Delhi District Court
M/S. Global Avenue vs Smt. Samridhi Yadav on 9 October, 2012
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IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE1(CENTRAL)
TIS HAZARI COURTS, DELHI.
Civil Suit No.: TM/123/2011
Unique ID no. 02401C0837932007
M/s. Global Avenue,
685, Gaushala Road, Near
Vishwakarma Dwar, Najafgarh,
Delhi110043,
Through its Partner
Sh. Atul Chandra Dubey
...............Plaintiff
Versus
Smt. Samridhi Yadav,
W/o. SH. Shivender Yadav,
WZ56, Sarbati Complex,
Jawala Heri Market, Paschim Vihar,
New Delhi63.
........Defendant
Date of institution : 24.08.2007
Date of reserving judgment : 08.10.2012
Date of pronouncement : 09.10.2012
T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 1 of 31
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JUDGMENT: In this suit for infringement of service mark/trade name, passing off, rendition of accounts, damages and delivery up etc. the case of plaintiff, as pleaded, is as under:
i) That the plaintiff is a partnership firm duly registered with the Registrars of Firms, Delhi having its registered office at the above notice address. Sh. Atul Chandra Dubey is one of the registered partners of the plaintiff Firm. Sh. Atul Chandra Dubey, being one of the registered partners of the plaintiff, is well conversant with the facts and circumstances of this case and is also legally competent to sign, verify the pleadings also to institute the present suit on behalf of the plaintiff firm. The suit is being filed with the consent of all other partners who have collectively decided to do so.
ii) The plaintiff 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 student's community. The plaintiff is engaged in this line of business since 1st September, 2004. The plaintiff is T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 2 of 31 3 presently running its education centers in Delhi as well as in other States in India of its own and also through its franchises with whom written agreements are executed. These education centers are being run under the name and style of "GURU NANAK DEV POLYTECHNIC", which is the trade name of the Plaintiff.
iii) The plaintiff's firm is associated with "GURU NANAK DEV VIDYA PEETH", a society registered with the Registrar of Societies, Delhi, on 14.2.06. Some of the office bearers of the society are also the partners of the plaintiff firm.
iv) The trade name "GURU NANAK DEV POLYTECHNIC", was first adopted and used by Sh. Atul Chandra Dubey, a partner of the plaintiff firm who got this trade name duly registered with the Sub Registrar, Delhi on 14.6.06. That through the said registered document Sh. Dubey had claimed that it 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 registration as a T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 3 of 31 4 partnership firm. This trade name is being used by the plaintiff for all its education centers, irrespective of the fact that they are being run by the firm directly and or through any other franchise of the plaintiff.
v) The trade name of the plaintiff has earned fame, reputation and goodwill over the period of time in the line of education, technical training, and also for conducting technical and other job oriented courses.
vi) The plaintiff firm has also applied for the registration of the above Trade Name and Logo with the Registrar of Trade Marks and that the application is pending consideration.
vii) The defendant has entered into a franchise agreement with the plaintiff firm on 1.6.2005 and that 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 POLYTECHINIC" from the agreed premises situated as WZ 56, SARBATI COMPLEX, JAWALA HERI MARKET, PASCHIM VIHAR, NEW DELHI. That the said agreement valid for a period of two years ending on 31.5.2007. The T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 4 of 31 5 defendant as such was under a legal and contractual obligation to run the aforesaid centre of the plaintiff under the aforesaid name from the aforesaid premises only and strictly in accordance with the terms and conditions of the said agreement during the stipulated period of two years.
viii)The plaintiff was however not satisfied with the performance of the defendant as it was receiving complaints from the students. This dissatisfaction was repeatedly pointed out but the defendant showed no signs of improvements. The plaintiff lost faith in the capabilities of the defendant. The defendant also committed several defaults in releasing periodical payments of royalty payable to the plaintiff, her share of advertisement charges payable periodically, cost of the printed stationary and study material etc. from time to time. Several cheques of the defendant were dishonoured by her banker with the remarks "insufficient funds". The plaintiff observed that various other terms and conditions of the Franchise Agreement dated 1.6.05 were being violated by the defendant.
ix) In gross violation of the terms of the above agreement, the T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 5 of 31 6 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 other of "GURU NANAK DEV POLYTECHNIC" was running. The above illegal act of the defendant clearly indicate her malice and ulterior motives to divert the income of the institute of the plaintiff to her own institute and also to cause substantial monitory loss to the plaintiff. That the same amounted to clear breach of contract on the part of the defendant.
x) The defendant has become dishonest and wants to take undue advantage of the same unauthorisedly and illegally despite knowing that the defendant knows that the Trade Name "GURU NANAK DEV POLYTECHINIC" is the intellectual property of the plaintiff firm and that the plaintiff only possess the exclusive legal rights to own and use the said name to the exclusion of the whole world.
xi) The plaintiff also came to know that the defendant had been T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 6 of 31 7 secretly and behind the back of the plaintiff, trying to establish unwarranted communication with the other study centers/ franchisees of the plaintiff in Delhi and other states. The defendant had involved herself in this illegal and unauthorized activity with a view to instigate various other franchisees of the plaintiff so that they may also join her in her unauthorized and illegal activities to run a parallel institute under the name and style of "SRI GURU NANAK DEV POLYTICHNIC" 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. However, the other franchisees of the plaintiff however did not join hands with the defendant.
xii) Under the aforesaid facts and circumstances, and also keeping in view the various other defaults committed by the defendant T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 7 of 31 8 in payments of various periodical charges and the acts of violations of the terms and conditions of the Franchise Agreement, the plaintiff decided to terminate the said agreement and that the same was terminated on 28.4.2005, through a written communication by the plaintiff. The defendant sent a false reply and hence, a legal notice dated 12.5.07 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. A public notice dated17.5.07 was also published in the Rashtriya Sahara with a view to apprise the public at large in general and the 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 that she has no legal right or any authority to represent the plaintiff in any manner whatsoever. A written complaint dated 3.5.07 was also lodged with the area SHO Paschim Vihar, New Delhi, as the defendant had also started threatening the officers and T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 8 of 31 9 staff of the plaintiff of dire consequences. The police however has not taken any action against the defendant till date.
xiii)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. 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 off the Trade Name of the plaintiff for her own personal gain unauthorisedly 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. That the defendant has no right, whatsoever, to do these illegal and unauthorised acts and deeds and hence this suit. The defendant is doing all this fraudulently and dishonestly with a view to grab the established business reputation, name, fame and good will earned by the plaintiff firm over the years.
xiv)The plaintiff through the legal notice dated 12.5.07 duly served T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 9 of 31 10 on her, had clearly asked the defendant to comply with the directions given in the notice and to stop the misuse. She was clearly called upon to stop using the trade name and logo of the plaintiff in any manner whatsoever and also to remove her Sign Boards, wherever placed and to hand over all the incriminating printed stationery, study material prospectuses, receipt books and or other books and papers and all the advertisement material from the aforesaid study centre and to stop using the name of the plaintiff illegally in violation of the contractual and legal rights of the plaintiff. Through the said notice the defendant was also called upon to pay damages/ compensation. The defendant sent a false reply to the notice dated 28.4.07 and failed to comply with the directions given therein on 17.5.07.
xv) The plaintiff has learnt that the defendant is presently running an education centre under the name and style of " SHREE GURU NANAK DEV POLYTECHINIC" by prefixing 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. The plaintiff has also learnt that T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 10 of 31 11 the defendant is also planning to open other education centers in the same name in Kingsway Comp, Delhi shortly. xvi)The defendant has rendered herself liable to be restrained from running the aforesaid educational centers in the said manner. She has also rendered herself liable for rendition of accounts w.e.f. 28.4.07 onwards till date and also to deliver up all the incriminating printed material such prospectuses, receipt books, printed study material, pamphlets, name plates, signboards and other advertisement material etc. of such education centers. The defendant is also liable to pay to the plaintiff, the illegal profits earned by her in the above manner and also to pay damages/compensation etc. to the plaintiff. That all the incriminating material lying in the aforesaid centre needs to be seized from the aforesaid premises of the defendant.
2. The defendant had put a contest to the suit by filing its written statement. It has taken various preliminary objections that the suit is maintainable as framed; there is no cause of action in favour of the plaintiff and against the defendant and hence the present suit is liable to be dismissed under the provisions of Order VII Rule 11 of the CPC; T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 11 of 31 12 The suit has not been signed and verified by duly authorized person; the agreement dated 01.06.2005 is not signed by the duly authorized person for and on behalf of the plaintiff and thus can not be looked into; the agreement dated 01.06.2005 filed and relied upon by the plaintiff is not a registered documents and hence the suit based on such a document is liable to be dismissed; mere perusal of the agreement dated 01.06.2005 shall reveal that Shri Atul Chandra Dubey stated to be himself as the Director of M/s Global Avenue, however in the present plaint, Shri Atul Chandra Dubey stated to be himself as Partner of the plaintiff and hence the trustworthiness of Shri Atul Chandra Dubey is doubtful and therefore any suit filed by the said person is liable to be dismissed; the alleged trade mark is neither registered with the Registrar of Trade Mark nor is the personal property of the plaintiff and hence the plaintiff can not claim any sort of damages on the basis of the alleged trade mark against the defendant. The defendant has denied the material averments of the plaint in above terms. She has claimed her institute to be independent of the plaintiff. She has prayed that the suit be dismissed.
3. The plaintiff has filed the replication and denied the material T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 12 of 31 13 averments of the written statement and reiterated the averments of the plaint.
4. With the available pleadings the following issues have been framed on 05.09.2008:
i) Whether the suit has been signed and verified by a duly authorized person? OPP
ii) Whether the agreement dated 01.06.2005 is not signed by a duly authorized person for and on behalf of the plaintiff as pleaded in the WS? If so, its effect. OPD
iii) Whether the defendant has been infringing the trade mark/trade name of GURU NANAK DEV POLYTECHNIC of the plaintiff and the copyright in respect of the logo, printed study material, prospectus etc? OPP
iv) Whether the defendant has been passing off the name of the plaintiff? OPP
v) Whether the defendant is liable to deliver up the printed material etc to the plaintiff? OPP T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 13 of 31 14
vi) Whether the plaintiff is entitled to a decree of rendition of accounts? OPP
vii) Whether the plaintiff is entitled to money decree for an amount of Rs. 3,05,000/ to wards damages/compensation for the business losses suffered, harassment and mental agony caused to the partners, officers and staff of the plaintiff caused by the unauthorized and illegal acts and deeds of the defendant? OPP
viii) Whether the plaintiff is entitled to the decree of permanent and mandatory injunctions as prayed for in the suit? OPP
ix) Relief.
5. The plaintiff has examined Shri Atul Chandra Dubey as its sole witness as PW1 who has tendered following documents:. Ex. PW1/1 and Ex.PW1/2 which are Form 'A' and 'B' respectively. Ex.PW1/3 which is declaration dated 14.06.2006. Ex.PW1/4 which is certificate of Registration. Ex.PW1/5 and Ex.PW1/6 are copy of additional representations and T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 14 of 31 15 copy of receipt no.424473 dated 09.06.2006 respectively. Ex.PW1/7 which is agreement.
Ex.PW1/8 which is letter dated 28.04.2007.
Ex.PW1/9 which is legal notice dated 12.05.2007. Ex.PW1/10 is public notice published in Rashtriya Sahara dated 17.05.2007.
Ex.PW1/11 which is reply to notice dated 28.04.2007. Ex.PW1/12 which is copy of prospectus issued by the plaintiff. Ex.PW1/13 which is paper cutting of the combined advertisement of all the centers of the plaintiff in the news papers. Ex.PW1/14 which are complaints lodged by the plaintiff against the defendant on 03.05.2007. It has been noted while tendering of affidavit on 18.05.2009 as well as 10.09.2009 that the document manufactured as Ex.PW1/15 is not available on record. Ex.PW1/16 which is photocopy of the letter sent by the defendant to the other centers of the plaintiff.
6. The defendant has not cross examined the said witness. PE was closed on 30.08.2011. No evidence has been led by the defendant, though an opportunity had been afforded. DE was closed on T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 15 of 31 16 09.11.2011.
7. I have heard Shri Chandershekhar, ld. counsel for the plaintiff and Shri S. K. Dhaka, Ld. Counsel for the defendant.
8. Ld. Counsel for the plaintiff has submitted that there is no challenge to the oral and documentary evidence of the defendant as the PW1 has not been cross examined by the defendant despite opportunity. The defendant, being a franchisee of the plaintiff, has acted dishonestly by taking undue advantage of the plaintiff's trade name and trade mark. The plaintiff has proved that the firm is the registered one and the names of its partners is also proved. The person instituting the suit, Shri Atul Chandra Dubey, is one of the partners of the firm. The defendant has only placed the prefix 'Shree' to the trade mark and trade name of the plaintiff. In all other respects the trade mark/trade name is the same. The confusion to the public at large is very much apparent by the dishonest adoption and use by the defendant of the plaintiff's mark/trade name. There is violation of the copyright of the plaintiff also. The defendant is guilty of infringement as well as of passing off. The plaintiff has placed on record the prospectus etc. of the defendant which strikingly shows the adoption T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 16 of 31 17 of marked features. The plaintiff could not lead proper evidence regarding the damages. All other evidence is without any challenge and thus the plaintiff is entitled to the relief as claimed.
9. Ld. Counsel for the defendant has argued that the case of the plaintiff has no legs to stand as it is a false case. The necessary ingredients of the suit are not proved. The franchisee agreement is false and there is no substance in the suit. The case of the plaintiff is a bundle of lies and deserves dismissal with costs. The plaintiff's case is not proved at all. It is prayed that the suit be dismissed.
10. No other point has been argued or urged. No case law has been cited.
11. I have considered the rival submissions and the material on record. My findings on the various issues are as under: Issue no. 1: Whether the suit has been signed and verified by a duly authorized person?
12. The objection of the defendant is on two counts viz. the firm not having been registered and the signatory not being the duly authorized person.
13. The law has been settled on the aspect of the registration of the T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 17 of 31 18 firm in the case of Haldiram Bhujiawal and another Vs. Anand Kumar Deepak Kumar and another, 2000(1) Arb. LR 531 (SC). The relevant extracts from the case are: "9. The question whether Section 69(2) is a bar to a suit filed by an unregistered firm even if a statutory right is being enforced or even if only a Common Law right is being enforced came up directly for consideration in this Court in M/s. Raptokas Brett Co. Ltd. v. Ganesh Property, (1988) 7 SCC 184 : (1998 AIR SCW 2994 : AIR 1998 SC 3085). In that case, Majmudar J speaking for the Bench clearly expressed the view that Section 69(2) cannot bar the enforcement by way of suit by an unregistered firm in respect of a statutory right or a common law right.....
10. The next question is as to the nature of the right that is being enforced in this suit. It is well settled that a passing off action is a common law action based on tort (vide) Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company, (1997) 1 SCC 99 : (1997 AIR SCW 1522 : AIR 1997 SC 1398). Therefore, in our opinion, a suit for perpetual injunction to restrain the defendant not to passoff the defendant's goods as those of plaintiffs by using the plaintiffs' trade mark and for damages is an action at common law and is not barred by Section 69(2)....
T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 18 of 31 19
11. Likewise, if the reliefs of permanent injunction or damages are being claimed on the basis of a registered trade mark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is, in our view, not barred by Section 69(2)..."
14. The plaintiff has tendered in evidence the registration certificate of partnership as Ex. PW1/1 and Form B as Ex. PW1/2. Thus the instant suit of the plaintiff based on a common law remedy of passing off, which is a tort and not based in contract, is not hit by the bar of section 69 of the Partnership Act, 1932 and even otherwise the bar has been overcome by the plaintiff by proving the registration of the partnership firm, which documents have remained unchallenged.
15. As the name of the signatory of the plaint appears in Ex. PW1/1 as one of the partners, and the position of law being that every partner is the principal for himself and the agent of the other partners, there is no infirmity in the institution of the suit or signing of the plaint.
16. The objection of defendant is thus without any substance.
17. In view of the above discussion the finding on this issue is returned in favour of the plaintiff.
T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 19 of 31 20 Issue no. 2: Whether the agreement dated 01.06.2005 is not signed by a duly authorized person for and on behalf of the plaintiff as pleaded in the WS? If so, its effect.
18. The onus of this issue has been on the defendant. The onus has not been discharged by the defendant, as she has not entered into the witness box. Though the onus has not shifted to the plaintiff, it has proved the agreement dated 01.06.2005 as Ex. PW1/7. The testimony of PW1 on this point has remained unchallenged. The agreement has been signed on behalf of the plaintiff by one of its partner namely Shri Atul Chandra Dubey, who is also the signatory of the plaint. He being a registered partner, and as per the settled position of law every partner being the principal for himself and the agent of the other partners, the agreement is duly signed.
19. The finding on this issue is returned against the defendant. Issue no. 3: Whether the defendant has been infringing the trade mark/trade name of GURU NANAK DEV POLYTECHNIC of the plaintiff and the copyright in respect of the logo, printed study material, prospectus etc?
20. The evidence of the plaintiff has remained unrebutted and unchallenged. However the same has to be evaluated to consider as to T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 20 of 31 21 what it proves.
21. As per the section 2(zb) of the Trade Marks Act, 1999 a 'trade mark' means: "2(zb): "trade mark" means a mark capable of be ing represented graphically and which is capable of distinguishing the goods or services of one per son from those of others and may include shape of goods, their packaging and combination of colours; and
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in relation to goods or ser vices for the purpose of indicating or so as to indi cate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the pur pose of indicating or so to indicate a connection in the course of trade be tween the goods or services, as the case may be, and some person having the right, either as propri etor or by way of permitted user, to use the mark whether with or without any indication of the iden T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 21 of 31 22 tity of that person, and includes a certification trade mark or collective mark;"
22. A trade mark also includes trade name. Under the TMA 1999 service marks are also recognized which was not the position under the TMMA 1958. However, the remedy of infringement is available only in respect to the trade marks which are registered and this is ap parent from a plain reading of section 27 of TMA 1999 as under: "27. No action for infringement of unregistered trade mark: (1) No person shall be entitled to institute any pro ceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."
23. Admittedly the mark of the plaintiff is not registered. The plain tiff has relied upon a declaration as Ex. PW1/3. The same cannot be treated to be a certificate of registration of trade mark. It is the settled law that if the statute has prescribed that a particular thing be done in a particular manner, it must be done in that manner only and all other T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 22 of 31 23 ways are forbidden. There is well defined procedure under the law for registration of trade mark. Admittedly, the plaintiff has no regis tration of trade mark to back it. Thus no case of infringement is made out.
24. As far as the copyright is concerned, the registration is not the sinequanon as the copyright comes into subsistence immediately on creation of the original literary, dramatic, musical or other works in which copyright subsists. However for finding out the infringement of copyright, the two works must be placed before the Court to find out whether there has been any substantial reproduction. The various tuto rials, lectures etc. have not been placed by the plaintiff for the scrutiny of the Court. Hence the question of infringement of copyright does not arise.
25. Hence the finding on this issue is returned against the plaintiff. Issue no. 4: Whether the defendant has been passing off the name of the plaintiff?
26. A trade mark is in fact a pseudo intellectual property. It is for the reason that a trade mark is not respected for its artistic quality, for its design or some novelty in it. A trade mark is recognized in it's T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 23 of 31 24 ability to distinguish the goods and services of its proprietor, as flowing from that particular person. Thus it is a pointer or a source identifier for goods and services. While the other IPRs have a limited life span of monopoly of its proprietor and thereafter they pass into the public domain, it is just the other way round for a trademark. The trade mark remains the monopolistic property of its proprietor perpetually provided its registration is kept alive (if registered) or if unregistered it is used in connection with goods and service continuously. A trade mark is thus a repository of goodwill of its proprietor. With the passage of time there is value addition in the trade mark commensurate with the reputation and goodwill of the business. Thus trade mark and goodwill are more or less synonyms of each other.
27. Passing off is a remedy based in common law. It is an actionable tort. A fine distinction has been drawn between what are the salient distinguishing features of an action for passing off visà vis an action for infringement in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SUPREME COURT 980. A passing off involves likelihood of deception and T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 24 of 31 25 confusion to the consumer of goods or services, and thus the violator sells his goods or services in the garb as if they flow from some other producer or manufacturer and thus he takes a ride on the goodwill of that person.
28. In Parle Products (P) Ltd. v. J. P. and Co., Mysore AIR 1972 SUPREME COURT 1359 it has been held:
'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. It is of no use to note on how many points there is similarity and in how many others there is absence of it."
29. Thus the yardstick is based on the reality test--as a consumer in T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 25 of 31 26 the market. If he is likely to be deceived or taken for a ride, then there is deceptive similarity. Thus, these are the broad features of a particular mark, its general or overall impression that is the relevant consideration. These are the broad features and not the meticulous details that remain in the mind of the consumer. There is also the factor of imperfect recollection at play. Thus side by side comparison of two marks is not the true test. The numerical count of similarities or dissimilarities is also immaterial.
30. The trade mark/trade name of plaintiff is GURU NANAK DEV POLYTECHNIC. The trade mark of plaintiff comprises of the name of 'Guru Nanak" which is the name of the first revered guru (saint) of the followers of Sikhism. Thus no one can claim a monopoly in the name of "Guru Nanak" and it is within the realm of common heritage. Thus when the plaintiff has adopted the same as part of its trade name or trade mark, with due reverence, it being in the public realm, the plaintiff has put itself to the weakest position as far the hierarchy of trade marks is concerned. If we look at the hierarchy of marks from weak to strong in the spectrum of distinctiveness the following lineage appears: T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 26 of 31 27 GENERICDESCRIPTIVESURNAME SUGGESTIVEARBITRARYINVEN TED
31. However the fact which is relevant in the present case, amongst others, is that the defendant has been the erstwhile franchisee of the plaintiff, as established by a meaningful reading of the pleadings, the agreement Ex. PW1/7 and the oral evidence of PW1. Thus the defendant has not offered any explanation as to why on earth it did not use any other word except 'Shree Guru Nanak' as its trade mark/trade name for the sale and propagation of its services which are identical or similar to that of the plaintiff. While the defendant remained a franchisee of the plaintiff, it has at least the knowledge of the trade name of the plaintiff containing the word 'Guru Nanak'. She cannot feign any ignorance of the same. The defendant being the erstwhile franchisee of the plaintiff concern has been bound to observe highest level of integrity visàvis the trade name/mark of the plaintiff. Thus the acts of the defendant in adopting the trade name/trade mark 'Shree Guru Nanak" is per se dishonest and perpetuated by motives to ride upon the goodwill of the plaintiff. The mark as adopted by the T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 27 of 31 28 defendant is deceptively similar to the mark/name of the plaintiff and likely to cause confusion in the mind of the general public including the students, franchisee, teachers and other consumers of services of plaintiff. The word 'Shree' does not create any distinguishing features in itself. Thus there is every likelihood of deception to a prudent person of ordinary intelligence and imperfect recollection more so when such person does not have two competing marks side by side for comparison.
32. Thus on the basis of the material on record, the finding on this issue is returned in favour of the plaintiff.
Issue no. 5 Whether the defendant is liable to deliver up the printed material etc to the plaintiff?
33. In view of my findings on the issue no. 4, the defendant is liable to deliver up all the material which is the subject matter of the violation of the trade mark/trade name of the plaintiff to the plaintiff.
34. This issue is answered accordingly.
Issue no. 6: Whether the plaintiff is entitled to a decree of rendition of accounts?
& Issue no. 7: Whether the plaintiff is entitled to money decree for T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 28 of 31 29 an amount of Rs. 3,05,000/ towards damages/compensation for the business lossess suffered, harassment and mental agony caused to the partners, officers and staff of the plaintiff caused by the unauthorized and illegal acts and deeds of the defendant?
35. The plaintiff has not led any cogent evidence for the damages. The reasons are not far to seek as the tangible and material evidence in this regard is within the control and power of the defendant. The defendant has not entered into the witness box, thus the material information on the above issues, which is within the personal knowledge of the defendant, could not be elicited.
36. As regards the of rendition of accounts, I am of the view that though the defendant has used the plaintiff's trade mark/ and logo for quite some time but the exercise of rendition of very complex in view of the numbers of transactions involved; categorization/bifurcation of transactions into different slots where the plaintiff's goodwill has been exploited and where it has not been so exploited being a stumbling block; cumbersome calculations involved; the case being more than five years old and a host of other relevant factors particular to the case, the remedy of rendition of accounts may not be appropriate. On the contrary, it may involve such costs and expense T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 29 of 31 30 which is avoidable. In my view, instead of rendition of accounts lumpsum and consolidated damages can be awarded and in the facts and circumstances of case, a sum of Rs. 1,00,000/ as token damages would meet the ends of justice.
37. The issues are answered accordingly.
Issue no. 8: Whether the plaintiff is entitled to the decree of permanent and mandatory injunctions as prayed for in the suit?
38. In view of my findings on the above issues the plaintiff is entitled to the relief of permanent injunction.
RELIEF In view of my findings on the above issues, the plaintiff is entitled to the following reliefs which are hereby awarded as under:
(i). A decree of permanent injunction restraining the defendant, her agents, representatives, assigns, officers, partners, servants, administrators etc. from using the trade mark/trade name GURU NANAK DEV POLYTECHNIC, its logo etc. either in whole or in part etc. in any manner deceptively similar or nearly resembling the plaintiff's trade mark in any way in connection with the education or similar business in any manner as to pass off her services as if they T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 30 of 31 31 originate from the plaintiff..
(ii). A decree for a sum of Rs. 1,00,000/ (Rupees One Lakh Only) as token consolidated damages to the plaintiff payable by the defendant in lieu of a decree for rendition of accounts.
(iii). A decree for orders of delivery up etc. of all the incriminating material violating the plaintiff's trade mark/trade name like publicity/promotional material, stationery items, letter heads/printed material, etc. by the defendant, their agents representatives, assigns, officers, partners, servants, administrators etc. to the plaintiff for destruction.
(iv). The defendant shall also pay the cost of the present suit to the plaintiff.
39. Decree sheet be drawn accordingly.
40. File be consigned to Record Room.
Announced in the Open Court On this 09th day of October, 2012 (MAN MOHAN SHARMA) ADJ (Central)1, Delhi T.M. No. 123/2011 Global Avenue vs. Samridhi Yadav Page 31 of 31