Delhi High Court
Delhi Public School Society vs Dps Firozabad & Ors. on 11 September, 2015
Author: Najmi Waziri
Bench: Najmi Waziri
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 11.09.2015
+ CS(OS) 1092/2012
DELHI PUBLIC SCHOOL SOCIETY .....Plaintiff
Through: Mr. Puneet Mittal, Adv.
versus
DPS FIROZABAD & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE NAJMI WAZIRI
NAJMI WAZIRI J (Open Court)
1.The plaintiff has filed the present suit under Sections 134 & 135 of the Trademarks Act, 1999 and under Section 51 of Copyright Act, 1957 for permanent injunction against the defendants and its agents from offering for service, advertising, offering for sale, adopting or using the mark 'DPS', the words 'Delhi Public School' or in any manner representing that the defendant is managed by DPS Managing Committee, under the aegis of the DPS Trust.
2. It is the plaintiff's case that it was registered as a Society in 1962 registered under the provisions of Society Registration Act, 1860; initially as Delhi Public School. However, the name was subsequently changed to Delhi Public School Society; its objectives were, inter alia, to establish progressive schools and CS(OS) 1092 of 2012 1|Page other educational institutions in Delhi or outside Delhi, open to all, without any distinction of race, caste or special status with a view to impart sound and liberal education to boys and girls.
3. The Society established its first school in the year 1949, the name of Delhi Public School and its logo have become a mark which is identified with the name of the plaintiff Society; it has been using the words 'DELHI PUBLIC SCHOOL' and 'DPS' since 1949. To distinguish the institution, a logo was also designed by the Society; that the plaintiff has been using this logo/crest before the enactment of Emblems and Names (Prevention of Improper use) Act, 1950; that the name 'Delhi Public School', its abbreviation 'DPS and its logo have become marks which are identified with the name of the plaintiff Society and have earned goodwill among the public over the years.
4. The schools established by the plaintiff are known as 'Delhi Public School' and are popularly identified with the suffix of the city/locality where the Branch is located. For example, if the school is established in 'Rohini', then it is commonly known as 'Delhi Public School, Rohini' and the public at large and students, staff and etc. would refer to the same as 'DPS, Rohini.'
5. The details of the schools run by the plaintiff are available on its website and all the schools run or established under the aegis of the plaintiff use the same name i.e. Delhi Public School (DPS) and the same crest/logo as adopted by the plaintiff.
CS(OS) 1092 of 2012 2|Page
6. It is stated that the plaintiff is running/managing the following schools:
CORE SCHOOLS:-
a) Delhi Public School, Mathura Road.
b) Delhi Public School, R. K. Puram.
c) Delhi Public School, Noida.
d) Delhi Public School, Vasant Kunj
e) Delhi Public School, Faridabad
f) Delhi Public School, Greater Noida
g) Delhi Public School, Bulandshahr
h) Delhi Public School, Rohini
i) Delhi Public School, Dwarka
j) Delhi Public School, Navi Mumbai
k) Delhi Public School, International, Saket AFFILIATED SCHOOLS:-
1. Delhi Public School, Dhaligaon, Assam.
2. Delhi Public School, Digboi Assam
3. Delhi Public School, Numaligarh Assam.
4. Delhi Public School, Nazira, Assam.
5. Delhi Public School/ Duliajan, Assam.
6. Delhi Public School, Guwahati
7. Delhi Public School, Visakhapatnam.
8. Delhi Public School, Patna
9. Delhi Public School, Bhagalpur
10. Delhi Public School, Chandigarh
11. Delhi Public School, Itanagar CS(OS) 1092 of 2012 3|Page
12. Delhi Public School, Hyderabad
13. Delhi Public School, Nacharam, Hyderabad
14. Delhi Public School, Sainikpuri Secunderabad
15. Delhi Public School, Vijayawada
16. Delhi Public School, Bhilai
17. Delhi Public School, Korba
18. Delhi Public School, Durg
19. Delhi Public School, Bilaspur
20. Delhi Public School, Pune
21. Delhi Public School, Kamptee Road Nagpur
22. Delhi Public School, Raipur.
23. Delhi Public School, Ahmedabad.
24. Delhi Public School, East Ahmedabad
25. Delhi Public School, Surat
26. Delhi Public School, Tapi Surat
27. Delhi Public School, Gandhinagar
28. Delhi Public School, Gandhidham
29. Delhi Public School, Vadodara
30. Delhi Public School, Hami Vadodara
31. Delhi Public School, Rajkot, Gujarat
32. Delhi Public School, Jhakri Shiirila.
33. Delhi Public School, Manah, Himachal Pradesh.
34. Delhi Public School, Maruti Kunj, Gurgaon.
35. Delhi Public School, Panipat Refinery
36. Delhi Public School, Panipat City
37. Delhi Public School, Sushant Lok, Gurgaon CS(OS) 1092 of 2012 4|Page
38. Delhi Public School, Gurgaon
39. Delhi Public School Rohtak
40. Delhi Public School Palwal
41. Delhi Public School, Pinjore
42. Delhi Public School, Rewari
43. Delhi Public School, Hisar
44. Delhi Public School, Sonepat
45. Delhi Public School, Bhiwani
46. Delhi Public School, Bahadurgarh
47. Delhi Public School, Yamuna Nagar
48. Delhi Public School, Ambala
49. Delhi Public School, Karnal
50. Delhi Public School, Jammu
51. Delhi Public School, Leh
52. Delhi Public School, Rajouri
53. Delhi Public School, Anantnag
54. Delhi Public School, Budgam
55. Delhi Public School, Katra
56. Delhi Public School, Udhampur
57. Delhi Public School, Baramulla
58. Delhi Public School, Srinagar,
59. Delhi Public School, Kathua
60. Delhi Public School, Bokaro
61. Delhi Public School, Dhanbad
62. Delhi Public School, Ranchi
63. Delhi Public School, Jamshedpur CS(OS) 1092 of 2012 5|Page
64. Delhi Public School, Bangalore (North)
65. Delhi Public School, Bangalore (South)
66. Delhi Public School, Bangalore (East)
67. Delhi Public School, Mangalore
68. Delhi Public School ,Whitefield Bangalore
69. Delhi Public School, Vidhyanagar
70. Delhi Public School, Nigahi
71. Delhi Public School, Vijaipur
72. Delhi Public School, Bhopal
73. Delhi Public School, Indore
74. Delhi Public School, Nagpur Road, Jabalpur
75. Delhi Public School, Sanskardhani, Mandla Road, Jabalpur
76. Delhi Public School, Gwalior
77. Delhi Public School, Rourkela
78. Delhi Public School, Damanjodi
79. Delhi Public School, Nalco Nagar
80. Delhi Public School, Kalinga, Orissa.
81. Delhi Public School, Ludhiana
82. Delhi Public School, Amritsar
83. Delhi Public School, Bathinda
84. Delhi Public School, Jalandhar
85. Delhi Public School, Khanna
86. Delhi Public School, Dimapur
87. Delhi Public School, Jodhpur.
88. Delhi Public School, Jaipur.
CS(OS) 1092 of 2012 6|Page
89. Delhi Public School, Udaipur
90. Delhi Public School, Bikaner
91. Delhi Public School, Vidyut Nagar (Dadri)
92. Delhi Public School, Kalyanpur, Kanpur
93. Delhi Public School, Azad Nagar, Mainawati, Marg, Kanpur
94. Delhi Public School, Barra Kanpur South
95. Delhi Public School, Mathura Refinery
96. Delhi Public School, Ranipur.
97. Delhi Public School, Dehradun
98. Delhi Public School, Roorkee
99. Delhi Public School, Indira Nagar, Lucknow
100. Delhi Public School, Jankipuram, Lucknow
101. Delhi Public School, Eldeco, Lucknow.
102. Delhi Public School, Moradabad.
103. Delhi Public School, Agra.
104. Delhi Public School, Bareilly.
105. Delhi Public School, Meerut.
106. Delhi Public School, Varanasi
107. Delhi Public School, Kashi, Varanasi
108. Delhi Public School, Allahabad
109. Delhi Public School, Hapur
110. Delhi Public School, Aligarh
111. Delhi Public School, Raj Nagar, Ghaziabad
112. Delhi Public School, Indirapuram, Ghaziabad
113. Delhi Public School, Saharanpur CS(OS) 1092 of 2012 7|Page
114. Delhi Public School, Farakka
115. Delhi Public School, Siliguri.
116. Delhi Public School, Ruby Park, Kolkata
117. Delhi Public School, Mega City, Kolkata
118. Delhi Public School, New Town Kolkata
119. Delhi Public School, Durgapur AFFILIATED SCHOOLS ABROAD:
1. Delhi Public School, FAIPS, Kuwait.
2. Delhi Public School, TDIS Indonesia
3. Delhi Public School, Shaijaii
4. Delhi Public School, MIS Doha
5. Delhi Public School, Dubai.
6. Delhi Public School, Dharan Nepal.
7. Delhi Public School, Birat Nagar , Nepal
8. Delhi Public School, NMS Bahrain
9. Delhi Public School, Singapore
10. Delhi Public School, Jeddah
11. Delhi Public School, Riyadh
12. Delhi Public School, Kampala
13. Delhi Public School, STS Dhaka
14. Delhi Public School, Tema, Ghana Furthermore, they also propose to open the following affiliated schools in the near future:
PROPOSED AFFILIATED SCHOOLS
1. Delhi Public School, Malanpur, M.P.
2. Delhi Public School, Kolar Road, Bhopal, M.P. CS(OS) 1092 of 2012 8|Page
3. Delhi Public School, Nellikuppam, Chennai
4. Delhi Public School, Coimbatore Tamil Nadu
5. Delhi Public School, Tuticorin, Tamil Nadu
6. Delhi Public School, Mysore, Karnataka
7. Delhi Public School, Kurukshetra Haryana
8. Delhi Public School, Jind Haryana
9. Delhi Public School, Greater Faridabad, Haryana
10. Delhi Public School, Fatehabad, Haryana
11. Delhi Public School, Sikri, Ballabhgarh, Haryana
12. Delhi Public School, Mahendergarh, Haryana
13. Delhi Public School, Pathankot, Punjab
14. Delhi Public School, Gurdaspur Punjab
15. Delhi Public School, Sangrur, Punjab
16. Delhi Public School, Abohar, Punjab
17. Delhi Public School, Patiala, Punjab IS. Delhi Public School, Sector 132,Gautam Budh Nagar U.P.
19. Delhi Public School, Sitapur, U.P.
20. Delhi Public School, Rajnagar Extension, Ghaziabad, U.P.
21. Delhi Public School, Jhansi, U.P.
22. Delhi Public School, Etawah, U.P.
23. Delhi Public School, Hariharpur, Lucknow, U.P.
24. Delhi Public School, Kashipur, Uttarakhand
25. Delhi Public School, BALCO KORBA Chhattisgarh
26. Delhi Public School, Jagdalpur, Chhattisgarh CS(OS) 1092 of 2012 9|Page
27. Delhi Public School, Great Ranchi, Jharkhand
28. Delhi Public School, Hawrah Kona Expressway, W.B.
29. Delhi Public School, Hawrah Domjur, W.B
30. Delhi Public School, Nagbani Jammu, J&K
31. Delhi Public School, Tanzania, Uganda
32. Delhi Public School, Abu Dhabi, UAE
33. Delhi Public School, Dammam, UAE.
7. The plaintiff submits that it has approached the Registrar of Trade Marks and made an application for the registration of their trademark in Class-16, 35, 36, 41 and 42. The Registrar of trademark has noted the following numbers in respect of the respective trademarks as set out hereunder:
S.No. Class Class Goods Description Journal Status Trade Mark No.
1. 16 Paper, cardboard and goods made Supp.: Registere Image Service from d Before Self;
1399-0 these materials, not included in vide Delhi Public other No. School classes; printed matter; book 1608946 (Device binding Status OF Torch in a material; photographs stationary; registratio hand) adhesives for stationary or n household granted purposes; artists, materials; paint brushes; typewriters and office requisites , (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers type;
printing blocks. •
2. 35 Advertising, business management, Supp.: Registere Image Service business administration, office d Before Sel^ 1399-0 functions. vide Delhi I'ublic No. School 1608947 (Device CS(OS) 1092 of 2012 10 | P a g e Status OF Torch in a registratio hand) n granted
3. 36 Insurance, Financial Affairs, Supp. Registere Image DeM Monetary d Public School 1399-0 Affairs, Real Estate Affairs. vide. (Device OF No. Torch in hand) 1608948 Status registratio n granted
4. 41 Education, Providing of Trainings Supp. Registere Registered entertainment, sporting and cultural d vide 1399-0 .affairs. vide No. 1608949 No. Status 1608949 registration Status granted registratio Image Service n Before Self;
granted Delhi Public
School
(Device
OF Torch in
hand)
5. 42 Services for providing Food & Supp.: Registere Image Delhi
drinks, d Public .
1399-0
school canteens, hostel vide School
accommodation, medical services, No. (Device OF
computer programming, scientific 1608950 Torch in hand)
& Status
industrial research registratio
n
granted
6. 16 Paper, cardboard and goods made Supp.: Registere DPS
from d
1398-0
these materials, not included in vide
other No.
classes; printed matter; book 1608951
binding Status
material; photographs stationary; registratio
adhesives for stationary or n
household granted
purposes; artists, materials; paint brushes; typewriters and office requisites (except furniture);
instructional and teaching material (except apparatus); plastic materials for packaging (not moulded in other classes); playing cards; printers type;
printing blocks.
7. 35 Advertising, business management, Supp.: Registere DPS business administration, office d 1398-0 functions. vide No. 1608952 CS(OS) 1092 of 2012 11 | P a g e Status registratio n granted
8. 41 Education, providing of training; Supp.: Registere DPS entertainment; sporting and d 1398-0 cultural activities. vide No. 1608953 Status Opposed
9. 42 Services for providing Food & Supp.: Registere DPS drinks, d 1407-0 school canteens, hostel vide accommodation, No. medical services, computer 1608954 programming, scientific & Status industrial registratio research. n granted 10 36 Insurance, Financial Affairs, Supp.: Registere DPS Monetary d 1398-0 Affairs, Real Estate Affairs. vide No. 1608955 Status registratio n granted
11. 16 Paper, cardboard and goods made Applicati DELHI from on PUBLIC these materials, not included in No. SCHOOL other 0211150 classes; printed matter; book 5 binding dated material; photographs stationary; 08.03.20 adhesives for stationary or 11 household purposes; artists, materials; paint brushes; typewriters and office requisites (except furniture);
instructional and teaching
material..
12 36 Insurance, Financial Affairs, Applicati DELHI
Monetary on PUBLIC
Affairs, Real Estate Affairs. No. SCHOOL
0211150
6
dated
08.03201
1
13 35 Advertising, business management, Applicati DELHI
business administration, office on PUBLIC
functions. No. SCHOOL
0211150
6
dated
08.03201
CS(OS) 1092 of 2012 12 | P a g e
1
14 41 Education, providing of training; Applicati DELHI
entertainment; sporting and on PUBLIC
cultural activities. No. SCHOOL
0211150
8
dated
08.03201
1
15 42 Services for providing Food & Applicati DELHI
drinks, on PUBLIC
school canteens, hostel No. SCHOOL
accommodation, 0211150
medical services, computer 9
programming, scientific & dated
industrial 08.03201
research
1
8. The plaintiff claims to have also obtained registration of its logo under the Copyright Act,1957 vide Application No. 219 dated 23.09.2010 by the Trademark Registry, Govt. of India and Search Certificate along with certified copy of logo issue by the Govt. of India.
9. The plaintiff submits that in more than 60 years of service in the field of imparting education, the plaintiff society has produced lakhs of students who are occupying prominent positions in the government as well as in the private sectors and are doing very well in life. The staff members of the school have also attained distinction in the field of academics and have been awarded prestigious awards by the Government.
10. The plaintiff claims to have inadvertently discovered that defendant No. 1 running a school under the name of 'Delhi Public School, Firozabad'/'DPS, Firozabad' which is seemingly under the aegis of one 'DPS Trust'; the defendants CS(OS) 1092 of 2012 13 | P a g e are using the marks 'DPS', 'Delhi Public School' and the logo of the plaintiff to run their school which was scheduled to start session from the academic year 2012-13.
11. Upon further inquiry, the plaintiff find out that the defendant had misused the plaintiff's name, marks, reputation and goodwill; defendant No.1 was advertising its impugned institution under the name of Delhi Public School/DPS in an attempt to deliberately ride upon the goodwill of the plaintiff society and create absolute confusion in the minds of the general public about the source and affiliation of the defendant's institution. Hence, to protect its rights, reputation and goodwill, the plaintiff has sought a permanent injunction.
12. On 06.11.2012, the defendant was proceeded ex parte. The plaintiff has led ex parte evidence.
13. The plaintiffs have led two witnesses by way of affidavit; Mr. Arindam Dass, Additional Secretary of Delhi Public School Socciety (PW-1) and Ms. Sureksha Luthra, Local Commisioner appointed by this Court (PW-2). In his evidence the PW-1 has deposed that he visited Firozabad after obtaining information about the opening of the defendants' school there and that Defendant No.1 and 2 showed themselves to be part of the plaintiff Society; that the name, logo and crest used by 'DPS Firozabad' are registered copyright and trademark of the plaintiff Society. PW-2 has deposed that she was appointed as the Local Commissioner in this case vide order dated 23.04.2012 and that she was directed to visit the premises of the CS(OS) 1092 of 2012 14 | P a g e defendants; that on visiting the premises, she signed the account books and seized all the material which bore the name/logo/mark of the plaintiff and that the same have been produced before this court . The submissions and contentions of the plaintiffs are not rebutted. There is no reason to disbelieve the plaintiff's case. Accordingly, he Court is satisfied that a case is made out for grant of the relief in terms of the prayers in the plaint. The suit is decreed in terms of prayers, which are as under:
"a) pass a decree of permanent injunction against defendants & in favour of the plaintiff restraining the defendants their partners, proprietors, owners as the case may be and their officers, servants, agents, delegates, representatives, assigns and all others acting for and on their behalf from offering for service, advertising, offering for sale, adopting, using the mark 'DPS', words 'Delhi Public School', logo and crest of plaintiff or any other deceptive variant thereof and/or doing anything or taking any step which is likely to lead the passing off the business and products of the defendants as those of the plaintiff and further restraining them from misrepresenting to be managed by DPS Managing Committee under the aegis of DPS Trust;
b) pass a decree of Permanent Injunction in favor of plaintiffs and against the defendants, restraining the defendants, their partners, proprietors, owners as the case may be and their officers, servants, agents, delegates, representatives, assigns and all others acting for and on their behalf from directly or indirectly reproducing and/or using the get up, layout, design, appearance, color scheme and arrangement of features of the plaintiffs mark 'DPS', words 'Delhi Public School', logo and crest, thereby amounting to infringement of plaintiffs rights in the said mark, crest and logo;
CS(OS) 1092 of 2012 15 | P a g e
c) pass a decree of rendition of accounts of profits illegally earned by the defendants by infringing the rights of the plaintiffs and by passing off their products and or business as the products and business of the plaintiffs; a Decree be further passed against the defendants for the exact sum as and when the amounts are ascertained;
d) pass a Decree of Damages for an amount of Rs.20,50,000/- in favor of the plaintiffs and against the defendants from such date as this Hon'ble Court may deem fit and proper;
e) The defendant be ordered and decreed to deliver to the plaintiffs for destruction of publication, advertisement material, blocks, dies made up of any material, stamps, stationery, and al infringing material bearing the trade mark 'DPS', 'DELHI PUBLIC SCHOOL', and logo/ crest of the plaintiff;
f) award costs of the present litigation in favour of the plaintiff and against the defendants;
14. Besides injunctions, the plaintiff has also claimed rendition of account and damages amounting to Rs.20,50,000/-. The plaintiff cannot get both, the rendition of accounts as well as specific amount towards damages. I am, therefore considering only the prayer for grant of damages.
15. The question of granting damages in such cases to be considered by me in Autodesk. Inc & Anr. vs. Mr. Prashant Deshmukh & Ors., 183(2011) DLT 411 and the following was given:
"Regarding punitive damages in the case of Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del), this Court observed that punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the CS(OS) 1092 of 2012 16 | P a g e wrong doers that the law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach. In the case of Hero Honda Motors Ltd. v. Shree Assuramji Scooters, 2006 (32) PTC 117 (Del), this Court noticing that the defendant had chosen to stay away from the proceedings of the Court felt that in such case punitive damages need to be awarded, since otherwise the defendant, who appears in the Court and submits its account books would be liable for damages whereas a party which chooses to stay away from the Court proceedings would escape the liability on account of the failure of the availability of account books.
In Microsoft Corporation v. Deepak Raval MIPR 2007 (1) 72, this Court observed that in our country the Courts are becoming sensitive to the growing menace of piracy and have started granting punitive damages even in cases where due to absence of defendant, the exact figures of sale made by them under the infringing copyright and/or trademark, exact damages are not available. The justification given by the Court for award of compulsory damages was to make up for the loss suffered by the plaintiff and deter a wrong doer and like-minded from indulging in such unlawful activities.
In Larsen and Toubro Limited v. Chagan Bhai Patel MIPR 2009 (1) 194, this Court observed that it would be encouraging the violators of intellectual property, if the defendants notwithstanding having not contested the suit are not burdened with punitive damages.
CS(OS) 1092 of 2012 17 | P a g e Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing of their goods and/or services as those of that well known brand. If punitive damages are not awarded in such cases, it would only encourage unscrupulous persons who actuated by dishonest intention, in the case of a trademark use the well- reputed trademark of another person, so as to encash on the goodwill and reputation which that mark enjoys in the market, with impunity or in the case of a software use the pirated software thereby depriving the copyright owner of the revenue to which he is entitled by sale of licence to use that software and then avoid payment of damages by remaining absent from the Court, thereby depriving the plaintiff an opportunity to establish actual profit earned by him from use of the infringing mark/pirated software, which, if he is using the infringing mark/pirated software for business purposes, can be computed only on the basis of his account books. This would, therefore, amount to putting premium on dishonesty and give an unfair advantage to an unscrupulous infringer over those who have a bona fide defence to make and therefore come forward to contest the suit and place their case before the Court."
16. The defendant is running a school using the well-known and reputed brand name of 'Delhi Public School'. As noted earlier, the defendants' use of the name 'Delhi Public School', the word mark 'DPS' and the logo of the plaintiff is dishonest, actuated by greed to encash upon the brand equity which these names enjoy amongst the parents of school going children in CS(OS) 1092 of 2012 18 | P a g e the country. Delhi Public Schools being quite well-known, parents would ordinarily leave no stone unturned to admit their wards in these schools. On account of dishonest use of the trademark and logo of the plaintiff by the defendant, some innocent and gullible parents may admit their wards in the schools being run by the defendants under a mistaken belief that their child is studying in one of the schools being run by the plaintiff and consequently pay high fees and other charges, which they would otherwise not pay for admission in some obscure school. It is, therefore, necessary to award appropriate punitive damages to the plaintiff so that such dishonest propensities may be curbed and innocent parents are not trapped into admitting their wards in schools such as the school being run by the defendant. Furthermore, the brand value of the trademark and copyright would be adversely affected if a wannabe school is set-up under the said trademark without meeting the plaintiff's standards of basic facilities and infrastructure and requisites of trained, qualified and experienced teachers with the ethos of DPS chain of schools for the grant of a license to a prospective applicant. Therefore, an amount of Rs.2.00 lac is imposed as punitive damages in favour of the plaintiff and against the defendant
17. The suit stands disposed off in the above terms. Decree Sheet be drawn up accordingly.
NAJMI WAZIRI, J
SEPTEMBER 11, 2015/acm
CS(OS) 1092 of 2012 19 | P a g e