Delhi High Court
Keshav Kumar Aggarwal vs M/S Niit Ltd. on 22 March, 2013
Author: Kailash Gambhir
Bench: Kailash Gambhir
IN THE HIGH COURT OF DELHI AT NEW DELHI
CS (OS) No. 2237/2012 Judgment delivered on: 22/03/2013
KESHAV KUMAR AGGARWAL ...Plaintiff
Through: Mr. H.P. Singh with Mr. Navroop Singh, Adv.
Versus
M/S NIIT LTD ....Defendant
Through: Mrs. Pratibha M. Singh , Adv.
CORAM:
HON'BLE MR. JUSTICE KAILASH GAMBHIR
IA No. 13469/2012 in CS (OS) No. 2237/2012
1. The present case concerns the plaintiff‟s Intellectual Property Rights in its
trademark/label "TURNING POINT" bearing No. 1324835 in Class 41,
registered on 15-11-2005 for providing Educational Services, training,
Entertainment, Sporting & Cultural Activities.
2. Briefly stating the case of the plaintiff is that the Plaintiff, Shri Keshav
Kumar Aggarwal is the sole proprietor of the firm M/s TURNING POINT,
CS (OS) No. 2237/2012 Page 1 of 30
situated at B-1/ 30 Malviya Nagar, New Delhi which is engaged in providing
Educational Services, Coaching & training for students in various Schools &
Colleges, since the year 1998 under the trademark "TURNING POINT", which
had been duly registered by the Plaintiff under class 41 on 15.11.2005 and the
plaintiff has built up enormous goodwill & reputation in the market over the
years. It is the case of the plaintiff that the said registration of the trademark
"TURNING POINT" by the Plaintiff is valid and subsisting till the year 2015. It
is also the case of the plaintiff that the plaintiff was the first one to have coined
a unique & subjective mark with respect to educational services in the year
1998. According to the plaintiff, M/s TURNING POINT has various centres in
Delhi, providing coaching and training services to the students in association
with the sole proprietorship concern run under the name "PYRAMID
CLASSES" by the Plaintiff‟s wife. It is also the case of the plaintiff that they
are primarily engaged in imparting coaching & training to students of class
VIII, IX, X, XI & XII in various schools in Delhi, teaching various subjects
such as Commerce, Science, Arts etc. In addition to the above services, the
plaintiff also provides coaching & training in preparing the students for various
competitive entrance exams such as BBA, BBS, LAW, IIT, AIEEE,
MEDICAL, CFAS, HM, CPT etc. Thus, in due course of providing educational
services of the highest class to the students for the last 14 years, the plaintiff‟s
registered trademark i.e. "TURNING POINT" has become a distinctive and
CS (OS) No. 2237/2012 Page 2 of 30
well- known mark under Section 2 (z) (g) of the Trademarks Act, 1999. It is the
case of the plaintiff that in the month of June 2012, the plaintiff came to know
that the defendant has adopted an identical and deceptively similar mark to that
of the plaintiff. According to the plaintiff the defendant is using the impugned
mark out of greed with a view to take advantage of the reputation and goodwill
of the plaintiff.
Achievements, Sales and Advertising
3. According to the plaintiff, the institution M/s TURNING POINT
maintains highest level of quality Education, training &coaching services,
teaching about thousands of students, which has enabled the students to excel in
their exams. The plaintiff has printed various Brochures highlighting the
success of its students, their achievements in the educational field. The plaintiff
over the years has built up enormous goodwill, reputation and name in the
market among the public for providing quality and effective coaching and
training services, to the students helping them to prepare for various entrance
exams. It is also the case of the plaintiff that it has been using, advertising, &
promoting the said mark continuously and extensively since the year 1998, with
respect to the above services making it distinctive and thereby, making it a well-
known mark under Section 2(z) (g) of the Trademarks Act, 1999. It has been
contended that the plaintiff has achieved tremendous sales which are reflective
of the enormous goodwill and reputation, which the plaintiff has achieved by
CS (OS) No. 2237/2012 Page 3 of 30
imparting education & training to the students of various colleges and schools
since 1998. The approximate sales figures of the plaintiff since the year 1998-
1999 to 2011-2012 are as follows:
1999-2000 29,00,000
2000-2001 3,73,273
2001-2002 5, 92, 000
2002-2003 7, 18, 685
2003-2004 5, 64,000
2004-2005 8,00,330
2005-2006 13,60,000
2006-2007 17,69, 052
2007-2008 24,41,301
2008-2009 26,87,049
2009-2010 21,99,405
2010-2011 38, 96, 349
2011-2012 61, 06, 693
4. The plaintiff has also incurred huge volume of sums in advertising and
promoting the educational training and coaching services under the name/
trademark „TURNING POINT‟, making the said mark of the plaintiff highly
CS (OS) No. 2237/2012 Page 4 of 30
distinctive. It is also the host of the website www.theturningpoint.com where all
the information about the plaintiff‟s activities is given for its current and
prospective students. It also conducts online tests on its website for the students
to assess their intellectual capacity. In addition plaintiff also hosts a facebook
account and has hosted many online lectures on youtube.com. The plaintiff is
associated with various schools and universities in Delhi like, Don Bosco
School, Apeejay School Saket, Ryan International School, etc. wherein it
provides education, training and coaching services to the students. The plaintiff
has further been associated with Modi School, Lakshmangarh, Dist. Sirkar,
Rajasthan, for taking mathematics and science classes. The copies of the
acknowledgement of various schools have also been filed along with the plaint,
establishing the fact that the plaintiffs coaching classes and training sessions are
acknowledged more or less, by almost all the schools. The copy of the
trademark registration certificate, the original sales figures, sale invoices,
advertising invoices, web site and service tax registration has also been filed by
the plaintiff along with the plaint.
CASE OF THE PLAINTIFF AS AGAINST THE DEFENDANT:
5. It is the case of the plaintiff that it has a huge set up and interactive
curriculum, thereby imparting theoretical as well as practical knowledge to the
students who appear for competitive exams and over the years, the plaintiff‟s
plinth of students has constantly increased with the similar proportionate
CS (OS) No. 2237/2012 Page 5 of 30
increase in excellent results obtained by the students who are taught by the
plaintiff.
6. It has also been alleged that the plaintiff came to know in June‟2012, that
the defendant, a limited company situated at B-234, Okhla Phase -1, New Delhi
110002, has launched a computer training program under the name "NIIT THE
TURNING POINT". It is the case of the Plaintiff that the defendant by using
the registered trademark of the plaintiff, as part of their educational and training
course is infringing upon the valuable statutory and common law rights of the
plaintiff in its registered trademark. It is also the case of the plaintiff that the
defendant has in an unauthorized manner started using the mark "TURNING
POINT" as part of its trade, without taking any permission or authorization
from the plaintiff, thereby, deliberately creating confusion with an attempt to
dilute the reputation and name commanded by the plaintiff among the students.
7. It is also the case of the plaintiff that the defendant is causing substantial
loss and damage to the plaintiff‟s goodwill, name, reputation in the market,
which it has arduously build over years. The act of the defendant to adopt a
similar name as part of its trade name / training course is deliberate act of
deceit, unfair competition and would amount to passing off its services as that
of the plaintiff‟s. The defendant by using the similar mark for the same class of
the services i.e. Education services falling under class 41 of the Trademark Act,
1999, is creating confusion in the market thereby not only violating valuable
CS (OS) No. 2237/2012 Page 6 of 30
common law rights of the plaintiff herein but also creating substantial loss and
damage to the plaintiff‟s business & reputation at large.
8. It has also been asserted by the Plaintiff that the defendant‟s activities are
crafting confusion, as it is portraying to have some nexus with the plaintiff or
that the defendant has entered into some understanding with the plaintiff to use
its mark. Counsel for the plaintiff submitted that such an act is a deliberate
attempt to trade on the gargantuan goodwill of the plaintiff, with a view to have
unjust gains and profits.
9. As per the plaintiff, the Defendant must have had the prior knowledge of
the existence of the plaintiff, in the market as both the parties are operating in
the same field of education, training and coaching services. The plaintiff further
submits that the defendant ought to have made due diligence about existence of
any similar name/ mark prior to its adoption before launching the said services
in the market. The conduct of the defendant express that the defendant has not
taken due diligence or care before adopting the identical name as that of the
plaintiff thereby violating their valuable statutory and common law rights in the
registered trademark "TURNING POINT". Ld. Counsel for the Plaintiff further
submitted that the defendant at all material times was aware of the plaintiff‟s
existence in the market, as in the year 2002, the plaintiff and the defendant had
joined hands for providing education and coaching services to various students.
Furthermore, both plaintiff and the defendant have been providing educational
CS (OS) No. 2237/2012 Page 7 of 30
services to the students of MODY school, Rajasthan which creates more
confusion and deception as to the origin of the name "TURNING POINT".
Therefore, it is quite evident that the defendant is dishonest in their conduct.
The counsel further submitted that the defendant has also filed an opposition
against a party in Chennai against the use of the mark TURNING POINT ,
which shows its malafides as in the present case the defendant states that the
TURNING POINT of the plaintiff is descriptive while on the other hand it
opposes the mark TURNING POINT adopted by a third party on the basis of it
being similar to the mark of the defendant.
10. It is also the case of the plaintiff that the plaintiff immediately served
upon the defendant the cease and desist notice in the month of June, dated 1st
June 2012 calling upon the defendant to immediately cease from using the said
mark. But in reply dated 15.06.2012 to the said notice, the defendant denied all
the contentions of infringement or passing off arbitrarily.
11. Counsel further submitted that the word "TURNING POINT" was first
adopted by the plaintiff in the year 1998 and its long usage has transcended the
said mark into a distinctive mark. The Counsel further submitted that the
defendant has failed to substantiate its claim as mentioned in its written
statement that many people have been using the aforesaid mark, as the
defendant has only filed a search report according to which only a few service
providers are shown to have adopted the said mark without any proof of actual
CS (OS) No. 2237/2012 Page 8 of 30
user. Counsel further submitted that the defendant has miserably failed to
produce any sales figures or invoices to substantiate its goodwill in the market
for its mark "NIIT THE TURNING POINT". Counsel thus submitted that the
defendant has been vigorously advertising impugned mark in the market with
high stress on the plaintiff‟s mark thereby creating confusion and causing loss to
the plaintiff‟s reputation and goodwill in the market.
12. To support his arguments, Ld. counsel for the plaintiff placed reliance on
the following judgments:
a) Indian Shaving Products Ltd. &Anr V. Gift Pack &Anr., 1998 PTC (18)
698
b) Ansul Industries V. Shiva Tobacco Company, 2007 (34) PTC 392(Del.)
c) Amritdhara pharmacy v. Satyadeo Gupta, PTC (Suppl) (2) 1(SC)
d) Greaves Cotton Limited V. Mohammad Rafi &ors, 2011 (46) PTC 466
(Del.)
e) United Biotech pvt Ltd V. Orchid Chemicals & pharmaceuticals ltd., 2012
(50) PTC 433 (Del.) (DB)
f) ACL Education Pvt Centre ltd &anr V. American Centre for language &
anr.,2008(36) PTC 113 (Del.)
g) Godfrey Philips India v. Girnar foods, (2005) 30 PTC 1(SC)
h) S.P. Chengalvaraya v. Jagannath, AIR 1994 SC 853
i) Automatic Electric v. R.K. Dhawan, 1999 PTC (19) 81
j) Corn Products v. Shangrila Foods, AIR 1960 SC 142), etc.
13. In the light of the above, the plaintiff prays for issuance of ad-interim
injunction restraining the defendant, its directors, servants, principal officers,
CS (OS) No. 2237/2012 Page 9 of 30
agents, successors, assigns, nominees etc. and others acting for and on behalf of
the defendant from using, marketing, selling, offering for sale, advertising or
displaying directly or indirectly or dealing in any manner or mode in class 41 of
the TMA, 1999 in which the plaintiff deals through the impugned trade name/
label „TURNING POINT‟ and also from doing any act that is likely to cause
confusion and deception and passing off of the plaintiff‟s goods.The plaintiff
also prays that if the defendant is not restrained, then the business of the
Plaintiff‟s Institution is going to suffer irreparable loss on account of the
unauthorized and unlicensed use of the said trade mark.
Defendant Co.'s Incorporation & Trademark Registration
13. Giving the background of the defendant‟s business, counsel for the
defendant submitted that the defendant is a renowned IT Education and
Training Company having its offices in several locations in India and Abroad. It
is the registered owner and proprietor of the mark „NIIT‟. NIIT was originally
coined in the year 1981 as an acronym of the full name - NATIONAL
INSTITUTE OF INFORMATION TECHNOLOGY, which was earlier being
used by the defendant in respect of its services. The mark NIIT and its
derivatives have now become distinctive brands of the defendant. The original
name of the defendant Company was PACE EDUCATION PRIVATE
LIMITED which commenced business of imparting computer education
services through a chain of institutes and coaching centres under
CS (OS) No. 2237/2012 Page 10 of 30
mark/brand/name NIIT, and the said mark has been continuously and
extensively used by the defendant since then. The corporate name PACE
EDUCATION PVT. LTD. was changed to NIIT Limited in the year 1990,
thereafter a number of companies such as NIIT institute of finance, banking and
insurance training limited, NIIT institute of Process Excellence, NIIT Antilles
NV, NIIT USA Inc etc. have been incorporated in the NIIT name which include
companies in India, Netherlands, USA, Antilles, Bahrain etc. All these
companies use the mark NIIT as a prominent part of their corporate names and
/or trading styles and are commonly used as NIIT Group. They also provide a
range of services under the name NIIT. The model of the NIIT Group covers
both information Technology Education and Software Services. The NIIT group
started providing Software Solutions since 1984. The NIIT Group went public
in 1993, and the Software Solutions business was separated from the NIIT
Limited in 2003-2004 as a separate company and is called the NIIT
Technologies Limited. Counsel also stated that the Defendant is engaged in the
business of imparting IT education and training, running IT institutions
worldwide, providing business process outsourcing services to IT industry etc.
14. Refuting the contentions raised by the Counsel for the plaintiff, Ld.
Counsel for the defendant submitted that the plaintiff is not a registered
proprietor of the mark TURNING POINT per se, as is sought to be portrayed in
the suit. The alleged mark is in respect of the label mark as a whole and that the
CS (OS) No. 2237/2012 Page 11 of 30
alleged registration of the label mark does not confer any exclusivity on the
words TURNING POINT rather it‟s read as TP TURNING POINT and hence
no infringement suit lies against the Defendant.
15. Ld. Counsel for the defendant also submitted that there lies no similarity
between the defendant‟s and the plaintiff‟s mark as it is a well settled principle
of law that the marks are to be compared as a whole, and the defendants mark
essentially bears the reputed trademark NIIT as an inseparable part of it whereas
the plaintiff‟s mark is a label mark. Counsel also submitted that the defendant‟s
mark/logo NIIT is registered under various classes and with respect to the
registration of NIIT THE TURNING POINT, the same is pending registration.
16. The ld. counsel for the defendant also contended that the adoption of the
trademark NIIT THE TURNING POINT is honest and bona-fide, as the
defendant added its well-known trademark NIIT as a prefix to the words THE
TURNING POINT which are common dictionary words in the English
language and is used very often in respect of education and training services
which cannot be monopolized. Ld. Counsel further submitted that the alleged
mark TURNING POINT is incapable of being associated or being distinctive of
only one service provider, as these terms are very commonly used especially
qua services like education and training.
CS (OS) No. 2237/2012 Page 12 of 30
17. Ld. Counsel also submitted that the defendant is a leading provider of
education and training services under the trademark and name NIIT and that the
institution has been in existence for a far longer period of time than the Plaintiff
and further that the Defendant company enjoys reputation and goodwill which
is unmatched by the Plaintiff. The mark /name NIIT is a well known mark
within the meaning of Section 2(zg) of the Trade Marks Act, 1999. In addition
to the trademark NIIT THE TURNING POINT, the defendant uses various
trademarks/service marks for different courses as detailed inparagraph 6 of their
written statement and so far as the expression „TURNING POINT‟ is concerned
the same pertains only to cloud centric curriculum.
18. Ld. Counsel also submitted that defendants started using the said expression
in May 2012 with intent to show how the said course can be a TURNING
POINT in the career of the students. The Counsel also submitted that defendant
were conscious of the fact at the time when defendant had applied for the
registration of a trademark „TURNING POINT‟, that the same was a descriptive
word and therefore, the defendant in such a scenario reserves its rights to file a
rectification petition against the impugned registration of the mark/ label "THE
TURNING POINT" in the name of the plaintiff, if the need arises at a later
stage.
19. Clarifying the stand of the defendant with regard to the arguments
advanced by counsel for the plaintiff that defendant has made a false averment
CS (OS) No. 2237/2012 Page 13 of 30
in the written statement contending that defendants never had any tie up with
the plaintiff in providing educational services to the students of Modi School,
counsel categorically stated that from paragraph 5 of the written statement it is
manifest that it never had any tie up with the plaintiff for delivering any
educational services in the Modi School.
20. Explaining the brochure placed on record by the plaintiff at page 46 of
the paperbook, counsel for the defendant submitted that this document has
already been denied by the defendant, as the defendant has no knowledge about
this document or who brought out the same. Counsel also submitted that so far
the reliance placed by the plaintiff on the invoice dated 28.03.2012 placed on
record at page 34 of the paper book is concerned, the defendant has nowhere
denied that they have not provided educational services to the Modi School, but
their categorical stand was that they had no tie up with the plaintiff for
providing training sessions at the Modi School ever.
21. Counsel also submitted that so far the computer generated search report is
concerned the only purpose of the defendant was to show that the word
"TURNING POINT" is being used by various institutions. Counsel also
submitted that the name of the plaintiff in the said report is not appearing
possibly because of the fact that the defendant gave a word without a break in
the search stream. (Printout of status report from the internet showing the
opposition is placed on record). Counsel for the Defendant thus submitted that
CS (OS) No. 2237/2012 Page 14 of 30
there is no concealment or misrepresentation of any kind on the part of the
defendant.
22. In support of her arguments, counsel for the defendant placed reliance on
the judgments of the Hon‟ble Supreme Court in the cases of Skyline Education
Institute v. SL Vaswani, 2010 (42) PTC 217, Marico Limited Vs. Agro Tech
Foods Ltd, MIPR 2010 (3) 0226 and Three N Products Private Limited v.
Emami Limited reported in MIPR 2008 (3) 0319.
23. I have heard the learned counsel for the parties and given my anxious
consideration to the arguments advanced by them.
24. At the stage of deciding an interim application under Order 39 Rule 1 & 2
of Code of Civil Procedure, 1908, I only need to consider the undisputed facts
and the material placed on record. On perusal of the documents placed on
record by the parties and the contentions raised by their respective counsels, this
court does not have an iota of doubt in holding that the plaintiff was the first in
point of time to adopt the trademark/ label "TURNING POINT" with respect to
educational services falling under class 41 of Schedule IV of The Trademarks
Act, 1999. The documents placed on record clearly corroborate the fact that the
plaintiff adopted the trademark/ label „TURNING POINT‟ in 1998 and got it
registered on 15.11.2005 with respect of educational services falling under
Class 41 of The Trademarks Act, 1999 while the application for registration of
CS (OS) No. 2237/2012 Page 15 of 30
defendant‟s mark "NIIT THE TURNING POINT" is still pending registration.
The documents on record showing that the plaintiff has been awarded
various acclamations and has been ranked highly in various schools, magazines
in imparting education and training, entertainment, sporting & Cultural
Activities since 1998 clearly establish the fact of their uninterrupted usage of
the mark since then until now and such long usage of the mark by the plaintiff,
for more than a decade, has led to the services carried on by the plaintiff being
identified as exclusively originating from the plaintiff.
25. It has been held by the Supreme Court in the "Super Cup" case reported
as Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd., (2004)
5 SCC 257 that a descriptive trademark may be entitled to protection if it has
assumed a secondary meaning which identifies it with a particular product or
has been from a particular source.
26. In Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra
Ltd. 2001 IXAD SC 472 the Hon‟ble Supreme Court restrained the use of the
word „Mahendra‟ observing that the trade mark had acquired a distinctiveness
and a secondary meaning in the business or trade circles and that people have
come to associate the name Mahindra with a certain standard of goods and
services rendered by the plaintiff.
CS (OS) No. 2237/2012 Page 16 of 30
27. In ACL Education Centre Pvt. ltd. and Anr.
vs. American's Centre for Languages and Anr. 2008 (36) PTC 113 (Del),
while granting an ex parte injunction in favour of the plaintiff‟s for using the
common English words "American Centre for Languages" as its trade mark,
this Hon‟ble court held as under:
"12. On the basis of material produced and the long user by
the Plaintiffs, it appears prima facie that the „American
Centre for Languages‟ has come to be associated with the
Plaintiffs. The Plaintiffs have produced the balance-sheet as
per which it has shown that receipts in the form of fees are
in several lakhs per years. Thus, it is clear that over this
period thousands of students have undertaken English
language and other courses offered by the Plaintiff institute
and they identify „American Centre for Languages‟ with the
Plaintiff."
28. Dealing with the aspect that „STANDARD‟ being a common dictionary
word is capable of achieving distinctiveness because of its continuous usage
since a long period of time, it was observed in the case of Standard Electricals
Limited Vs. Rocket Electricals and Anr., 2004 (72) DRJ 794 in paragraph 22
that:
"22. ........ Prima facie there does not appear much force in
the argument of the defendant that the word STANDARD is
continuously used for a long time as a trade mark for selling
its goods and the trade mark cannot be protected only
because it is a common English language word, a generic,
descriptive or laudatory word. An ordinary generic or
descriptive word or even name of a person, geographical
place, or surname may come to acquire distinctiveness and
secondary meaning in the business and trade circle so as to
associate a product sold under that trade name with a
particular person. If another person is using the same word
or a deceptively similar mark for marketing its producers
with dishonest intention to cash upon the reputation,
CS (OS) No. 2237/2012 Page 17 of 30
popularity and goodwill of the products of the plaintiff, the
plaintiffs trade make is entitled to be given due protection
by the Court."
29. In the light of the dicta laid in the above judgments, it would be proper to
hold that the plaintiff‟s trade mark/ label „TURNING POINT‟ has achieved the
status of a well-known mark/ label within the meaning of Section 2 (1) (zg) of
the Trademarks Act, 1999.
30. The mere fact that there are other users of the mark „TURNING POINT‟,
as alleged by the defendant, with respect to educational services, will not aid the
defendant in defending this interlocutory application as the defendant has failed
to place on record any document substantiating the fact of being an actual user
of the mark by such alleged service providers and the amount of goodwill and
reputation that their mark allegedly enjoy in the market. (See Corn Products
Refining Co. v. Shangrila Food Products Ltd., [1960] 1 SCR 968).
31. As far as the reliance placed by the defendant on Section 17 of the
trademark Act, 1999 is concerned, the defendant has profoundly contented that
the plaintiff cannot claim monopoly over the words "TURNING POINT" per se
when the registration is for a label/logo mark by virtue of section 17 of the
Trademarks Act, 1999. For better appreciation of section 17 of the Trademark
Act, 1999, the same is reproduced below:
17. Effect of registration of parts of a mark.--
CS (OS) No. 2237/2012 Page 18 of 30
(1) When a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive
right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section
(1), when a trade mark--
(a) contains any part--
(i) which is not the subject of a separate application by
the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the
proprietor as a trade mark; or
(b) contains any matter which is common to the trade
or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive
right in the matter forming only a part of the whole of
the trade mark so registered.
32. The argument advanced by the counsel for the defendant is that as per
section 17 (1) of the Act, the exclusive right of the registered proprietor is to
use the trademark "taken as a whole" and not "in part" which the plaintiff is
trying to claim. A recent judgment of the division bench of this court in the
case Unitech Biotech Pvt Ltd. (supra) has very explicitly taken care of the
aforesaid issue. The contention raised by the counsel for the appellant in the
said case was that the registration of respondent‟s trademark was in respect of
label mark ORZID and it is only the label which needs to be protected by virtue of Section 17 of the Act. Dismissing such contention raised by the counsel for the appellant, the court observed that the essential feature of the mark is also protected if the mark is registered as a whole. After placing reliance on the judgment of Hon‟ble Supreme Court in the case Ramdev Food CS (OS) No. 2237/2012 Page 19 of 30 v. Arvindbhai Rambhai , 2006 (33) PTC 281 (SC, the Division Bench of this court observed in paras 24 and 25 as under:
"24. The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix "ZID" and since the respondent has registration and trade mark "ORZID", it cannot bare a part of it, i.e., "ZID".
What has been seen in a case like this is as to whether the mark "FORZID" is deceptively similar to "ORZID". That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark "ORZID" is a label mark, the word mark "ORZID" is an essential feature which has been covered by the registration. Therefore, the learned counsel for the respondent appears to be right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd. (supra). Following dicta on the said decision is pertinent:
82. In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto v.
Badman [8 RPC 181] to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined:
This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it CS (OS) No. 2237/2012 Page 20 of 30 a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration.
(Emphasis supplied)
83. The said decision has no application to the fact of this case.
84. Mr. Nariman is also not correct in contending that only a label has been registered and not the name 'Ramdev'.
Definition of 'mark' as contained in Section 2(j) of the 1958 Act also includes name, signature, etc.
25. We find that the learned Single Judge rightly held that when a label mark is registered, it cannot be said that the word mark contained therein is not registered. We, thus, are of the opinion that although the word "ORZID" is a label mark, the word "ORZID" contained therein is also worthy of protection. The learned Single Judge has rightly observed that the judgment of the Supreme Court in Ramdev Food Products Ltd. (supra) is the complete answer."
33. In the light of the above, the plaintiff‟s trademark „TURNING POINT‟ being an essential feature of the label of the plaintiff "TP-TURNING POINT"
deserves protection from any acts of infringement/passing off caused at the hand of any other person using the similar/ identical mark.
34. The issue in the present case thus boils down to the question whether the plaintiff has made out a prima facie case of infringement/ passing off against the Defendant Company for using its trademark "TURNING POINT" in the form of "NIIT-THE TURNING POINT" and thus accords interim protection against the defendant.
CS (OS) No. 2237/2012 Page 21 of 30
35. The relevant provisions of The Trademark Act, 1999 giving such right of protection to the plaintiff‟s trademark, are reproduced as under
28. Rights conferred by registration (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
29. Infringement of registered trademarks (1) 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.
(2) 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--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) 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...
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person CS (OS) No. 2237/2012 Page 22 of 30 using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and ...
36. For the purpose of proving infringement, the main ingredients to be established under Section 29 of the Act are that the plaintiff‟s mark is registered under the Trade mark Act, the defendant‟s mark is identical with or deceptively similar to the registered trademark of the plaintiff and the defendants use of the mark is in the course of trade in respect of the goods covered by the registered trademark. Section 29, dealing with. infringement of registered trademarks, mandates that a registered trade mark is infringed by a person who not being the registered proprietor uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods 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.
37. Therefore, In my view, the plaintiff has been able to prima facie show that it has a registered trademark „TURNING POINT‟ with respect to the educational services offered by it and also the fact that the defendant deals in the identical services of providing educational training to the students. Primarily, what needs to be seen in the present case is whether the defendant‟s CS (OS) No. 2237/2012 Page 23 of 30 mark is identical with or deceptively similar to the registered trademark of the plaintiff.
38. It is no more res integra, that for ascertaining whether one mark is deceptively similar to another mark, the rival marks have to be compared as a whole. The parameters to be taken into consideration in order to determine whether the defendant‟s mark is deceptively similar to the mark of the plaintiff are very well enunciated in Pionotist case reported in 1906(23) RPC 774, which reads as follows:
"You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion-that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case."
39. In Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical Laboratories 1965 SCR (1) 737, the Hon‟ble Apex Court in the following paras held as under:
"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 CS (OS) No. 2237/2012 Page 24 of 30 plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, 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;......
When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out...."
40. This Hon‟ble Court, in the case of Ansul Industries (supra) placing reliance on the above decision of the Apex Court also held that:
"11. Thus, it is well settled that when the question whether the mark causes or is likely to cause deception or confusion arises before a Court, the standard applied is not that of a vigilant consumer or a trader, but standard of an unwary normal customer of the said product. The Court has to consider and examine whether a consumer of the product is likely to be deceived or confused after examining broad and dominant features of the two marks and whether there is overall similarity that is likely to mislead a purchaser. Both the marks have to be considered as a whole.
12. Question of confusion cannot be decided by keeping the two marks by each other and noting similarities and differences between the two marks. Right in a trade mark is with reference to trade and commerce. Question of deception and confusion has to be examined and dealt with from commercial point of view. The law gives protection to the proprietor of the trade mark if there is likelihood of deception or confusion. The impression created by looking at the two marks and the significant feature and idea behind the two marks that would be CS (OS) No. 2237/2012 Page 25 of 30 formed in the mind of the purchaser is the relevant criteria."
41. Same set of scenario also came up for consideration before this Court in the case of Greaves Cotton Limited V. Mohammad Rafi & Ors, 2011 (46) PTC 466 (Del.), where there was dispute in relation to the use of the word "GREAVES" by the Defendant company wherein this court decorously held as under :
"In interest of the consumer that a well-established brand such as "GREAVES" is not to be allowed to be used by another person. A person purchasing pumping sets being sold by the plaintiff company under the name "GREAVES", when he comes across the product of the defendant No.1 being sold under the trade name "GREAVES INDIA", on account of imperfect recollection and his not having the product of the plaintiff with him at that time, may form an impression that both the products emanate from the same source and that is why both of them are using the word "GREAVES" for selling similar products."
42. Coming to the facts of the present case, the registered trademark of the Plaintiff is not solely "TURNING POINT" but it‟s with the label TP and is read as „TP TURNING POINT‟ as a whole, which is the name of the institution, however, the Defendant has pre-fixed the name of its company NIIT before the words "TURNING POINT" giving rise to the impugned phrase "NIIT- THE TURNING POINT". It is not disputed that the Defendant company started providing educational services and set up the company in 1993 way before than that of the Plaintiff‟s, however, its mark in use has always been NIIT and CS (OS) No. 2237/2012 Page 26 of 30 moreover, just by pre fixing their own mark NIIT before the Phrase TURNING POINT which enjoys a goodwill in the educational sector, would not necessarily distinguish their mark with the Plaintiff‟s mark while adjudging two marks having the same genre of practise, when placed alongside, if appear similar in their description would cause infringement within the four corners of law.
43. The court also does not find any genuineness on the part of the defendant in adopting the trademark „NIIT THE TURNING POINT‟ on the basis of the contention that they started using the said expression in May 2012 with intent to show how the said course can be a TURNING POINT in the career of the students. The defendant has vehemently denied the fact that they had ever joined hands with the plaintiff in providing training courses to the students at various educational institutes but admittedly, the defendant was providing its educational services in Mody School, where the plaintiff was also engaged. Such being the situation, it cannot be said that the defendant had no prior knowledge regarding the plaintiff‟s services and adopted the impugned trademark righteously and after exercising due diligence. Merely being a bigwig in the field of providing educational services, the defendant cannot use its brand name „NIIT‟ to ride upon the goodwill and business built up by the other comparatively smaller service provider, working in the same field for over a decade, under the garb of the defence that it has clearly distinguished its mark with that of the other service provider by prefixing its own mark with former‟s CS (OS) No. 2237/2012 Page 27 of 30 mark so as to avoid confusion in the market. The use of the plaintiff‟s mark along with NIIT can certainly cause confusion in the minds of the public at large that the plaintiff and the defendant have joined hands in providing the computer training services.
44. As stated in the LAW OF PASSING-OFF BY CHRISTOPHER WADLOW, IIIrd EDITION, PAGE 430, it is passing off to misrepresent that one‟s business is that of the claimant or connected with that of the claimant in any way likely to cause damage . "The principle is this, that no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man."(per Romer L.J. in Clock Limited v. Clock House Hotel Limited, (1936) 53 R.P.C 269, C.A.)
45. The bonafides on the part of the defendant is also doubted in view of the fact that on one hand the defendant claims that the words TURNING POINT are descriptive in nature and hence cannot confer any monopolistic rights to the exclusion of the others in favour of the plaintiff and on the other hand the Defendant has itself filed an opposition against a party in Chennai for using the trademark „TURNING POINT‟.
CS (OS) No. 2237/2012 Page 28 of 30
46. Reliance placed by the defendant on the cases, Marico Limited Vs. Agro Tech Foods Ltd and Three-N-Product v. Emami (supra), would also be of no help to the defendant and is entirely misplaced in the facts of the present case, as it is case of the plaintiff that it had coined its trademark "TURNING POINT" and the said mark has no direct reference to the character or quality of services provided by the plaintiff as alleged by the defendant, and has not been adopted or used for the purpose of describing the services which it provides.
47. In the light of the above discussion and based on the triple test for the grant of ad-interim injunction viz (1) whether the plaintiff has strong prima facie case to succeed on merits (2) whether the balance of convenience lies in favour of the plaintiff and (3) whether the plaintiff will suffer irreparable loss and injury if the injunction is not granted in its favour, this court finds that all the three principles lean in favour of the plaintiff and against the defendant. In the facts and circumstances of the present case, the plaintiff has been able to make out a prima facie case for grant of injunction against the Defendant.
48. The use of the expression TURNING POINT along with their mark NIIT by the Defendant at this initial stage deserves to be injuncted as the mark of the Defendant is deceptively similar to that of the Plaintiff Institution. As a result, the plaintiff‟s application for the grant of interim injunction under Order 39 Rule 1, 2 stands allowed and accordingly, the defendant, its directors, employees, servants, agents etc. are restrained from marketing, selling or using CS (OS) No. 2237/2012 Page 29 of 30 in any manner whatsoever the plaintiff‟s registered trademark "TURNING POINT" with respect to its services till the final disposal of the present case.
49. It may be noted that nothing expressed herein shall be treated as an expression on the merits of the case.
KAILASH GAMBHIR, J MARCH 22, 2013 CS (OS) No. 2237/2012 Page 30 of 30