Anjani Kumar Goenka & Anr vs Om Education Trust & Anr on 10 September, 2018

[Cites 14, Cited by 2]

Delhi High Court

Anjani Kumar Goenka & Anr vs Om Education Trust & Anr on 10 September, 2018

1. This suit has been filed by the plaintiffs seeking permanent injunction to restrain the defendants from infringing the plaintiffs‟ right in the registered trademarks „GOENKA‟, „G.D.GOENKA‟ and „GD GOENKA SCHOOL‟, etc. and also form doing acts of passing off and seeking rendition of accounts.

2. IA No. 3491/2018 is filed under Order 39 Rules 1 & 2 CPC seeking an ex parte interim injunction against the defendants.

3. This court on 13.03.2018 when the matter came up for hearing, restrained the defendants from using the trademark „GOENKA CS(COMM) 725/2018 Page 1 of 16 INTERNATIONAL SCHOOL‟ or any other mark which is deceptively similar to the registered trademark of the plaintiffs.

4. IA No.4583/2018 has been filed by the defendants under Order 39 Rule 4 CPC seeking vacation of the said interim order dated 13.03.2018. On 17.04.2018, this court had partly modified the stay order on the plea of the learned counsel for the defendants who had submitted that without prejudice to the defendants‟ rights and contentions, the defendants would apply for change of name with CBSE. However, until CBSE takes action on the request of the defendants, it was pleaded that the defendants may be permitted to continue to take admission in their school in the old name. The defendants had submitted that they would not advertise the old name of their school other than in the city of Durgapur. The said plea of the defendant was accepted and the interim order was partly modified to that extent.

5. In the plaint the case of the plaintiff is that in 1994 G.D. Goenka Group under the leadership of plaintiff No. 1-Mr.Anjani Kumar Goenka set up its first flagship school „G.D.Goenka Public School‟ in Vasant Kunj, New Delhi, which currently boasts 2250 students. It is pleaded that with 24 years of excellence in the field of education, the school has more than 50 branches in India and is recognized by the public at large for the quality of education offered. Plaintiff No. 2 Company is said to be engaged in the field of imparting education and uses the brand name „G.D. GOENKA‟ and other GOENKA marks with combination of words such as INTERNATIONAL, GLOBAL, WORLD, LA PETITE, etc. It is pleaded that G.D. Goenka Schools are synonymous with excellent standards of education and amenities. The plaintiffs have been using the mark GOENKA and G.D. GOENKA since 1994 in the field of education continuously and CS(COMM) 725/2018 Page 2 of 16 uninterruptedly for over two decades. It is also stated that the plaintiffs‟ prior adoption, extensive use and promotion of the said trade mark „G.D. GOENKA‟, „GOENKA‟ „GOENKA SCHOOL‟ and other GONEKA marks used in combination of words INTERNATIONAL, GLOBAL, WORLD, LA PETITE, have led to a secondary meaning being attached to the marks GD GOENKA and GOENKA which is solely associated with the plaintiffs. Para 9 of the plaint gives a list of trademarks registered under the Trade Marks Act, 1999 under Classes 16, 35, 41,42, 43 and 44. It is pleaded that the schools of G.D.GOENKA have spread over 64 different locations in the country including in Bengal. The advertisement expenditure for the last five years are also stated in para 14 of the plaint. In 2016-17 a sum of Rs.1,49,19,025/- was spent on education. Revenue generated in the year 2016-17 is said to be Rs. 27.79 crores.

6. Defendant No. 1-Om Education Trust started operating a school by the name of GOENKA INTERNATIONAL SCHOOL in Durgapur, West Bengal. In January 2018, it is stated that the plaintiffs received information that the defendant is operating a school called GOENKA INTERNATIONAL SCHOOL and had advertised the same on an in-flight magazine of Indigo Airlines. It is pleaded that the defendant‟s advertisement uses the infringing mark GOENKA INTERNATIONAL SCHOOL which is identical/deceptively similar to the registered mark of the plaintiffs GOENKA, GD GOENKA, GOENKA SCHOOL and other Goenka marks. It is also stated that the defendants are carrying on services which are identical to the services of the plaintiffs being in the field of providing education, training, cultural activities, etc. It is stated that the plaintiffs‟ are the prior user of the registered mark GOENKA, etc. and have been using the same CS(COMM) 725/2018 Page 3 of 16 continuous and uninterruptedly since 1994. It is further pleaded that the defendants have fraudulently adopted the impugned mark so as to deliberately mislead and confuse the general public into believing that the defendants‟ school is somehow associated with the plaintiffs. It is also pleaded that the use of GOENKA INTERNATIONAL SCHOOL by the defendant for its school is structurally, phonetically and conceptually similar to the marks of the plaintiffs including GD GOENKA PUBLIC SCHOOL. Hence the present suit.

7. The defendants in their written statement have pointed out that defendant No.2-GOENKA INTERNATIONAL SCHOOL is run by defendant No.1-Om Education Trust. The trustees are Mr.Rajeev Goenka, Ms. Poonam Goenka and Mr.Rohit Sahni. The trust was created on 22.05.2014. It is pleaded that the Setllor and the trustees in the year 2014 honestly and bonafidely adopted the mark „GOENKA INTERNATIONAL SCHOOL‟ as a trade mark which is the surname of the Setllor and the two trustees. It is pleaded that the trust has been using the mark „GOENKA INTERNATIONAL SCHOOL‟ bonafidely since 2014. Defendant No.1 is said to have also applied for trade mark registration of the distinctive „GOENKA INTERNATIONAL SCHOOL (Label)‟. The application was made on 03.11.2014. Defendant No.2-„GOENKA INTERNATIONAL SCHOOL‟ has been functioning since 07.04.2015. Reliance is placed on Section 35 of the Trade Marks Act to claim that it protects the proprietor of a trade mark for the bona fide use of its own name/surname. It is pleaded that the mark „GOENKA INTERNATIONAL SCHOOL‟ is protected under Section 35 of the Trade Marks Act. It is further stated that the defendants are based in Durgapur, West Bengal. The plaintiffs have no school in the city of CS(COMM) 725/2018 Page 4 of 16 Durgapur, West Bengal. Therefore, the geographic areas of use of the respective marks of the defendants and plaintiffs are different and distinct and likelihood of confusion does not arise. It is further stated that „GOENKA‟ is a common surname and lacks distinctiveness. It is also stated that „GOENKA‟ is common to trade and is publici juris. A list of 14 institutions is given which are said to be using the phrase „Goenka College‟, „Goenka School‟, etc. Hence, it is pleaded that the mark/name „GOENKA‟ has become publici juris and the suit is liable to be dismissed. It has also been pleaded that the plaintiffs have deliberately and malafidely concealed the judgment of the Division Bench of this court in Goenka Institute of Education and Research vs. Anjani Kumar Goenka & Anr., 2009 (40) PTC 393 wherein on similar facts and circumstances of the case, the plaintiff was declined injunction against the defendant of that case who was also using „GOENKA‟. It is also pleaded that the plaintiffs have never used the mark „GOENKA‟ per se.

8. I have heard learned counsel for the parties.

9. Learned senior counsel appearing for the plaintiffs has argued vehemently reiterating the contentions stated in the plaint. He has urged that the plaintiffs have started use of the mark „GOENKA‟ and „GD GOENKA‟ in the field of education in 1994 and has been continuously and uninterruptedly using it for two decades. The trademarks of the plaintiffs are duly registered. The plaintiffs have a Pan India presence and having excellence in running schools in Tier 1 cities and have gone into smaller towns. Majority of these schools are operated by third party entities under a franchise agreement between the plaintiff and such third parties. A list of 64 such schools has been given which are said to be functioning in Delhi, CS(COMM) 725/2018 Page 5 of 16 Aligarh, Gorakhpur, Amritsar, Srinagar, Udaipur, Lucknow, Raipur, etc. Schools are said to be coming up in Raipur, Rudrapur, Aurangabad, etc. It is pleaded that the judgment of the Division Bench of this court in Goenka Institute of Education and Research vs. Anjani Kumar Goenka & Anr. (supra) has no application to the facts of the present case. In that case on the facts, the Division Bench had found that the adoption of the word „GONEKA‟ in the name of the institution of the appellant/defendant was honest as the trust deed in question of the defendant was of 1990, namely, before G.D.GOENKA PUBLIC SCHOOL started in 1994. The trustees had their surname „Goenka‟. The Institution „Mohini Devi Goenka Mahila Mahavidyalaya‟ was started in 1995 in Rajasthan. Hence, in those facts the court concluded that the use of the word „Goenka‟ is honest and bona fide. Hence, it is pleaded that the said judgment has no application to this case. In the present case it is pleaded that the user of the defendant is not bona fide and has commenced only in 2015-16. Reliance is placed on the judgment of this court in the case of Sh. Pankaj Goel vs. Dabur India Ltd., 2008 (38) PTC 49(Del.) and the judgment of the Division Bench of this court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. Vs. Anchor Health & Beauty Care Pvt. Ltd., (2014) 211 DLT 466.

10. Learned counsel for the defendants has strongly urged as follows:-

(i) There is gross suppression of material facts by the plaintiffs as they did not disclose the judgment of the Division Bench of this court in the case of the plaintiff where injunction was declined to the plaintiff on similar facts i.e. Goenka Institute of Education and Research vs. Anjani Kumar Goenka & Anr. (supra). Reliance is placed on the judgment of the Supreme Court in CS(COMM) 725/2018 Page 6 of 16 Kishore Samrite vs. State of U.P. & Ors., (2013) 2 SCC 398 to plead that the act of the plaintiff is an abuse of the process of the court.

(ii) It is pleaded that the defendant is running its school way off in Durgapur where the plaintiffs have no major presence. They have only one school in Bengal in Siliguri by the name of „GD GOENKA PUBLIC SCHOOL‟. Hence, the user by the defendants does not harm the plaintiffs.

(iii) It is also pleaded relying upon Section 35 of the Trademarks Act that the usage and adoption of the trademark by the defendant is protected under the said provision.

(iv) It is also pleaded that the word GOENKA is publici juris. Hence, no injunction order can be passed against the defendant.

(v) Reliance is also placed upon the judgment of the Supreme Court in Wander Ltd. & Anr. Vs. Antox India (P) Ltd., 1991 PTC(11)1 to plead that no injunction be granted.

11. I may at the outset refer to the judgment of the Division Bench of this court in Sh. Pankaj Goel vs. Dabur India Ltd.(supra). That was a case in which the plaintiff was using the mark „HAJMOLA‟ and the defendant was using the mark „RASMOLA‟ for the same product. The court noted the test to be applied to see whether there is a similarity in the two trademarks. The court held as follows:-

"19. The Supreme Court in the case of AMRITDHARA PHARMACY referred to hereinabove, held the mark AMRITDHARA to be deceptively similar to the mark LAXMANDHARA. The Apex Court in the said Judgment further stipulated that the issue was to be examined by applying the test of an unwary purchaser having average intelligence and imperfect recollection. The Supreme Court in the said case held that even CS(COMM) 725/2018 Page 7 of 16 though a critical comparison of the two names may disclose some points of differences, yet an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two products.

20. We find in the present case the Appellant's and Respondent/ Plaintiff's mark are not only similar but their products are identical and are purchased by the same class of customers and the said goods are sold through the same trading channel. In our view the trinity of factors makes for a case for confusion and consequently for passing off. Appellant's subsequent adoption of a similar mark seems prima facie dishonest and no amount of user can cure it. In case the injunction as granted by this Court is not continued, the use of the same mark by the Appellant is likely to deceive the public at large.

21. In B.K. Engineering Complaint vs. U.B.H.I. Enterprises (Registered) reported in AIR 1985 Delhi 210, a Division Bench of this Court has held that trading must not only be honest but must not even unintentionally be unfair. In Laxmikant V. Patel vs. Chetan Bhat Shah reported in 2002 (24) PTC 1 (SC), the Apex Court has held that where there is probability even in business, an injunction will be granted even though the defendants adopted the name innocently."

The Court further held as follows:-

"23. ..... we are of the view that use of similar marks by a third party cannot be a defence to an illegal act of passing off. ...."

12. Hence, the accepted test for seeing as to whether the trade mark of the plaintiffs is being violated is the test of an unwary purchaser having average intelligence and imperfect recollection. The issue would be as to whether an unwary purchaser with an average intelligence and imperfect recollection would be deceived by overall similarity of the two products. In the present case the registered marks of the plaintiffs are GD Goenka Worlds Institute, CS(COMM) 725/2018 Page 8 of 16 Goenka, Goenka School and GD Goenka Public School, etc. The defendant is running its school by the name of GOENKA INTERNATIONAL SCHOOL. The defendant has started running the school from the academic year 2015-16. Admittedly, CBSE has granted affiliation to the school in 2016 only. In contrast, the plaintiffs have been using the said mark since 1994. Clearly an unwary parent/student of average intelligence and imperfect recollection can be deceived by the overall similarity of the two names. Both the plaintiff and defendant are in the same field. This is bound to create confusion. Hence, unless injunction granted is confirmed the confusion would continue.

13. I may now deal with the contentions of learned counsel for the defendant. The defendants have strongly pleaded that there is gross suppression on the part of the plaintiffs in not mentioning about the judgment of the Division Bench of this court in the case of Goenka Institute of Education and Research vs. Anjani Kumar Goenka & Arn. (supra). This court in the said judgment had noted as follows:-

"...

(vi) We may incidentally state that the aforesaid ratio of Division Bench judgment of this court in the Montari case answers one of the contentions raised by the counsel for the appellant that the appellant is entitled to use the name "Goenka"

by virtue of Section 35 of the Trademark Act, 1999. Clearly, the arguments of learned counsel for the appellant are not well founded because the defence under Section 35 will only apply to a full name and that also by a natural person and not by a legal entity which can choose a separate name. Also, once distinctiveness is achieved or secondary meaning acquired with respect to a surname, then, another person cannot use that surname for an artificial person or entity. The appellant, therefore, only on the strength of Section 35 cannot successfully CS(COMM) 725/2018 Page 9 of 16 contend that it is entitled as of right to use the name "Goenka" merely because it happens to be the surname of its original and present trustees. Of course, nothing turns strictly on this issue in the facts and circumstances of this case, so far as the relief with respect to infringement or passing off or prior user issue is concerned because, we have otherwise held that appellant is an honest concurrent user and we have given later in this judgment sufficient directions for bringing about distinction in both the trademarks so that there is no confusion in the minds of the public.

xxx On the aspect of publici juris however we do not want in any manner to pronounce one way or the other because we do not think that on the strength of the documents as available at the present stage, it can be authoritatively said that the word "Goenka" has become publici juris. It will be open to the appellant to establish its case at the trial and accordingly, urge at the time of final arguments its contention with regard to the word "Goenka" having become publici juris. At this stage, one aspect of the judgment of the learned Single Judge needs mention where the learned Single Judge seems to hold that user of third person is not relevant to the issue of ownership of a plaintiff. The impugned judgment is incorrect to the extent it holds that user by the third party of a trademark prior to the user claimed by the plaintiff is not relevant. In fact, in such a case, prior user by third parties of the trademark in certain facts and circumstances of a case, may throw considerable light on, the existence or not, of exclusive ownership claim of a plaintiff/respondent with respect to a trademark."

14. The observations of the Division Bench in the above judgment do not help or support the case of the defendants. That was a case as noted above where the defendant‟s user of the word GOENKA was prior to that of the plaintiffs‟, namely, of the year 1990 whereas the plaintiffs claim user only CS(COMM) 725/2018 Page 10 of 16 since 1994. It is clear from the above that the injunction was declined to the plaintiff in that case on account of the facts and circumstances of that case.

15. In my opinion, the plaintiff was obliged to disclose only material facts while filing the present suit. Not every fact having some remote connection with the rights of the plaintiff needs to be mentioned. Hence, merely because no reference was made in the Plaint to the judgment of the Division Bench in the case of Goenka Institute of Education and Research vs. Anjani Kumar Goenka &Anr. (supra) cannot be said to lead to a conclusion that there was suppression of any material facts.

16. Reference in this context may be had to the judgment of the Division Bench of this Court in Nirbhai singh vs. Union of India (UOI) and Ors., 185(2011) DLT 319 where this court held as follows:-

"16... In this context, we may refer with profit to the definition of the word „suppression‟ from the Law Lexicon of P.Ramanatha Aiyar which reads thus:

Where there is an obligation to speak a failure to speak will constitute „suppression of a fact‟ but where there is no obligation to speak silence cannot be termed „suppression".

17. In Black‟s Law Dictionary, „suppressio veri‟ has been defined thus:

Suppression or concealment of the truth. It is a rule of equity, as well as of law, that a suppression very is equivalent to a suggestion fasli; and where either the suppression of the truth or the suggestion of what is false can be proved, in a fact material to the contract, the party injured may have relief against the contract."

Hence in my opinion, the plaintiff cannot be said to be guilty of suppression of material facts.

17. I may next deal with the contention raised by learned counsel for the defendant placing reliance on Section 35 of the Trademarks Act.

CS(COMM) 725/2018 Page 11 of 16

18. Sections 35 of the Trade Marks Act reads as follows:-

"35. Saving for use of name, address or description of goods or services.--Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services."

19. Hence, to seek protection under Section 35, the defendant has to satisfy the court about the bona fide use or bona fide adoption of the said mark of its own name. On the facts of this case, I am unable to come to a conclusion that the use of the mark GOENKA INTERNATIONAL SCHOOL by the defendant is a bona fide usage. The name of the defendant‟s trust is OM Education Trust. Hence, „GOENKA‟ is not part of the name of the Trust. The school has effectively commenced in January 2016. In contrast, the plaintiffs have been using the said GOENKA with its variants in the same field of school education since 1994. The trademarks of the plaintiff are registered. The plaintiffs have a PAN India presence with 64 schools. Last years revenue generated was to the tune of Rs.27.79 crores. Prima facie, it does not appear that the user of the mark by the defendants is bona fide.

20. I may also note that in the course of arguments, a strong contention was made by the learned counsel for the defendants that the name GOENKA is publici juris. The Division Bench in the above judgment in Goenka Institute of Education and Research vs. Anjani Kumar Goenka & Arn. (supra) has held that these issues have to be proved in trial. That apart, I CS(COMM) 725/2018 Page 12 of 16 may note that the defendants have themselves filed an application for registration of the label with the name GOENKA INTERNATIONAL SCHOOL. They themselves are seeking registration of the said name GOENKA INTERNATIONAL SCHOOL.

21. This Court in Anchor Health & Beauty Care Pvt. Ltd. vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors., 2014 SCC OnLine De. 2968 had noted the judgments in the case of Dwijendra Narain vs. Joges Chandra 39 C.L.J. 40 and Automatic Electric vs. R.K. Dhawan, 1999 (19) PTC 81 held as follows:-

"12. .........The doctrine is well illustrated in Dwijendra Narain v. Joges Chandra 39 C.L.J. 40 where it was held as follows:-

"It is an elementary rule that a party litigant cannot be permitted to assume inconsistent positions in Court, to play fast and loose, to blow hot and cold, to approbate and reprobate, to the detriment of his opponent. This wholesome doctrine applies not only to the successive stages of the same suit, but also to another suit than the one in which the position was taken up, provided that the second suit grows out of the judgment in the first."

13. Reference may also be had to the judgment of this Court in the case of Automatic Electric vs. R.K.Dhawan, (supra). That was a case which pertained to a suit for injunction filed by the plaintiff for its registered trademark DIMMERSTAT. The defendant in that case is said to have adopted the trademark DIMMER DOT. The defendants in that case took the stand in the said matter that the word DIMMER being a generic word is incapable of serving a trademark function. It was urged that the said word signifies an auto variable transformer and no trader could monopolize its use. The defendants in that case had got their trademark DIMMER DOT registered in Australia. In those facts this Court did not accept the contention of the defendant in CS(COMM) 725/2018 Page 13 of 16 that case that DIMMER is a generic expression. Inparagraph 16 this Court held as follows:-

"16. The defendants got their trade mark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression."

14. In view of the said legal position I do not wish to go into the submission of the defendant as to whether the word "ALLROUND" or "ALLROUND PROTECTION" is a generic word. It clearly does not lie for the defendant to raise the said submission in the given facts. Their submission about the mark being generic has to be rejected."

22. This court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & ors. Vs. Anchor Health & Beauty Care Pvt. Ltd. (supra) has already held that where the defendants have themselves applied for registration of the mark „All Rounder‟ , it is not permissible for such a defendant to approbate and reprobate. A litigant cannot be allowed to blow hot and cold at successive stages of the same litigation or different litigations. The defendants who have themselves made an application for registration of the label with the distinctive phrase „GOENKA INTERNATIONAL SCHOOL‟ cannot turn around and plead that the word GOENKA is publici juris. There is no merit in the said plea.

23. The next submission of learned counsel for the defendant was reliance on the judgment of the Supreme Court in Wander Ltd. And Another vs. Antox India (P) Ltd. (supra). The argument was that in case this court CS(COMM) 725/2018 Page 14 of 16 continues the interim order a loss would be caused to the defendants. The Supreme Court in the above judgment stated as follows:-

"9. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated "...is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the „balance of convenience‟ lies."

The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

24. In my opinion, this judgment does not help the defendant in the facts of this case.

25. In view of the above, there is no merit in the contentions of the defendants. In my opinion, the plaintiffs have made out a prima facie case. Balance of convenience is also in favour of the plaintiffs.

CS(COMM) 725/2018 Page 15 of 16

26. I confirm the interim orders passed by this court on 13.03.2018. However, the order dated 17.04.2018 shall continue to operate in favour of the defendants for this academic year only. The defendants will ensure follow up with CBSE for change of its name for the subsequent academic years. Copy of this order may be sent to CBSE also.

27. The applications stand disposed of.

CS(COMM) 725/2018 List before the Joint Registrar on 28.09.2018.

(JAYANT NATH) JUDGE SEPTEMBER 10, 2018 rb CS(COMM) 725/2018 Page 16 of 16

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