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Petitioner Under Order Xxxix Rules 1 & 2 ... vs Deepak Kumar Pal & Ors on 18 November, 2021

Author: Asha Menon

Bench: Asha Menon

$~Suppl.-7
*    IN THE HIGH COURT OF DELHI AT NEW DELHI

+    C.O. (COMM.IPD-TM) 54/2021, I.As.15022/2021 (by the
     petitioner under Order XXXIX Rules 1 & 2 read with Section
     151 CPC for staying the effect and operation of respondent No.
     l's registered trade mark no. 3469040 in class 41 till disposal of
     the present petition) & 15023/2021 (exemption)

     DELHI PUBLIC SCHOOL SOCIETY                       ..... Petitioner
                        Through:      Mr. Puneet Mittal, Sr. Advocate
                                      with   Ms.   Vasudha     Bajaj,
                                      Advocate.
                        versus
     DEEPAK KUMAR PAL & ORS                           ..... Respondents
                        Through:      None.
     CORAM:
      HON'BLE MS. JUSTICE ASHA MENON
                      ORDER

% 18.11.2021 (HYBRID HEARING) I.A. 15023/2021 (exemption)

1. Allowed, subject to all just exceptions.

2. The application stands disposed of.

C.O. (COMM.IPD-TM) 54/2021, I.As.15022/2021 (by the petitioner under Order XXXIX Rules 1 & 2 read with Section 151 CPC for staying the effect and operation of respondent No.l's registered trade mark no. 3469040 in class 41 till disposal of the present petition) C.O. (COMM.IPD-TM) 54/2021 Page 1 of 4

3. This petition has been moved under Sections 47 and 57 of the Trade Marks Act, 1999 for removal/ rectification/cancellation of the trademark No.3469040, "Delhi Public Secondary School" in class-41 registered in the name of Respondent no.1/Deepak Kumar Pal.

4. Mr. Puneet Mittal, learned senior counsel appearing for the petitioner submits that in an earlier round of litigation being CS (COMM) 404/2016 where the respondent No.1 in the present case was defendant No.5 and in which matter, the consent decree was passed on 29th November, 2016 whereby the respondent No.1 bound himself to suffer an injunction which was granted in terms of the prayer-(a), (b) & (c) of the plaint, namely, "a) offering for service, advertising, offering for sale, adopting, using and/or dealing in any manner with the well known trade marks/ name 'DPS' and logo of the plaintiff or any other trade mark identical or deceptively similar to the plaintiff's above mentioned trade marks amounting to infringement of the plaintiff's said trade marks and further restraining them from representing in any manner that they are connected with the plaintiff;

b) using the impugned trade mark/name "DPS', DELHI PUBLIC SCHOOL and ;

c) directly or indirectly reproducing, using and/or dealing in any manner with the plaintiff's registered crest , or any other crest identical or deceptively similar to it amounting to infringement of the plaintiff's copyright in the said crest."

5. However, it appears that immediately thereafter, respondent No.1 applied for registration of two trademarks, namely, 'Delhi Public International School' and 'Delhi Secondary School' with the Registrar of Trademarks at Kolkata. The same has been granted to him.

6. Learned senior counsel further submits that this was in total contravention of the consent decree and was a blatant attempt to mislead public on account of similarity in the names of the schools of the petitioner namely, "Delhi Public School". Learned senior counsel points out that in respect of the trademark, 'Delhi Public International School', a Co-ordinate Bench of this Court had on 10th September, 2021 in another case being C.O. (COMM.IPD-TM) 6/2021, pending between the parties herein, suspended the trademark noticing all these facts. Thus, similar relief is being sought in this case.

7. Issue notice to the defendants by all permissible modes returnable on the next date of hearing.

8. In view of the facts as set out above and the submissions made, the trademark 'Delhi Public Secondary School' shall remain suspended till further orders of this Court. It is further directed that the respondent No. 2 shall also not permit transfer of the aforesaid trademark to any subsequent proprietor till further orders of this Court.

9. It is submitted that the said matter, C.O. (COMM.IPD-TM) 6/2021 is listed on 26th November, 2021. List the present matter on 26th November, 2021 alongwith C.O. (COMM.IPD-TM) 6/2021.

10. Provisions of Order XXXIX Rule 3 be complied with.

11. The order be uploaded on the website forthwith.

ASHA MENON, J NOVEMBER 18, 2021 ck C.O. (COMM.IPD-TM) 54/2021 Page 4 of 4