Delhi District Court
Nav Jagriti Niketan Education Society vs New Sethi Stores And Anr on 22 October, 2024
IN THE COURT OF SHRI PANKAJ GUPTA:
DISTRICT JUDGE, (S/W) (COMMERCIAL COURT)-01,
DWARKA COURTS : DELHI
CS (COMM) NO. 144/2019
CNR No. DLSW01-010525-2019
IN THE MATTER OF:
Nav Jagriti Niketan Education Society,
Through its Authorized Representative,
Sh. Dharmender Tyagi,
Office at: Sector-23, Dwarka,
New Delhi-110077.
......PLAINTIFF
VERSUS
1. M/s. New Sethi Stores,
Through its Proprietor/ Partners/ Directors,
Shop at: K-1/6, Rajapuri, Main Road,
Opposite Sector-05, Dwarka, Delhi-110059.
Also at:
22, Bhera Enclave, Paschim Vihar, Delhi.
2. M/s. Haratt's
Through its Proprietor/ Partners/ Directors,
Shop at: BN-10, Shalimar Bagh, Delhi-110034.
Also at:
Pocket D-10, D-10/1,
Bhagawan Mahavir Marg, Pocket 10,
Sector-08, Rohini, Delhi-110085.
Also at:
E-975, Rd No. 44,
Block E, Saraswati Vihar,
Pitam Pura, Delhi-110034.
........DEFENDANTS
Date of Institution : 11.09.2019
Date when the case reserved
for Judgment : 22.10.2024
Date of Judgment : 22.10.2024
CS No. 144/2019
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Ms. New Sethi Stores & Anr. Page No.1 of 30
JUDGMENT
1. The plaintiff has filed the suit for permanent injunction seeking injunction restraining the infringement of its registered trademark, passing off, rendition of account and damages against the defendants.
2. In the plaint, it is stated that the plaintiff, a society registered under the Societies Registration Act, 1860, is formed with the object of establishing schools in and outside Delhi. In 2003, the plaintiff opened a school under the trade name "Delhi International School" at Sector-23, Dwarka, Delhi; in 2007, at Sector-18, Dwarka, Delhi; and in 2012, at Sector-13, Rohini, Delhi. The plaintiff is affiliated with Central Board of Secondary Education (CBSE). Since 2003, the plaintiff has been using the trademarks "Delhi International School", "DIS", "DIS Label/Logo" and "DIS KIDS" in relation to the schools established by it and on the school uniform, stationery, letterheads, admission cards, identity cards etc. The plaintiff also displays its school, the goods and the services under the trademark through its website namely www.dis.ac.in.
3. In the plaint, it is also stated that by the passage of time, the plaintiff's trademarks have acquired secondary meaning, the goodwill and reputation in India as well as in the international market. The plaintiff's trademarks have also acquired the distinctiveness by passage of time. As such, the plaintiff's trademarks are also the well-known CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.2 of 30 trademarks. The plaintiff also has the copyright in the artistic work existing in the trademarks.
4. It is also stated that vide registration no. 1208890 and 1337019, "DIS" is registered as the word mark in Class-16 and Class-41 respectively. Vide registration no. 1208889, "DIS KIDS" is registered as the word mark in Class-16. Vide registration no. 1288909, the trademark "Delhi International School (Label)" is registered in Class-41. Registration of "DIS" (logo) under Class-35, Class-39, Class-41 and Class-43 is pending.
"Delhi International School "DIS" (logo) (Label)"
Registered Registration Pending
5. It is also stated that in August 2019, the plaintiff came to know that the defendants were using the trademarks in relation to school uniforms and education accessories like belts without the permission of the plaintiff. They were also displaying the trademarks on the internet and various web links of the social media site like www.indiamart.com, www.youtube.com etc. The said trademarks are deceptively similar to the plaintiff's trademarks. As such, the defendants have infringed the trademarks of the plaintiff. The public at large considers the defendants' products to be those of the plaintiff. Accordingly, the defendants are causing harm to the goodwill of the plaintiff. As such, the defendants are also passing off their goods as that of the plaintiff.CS No. 144/2019
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6. It is also stated that the plaintiff has incurred huge expenses on business promotion and advertisement of its products/ goods under the said trademark. However, the defendants, by their illegal act, intend to encash the goodwill built up by the plaintiff over time. Hence, the present suit.
7. Notice of the suit was served upon the defendants and in response thereto, they have filed a separate written statement (WS).
8. In WS, the defendant no. 1 objected that the plaintiff has filed the suit without complying with the provision of section 12(A) of the Commercial Courts Act, 2015 (CCA) and has also not filed the statement of truth in terms thereof; that the suit is bad for non-joinder of CBSE because the CBSE is to acknowledge that the plaintiff is violating the rules; and that the suit is bad for misjoinder of the defendant no. 2. The suit is barred under section 3 and 4 of the Competition Act, 2002 because under the garb of the present suit, the plaintiff intends to dominate the market. On merit, it is stated that the plaintiff is running the school to impart the education. Therefore, in terms of Rule 15(b) of Right of Children to Free and Compulsory Education Rules 2010, Rule 19(1)(ii) Chapter (iv) of the Affiliation Byelaws framed by Central Board of Secondary Education (CBSE), circular dated 21.02.2011 issued by CBSE and section 50(iv) and (ix) of Delhi School Education Act and Rules 1973, the plaintiff cannot indulge in the commercial activities. However, the plaintiff in violation of the above-
CS No. 144/2019Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.4 of 30 mentioned rules, is selling the school uniform. Hence, the plaintiff's school may be de-recognized.
9. In WS, it is also stated that the plaintiff's trademark "DIS" and "DIS KIDS" have been registered as the word mark only in relation to the books, printed publications, papers, articles and teaching materials etc. under clause 16. However, the word mark "Delhi International School" has not been registered in class 41 pertaining to education and its registration has been pending since 2013. It is admitted that the defendant no. 1 is selling the plaintiff's school uniform falls under classes 18, 24 and 24 of Schedule IV of Trade Mark Rules 2002 and it does not have a registered trademark in respect of the said class of goods/ services. The trademarks have also not been declared as "well-known"
trademarks by any court or the Registrar of Trade Marks under section 11(6) & (8) of the Trade Marks Act, 1999.
10. In WS, it is also stated that the usage of the word mark "DIS" by the defendant no. 1 is only to indicate that the uniform is so adapted to that school. Therefore, those are protected under section 30(2)(d) of the Act. The school uniform sold by the defendant no.1 is of high quality and is available at a lower price than the price of the uniform sold by the plaintiff in the tuck shops being operated from the plaintiff's school premises. Further, the defendant no. 1 is also selling the school uniforms of various reputed schools like Delhi Public School etc, without any objection whatsoever. As such, the usage of trademarks by the CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.5 of 30 defendant no. 1 is an honest practice in the industry. Hence, it is prayed that the suit may be dismissed.
11. In WS, the defendant no. 2 stated that it has been carrying on the business related to clothes and uniforms since 2011 and has been supplying the school uniforms to the students of the plaintiff's school on the basis of an oral agreement between it and the plaintiff which was subsequently reduced into a written agreement dated 01.04.2023. Further, the defendant no. 2 is dealing with the goods with which the plaintiff is not dealing. Hence, it is prayed that the suit may be dismissed.
12. The plaintiff filed the replication to the WS and reiterated the averments made in the plaint.
13. The following issues were framed:-
1. Whether the plaintiff is entitled to the decree of permanent injunction as prayed in the plaint? OPP
2. Whether the plaintiff is entitled to the decree of rendition of account as prayed in the plaint ? OPP
3. Whether the plaintiff is entitled to the decree of damages of Rs. 20,01,000/- as prayed in the plaint? OPP
4. Relief.CS No. 144/2019
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14. The plaintiff to prove its case has examined Dharmender Tyagi as PW-1 and his affidavit in evidence is Ex.PW1/A. He relied upon the following documents:-
1. Authorization dated 02.09.2019 Ex. PW1/1.
2. The original shirt and belt with invoices qua the defendant no. 1 Ex. PW1/2 (colly).
3. The original shirt and belt with invoices qua the defendant no. 2 Ex. PW-1/3 (colly).
15. PW-1 was cross-examined by counsel for the defendants.
16. The defendant no. 1 has examined Naveen Sethi as DW-1 and his affidavit by way of evidence Ex. DW-1/A. He relied upon the following documents:-
1.Copy of Statutory Affiliation bye laws notified Ex. DW- 1/1.
2.Copy of circular dated 21.02.2011 issued by CBSE Ex. DW-1/2.
3. Copy of two invoices Mark X (Ex. DW-1/3 is de-
exhibited).
17. DW-1 was cross-examined by counsel for the plaintiff.
18. The defendant no. 2 failed to lead evidence despite given opportunity. Hence, vide order dated 23.08.2024, the evidence of the defendant no. 2 was closed.
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19. I have heard counsel for the plaintiff and counsel for the defendant no.1 and have perused the material available on record.
20. Perusal of the record reveals that the plaintiff filed the present suit on 09.09.2019 and it was assigned to the ordinary civil court. Subsequently, in terms of a circular dated 09.12.2019 passed by the then Ld. Principal District & Sessions Judge, South-West, Dwarka, Delhi, the suit was transferred to the Commercial Court and was taken up for hearing for the first time on 25.01.2020. Along with the plaint, the plaintiff moved the application under order 39 Rule 1 and 2 of CPC seeking relief of urgent nature. Accordingly, the plaintiff was exempted from the applicability of section 12(A) of CCA. Hence, non- compliance with a provision of section 12(A) CCA is not fatal to the case of the plaintiff.
21. Admittedly, the plaintiff did not file the statement of truth along with the plaint. However, as discussed above, the plaintiff filed the present suit before the ordinary civil court which was subsequently, transferred to the Commercial Court, hence, non-filing of the statement of truth is not fatal to the case of the plaintiff.
22. Not the least, as evident from the record, in the present suit, the defendant no. 1 moved the application under order 7 Rule 11 of CPC seeking rejection of the plaint on the abovementioned grounds. Vide order dated 05.03.2024, the said application was dismissed with a cost CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.8 of 30 of Rs. 5,000/-. As per the record, the said order is final as of date. Therefore, the defendant no. 1 cannot re-agitate the same issue.
23. Counsel for the defendant no. 1 also pleaded that the suit is barred under sections 3 and 4 of Competition Act 2002. While deciding the application under Order 7 Rule 11 of CPC moved by the defendant no. 1, this court in its order dated 05.03.2024, specifically dealt with the said objection and held that the present suit was not barred under sections 3 and 4 of Competition Act 2002 and the said order is final as on date. Accordingly, the defendant no. 1 cannot re- agitate the same issue.
24. Counsel for the defendant no. 1 pleaded that the suit is bad for mis-joinder of the defendant no. 2.
25. It is a specific case of the plaintiff that both defendants are selling the school uniforms of the plaintiff's schools using its trademarks without its permission. As discussed below, both defendants admitted the said fact. As such, the grievance of the plaintiff is against the same act of both defendants. Hence, there is no substance in the plea raised by counsel for the defendant no.1 to this effect.
26. In the plaint, it is pleaded that the plaintiff is a registered society under the Societies Registration Act, 1860 vide registration no. S31389 of 1997. In the year 2003, the plaintiff opened a school under the name and style "Delhi International School" at Sector-23, Dwarka, New Delhi. In CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.9 of 30 the years 2007 and 2013, the plaintiff opened other schools at Sector-18, Dwarka, New Delhi and Sector-13, Rohini, New Delhi respectively. During the course of arguments, counsel for the defendant no. 1 raised the dispute to this effect.
27. In the present case, PW-1 proved the chart of the plaintiff's registered/pending trademarks along with the applications Ex.PW-1/D1 at the instance of the defendant wherein the plaintiff is described as the proprietor which applied for registration of the trademark subject matter of the specific application and the purpose for which it was applied, is also mentioned in the particular application. Further, PW1 specifically deposed that the plaintiff is engaged in running schools that are affiliated with CBSE Board. In cross-examination of PW1, no suggestion to the contrary was given by counsel for the defendant no. 1. Further, as discussed in later part of the judgment, the trademarks belong to the plaintiff. Hence, there is no substance in the plea raised by counsel for the defendnt no. 1 to this effect.
28. It is specific case of the plaintiff that in the year 2003, it honestly conceived the trademarks "Delhi International School", "DIS", "DIS Label/Logo" and "DIS KIDS" in relation to its schools and education goods & services and since then, it is using them to disseminate the knowledge and information. Over the period, the trademarks have built up goodwill and reputation in the market. As such, the plaintiff is the owner/ proprietor and prior user of the CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.10 of 30 trademarks. The plaintiff has allowed the usage of the trademarks concerning the schools and its goods & services including the school uniform to different franchisees. However, without authorization of the plaintiff, the defendants have been using the trademarks on the plaintiff's school uniform and belt.
29. PW1 specifically deposed that the plaintiff is using the trademarks "Delhi International School", "DIS", "DIS Label/Logo" and "DIS KIDS" in relation to the schools established by it and on the school uniform, stationery, letterheads, admission cards, identity cards etc. and proved the chart Ex. PW1/D1 perusal of which reveals that vide registration no. 1208890 and 1337019, "DIS" is registered as the word mark in Class-16 and Class-41 respectively; vide registration no. 1208889, "DIS KIDS" is registered as the word mark in Class-16; and vide registration no. 1288909, the trademark "Delhi International School (Label)" is registered in Class-41. Registration of "DIS" (Logo) under Class-35, Class-39, Class-41 and Class-43 is pending. Perusal of the said list also reveals that the plaintiff applied for registration of "DIS" and "DIS KIDS" on 24.06.2003 while applied for registration of "Delhi International School" on 09.06.2004. The plaintiff applied for registration of the trademark "Delhi International School" label on 09.06.2004 and "DIS" logo on 20.06.2013 under various categories. The defendant no. 1 has admitted the said facts. In cross examination of PW-1, no suggestion was given by counsel for the defendant no. 1 that the plaintiff is not using the trademarks "Delhi International CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.11 of 30 School", "DIS", "DIS label/Logo" and "DIS KIDS" in relation to the schools and the education related items.
30. It is evident from the photographs Ex. PW1/2 (colly) and Ex. PW1/3 (colly) which is not disputed by the defendants that the defendants are using the trademarks "DIS" and "DIS logo" on the school uniforms being manufactured by them. Further, the trademark "DIS" on the button of the school shirts as shown in Ex. PW1/2 (colly) and Ex. PW1/3 (colly), is same as the trademark "DIS" registered in favour of the plaintiff. The defendant no. 2 also used the trademark "DIS" on the plaintiff's school belt.
31. As discussed below, the plaintiff is a prior user of the "DIS logo" in which a tree with artistic work is predominantly shown with the word DIS at its bottom in a circle and the same has been pending for registration since 2013. The identical tree with the same features as shown in "DIS logo" is on the pocket of the shirts Ex. PW1/2 (colly) and Ex. PW1/3 (colly) though the word "DIS" and the circle are missing therein. DW-1 in his cross-examination admitted that the defendant no. 1 is selling the school uniform with the trademarks "DIS" and "DIS" logo of the plaintiff. As such, it is evident from the WS of the defendants and cross-examination of DW1 that the defendants are selling the school uniforms using the trademarks of the plaintiff with full knowledge that those trademarks belong to the plaintiff.
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32. In view of the foregoing discussions, it can be held that the defendants are using the trademark "DIS" which is identical and the trademark "DIS logo" which is deceptively similar to the plaintiff's trademark.
33. It is the specific case of the plaintiff that the defendants are using its registered trademarks "DIS" and "DIS logo" without its permission.
34. Now the question arises as to whether the usage of the plaintiff's registered trademark "DIS" on the school uniform of the plaintiff, by the defendants amounts to infringement of the trademark.
35. Before proceeding further, it is mentioned that counsel for the defendant no. 1 strenuously pleaded that that the plaintiff is engaged in imparting education and therefore, it cannot indulge in the commercial activities. The plaintiff's trademarks are not registered under class 25 of Schedule IV of Trade Mark Rules 2002 which exclusively pertains to the school uniform. On the other hand, the defendant no. 1 is selling the school uniform which falls under clauses 18, 24 and 25 of Schedule IV of Trade Mark Rules 2002. Therefore, the plaintiff has no right to object to the same. On the contrary, the defendant no. 1 has every right to use the trademarks.
36. If one looks at the classification, he will find goods of the same description in one sense in different classes, and he will find goods of different descriptions in the same class.
CS No. 144/2019Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.13 of 30 Physical or chemical attributes of the goods are not relevant to determine whether the goods fall in the same class or would fall in the same description. The test of similarity of goods is looked at from a business and commercial point of view. The nature and composition of the goods, the respective uses of the articles and the trade channels through which they are brought and sold all go into consideration in this context. The test also has to be, what is the trade channel through which the goods reach the consumer and which class of consumers purchase the goods. Hence, the classification of goods and services adopted by the Registry or the International classification is not the determining or guiding factor for ascertaining similarity of goods/service. The classification system is an administrative framework to facilitate the search for conflicting marks and examination by the Trade Marks Registry. Hence, whether or not two sets of goods or services are of the same description is not to be decided on the basis of the classification of the goods and services given in the Schedule IV of Trade Mark Rules 2002 (4th Schedule has now been omitted in the revised rules). Reliance is placed upon the judgment " Australian Wine Importers TM case [(1889) 6 RPC 311]".
37. In view of the foregoing discussion, it can be held that classification of the goods and services by the Trade Mark Registry is merely an administrative act. The real test is as to how a consumer shall treat particular trade mark with respect to the goods and services. Hence, non registration of the plaintiff's trademarks under class-25 is not fatal to the case of the plaintiff. On the other hand, the defendant no. 1 CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.14 of 30 has failed to explain that if the plaintiff's trademarks are not registered under class 25 of Schedule IV of Trade Mark Rules 2002 which exclusively pertains to the school uniform and the school uniform sold by it falls under clause 18, 24 and 25 of Schedule IV of Trade Mark Rules 2002, then as to why it has not applied for registration of the trademarks used by it on the school uniform. Hence, there is no substance in the plea raised by counsel for the defendant no.
1.
38. In the judgment titled as "Renaissance Hotel Holdings Inc. versus B. Vijaya Sai and others, reported in (2022) 5 SCC 1, the Supreme Court held:
"34. Sub−section (1) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
35. Sub−section (2) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.CS No. 144/2019
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36. Sub−section (3) of Section 29 of the said Act is of vital importance. It provides that in any case falling under clause (c) of sub−section (2) of Section 29 of the said Act, the court shall presume that it is likely to cause confusion on the part of the public.
37. A perusal of sub−section (2) of Section 29 of the said Act would reveal that a registered trade mark would be infringed by a person, who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of the three eventualities mentioned in clauses (a), (b) and (c), is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. The first eventuality covered by clause
(a) being its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark. The second one covered by clause (b) being its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark. The third eventuality stipulated in clause (c) would be its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark.
38. It is, however, pertinent to note that by virtue of sub− section (3) of Section 29 of the said Act, the legislative intent insofar as the eventuality contained in clause (c) is concerned, is clear. Sub− section (3) of Section 29 of the said Act provides that in any case falling under clause (c) of sub− section (2) of Section 29 of the said Act, the Court shall presume that it is likely to cause confusion on the part of the public.
39. Sub−section (4) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or similar to the registered trade mark; and is used in relation to goods or services which are not similar to those for which the trade mark is registered; and the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
48. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.16 of 30 by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.
50. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get−up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in a case of infringement of the trade mark, whereas in the case of a passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
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39. In the judgment titled as "TODAY TEA LTD. versus TODAY FOODS PVT. LTD.", passed by the Delhi High Court in CS (COMM) 464/2018 on 25.04.2019, it was held:
"15. There is no doubt that the Plaintiff uses the mark „TODAY‟ in respect of tea. The Plaintiff is also the registered proprietor of the mark „TODAY‟ in respect of tea and various other products under clause 30, which are as under:
"Coffee, Tea , Cocoa, Sugar, Rice, Tapioca, Sago, Coffee substitutes, Flour and preparations made from cereals, Bread, Biscuits, Cake, Pastry, Rusk and Confectionery, Ices, Honey, Treacle, Yeast, Baking powder, Salt, Mustard, Pepper, Vinegar, Sauces and Ice."
16. The Defendant‟s original business packagings are on record and are admitted documents. It is common knowledge that tea and biscuits go hand in-hand. Though, the Plaintiff does not manufacture biscuits under the mark „TODAY‟, the Plaintiff is registered for the said mark. The usage of tea and biscuits together by most of the population is a fact that the Court cannot ignore. In fact, tea and biscuits are goods of the same description as also cognate and allied products, much like other products which are used together such as tooth paste and toothbrush, shoe-polish and shoe- brushes, etc. The mark „TODAY‟ has acquired enormous reputation and goodwill. The opposition of the Plaintiff has also succeeded against the Defendant‟s mark. The Defendant has also, in fact, not led any evidence, though it has contested the matter for so many years against the Plaintiff. The Plaintiff being the registered owner of the mark and having established statutory right in the mark „TODAY‟, is entitled to permanent injunction against the Defendant from using the mark „TODAY‟. Use of an identical mark in respect of tea and biscuits is bound to result in confusion and deception as the said products are stored, served and consumed together. . Use of an identical mark for tea and for biscuits would create an immediate connection that they originate from the same source. The Plaintiff‟s TODAY tea being extremely well known, use of an identical mark for biscuits is bound to result in confusion and deception. Thus passing off is inevitable.
17. Tea and biscuits are products which fall in class
30. Under Section 29, use of a registered trade CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.18 of 30 mark in respect of similar goods constitutes infringement. Thus the use of the mark TODAY for biscuits is violative of the rights of the registered trade mark owner."
40. In the judgment tiled as "Vicky Aggarwal and Others Versus AB Mauri India Pvt. Ltd.", reported in 2024 SCC OnLine Del 4946, the Delhi High Court held:
"21. In the present case, there is no dispute that the trademark used by the appellants in connection with dry fruits is similar to the plaintiff's trade mark 'TOWER'. However, the appellants contend that Section 29(2)(b) of the Trade Marks Act is not applicable because the goods are not similar. In terms of Section 29(2)(b) of the Trade Marks Act, use of a mark similar to a registered trade mark, which is likely to cause confusion on the part of the public or is likely to indicate association with the registered trademark because of the similarity of the mark with the registered trademark and identity or similarity of goods and services covered by the said trademark would be infringing use. Thus, use of the trademark similar to a registered trademark in respect of allied or cognate goods which are likely to cause confusion or indicate association with the registered trademark, would constitute infringement of the registered trademark in terms of Section 29 (2)(b) of the Trade Marks Act. The learned Single Judge had rejected the contention that dry fruits are not allied or cognate to the goods in respect of which the trade mark 'TOWER' is registered in favour of the plaintiff. The learned Single Judge had reasoned that dry fruits and raisins were commonly used in bakery products. Further, both the products in respect of which the plaintiff's trade mark is registered and dry fruits fall in the same class - Class 29 of the Nice Classification. We concur with the said reasoning. Undisputedly, dry fruits are commonly used in bakery products. It is quite likely that the use of similar trade marks in respect of bakery products and dry fruits would lead to a presumption of association between the marks viewed from a standpoint of a person of average intelligence and imperfect recollection."CS No. 144/2019
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41. In view of the above cited judgments, it can be held that use of the trademark similar to a registered trademark in respect of allied or cognate goods which are likely to cause confusion or indicate association with the registered trademark, would constitute infringement of the registered trademark in terms of section 29 (2)(b) of Trade Marks Act, 1999.
42. It is evident from the record that the students studying in the plaintiff's school are purchasing the school uniform with the trademarks of the plaintiff from the defendants. One of the schools run by the plaintiff is situated in Sector- 23, Dwarka, New Delhi and the shop of the defendant no. 1 is also situated at sector-05, Dwarka, New Delhi. As such, it can be held that the defendant no. 1 is selling the school uniform to the students studying in the plaintiff's school using the same trademark in the same area. Accordingly, those students are purchasing the school uniform and belt under the impression as if those were manufactured by the defendants under the instructions of or with authority of the plaintiff. Those students or their parents being laymen cannot be expected to know the rules cited by counsel for the defendant no. 1 which prohibits the plaintiff from directly engaging in selling the uniform to the students as alleged. Simultaneously, CBSE or other authorities may get the impression as if the plaintiff is directly involved in the commercial activity by selling the school uniform through the defendants. Hence, these are goods of the same description as also cognate and allied products, much like other products that are used together such as toothpaste and CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.20 of 30 toothbrushes, shoe polish and shoe brushes, etc. Hence, use of an identical mark in respect of the school uniform and belt is bound to result in confusion and deception as the said goods are served to and utilized by the same student of the same school. Hence, it would create an immediate connection that they originate from the same source and would lead to a presumption of association between the marks viewed from a standpoint of a person of average intelligence and imperfect recollection. Under section 29, the use of a registered trademark in respect of similar goods constitutes infringement. Thus the use of the mark "DIS" for uniform and belt is violative of the rights of the registered trademark owner.
43. Counsel for the plaintiff also pleaded that the defendants are selling the school uniform using the plaintiff's trademark "DIS logo" without permission of the plaintiff and the same have been purchased by the plaintiff's students. In this way, on the one hand, the defendants are earning money/ profit which they are not entitled to while on the other hand, their said act gives the impression to the students and their parents as if, the plaintiff is manufacturing the uniform or has authorized the defendants to manufacture the uniform on its behalf and sale the same on profit sharing basis. As such, the defendants are passing off their goods as that of the plaintiff. In that way, the defendants are also causing harm to its reputation, goodwill and financial loss. Similar submissions are made by counsel for the plaintiff w.r.t. the trademark "DIS" also.
CS No. 144/2019Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.21 of 30 "DIS" logo Registration Pending
44. Admittedly, the defendants are using "DIS logo" on the uniform of the plaintiff's school without permission of the plaintiff. As discussed above, that trademark is deceptively similar to the plaintiff's trademark.
45. PW-1 in his cross-examination specifically deposed that no one can sell the uniform by putting the logo of the plaintiff's school without its permission. In cross examination of PW-1, no suggestion was given by counsel for the defendant to the plaintiff that the defendant no. 1 is not using the trademark on the school uniform pertaining to the plaintiff's school or that for that purpose, it has taken the plaintiff's permission or it has ever applied with the competent authority to use the trademark on the school uniform manufactured by it. In cross examination of PW-1, no suggestion was given by counsel for the defendant no. 1 that the plaintiff is not owner/ proprietor of the trademarks or that the plaintiff has not been using the trademarks since the year 2003 or that the plaintiff is not the prior user of the trademarks or that the defendant no. 1 is the prior user of the trademarks or that the trademarks used by the defendant no. 1 are not the similar or deceptive in nature as that of the trademarks used by the plaintiff or that the defendant no. 1 does not require any permission from the plaintiff to sale CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.22 of 30 uniform using its trademarks because the plaintiff has no right over those trademarks.
46. To this effect, DW-1 in his cross-examination specifically deposed that the defendant no. 1 is not authorized by the CBSE or Directorate of Education to sell uniform. He also admitted that the defendant no. 1 has not applied for a trademark of any school including the subject trademarks to use on the school uniform. He also deposed that the defendant no. 1 being a business entity used to earn profit by selling school uniforms. He admitted that the defendant no. 1 usually sells school uniforms with the trademark of the plaintiff for Rs. 2,00,000/- 3,00,000/- approximately.
47. In WS, the defendant no. 2 also admitted that it is using the trade marks on the school uniform and belt.
48. The defendants have failed to explain if the trademark has not earned the goodwill and reputation in the market then as to why they are selling the uniform using those trademarks. As deposed by DW-1 in his cross-examination, the defendant no. 1 being the business entity is selling the uniforms on profits. Hence, it can be held that the defendants by selling the uniform using the trademark of the plaintiff is earning the profit. This fact proves that the plaintiff's trademarks have earned a reputation and goodwill in the market.
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49. In view of the foregoing discussions, it can be held that the defendants are using the trademark "DIS logo" on the school uniforms of the plaintiff that too without its permission and selling them to the students. Accordingly, the defendants are passing off their goods as that of the plaintiff. For the same reasons which are not being repeated herein for the sake of brevity, it is can be held that the usage of the trademark "DIS" by the defendants on the school uniform of the plaintiff that too without its permission also amounts to passing off their goods as that of the plaintiff.
50. Counsel for the defendant no. 1 pleaded that the plaintiff's trademark is not a well-known trademark within the meaning of section 29 (4) of the Trademarks Act, 1999, hence, the plaintiff is not entitled to the relief as prayed for.
51. Under section 29(4)(c) of Trade Mark Act, 1999 there is no requirement for the plaintiff to prove that its registered trademark is well known. Under the said provision, the plaintiff is only to prove that its registered trademark has a reputation in India. However, as held above, the plaintiff's case is covered under section 29(2) of the Trademark Act, 1999. Hence, there is no substance in the plea raised by counsel for the defendant no. 1.
52. Counsel for the defendant no. 1 also pleaded that the trademarks used by the defendant no. 1 are indicative in nature and as honest practice in commercial matters. Hence, the defendants cannot be held liable for infringement of the trade marks.
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53. As held above, the defendants being fully aware that the trademarks belong to the plaintiff, are using the same on the school uniform of the plaintiff and selling those school uniform to the students. The defendant no. 1 has failed to lead any evidence to prove that the usage of the trademarks by it is indicative in nature and is in accordance with the honest practice in industrial or commercial.
54. Counsel for the defendant no. 1 also pleaded that under the garb of the present suit, the plaintiff is trying to extort money from the defendant no. 1.
55. In the present case, the defendant no. 1 has failed to lead any evidence to prove that the plaintiff is trying to extort money from it.
56. Counsel for the defendant no. 1 also pleaded that the defendant no. 1 is manufacturing the uniform of other schools like Delhi Public School but they have not raised any objection to this effect.
57. Merely, because other schools have not objected to usage of their trademarks by the defendant no. 1 without their permission, that does not mean that the defendant no. 1 has got the license to use the plaintiff's trademarks on the school uniforms without its permission or the plaintiff's right to object to this effect stands waived.
58. Counsel for the defendant no. 1 also pleaded that the school uniform sold by the plaintiff is of low quality and CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.25 of 30 high value as compared to the school uniform sold by the defendant no. 1.
59. Firstly, as discussed above, the defendant no. 1 has failed to prove that the plaintiff is selling the uniform. Secondly, the defendant no. 1 has not led any evidence to prove the said facts. Thirdly, the said fact does not authorize the defendant no. 1 to infringe the trademark and pass off its goods as that of the plaintiff.
60. Counsel for the defendant no. 1 pleaded that the plaintiff is selling school uniforms and is earning profit which violates the following provisions, hence, it should be de-recognized. Hence, it was necessary to implead CBSE in the present suit to acknowledge the said fact. However, since, the plaintiff has not impleaded CBSE in the present suit, hence, the suit is bad for non-joinder of CBSE.
(i) Rule 15(b) of Right of Children to Free and Compulsory Education Rules 2010;
(ii) Rule 19(1)(ii) Chapter (iv) of the Affiliation Byelaws framed by Central Board of Secondary Education (CBSE), circular dated 21.02.2011 issued by CBSE; and
(iii) section 50(iv) and (ix) of Delhi School Education Act and Rules 1973.
61. In the present case, the defendant no. 1 has failed to lead any evidence to prove that the plaintiff is selling school uniform and is earning profit. Further, the abovementioned rules restrict the schools to indulge into the commercial activities but do not specifically restrict them to sell the CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.26 of 30 school uniform. Even otherwise, if the defendant no. 1 has grievance against the plaintiff to this effect, it may approach CBSE or other competent authority for redressal of its grievances. However, for that reason, CBSE is not a necessary and proper party in the present suit.
62. In view of the foregoing discussions, it can be held that the defendants have infringed the trademark "DIS" of the plaintiff and have passed off their goods as goods of the plaintiff under the trademarks "DIS" and "DIS" logo. Accordingly, the issue no. 1 is decided in favour of the plaintiff and against the defendants.
ISSUES NO.2 AND 363. In law, the rendition of accounts is an exercise to venture into finding out the gain which the defendants have made and the corresponding loss which they have caused to the plaintiff on account of their acts to the detriment of the plaintiff. The object of directing rendition of account is to put the plaintiff at the original position which existed prior to suffering of damage by it. The evidence to prove the same is in the possession of the defendants. However, the defendant no. 1 has not produced the same and the defendant no. 2 has not led the evidence. The plaintiff has not taken any step to lead the evidence to this effect. Hence, the relief sought by the plaintiff to this effect cannot be granted.
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64. However, in the alternative, the plaintiff has prayed for the decree of damages for Rs. 20,01,000/-.
65. As held above, the defendants have infringed the trademark "DIS" of the plaintiff and have also passed off their goods as goods of the plaintiff. According to the plaintiff, it came to know about the said illegal acts of the defendants in the year 2019. DW1 has admitted that the defendant no. 1 is a business entity and is selling school uniforms to earn a profit. It is also evident from the testimony of DW1 that in a year, the defendant no. 1 used to sell the uniform of the plaintiff's school using its trademarks for Rs. 2,00,000/- - Rs. 3,00,000/-. The defendant no. 1 has passed off the goods for substantial period which continued even after filing of the suit. Hence, it can be inferred that, if the defendant no. 1 would not have earned profit out of those sales, then it would have stopped at least immediately after filing of the present suit by the plaintiff. However, despite that, the defendant no. 1 continued with the same.
66. Considering the nature of goods and the extent of business, the wide use of its product by the students, goodwill and reputation of the plaintiff, the false stand taken by the defendant no.1 and all other attendant facts, it can be inferred that the defendant no. 1 sells the uniforms worth Rs. 3,00,000/- per year and if 50% of the same is presumed as cost incurred by the defendant no. 1 for that purpose, then the defendant no. 1 actually earns the profit of Rs. 1,50,000/- per year by selling the uniforms of the plaintiff's school. Hence, it can be held that since 2019, the defendant CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.28 of 30 no. 1 has earned the profit of Rs. 7,50,000/-. Hence, the defendant no. 1 is held liable to pay Rs. 7,50,000/- towards damages to the plaintiff.
67. As evident from the WS of the defendant no. 2, the defendant no. 2 started selling the uniform of the plaintiff in the year 2011. However, the defendant no. 2 has failed to lead any evidence to prove that it did so with the permission of the plaintiff. According to the plaintiff, it came to know about the said illegal acts of the defendant no. 2 in the year 2019. In view of the foregoing discussion, it can be inferred that the defendant no. 2 has also earned minimum profit of Rs. 7,50,000/- by selling the school uniform and belt of the plaintiff's school by using its trademarks. Therefore, the defendant no. 2 is also held liable to pay the damages of Rs. 7,50,000/- to the plaintiff.
68. In view of the foregoing discussion, the plaintiff is held entitled to decree of damages for Rs. 15,00,000/- to be equally paid by the defendants i.e. 50% each. Accordingly, the issue no. 2 and 3 are decided.
ISSUE No. 4 (RELIEF)
69. In view of the foregoing discussion, following reliefs are granted in favour of the plaintiff:
(i) decree of permanent injunction restraining the defendants, their agents, representatives, assigns, officers, partners, servants, administrators etc. from using the mark "DIS", "DIS" logo either in CS No. 144/2019 Nav Jagriti Niketan Education Society & Ms. New Sethi Stores & Anr. Page No.29 of 30 whole or in part etc. or in any manner substantially similar or nearly resembling the plaintiff's trademarks in /any way in connection with the manufacture, sale, offering for sale, advertising or displaying school uniform, belts or allied/cognate goods or in any manner as to constitute passing off or to give an impression as if such goods originate from or have the association with the plaintiff or in any other manner likely to cause confusion or deception to the public; and
(ii) decree of damages for Rs. 15,00,000/- to be equally paid by the defendants i.e. 50% each, to the plaintiff.
70. Cost of the suit is awarded to the plaintiff.
71. Decree sheet be prepared accordingly.
72. File be consigned to the record room.
Digitally
signed by
Pankaj Pankaj Gupta
ANNOUNCED IN THE OPEN COURT, Gupta Date:
2024.10.22
On this 22nd day of October 2024,
03:14:21
+0530
(PANKAJ GUPTA)
District Judge, S/W
(Commercial Court)-01:
NEW DELHI
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