Delhi District Court
Niit Limited vs Mr. Brij Pal Chaudhary on 22 May, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL), DELHI
Suit No.20/08/99
Unique Case ID No. 02401C5074572004
NIIT Limited,
NIIT House,
C-125, Okhla Phase I,
New Delhi 110020. ..........Plaintiff
Versus
Mr. Brij Pal Chaudhary
Proprietor
National Institute of Technical Society
Panchkula Centre
S.C.O. 11, IInd Floor
Sector 11, Panchkula
Haryana ..........Defendant No.1
National Institute of Technical Society
Panchkula Centre
S.C.O. 11, IInd Floor
Sector 11, Panchkula
Haryana
Also at
Chandigarh - Ambala Road
1st Floor, Near Post Office,
Zirakpur Chowk
Zirakpur (Pb.) ..........Defendant No.2
Suit No. 20/08/99 1 of 37
Date of Institution of Suit : 03.12.1999
Date of Reserving Judgment : 13.05.2010
Date of Pronouncement : 22.05.2010
JUDGEMENT
1. This is a suit for permanent injunction, restraining infringement of registered trademark, copyright, passing off, rendition of accounts, delivery up, etc. and for cost of the suit filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a company incorporated under the Companies Act 1956 and Shri Mukesh Saini is the duly Constituted Attorney of the plaintiff company and is duly authorised and competent to sign verify the plaint and institute the proceedings. It is averred in the plaint that the plaintiff earlier known by the name of Pace Education Pvt. Ltd., was incorporated on 02.12.1982 under the Companies Act 1956 and in the year 1988, the plaintiff became a deemed Public Limited Company by virtue of Section 43A (1A) of the Companies Act, 1956 under the name Pace Education Limited and finally on 16.11.1990, the name of the company was changed to its present name NIIT Limited. The trade mark and trade name NIIT is derived from the plaintiff's trading style: National Suit No. 20/08/99 2 of 37 Institute of Information Technology.
3. It is further averred in the plaint that ever since its inception, the plaintiff has been engaged in the business of imparting education and training in the filed of Computer and Information Technology and has been developing and marketing computer software. The said institution set up by the plaintiff has, in a very short span of time, become one of the premier institutions in the filed of Computer Education and has achieved national status and reputation with NIIT being used virtually as a household name. To promote local enterprise, the plaintiff in the year 1987, conceived of a licensing system whereby it would grant licenses to third parties for various territories enabling them to set up and conduct NIIT Education Centres, as a result of which NIIT quality education would be made available to a larger segment of the society. It is stated that besides education, the plaintiff has also established tie-ups for training abroad and has also attained the status of one of the top companies in India in the area of software exports. It is further stated that the business of the plaintiff has been conducted under the trade and service mark NIIT which mark was newly and freshly coined by the plaintiff and having no obvious meaning to any person and not being a dictionary word, is a Suit No. 20/08/99 3 of 37 invented word having the highest degree of inherent distinctiveness and the plaintiff is the proprietor of the trademark and trade name NIIT in relation to the said business and the said mark is written in a peculiar box type script which is exclusive to the plaintiff's business. It is further stated that the mark NIIT has been in extensive, continuous and uninterrupted use since the year 1982 (the year of its inception) in relation to its business and the consumers recognize the plaintiff's business and its various components by reference to the mark NIIT. It is further stated that the plaintiff is also the proprietor of the registered mark NIIT, details whereof are given below:-
Trademark Reg.No. Date Class Goods
NIIT 461253B 6.10.86 9 Computer & parts
thereof, computer
softwares of all
kinds, audio &
video cassettes.
NIIT 461252B 6.10.86 16 Printed matter,
books, publications
magazines,
periodicals.
It is stated that the above said trademarks are renewed from time to time and are therefore valid and subsisting and apart Suit No. 20/08/99 4 of 37 from said two registered trademarks, four other applications of the plaintiff are pending trademark registration.
4. It is also averred in the plaint that the trademark NIIT is depicted in a highly distinctive style, comprising of large bold block lettering and this bold letter logo/artistic logoscript was created in the year 1982 by the plaintiff and therefore it holds the copyright in the same. The said bold letter logo/artistic logoscript is an original artistic work within the meaning of S.2
(c) of the Copyright Act, 1957. It is also stated that adoption of an identical or a substantially similar logo by another will amount o an infringement of the copyright of the plaintiff, besides causing confusion and deception in the minds of the public. The plaintiff is also the owner of registered copyright No.A-48938/87 dated 10.07.87 which comprises the mark NIIT depicted in the bold letter logo/artistic logoscript as aforesaid. It is stated that the plaintiff has extensively advertised its business and goods under the mark NIIT.
5. It is further averred in the plaint that all the plaintiff's own centres as well as franchisee's centres use the name "NIIT Centre" with the word "Centre" preceded by the geographical or locational noun and use by any other concern of an Suit No. 20/08/99 5 of 37 identical/deceptively similar mark to that of the plaintiff's mark NIIT is bound to lead to confusion and deception and amount to infringement of registered trademark and passing off.
6. It is also averred in the plaint that in the month of August 1998 the plaintiff was informed that a computer training institute going by the name of "National Institute of Technical Society"
had commenced business and a brochure of the said institution (defendant No.2) revealed that in addition to using an almost identical mark, the defendants were even copying the exact bold lettering logo/artistic logoscript as that of the plaintiff for depicting the impugned trademark "NIT". Thereafter, the plaintiff immediately despatched a legal notice dated 08.09.1998 to the defendants asking them to cease infringement of the plaintiff's trademark, copyright as well as from passing off and soon after despatch of the said notice the plaintiffs were informed that since the defendant institution had ceased its activities. However, no reply was received from the defendant to the aforesaid notice. Thereafter in the month of September 1999 the plaintiff learnt that defendant had once again commenced its computer training business under the impugned trademark "NIT" and were also continuing to use the same bold lettering logo/artistic logoscript in which the plaintiff hold Suit No. 20/08/99 6 of 37 copyright to depict the impugned trademark. On 18.10.1999 the plaintiff's attorneys once again sent the defendants a copy of the previous notice and pointed out to the defendants, the contravention of the requirements contained in the same but defendants have not bothered to reply.
7. It is stated that use of the trade and service mark NIT by defendants in relation to computer education and upon printed matter such as catalogues and manuals, stationery articles, advertising materials, etc. is use of a trademark which amounts to a misrepresentation made by the defendants to its existing or prospective customers that its goods/services are affiliated with or approved by or in some manner connected with those of the plaintiff and which is likely to lead to immense confusion and deception resulting in damages to the plaintiff's business and reputation. It is stated that use of the said distinguishing element NIIT or any other mark deceptively similar such as NIT, which is a phonetic and visual equivalent of the plaintiff's mark would result in immense and inevitable confusion and deception leading to passing off the defendant's goods and business as those of the plaintiff. It is further stated the use of the mark NIT is clearly an infringement of the plaintiff's registered trademarks Nos.461253B and 461252B since it is Suit No. 20/08/99 7 of 37 used in relation to computer software and in relation to printed material respectively. The plaintiff has prayed for decree for permanent injunction restraining the defendants, their promoters, directors or shareholders, officers, servants, agents and representatives and all others acting for and on their behalf from imparting training/education in computer sciences, advertising manufacturing/developing, selling or offering for sale computer software/hardware, or in any manner dealing in the field of Computer and Information Technology under the impugned trademark NIT or any other mark as is identical to or deceptively similar with the plaintiff's mark NIIT. The plaintiff has also prayed for decree for permanent injunction restraining the defendants and all other acting for and on their behalf from using trade/service mark NIT in a bold lettering logo/artistic logoscript as is a colourable imitation or substantial reproduction of the plaintiff's NIIT bold letter logo or from using any other identical or deceptively similar logo amounting to infringement of the plaintiff's copyright therein. The plaintiff has also prayed for order for rendition of accounts of revenues illegally earned by the defendants. Plaintiff also prayed for order for delivery of all the infringing materials, impugned blocks, dies, advertising material, brochures, flyers and stationery articles to the plaintiff for the purpose of Suit No. 20/08/99 8 of 37 destruction and erasure. The plaintiff has also sought costs of the suit.
8. The defendant No.1 has filed written statement and has contested the suit. In the written statement, the defendant No.1 has taken objections that allegation of the plaintiff company that the defendant No.1 is using the trade mark of the plaintiff company is completely wrong and the trade mark of the defendant No.1's company is not similar and in no way is leading to confusion and deception. It is stated that the present suit filed by the plaintiff is not maintainable in the present form. It is stated that the defendant No.1 is a proprietor of NITS Computers Private Limited and he is running the centres at Panchkula (Haryana) and Zirakpur (Punjab). It is further stated that the plaintiff has also established its institution in Panchkula, Haryana and Chandigarh in the same Commercial Complex where the defendant No.1 is running his business of Computer Education. It is further stated that defendant No.1 started the organisation named National Institution of Technical Computer Education on 04.09.1997 and this organisation was established with a clear object to provide computer education to the down trodden of the society in the rural areas. It is stated that this organisation was established at Zirakpur and thereafter Suit No. 20/08/99 9 of 37 organisation opened its office at Panchkula and the defendant No.1 got registered National Institution of Technical Society, Sector 11, Society, Haryana dated 20.07.1998 and thereafter the defendant No.1 also got registered certificate at Zirakpur under the certificate No.591/98-99 issued by the Registrar, Firms and Societies, Punjab, Chandigarh on 29.07.1988. It is further stated that thereafter defendant No.1 got NITS Computers Private Limited incorporated under the Companies Act, 1956 vide a certificate of incorporation dated 05.11.1999. It is stated that name and style of NITS Computers Private Limited has no similarity with the trade mark, logo of the plaintiff. It is also stated that defendants never adopted an identical mark and copies the exact Bold Letter Logo/Artistic Logo Script as that of the plaintiff as alleged by plaintiff. It is stated that there has been caused no infringement of the plaintiff's trade mark, copyright as well as passing off as alleged. It is also stated that there was no need to reply the notice as the said notice has no legal basis to stand and the same was issued at the whim of the plaintiff and the Arial Bold Letters NITS are independent and not similar or identical to mark as alleged by the plaintiff. It is also stated that the mark adopted by the defendants does not effect in any manner NIIT and the allegations that the goodwill and reputation of the plaintiff was infringed has no basis at all Suit No. 20/08/99 10 of 37 and the word NITS Computers Pvt. Ltd. is not a similar mark as of NIIT and is not equivalent to the plaintiff's mark as alleged, so there is no likelihood of any confusion or deception as alleged. It is stated that there is no resemblance whatsoever between the mark NITS Computers Pvt. Ltd. to the mark NIIT, so there is no infringement of the Copyright vested in favour of plaintiff as alleged. It is also stated that no confusion of any kind, whatsoever, has been created and no design whatsoever was made keeping in mind to get up and layout of the plaintiff's mark as alleged. It is stated that the suit filed by the plaintiff be dismissed being false and frivolous and with a view to harass the defendants.
9. The plaintiff has filed replication to the written statement of defendant No.1. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant No.1 as alleged in the written statement. It is stated that all the defendants' promotional materials etc., have the phonetically and visually similar mark NIT emblazoned across in a font/logo style identical to the plaintiff's, infringing the plaintiff's registered trademark, copyright and passing off its goods/services as and for those of the plaintiff. It is stated that even assuming the defendants' acronym is NITS and not Suit No. 20/08/99 11 of 37 NIT (and it is submitted that NITS is still phonetically and visually similar to the plaintiff's mark NIIT and would still, infringe the plaintiff's registered trademark and pass off its goods/services as and for those of the plaintiff), the mala fides of the defendants became evident because only the portion of the acronym identical to NIIT, being NIT, has been chosen by the defendants to be represented in an identical manner as the plaintiff's trademark NIIT.
10. From the pleadings of the parties, following issues were framed by my learned predecessor on 16.02.2005:-
(1) Whether the plaintiff is entitled to injunction prayed for? (2) Whether the plaintiff is entitled to rendition of A/c? (3) Whether the plaintiff is entitled to delivery of all the infringing materials, impugned blocks, dies, advertising material, brochures, flyers and stationery articles for destruction and erasure?
(4) Relief.
11. To prove its case, the plaintiff examined Shri A.K. Arora, Constituted Attorney of plaintiff as PW-1 and PE was closed on 01.11.2007.
12. In order to prove its defence, defendant No.1 Shri Brij Pal Suit No. 20/08/99 12 of 37 Chaudhary who is President of defendant No.2 examined himself as DW-1 and DE was closed on 15.01.2009.
13. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
14. Issue No.1 The contention of ld. Counsel for the defendants is that the suit has been filed against defendant no. 1 Shri Brij Pal Chaudhary stating him to be the proprietor of National Institute of Technical Society and Shri Brij Pal Chaudhary is not the proprietor and he is the President of the said society. Ld. Counsel for the plaintiff has contended that the suit has been filed against Shri Brij Pal Chaudhary mentioning him as proprietor of National Institute of Technical Society on the basis of the particulars which the plaintiff came to know but this is not a defect on the basis of which suit shall fail. Although, ld. Counsel for the defendants has taken the objection that in the memo of parties, Shri Brij Pal Chaudhary has been mentioned as proprietor of National Institute of Technical Society but in para B of PO of WS and in para 2 of reply on merits, the defendants themselves have stated that defendant no. 1 is the proprietor of NITS Computers Pvt.
Suit No. 20/08/99 13 of 37 Ltd./Proprietor of National Institute of Technical Society and is running centres at Panchkula (Haryana) and Zirakpur (Punjab). In view of the aforesaid contents of para B of PO of WS and para 2 of reply on merits in the WS wherein the defendants themselves have mentioned that Shri Brij Pal Chaudhary is the proprietor of NITS Computers Pvt. Ltd., objection of the defendants has no force. Moreover, it is also not the case of the defendants that some prejudice was caused to the defendants or that the defendants could not defend themselves properly on account of mentioning of Shri Brij Pal Chaudhary as proprietor.
15. The case of the plaintiff is that the plaintiff has been engaged in the business of imparting education and training in the filed of Computer and Information Technology and has been developing and marketing computer software and the business of the plaintiff involves educating the members of the public to become proficient in the use of computers as per the norms and methodologies developed by it and to occupy professional positions related to the use of computers and the institution set up by the plaintiff has become one of the premier institutions in the field of Computer Education and has achieved national status and reputation with NIIT. The plaintiff had initially set up its education centres at Mumbai, Delhi, Chennai, Banguluru, Suit No. 20/08/99 14 of 37 Hyderabad, Secunderabad, Kolkata and Pune and in the year 1987, the plaintiff conceived a licensing system whereby it would grant licenses to third parties for various territories enabling them to set up and conduct NIIT Education Centres and at present the plaintiff has over 600 franchisee centres situated across the country and the trade mark NIIT is registered vide no. 461253B dated 06.10.1986 in class 9 and under no. 461252B dated 06.10.1986 in class 16. The case of the plaintiff is that its trade mark NIIT is depicted in a highly distinctive style comprising of large bold block letters which was created in the year 1982 by the plaintiff and the plaintiff holds the copyright in respect of the same vide no. A48938/87 dated 10.07.1987 and the defendants have commenced business using almost and identical mark i.e. NIT and the defendants are also occupying exact bold letter logo/artistic logo script as that of the plaintiff.
16. The defendants have pleaded that defendant no. 1 started National Institution of Technical Computer Education on 04.09.1997 and defendant no. 1 got registered National Institute of Technical Society on 20.07.1998 and defendant no. 1 got NITS Computers Private Limited incorporated under the Companies Act, 1956 vide certificate of incorporation dated Suit No. 20/08/99 15 of 37 05.11.1999. Defendants have stated that they have never adopted an identical mark and have not copied bold letter logo/artistic logoscript as that of the plaintiff. The plea of the defendants is that the arial bold letters NITS are independent and not similar or identical to mark, as alleged by the plaintiff.
17. The contention of ld. Counsel for the plaintiff is that the mark of the plaintiff is NIIT being depicted in highly distinctive style comprising of large bold block letters and marks of the defendants i.e. NIT and NITS are deceptively similar to the registered trade mark of the plaintiff i.e. NIIT and a customer of the plaintiff is likely to be deceived by the marks of the defendants presuming them to be the mark of the plaintiff.
18. 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 Suit No. 20/08/99 16 of 37 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 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."
19. In the present case, the mark of the plaintiff is NIIT and it is alleged that the defendants are using the mark NIT or NITS. However, the contention of ld. Counsel for the defendant is that the defendants are using the mark NITS and not NIT and there is no deceptive similarity between NIIT and NITS. Ld. Counsel for the plaintiff has contended that the plaintiff has filed on record a pamphlet which has been issued by the Suit No. 20/08/99 17 of 37 defendant in which it is mentioned that the defendants have been using the mark NIT. Ld. Counsel for the plaintiff has contended that DW-1 admitted in the cross-examination that the said pamphlet which has been filed by the plaintiff on record also bears the same address as the address of the defendants appearing in the Memorandum of Society which is Ex.RW1/A. Ld. Counsel for the defendants has contended that the pamphlet on which reliance has been placed by the plaintiff bearing the mark NIT does not belong to the defendants and the said pamphlet has also not been proved by the plaintiff in accordance with law. Although, DW-1 stated in the cross- examination that the address appearing on the pamphlet was the old address of the defendants' society and, thereafter, he stated that at the time when this suit was filed, the said address was existing and operational but, thereafter, he again said that the pamphlet does not belong to the defendants society. DW-1 stated in the cross-examination that it may be correct that someone else may be circulating the pamphlets like the pamphlet filed by the plaintiff and thereafter, DW-1 stated in the cross-examination that he is not even sure whether the said pamphlet was circulated or not. DW-1 further stated in the cross-examination that he read the pamphlet at the time when he received the suit papers and he does not have any Suit No. 20/08/99 18 of 37 authenticated proof of circulation of the said pamphlet, so they did not take any action as they have come to know about the pamphlet through the plaintiff. The plaintiff has not explained as to how they came in the possession of the pamphlet on which they are placing reliance in order to prove that the defendants were using the mark NIT.
20. In para 14 of the affidavit Ex.PW1/A, PW-1 Shri A. K. Arora has stated that in the month of August, 1998, the plaintiff was informed that a computer training institute going by the name of National Institute of Technical Society has commenced business, the course details depicting the use of the mark NIT concerning the defendants course. Although, in para 14 of the affidavit Ex.PW1/A, the plaintiff has stated that the plaintiff was informed regarding use of the mark NIT by the defendants, however, the plaintiff has not disclosed as to by whom they were informed about the use of mark NIT by defendants and the plaintiff has not examined any other witness to prove this fact. Rather, PW-1 stated in his cross-examination conducted on 01.11.2007 that he is not aware that the defendant company is running any institute with the trade mark NIT nowadays. On one hand, the plaintiff has not examined any person who could prove that the defendants are using the mark NIT and on the Suit No. 20/08/99 19 of 37 other hand, PW-1 himself stated in the cross-examination that he is not aware that the defendant company is running any institute with the trade mark NIT. The plaintiff has not examined any witness who could depose that the said pamphlet on which reliance has been placed by the plaintiff in order to prove that the defendants have adopted the mark NIT was circulated by the defendants. In order to prove that the defendants are using the mark NIT, the plaintiff has relied upon pamphlet Mark PX, however, the plaintiff has not examined any witness to prove that the said pamphlet Mark PX was circulated by the defendants. Merely because the pamphlet on which the plaintiff is placing reliance bears the address of the defendants would not prove that the same was got printed and circulated by the defendants. The plaintiff has not succeeded in proving that the pamphlet on which the plaintiff has placed reliance in order to prove that the defendants were using the mark NIT, was got printed and published by the defendants.
21. The present suit has been filed by the plaintiff on the ground that the defendants have been using the trade mark NIT which is identical or deceptively similar to the plaintiff's trade mark NIIT thereby amounting to infringement of trade mark no.
461253B and 461252B of the plaintiff. In the aforesaid
Suit No. 20/08/99 20 of 37
discussions, it has been held that the plaintiff has failed to prove that the defendants have used the mark NIT. The contention of ld. Counsel for the plaintiff is that by way of present suit the plaintiff has also prayed that defendants be restrained from using any other mark which is identical or deceptively similar to the trade mark NIIT of the plaintiff and in the WS, the defendants have admitted that the defendants have been using the mark NITS which is deceptively similar to the mark NIIT of the plaintiff.
22. The contention of ld. Counsel for the defendants is that the mark NITS which has been adopted by the defendants is not similar to the mark NIIT of the plaintiff and the style of writing of the mark NITS of defendants is totally different from the way NIIT is depicted by the plaintiff. The contention of ld. Counsel for the defendants is that the defendants have got its mark NITS registered also.
23. 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 Suit No. 20/08/99 21 of 37 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 allowed to sell their products in the market........................."
24. 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 Suit No. 20/08/99 22 of 37 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 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 Suit No. 20/08/99 23 of 37 "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".
25. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 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.
26. As per the aforesaid decision, the resemblance between two marks must be considered with reference to the ear as well as Suit No. 20/08/99 24 of 37 the eye and ocular comparison is not always the decisive test. In the present case, the mark of the plaintiff is NIIT and that of the defendants is NITS and both are four letter words.
27. The contention of ld. Counsel for the defendants is that the defendants' mark NITS is totally different from that of the plaintiff. However, ld. Counsel for the plaintiff has contended that if both the marks are to be pronounced, the marks would appear to be pronounced as that the mark Nit of the plaintiff as in the pronouncement, the mark of the defendants would be pronounced as 'nits' which would give the sound of the mark of the plaintiff. However, this contention of the ld. Counsel for the plaintiff has no force as computer courses which are being offered by both the parties are not pursued by illiterate or uneducated people but by the persons of sufficient educational background at least who have done their schooling and in the circumstances, it cannot be said that they would be confused by the mark NIIT and NITS. Moreover, the person who intends to join the computer training course would not join any institute without making sufficient enquiries about the said institute and it is not that a person who is intending to join NIIT would join NITS considering it to be NIIT. In P. P. Jewellers Pvt. Ltd. vs. P. P. Buildwell Pvt. Ltd., 2009 (41) PTC 217 (Del.), our Suit No. 20/08/99 25 of 37 own Hon'ble High Court held :
13. The case of the plaintiffs is that under Section 2(m) TM Act 1999 a mark could include even a single letter. McCarthy on Trademarks an Unfair Competition states that "an individual or a group of letters, not forming a recognizable word, can function as a mark." While it is true that an arbitrary arrangement of letters can constitute a distinctive mark, the question would be whether on the given facts of a case the letter mark in question is distinctive. This explains why while in some of the cases protection has been refused to letter marks, in some others it has been granted.
The latter include Tubes Investments of India Ltd. v. Trade Industries, (1997) 6 SCC 35, Chemetron Corporation v. Morris Corporation v. Morris Coupling and Clamp Co., 203 USPQ 537, B. K. Engineering Company v. U.B.H.I. Enterprises (Regd,) Ludhiana, 1985 PTC 1 (Del) (DB) and Larsen & Toubro Ltd. v.
Lachmi Narain Traders & Co., 2008 (36) PTC 223 (Del).
28. In P. P. Jewellers Pvt. Ltd. vs. P. P. Buildwell Pvt. Ltd., (supra), our own Hon'ble High Court observed :
21. As the decisions in Rheumaton Trademark [1978] R.P.C.406, British Petroleum Company Limited v. European Petroleum Distributors Limited [1968] R.P.C.54, Du Cross Trademark Application [1913] RPC and Polarama Trademark [1977] Suit No. 20/08/99 26 of 37 R.P.C. 581 show, courts would be reluctant to accord distinctiveness to letter marks per se without anything more being shown. In British Petroleum Company Limited v. European Petroleum Distributors Limited 1968 RPC 54 the Court refused to grant any injunction against the European Petroleum Limited which was using the mark EP for its petrol outlets. It was held that the mark BP used by the Plaintiff British Petroleum Ltd. was non-distinctive. There was no likelihood of deception or misconception among consumers even if they were the same goods.
Both were selling petrol and yet no injunction was granted. The court observed: "though an exceptionally careless motorist might make a mistake, there is no likelihood of deception or confusion on any scale worth considering."
29. A perusal of the presentation of the trade mark NIIT of the plaintiff and NITS of the defendants show that the font and the manner of presentation of both the marks is different and there is no similarity between the two works.
30. In Hindustan Pencils Ltd. vs. Alpha Cottage Industries & Others, 2001 PTC 504 (CB)(Goa), reliance was placed on decision in R. G. Anand vs. M/s Delux Films, AIR 1978 SC 1613 wherein it was held that in order to be actionable the copy must be a substantial and material one which at once leads to Suit No. 20/08/99 27 of 37 the conclusion that the defendant is guilty of an act of piracy.
31. The case of the plaintiff is that they have been writing their trade mark NIIT in a highly distinctive style comprising of large bold block lettering which is the original artistic work of the plaintiff created in the year 1982 and the same is registered copyright vide no. A48938/87. The plaintiff has filed copy of the copyright registration certificate which is Ex.P8 and it shows that the mark NIIT is being used by the plaintiff in large bold block lettering in a circle alongwith side view of human face. The plaintiff has relied on advertisement of the defendants appearing in the newspaper "The Tribune" dated 25.12.1999 Ex.DW1/P1 which shows that the word NITS has been printed in bold letters bearing no resemblance with the way mark NIIT of the plaintiff is registered. The plaintiff has also relied on article appearing in the newspaper "The Sunday Tribune" dated 07.11.1999 Ex.DW1/P2 wherein a write up has been published in respect of NITS Pvt. Ltd. and the same shows that the defendants are representing themselves as NITS Pvt. Ltd. The plaintiff has not filed any document on record to prove that NITS is being written by the defendants in the artistic distinctive style comprising of large bold block lettering as used for writing NIIT.
Suit No. 20/08/99 28 of 37
32. In Associated Electronic & Electrical Industries vs. Sharp Tools, AIR 1991 Kant 406, it was held :
26. .....................As rightly pointed out by the Copyright Board that there can be no copyright in the word or words, but the right can only be in the artistic manner in which the same is written, and in this case the works were totally dissimilar ......................................
33. Section 2(m) of the Copyright Act, 1957 provides that infringing copy means in relation to a literary, dramatic, musical or artistic work a reproduction thereof otherwise then in the form of a cinematographic film. Section 14 (a) of the Copyright Act, 1957 reads as under :-
14. Meaning of copyright.- For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely :-
(a). in the case of a literary, dramatic or musical work, not being a computer programme,-
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
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(iv) to make any cinematograph film or sound
recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
34. Section 51 of the Copyright Act, 1957 envisages when copyright in work shall be deemed to be infringed. In particular Cl.(b) states that copyright shall be deemed to be infringed when any person.-
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work.
35. Section 52 of the Copyright Act, 1957 enumerates the act, which shall not constitute an infringement of copyright.
36. In Associated Electronic & Electrical Industries vs. Sharp Tools (supra), it was held :
23. One of the surest test to determine Suit No. 20/08/99 30 of 37 whether or not there has been a violation of copyright is to see if the reader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a copy of the first. In other words, dealing with the question of infringement of copyright of the applicant's work by the respondent's work.
37. Although, the ld. Counsel for the defendants has contended that the trade mark NITS has been registered but ld. Counsel for the defendants has not proved the said registration which has been obtained by the defendants in respect of their mark NITS. Ld. Counsel for the plaintiff has contended that even if the trade mark NITS of the defendants has been registered but the said registration will not confer any right on the defendants if the same is deceptively similar to the mark of the plaintiff.
38. 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 Suit No. 20/08/99 31 of 37 subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section 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 Suit No. 20/08/99 32 of 37 only by use thereof. This right has not been affected by the Act and is preserved and recognized by Sections 27(2) and 33."
39. 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.
40. Although, ld. Counsel for the defendants has pleaded that mark NITS of the defendants has been registered but the said registration has not been proved by the defendants in accordance with law. Although, arguments have been Suit No. 20/08/99 33 of 37 addressed at bar by the defendants regarding registration of their mark NITS and ld. Counsel for the plaintiff has raised the plea that the said registration is open to challenge, however, the pleas as raised are of no consequence as in the aforesaid discussions, it has been held that the mark NIIT and NITS are not deceptively similar.
41. The suit was filed by the plaintiff alleging that the defendants have started using the box type logo for the impugned mark NIT as specifically pleaded in para 23 of the plaint and in para 25 of the plaint, the plaintiff has mentioned that the cause of action for present suit arose in August, 1998 when the plaintiff first came to discover the defendants infringing/offending activities and it further arose in September, 1999 when the plaintiff came to know that the defendants have restarted the computer training institute under the impugned trade mark. The suit was filed by the plaintiff alleging that the defendants have started using the mark NIT which is deceptively similar to the mark of the plaintiff, however, the plaintiff has not succeeded in in proving the cause of action on the basis of which the present suit was filed. The plaintiff has failed to prove the cause of action for filing the present suit, hence, the plaintiff is not entitled for decree of injunction, as prayed. This Suit No. 20/08/99 34 of 37 issue is accordingly decided in favour of the defendants and against the plaintiff.
42. Issue Nos. 2 & 3Since both these issues involve common discussion of facts and law, hence, for the sake of brevity, both these issues are being taken up together. In findings on issue no. 1 above, it has been held that the plaintiff has failed to prove that the defendants have adopted the mark NIT which is deceptively similar to the mark of the plaintiff and the defendants have adopted the box type logo for the impugned mark NIT thereby violating the copyright of the plaintiff. The plaintiff has not succeeded in proving cause of action for filing the present suit. In findings on issue no. 1 above, it has also been held that the mark NITS as adopted by the defendants is not deceptively similar to the mark NIIT of the plaintiff. In the circumstances, the plaintiff is not entitled to rendition of accounts or delivery of infringing materials, impugned blocks, dies, advertising material, brochures, flyers and stationery articles for destruction and erasure, as prayed. Both these issues are accordingly decided in favour of the defendants and against the plaintiff.
Suit No. 20/08/99 35 of 37 43. Issue No. 4 (Relief)
In view of aforesaid discussions and findings on aforesaid issues, the suit of the plaintiff is dismissed. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI)
nd
on 22 May, 2010) ADDL. DISTT. JUDGE-15 (CENTRAL)
DELHI
Suit No. 20/08/99 36 of 37
Suit No. 20/08/99
NIIT Limited
vs
Brij Pal Chaudhary & Anr.
22.05.2010
Present : None.
Vide separate judgment of today, suit of the plaintiff is dismissed. 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
22.05.2010
Suit No. 20/08/99 37 of 37