planning to open other education centres in the same name somewhere in Delhi shortly. It is prayed that a decree for permanent injunction in favour of the plaintiff and against the defendant, her partners, associates, agents, servants, employees and representatives thereby restraining them permanently from running any institute, education centre anywhere in India including the one, being presently being run by her under the name of "SHREE GURU NANAK DEV POLYTECHNIC"
from the abovenoted address and or to cause infringement of the trade mark/trade name of the plaintiff, a decree of Suit No.06/08/07 7 of 41 permanent injunction in favour of the plaintiff and against the defendant, her partners, associates, agents, servants, employees and representatives thereby restraining them permanently from infringing the copyrights of the plaintiff in respect of the logo, printed study material, prospectus etc. with or without material alteration therein, a decree of permanent injunction in favour of the plaintiff and against the defendant thereby restraining her from offering various courses, training sessions, on the pattern and on the basis of the course contents adopted and designed by the plaintiff directly or indirectly and also from advertising through newspapers, pamphlets, TV Cables etc. the trade name and logo of the plaintiff i.e. "GURU NANAK DEV POLYTECHNIC" in its original shape and or by prefixing or suffixing any other words particularly the word "SRI" and or "SHREE"and or from adopting any other resembling, identical, and or deceptively similar name thereby passing off the name of the plaintiff, a decree of mandatory injunction in favour of the plaintiff and against the defendant, her partners, associates, agents, officers, servants and representatives thereby ordering/directing them to deliver up to the plaintiff all the incriminating printed stationery including receipt books, prospectuses, study material, advertisement material, name plates, sign boards and all other books and papers etc. Suit No.06/08/07 8 of 41 whatsoever created by them and are found at the above noted address of the defendant and are connected with the trade name or any resembling name thereto, so the plaintiff may destroy the same for ever, appropriate orders against the defendant thereby directing him to render accounts of the illegal profits made by her between the period starting w.e.f. 28.04.2007 upto date by passing off the trade name of the plaintiff through the aforesaid institute directly or indirectly and to pass a money decree on the basis of such accounts accordingly in favour of the plaintiff and against the defendant, a money decree of an amount of Rs.3,05,000/- towards damages/compensation in favour of the plaintiff for the business losses suffered, harassment and mental agony caused to the partners, officers and staff of the plaintiff due to the unauthorised and illegal acts and deeds of the defendant alongwith cost of the suit be passed.
4. The defendant has filed written statement and has contested the suit. In the written statement, the defendant has taken the objections that the suit is not signed and verified by duly authorised person. The agreement dated 01.06.2005 filed and relied upon by the plaintiff is not a registered document and, hence, the suit based on such document is liable to be dismissed. It is stated that the suit being filed by an Suit No.06/08/07 9 of 41 unauthorised person is liable to be dismissed with costs. It is also stated that it is clear from the pleadings of the plaintiff that at the time of entering into the agreement of franchise, neither the firm nor the society of the plaintiff's firm under which the firm is alleged to have been functioning was registered, and, hence, the plaintiff by way of impersonating the persons that his society is registered collected crore of rupees from various persons for which the defendant reserves their rights to prosecute for criminal offences committed by the plaintiff and their partners. It is denied that as per the terms of agreement, the defendant was not authorised to run any other institution directly or indirectly from the same premises from where the centre of "GURU NANAK DEV POLYTECHNIC" was running. It is denied that the defendant had involved herself in this illegal and unauthorised activity with a view to instigate various other franchises of the plaintiff so that they may also join her in unauthorised and illegal activities to run a parallel institute under the name and style of "SRI GURU NANAK DEV POLYTECHNIC" and/or "SHREE GURU NANAK DEV POLYTECHNIC" which resembling name was intentionally created by her in gross violation of the Franchise Agreement. It is denied that inspite of service of the aforesaid legal notice and public notice, the defendant has not bothered to stop misuse Suit No.06/08/07 10 of 41 and or illegal use of the brand/trade name of the plaintiff and has started running an education centre under the name of "SHREE GURU NANAK DEV POLYTECHNIC" by prefixing the word SHREE before the trade name of the plaintiff. It is stated that the defendant has been imparting education under the Society named "ANU EDUCAION SOCIETY (REGD)" in the year 1985 under the Societies Registration Act, 1860. Rest of the allegations have been denied by the defendant. It is prayed that the suit of the plaintiff be dismissed.
5. The plaintiff has filed replication to the written statement of defendant. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant as alleged in the written statement. It is denied that the suit is not signed and verified by duly authorised person. It is also denied that agreement dated 01.06.2005 is not signed by duly authorised person for and on behalf of the plaintiff and thus cannot be looked into by this Court.
6. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 16.05.2008:-
1. Whether the suit is signed and verified by a duly authorised person. If so, its effect? OPP.
Suit No.06/08/07 11 of 41
2. Whether the agreement dated 1-06-05 executed between the plaintiff and the defendant is signed by a duly authorised person on behalf of the plaintiff and, thus can be looked into by this court. If so, its effect? OPP.
3. What is the effect of the non-registration of the agreement dated 1-06-05 executed between the parties?
OPD.
4. Whether the plaintiff has acquired a reputation and goodwill for the trade name "GURU NANAK DEV POLYTECHNIC"? If so, whether the plaintiff is entitled to claim it as its intellectual property? OPP.
5. Whether the defendant is guilty of passing off the trade name of the plaintiff by running an education centre under the name and style of "SHREE GURU NANAK DEV POLYTECHNIC" by prefixing the word "SHREE" to the trade mark of the plaintiff. If so, its effect? OPP.
6. Whether the defendant has been imparting education under the Society name "ANU EDUCATION SOCIETY (REGD)" registered since the year 1985 under the Societies Registration act, 1860. If so, its effect? OPD.
7. Whether the plaintiff is entitled to the reliefs prayed for in the plaint? OPP.
8. Relief.
7. To prove its case, the plaintiff examined Shri Atul Chandra Dubey/plaintiff no. 2 as PW-1.
Suit No.06/08/07 12 of 41
8. In order to prove its defence, defendant examined Ms. Anita Mahajan/defendant as DW-1.
9. I have heard ld. Counsels for parties and carefully perused record. My findings on specific issues are as follows :
10. Issue No.1 In para 3 of PO of WS, the defendant has taken the objection that the suit has not been signed and verified by duly authorised person. In para 1 of the plaint, the plaintiff has stated that Shri Atul Chandra Dubey being one of the registered partners of the plaintiff is well conversant with the facts and circumstances of the case and is competent to sign and verify pleadings and to institute the present suit on behalf of the plaintiff and the suit is also being filed with consent of other partners who have collectively decided to do so. The plaintiff examined Shri Atul Chandra Dubey as PW-1 who adduced evidence by way of affidavit Ex.PW1/A. In para 2 of the affidavit Ex.PW1/A, it is stated that plaintiff a registered partnership firm duly registered with Registrar of Firms and in para 3 of the affidavit Ex.PW1/A, it is stated that Shri Atul Chandra Dubey is one of the registered partners of the plaintiff firm and in para 4 of the affidavit Ex.PW1/A, it is stated that deponent Shri Atul Suit No.06/08/07 13 of 41 Chandra Dubey is well conversant with the facts and circumstances of the case being a partner of the plaintiff and the suit has been filed by Shri Atul Chandra Dubey with consent of other partners who have collectively decided to file the suit against the defendant. The plaintiff has filed on record copy of form A issued by Registrar of Firms which is Ex.PW1/1 as per which Shri Atul Chandra Dubey is partner of plaintiff no. 1 firm i.e. M/s Global Avenue since 01.11.2004 and other partners of the plaintiff no. 1 firm are Shri Kanwaljeet Singh and Shri Deepak Anand. Shri Atul Chandra Dubey appeared in the witness box as PW-1. However, the defendant did not prefer to put any questions to PW-1 and testimony of PW-1 has remained unrebutted. Although, in the WS, the defendant has taken the objection that the suit has not been signed and verified by duly authorised person, however, in the cross- examination of PW-1, no questions were put to the effect that PW-1 is not authorised to file the suit on behalf of the plaintiff or that PW-1 is not the partner of the plaintiff. In Haldiram Bhujiawala and Another v. Anand Kumar Deepak Kumar and Another, 2000 (3) SCC 250, it was held that an action for passing off can be maintained by an unregistered firm. This issue is accordingly decided in favour of the plaintiff and against the defendant.
Suit No.06/08/07 14 of 41 11. Issue Nos. 2 & 3 Since both these issues involve common discussion of facts and law, hence, for the sake of brevity, both these issues are being taken up together. The case of the plaintiff is that the plaintiff is engaged in imparting technical training and education centres under the name and style of GURU NANAK DEV POLYTECHNIC which is trade name of the plaintiff and the defendant entered into franchisee agreement with the plaintiff on 01.06.2005 by virtue of which the defendant was authorised to run an education centre as a franchisee of the plaintiff in terms of the said agreement under the name and style of GURU NANAK DEV POLYTECHNIC from the premises situated at Plot No. 7& 8, M-Block, Main Raja Puri Road, Opposite Sector-4, near Parichay Show Room, Dwarka, New Delhi and the said agreement was valid for a period of two years ending on 31.05.2007. In para 4 of PO of WS, the defendant has taken the objection that the agreement dated 01.06.2005 is not signed by duly authorised person for and on behalf of the plaintiff and in para 5 of PO of WS, it is stated that the agreement dated 01.06.2005 filed and relied upon by the plaintiff is not a registered document and the suit is liable to be dismissed. The agreement dated 01.06.2005 which was executed between the Suit No.06/08/07 15 of 41 parties is Ex.PW1/7 and the same is singed on behalf of the plaintiff by Shri Atul Chandra Dubey. Defendant Smt. Anita Mahajan appeared in the witness box as DW-1. In the cross- examination, DW-1 Smt. Anita Mahajan stated that she knows Shri Atul Chandra Dubey. DW-1 admitted in the cross- examination that she had entered into an agreement with the plaintiff on 01.06.2005 and the same is Ex.PW1/7 and the same bears her signatures. DW-1 further admitted in the cross- examination that as per Ex.PW1/7 she was allowed by the plaintiff to run an institute in the name of GURU NANAK DEV POLYTECHNIC as a franchisee. DW-1 admitted in her cross-examination the execution of agreement dated 01.06.2005 Ex.PW1/7. On one hand, in the cross-examination DW-1 has admitted execution of agreement dated 01.06.2005 Ex.PW1/7 by the plaintiff and on the other hand in para 6 of the affidavit Ex.DW1/A, the defendant has pleaded that basic dispute arose when the plaintiff unilaterally and without authority terminated the agreement in question thereby causing tremendous loss to the business of the plaintiff. The defendant has admitted that in pursuance of the agreement Ex.PW1/7, the defendant started running institution in the name of GURU NANAK DEV POLYTECHNIC. Moreover, as per para 6 of the affidavit Ex.DW1/A, the grievance of the defendant is that the plaintiff Suit No.06/08/07 16 of 41 illegally terminated the said agreement Ex.PW1/7. It is admitted case of the parties that in pursuance of the agreement Ex.PW1/7 the defendant had run the institute under the name and style of GURU NANAK DEV POLYTECHNIC as franchisee and the said institute was run for sufficient period of time before termination of the said agreement by the plaintiff vide letter dated 28.04.2007 Ex.PW1/8. In the circumstances, once the defendant having conducted business with the plaintiff on the basis of the said agreement is now estopped from pleading that the said agreement Ex.PW1/7 was not signed by duly authorised person of the plaintiff. Although, the defendant has taken objection in the WS that the said agreement Ex.PW1/7 is not a registered document, however, the defendant has not been able to make out a case that the said document was required to be compulsorily registered as per Section 17 of the Registration Act, 1908. Accordingly, both the parties shall be bound by the terms of the said agreement dated 01.06.2005 which was executed between the parties. Both these issues stand answered accordingly.
12. Issue Nos. 4 & 5Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being Suit No.06/08/07 17 of 41 taken up together. In para 3 of the plaint, it is stated that the plaintiff is engaged in imparting technical training and education since 01.09.2004 and the plaintiff is running its education centres in Delhi as well as in other States of India of its own and through its franchisees and the said education centres are being run in the name and style of GURU NANAK DEV POLYTECHNIC and the plaintiff has acquired reputation and goodwill over the years. During the course of arguments, the defendant has pleaded that the trade mark/trade name of the plaintiff i.e. GURU NANAK DEV POLYTECHNIC is not registered.
13. Section 34 of the Trade Marks Act,1999 reads as under :-
"34. Saving for vested rights.- Nothing in this Act shall entitle the proprietor or an registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior -
(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-
mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
Suit No.06/08/07 18 of 41 whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.
14. Section 35 of Trade Mark Act, 1999 provides that priority of use prevails as compared to registration and it lays down that ordinarily it is the prior user of the trade mark who is the owner of trade mark.
15. In Century Traders Vs. Rohan Lal Duggar & Co. & Others 1978 Delhi 250, reference was made to Consolidated Foods Corporation vs. Brandon and Co. Private Ltd., AIR 1965 Bom 35 wherein it was observed :-
"12. A trader acquires a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting Suit No.06/08/07 19 of 41 the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. ........................................................................
14. Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.
16. In N. R. Dongre & others. vs. Whirlpool Corporation and others, AIR 1995 Delhi 300, it was held that :
"29. Thus the right created by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section Suit No.06/08/07 20 of 41 28 nor any other provision of the Act bars an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as under Section 27(2) of the act a prior user of trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not immune to the over-riding effect of Section 27(2)."
"The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)
(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark.
The right of good will and reputation in a trade mark was recognized at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and Suit No.06/08/07 21 of 41 recognized by Sections 27(2) and 33."
17. In Bimal Govindji Shah vs. Panna Lal Chandu Lal, 1997 PTC (17) 347 it was held that :
9."..............................Thus a conjoint reading of the aforesaid provisions persuaded me to conclude on a reading of the aforesaid provisions conjointly the natural deduction is that the right conferred by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right but is subject to the other provisions of the Act namely -Section 27 (2) and 33. It is also to be noted that neither Section 28 nor any other provision of the Act prohibits an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as provided for under Section 27(2) of the Act. A prior user of a trade mark is entitled to maintain an action against a subsequent user of identical trade mark including registered user thereof.
18. As per aforesaid judgments, it is well settled that registration is irrelevant in case of passing off and a prior user of trade mark is entitled to maintain an action against the subsequent user of Suit No.06/08/07 22 of 41 identical trade mark including registered user thereof.
19. The case as set out by the plaintiff is that the plaintiff is running education centres under the name and style of GURU NANAK DEV POLYTECHNIC and the defendant entered into a franchisee agreement with the plaintiff on 01.06.2005 whereby the defendant agreed to run the education centre under the name and style of GURU NANAK DEV POLYTECHNIC. The defendant/DW-1 admitted execution of franchisee agreement dated 01.06.2005 Ex.PW1/7 between the parties. The defendant has not pleaded that the defendant is the prior adopter and user of the trade name GURU NANAK DEV POLYTECHNIC. Rather, as per terms of franchisee agreement Ex.PW1/7, the defendant agreed to run the education centre under the name and style of GURU NANAK DEV POLYTECHNIC on payment of the amounts to plaintiff as mentioned in the said agreement. Hence, it is not open for the defendant to plead that the plaintiff had not acquired any goodwill under the trade name GURU NANAK DEV POLYTECHNIC. Moreover, the defendant has not explained that if the plaintiff had not acquired any goodwill under the trade name GURU NANAK DEV POLYTECHNIC, then whey the defendant entered into franchisee agreement with the plaintiff by which the defendant Suit No.06/08/07 23 of 41 agreed to run the education centre under the trade name GURU NANAK DEV POLYTECHNIC which trade name belongs to the plaintiff. The execution of franchisee agreement Ex.PW1/7by the defendant itself proves that the defendant entered into agreement with the plaintiff because the plaintiff had acquired reputation and goodwill under the trade name GURU NANAK DEV POLYTECHNIC.
20. In para 12 of the plaint, the plaintiff has stated that the defendant involved herself in illegal and unauthorised activity to run a parallel institute under the name and style of SHREE GURU NANAK DEV POLYTECHNIC resembling with the trade name of the plaintiff in order to create deception and confusion amongst the student community and public at large. PW-1 Shri Atul Chandra Dubey adduced evidence by way of affidavit Ex.PW1/A and in para 20 of the affidavit Ex.PW1/A, the plaintiff has stated that after termination of the agreement dated 01.06.2005, the defendant started passing off the name of the plaintiff and running the same centre under the name and style of SHREE GURU NANAK DEV POLYTECHNIC and the defendant has also started using logo of the plaintiff with some minor alterations. PW-1 was not cross-examined by the defendant and the testimony of PW-1 has remained unrebutted.
Suit No.06/08/07 24 of 41 The defendant adduced evidence by way of affidavit Ex.DW1/A and in para 14 of the affidavit Ex.DW1/A, the defendant has stated that the defendant was not in use of illegal brand/trade and the defendant has never used the logo of the plaintiff with minor alterations which resembles logo of the plaintiff and she has never passed off name of the plaintiff for her own personal gain unauthorisedly and illegally in the market. In her affidavit Ex.DW1/A, the defendant has not stated that he defendant has not run any education institute under the name of SHREE GURU NANAK DEV POLYTECHNIC. In the cross-examination, DW-1 stated that after termination of agreement Ex.PW1/7, she stopped running institute. DW-1 denied in the cross-examination that she is running institute in the name of SHREE GURU NANAK DEV POLYTECHNIC from the same premises. Thereafter, DW-1 stated in the cross- examination that institute in the name of SHREE GURU NANAK DEV POLYTECHNIC is being run from B-1, Kakrola Housing Complex, Near Dwarka More, New Delhi and the same is being run by M/s Anu Educational Society. DW-1 further stated in the cross-examination that Anu Educational Society is running SHREE GURU NANAK DEV POLYTECHNIC after the closure GURU NANAK DEV POLYTECHINC which was being run by her as a franchisee.
Suit No.06/08/07 25 of 41 DW-1 further stated in the cross-examination that her husband Shri Virender Kumar Majahan is General Secretary in Anu Educational Society. DW-1 denied suggestion in her cross- examination to the effect that she alongwtih her husband are running M/s Anu Educational Society. It is to be noted that in the cross-examination, DW-1 stated that she does not hold any office in M/s Anu Educational Society, however, in para 16 of the affidavit Ex.DW1/A, DW-1 has stated that she has right to business and has right to impart education to needy student and persons and the defendant has been imparting education under the society name Anu Educational Society in the year 1985 under the Societies Registration Act, 1860. In para 16 of the affidavit Ex.DW1/A, the defendant has not mentioned that she has been imparting education under the society name Anu Educational Society since the year 1985 and in the cross- examination of DW-1, ld. Counsel for the plaintiff has not put any question on the contents of para 16 of the affidavit in order to clarify whether in the year 1985, the defendant was imparting education under the society name Anu Educational Society or defendant has been imparting education under the name of Anu Educational Society since the year 1985.
21. DW-1 stated in the cross-examination that she stopped running Suit No.06/08/07 26 of 41 the institute after termination of agreement Ex.PW1/7. DW-1 admitted in the cross-examination that when she was running GURU NANAK DEV POLYTECHNIC as franchisee, prospectus Ex.PW1/12 was being printed. Thereafter, DW-1 admitted in the cross-examination that after closure of GURU NANAK DEV POLYTECHNIC, they have made prospectus Ex.PW1/D1 and in the logo on the said prospectus Ex.PW1/D1, word "Shree" has been added as compared to logo in the prospectus Ex.PW1/12. Prospectus Ex.PW1/12 is the prospectus which was being printed at the time when defendant was in franchisee agreement with the plaintiff and DW-1 has admitted that after termination of franchisee agreement, they got printed prospectus Ex.PW1/D1. In the logo of prospectus Ex.PW1/12 a flying bird in white background with blue outlines has been shown in a circle while in the prospectus Ex.PW1/D1, the same bird with same colour combination has been depicted in a circle although, slightly in a smaller size. The circle in the logo on prospectus Ex.PW1/12 is in indigo colour in which words GURU NANAK DEV POLYTECHNIC are mentioned in Hindi. The circle in the logo on prospectus Ex.PW1/D1 is also in the same indigo colour containing the words SHREE GURU NANAK DEV POLYTECHNIC and DW-1 admitted in the cross-examination that the only Suit No.06/08/07 27 of 41 difference between the logos as appearing on Ex.PW1/12 and Ex.PW1/D1 is that the word "Shree" has been added in the logo of the prospectus Ex.PW1/D1.
22. In Parle Products (P) Ltd. vs. J. P. and Co., Mysore, AIR 1972 Supreme Court 1359, the Apex Court took the view that :-
9. "It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
23. In Corn Products Vs. Shangrila Food Products, AIR 1960 SC 142, the Hon'ble Supreme Court observed :-
"The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. It is well recognised that in deciding a question of similarity between two marks, the marks Suit No.06/08/07 28 of 41 have to be considered as a whole."
Further, it is held in the said ruling as follows :
"Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."
24. In M/s Pidilite Industries Pvt. Ltd. vs. M/s Mittees Corporation and Another, 1988 (2) Arbitration Law Reporter 4 (Delhi), it was held :-
"......................Before, I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be opposite to state some well settled principles governing these matters, namely (1) it is always a question of fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned trade mark; the court has to put itself in the position of an average customer and ask a question whether there is likelihood of deception or confusion or not and then answer the question on that basis, (2) the marks must be compared as a whole. It is not rights to take a portion of the word Suit No.06/08/07 29 of 41 and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or mistake in the minds of persons accustomed to the existing trade mark, (3) the likelihood of confusion or deception is to be seen in relation to average unwary customer, (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish the actual deception."
25. The case of the plaintiff is that the trade name of the plaintiff is GURU NANAK DEV POLYTECHNIC and the defendant has adopted the trade name SHREE GURU NANAK DEV POLYTECHNIC which is deceptively similar to the trade name of the plaintiff and the same is likely to cause deception in the minds of the students and public at large and the students will be misled in believing that the trade name of the defendant is of the plaintiff and that the defendant in some manner is connected with the plaintiff or that the defendant is carrying on the business of the plaintiff and on that account the plaintiff is likely to suffer loss. In the present case, the plaintiff's mark is GURU NANAK DEV POLYTECHNIC and the mark which is Suit No.06/08/07 30 of 41 adopted by the defendant is SHREE GURU NANAK DEV POLYTECHNIC and the plea of the defendant is that there is no similarity between the two marks and they are not likely to cause any deception.
26. In Dabur (S. K. Burman) vs. Vikas Pharma, 1983 PTC 179, it was held :-
"Secondly. On the question whether there is any deceptive similarity between the two trade marks in question, I am of the opinion that there is a phonetic similarity. The vocal sounds of the two very much resemble. They produce the same sounds of speech with a slight difference of 'A'. In the pronunciation of word HAJMOLA AND HAZMOL.
There is hardly any difference of note. HAJMOLA is the plaintiff's trade mark. Hazmol is the trade mark of the defendant except that the suffix 'A' is in addition in the plaintiff's trade mark, there is not much substantial difference between the two. The plaintiff has used the word 'J'. the defendant has used the word 'Z'. This is a distinction without any difference. The only difference is that the defendant do not have the word 'A" at the end of their trade mark 'HAZMOL'. In my opinion the buyers of the products are likely to be deceived and confused if the defendants are Suit No.06/08/07 31 of 41 allowed to sell their products in the market........................."
27. In Lakme Ltd. vs. Subhash Trading, 1996 PTC (16), it has been held :-
9. 'In the case of K. R. Chinna Krishna Chettiar Vs. Ambal & Co. and another, reported in AIR 1970 SC 146 it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no resemblance between the two marks that does not matter when there is a close affinity of sound between the distinctive features of the two marks. The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words.
In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words "AMBAL" and "ANDAL". After considering various decisions, the Supreme Court held that Suit No.06/08/07 32 of 41 there is a close affinity of sound between the words "AMBAL" and "ANDAL".
Similarly in the case of Ruston Vs. Zamindara Engg. (supra), the Supreme Court came to consider whether there was resemblance between the words "RUSTON" and "RUSTAM", and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words "RUSTON" and "RUSTAM" and therefore, the use of the bare word "RUSTAM" constituted clear infringement of the plaintiff's trade mark "RUSTON"
13 .............................................................. ......When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words.
Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a striking resemblance between the two words and there is a real danger of deception and confusion being caused by the two marks in view of the similarity and affinity of sounds between the words "LIKE ME" and "LAKME".
28. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court Suit No.06/08/07 33 of 41 980, it was held that in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated.
29. A comparison of the marks as appearing on the prospectus of the plaintiff Ex.PW1/12 and that of the defendant as appearing on Ex.PW1/D1 shows that the defendant has adopted the mark which is deceptively similar to the mark of the plaintiff and the defendant has only added the word "Shree" before the trade name GURU NANAK DEV POLYTECHNIC and the similarity in the mark as adopted by the defendant by the defendant as appearing on the prospectus Ex.PW1/D1 is likely to deceive a man of average intelligence and of ordinary prudence with imperfect recollection in believing that the said mark as appearing on Ex.PW1/D1 is of the plaintiff or the defendant in some manner is connected with the plaintiff. A person who has seen logo of the plaintiff as appearing on prospectus Ex.PW1/12 on seeing the logo as adopted by the defendant as appearing on prospectus Ex.PW1/D1 would be Suit No.06/08/07 34 of 41 deceived in believing that it is the logo of the plaintiff and would cause deception in the minds of the persons that the same is business of the plaintiff. In the circumstances, it is not open for the defendant to plead that addition of word "Shree" before the words GURU NANAK DEV POLYTECHNIC is not likely to cause any deception. Both these issues are accordingly decided in favour of the plaintiff and against the defendant.
30. Issue No. 6In para 18 of the reply on merits in the WS and in para 16 of the affidavit Ex.DW1/A, it is stated that the defendant has been imparting education under the society name Anu Educational Society (Regd.) in the year 1985 under the Societies Registration Act, 1860. It is to be noted that in para 18 of the reply on merits and in para 16 of affidavit Ex.DW1/A, the defendant has not stated that she has been imparting education under the society name Anu Educational Society since the year 1985 and no questions have been put to DW-1 in the cross- examination by the plaintiff that whether the defendant was imparting education in the year 1985 under the name of Anu Educational Society or since the year 1985. In the cross- examination, DW-1 stated that she does not hold any office in Suit No.06/08/07 35 of 41 Anu Educational Society and her husband Shri Virender Kumar Mahajan is General Secretary in the said society. As per Ex.PW1/D1 which has been filed on record by the plaintiff it is the Anu Educational Society which is claiming that it is running the institute under the name SHREE GURU NANAK DEV POLYTECHNIC. Moreover, as per Ex.PW1/D1, the said Anu Educational Society claimed itself to be a society registered under Section XXI of of 1860 Act with Government of NCT of Delhi. In the circumstances, it was open for the plaintiff to have summoned the appropriate records in respect of the said Anu Educational Society in order to prove that it is the defendant who after termination of the franchisee agreement has been running the said SHREE GURU NANAK DEV POLYTECHNIC under the name of Anu Educational Society. However, the plaintiff has not summoned any such record from the authorities with which the said Anu Educational Society is registered. In view of statement of defendant in the cross-examination to the effect that she does not hold any office in Anu Educational Society, it is not open for the defendant to plead that she has been imparting education under the society name Anu Educational Society. Moreover, in the course of arguments, ld. Counsel for plaintiff has contended that defendant has not proved any documents to prove that she Suit No.06/08/07 36 of 41 has been imparting education under the society Anu Educational Society (Regd.) registered since the year 1985. This issue is accordingly decided in favour of the plaintiff and against the defendant.
31. Issue No. 7By way of present suit, the plaintiff has prayed for decree of mandatory injunction for directing the defendant to deliver up to the plaintiff all the incriminating printed stationery including receipt books, prospectuses, study material, advertising material etc. and for passing directions thereby directing the defendant to render accounts for the period from 28.04.2007 and for decree for a sum of Rs.3,05,000/- (Rupees three lacs five thousand only). In the cross-examination, DW-1 stated that after termination of agreement Ex.PW1/7, she stopped running the institute and the institute in the name of SHREE GURU NANAK DEV POLYTECHNIC is being run by M/s Anu Educational Society. In the cross-examination of DW-1 no suggestions were given to the defendant that defendant is in possession of any printed material, study material in the name of SHREE GURU NANAK DEV POLYTECHNIC and bearing the logo resembling the logo of the plaintiff and in the aforesaid discussions, it has been observed that the plaintiff has also not Suit No.06/08/07 37 of 41 summoned any record from the authorities with which the said Anu Educational Society is registered to prove that the said Anu Educational Society is being run by the defendant. Moreover, during the course of arguments, ld. Counsel for the plaintiff himself has contended on issue no. 6 to the effect that it has not been proved that the defendant has been imparting education in the name of Anu Educational society (Regd.). An order of injunction was passed in this case on 23.10.2007 whereby the defendant was restrained from running institute in the name of GURU NANAK DEV POLYTECHNIC (GNDP) itself or by prefixing or suffixing any word in that name of the plaintiff. The plaintiff has not led any evidence to the effect that after passing of the said order, the defendant has carried out any business activity thereby using the name of the plaintiff by prefixing or suffixing any word. The plaintiff has also not examined any witness to prove that after termination of the franchisee agreement dated 01.06.2005 on 28.04.2007, the defendant had admitted any student in any institute being run in the name which was deceptively similar to the name of the institute of the plaintiff and the defendant has thereby earned any profits by doing so. In the circumstances, no order for delivery up of the printed study material, advertising material etc. and no order thereby directing the defendant to render Suit No.06/08/07 38 of 41 accounts for the period from 28.04.2007 and also for decree for a sum of Rs.3,05,000/- (Rupees three lacs five thousand only), as claimed is being passed.
32. In view of aforesaid discussions and findings on aforesaid issues, the plaintiff is entitled for decree of permanent injunction thereby restraining the defendant, her partners, associates, agents, servants, representatives, employees are restrained from running any institute, education centre anywhere in India under the name of SHREE GURU NANAK DEV POLYTECHNIC and from infringing the copyright of the plaintiff in respect of the logo as printed by the plaintiff on its various study material, prospectus etc.
33. Issue No. 8 (Relief) In view of aforesaid discussions and findings on aforesaid issues, the suit of the plaintiff is decreed for decree of permanent injunction and the defendant, her partners, associates, agents, servants, representatives, employees are restrained from running any institute, education centre anywhere in India under the name of SHREE GURU NANAK DEV POLYTECHNIC and from infringing the copyright of the plaintiff in respect of the logo as printed by the plaintiff on its Suit No.06/08/07 39 of 41 various study material, prospectus etc. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to record room.
(Announced in the open Court
on 14th July, 2010) (HARISH DUDANI)
ADDL. DISTT. JUDGE-15
(CENTRAL):DELHITM
Suit No.06/08/07 40 of 41
No. 06/08/07
Global Avenue vs Anita Mahajan
14.07.2010
Present : Shri Mohd. Asif, Advocate, proxy counsel for Shri Chandershekhar, Advocate for the plaintiff.
None for the defendant.
Vide separate judgment of today, the suit of the plaintiff is decreed for decree of permanent injunction and the defendant, her partners, associates, agents, servants, representatives, employees are restrained from running any institute, education centre anywhere in India under the name of SHREE GURU NANAK DEV POLYTECHNIC and from infringing the copyright of the plaintiff in respect of the logo as printed by the plaintiff on its various study material, prospectus etc. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to record room.
(HARISH DUDANI)
ADJ-15 (CENTRAL)/DELHI
14.07.2010
Suit No.06/08/07 41 of 41