Delhi High Court
St. Stephens College, Delhi vs St. Stephens College Alumni ... on 28 September, 2011
Author: V.K. Jain
Bench: V.K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 26.09.2011
Judgment Pronounced on: 28.09.2011
+ CS(OS) 2364/2011
ST. STEPHEN'S COLLEGE, DELHI ..... Plaintiff
Through : Mr. Suhail Dutt, Sr. Adv.
with Mr.K.Sultan Singh, Mr.
V.Hari Pillai, Mr. Manish
Kumar Saryal and Ms.Susha
Unni, Advs.
versus
ST. STEPHEN'S COLLEGE ALUMNI ASSOCIATION & ORS
..... Defendants
Through : Mr. Upamanyu Hazarika, Sr.
Adv. with Mr.Sachin Datta,
Ms.Dharitry Phookon, Ms.
Gayatri Verma and Mr.Paul
Roy Panski, Advs.for D-1.
Mr. Pinki Mishra, Sr. Adv.
with Mr.Sachin Datta, Adv.
for D-6 & 7.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? Yes.
2. To be referred to the Reporter or not? Yes.
3. Whether the judgment should be reported Yes.
in Digest?
V.K. JAIN, J
IA 15304/2011(O.39 R.1 & 2 CPC)
1. The plaintiff college is a society registered under
Societies Registration Act and is a constituent college of
CS(OS)No. 2364/2011 Page 1 of 19
University of Delhi. The plaintiff is a leading educational
institution, offering degrees to both undergraduate as well
as postgraduate students. The plaintiff college came to be
founded on 1st February, 1881. The plaintiff has sponsored
a number of societies/clubs, including St. Stephens College
Alumni Association, which has been in existence for last 50
years and is an integral part of the plaintiff society. It is
alleged that St. Stephen‟s College Alumni Association on
account of their continuous extensive and uninterrupted
use have come to be associated with plaintiff and is alumni
association. Defendant No. 1 has been formed recently and
registered under Societies Registration Act. While obtaining
registration, defendant No. 3 filed an affidavit stating
therein that there is no society with an identical or
resembling name. This affidavit was false to the knowledge
of defendant No. 3. Defendant No. 1-society had been
founded without any permission from the plaintiff and it is
alleged that this is a mala fide act on account of the
invitation which the previous principal of the plaintiff had
extended to defendant No. 6 to represent the alumni in the
Governing Body, having been withdrawn in May, 2011. A
cease and desist notice dated 5th September, 2011 was sent
CS(OS)No. 2364/2011 Page 2 of 19
by the plaintiff to the defendants, requiring them to stop
using the names "St. Stephens College and/or its
derivatives/logo, College Crest and motto. There has
however been no response from the defendants who have
also created a website http://ststephensalumni.co.in
Defendant No. 1 has also provided a hyperlink from its
website to the website of the plaintiff www.ststephens.edu
and it has also been using the College Crest, copyright in
which vests solely in the plaintiff since the year 1926. It is
alleged that by using the name St. Stephens Alumni College,
defendant No. 1 is passing off its activities as those of the
alumni association of the plaintiff and is misleading the ex-
students of the plaintiff into joining it, believing it to be the
recognized and authorized alumni association of the
plaintiffs. Defendant No. 1 is also collecting subscription,
gifts, donations, etc using the name adopted by it. The
plaintiff has sought injunction restraining the defendants
from using the name St. Stephens College Alumni
Association as also the college crest, motto and logo and
from representing themselves as an alumni association of
the plaintiff. They have also sought injunction, restraining
the defendants from receiving any subscription or collecting
CS(OS)No. 2364/2011 Page 3 of 19
any donations or grant for the membership of defendant No.
1-society. They have sought a further injunction against
defendant No. 1 interfering in the association, management
and affairs of the plaintiff college.
2. It can hardly be disputed that if a company or a
society adopts a name, which is so similar to the name of
the plaintiff as is likely to deceive or to cause confusion, a
Civil Court has jurisdiction, under common law, to grant an
injunction against use of such a name by the defendant, so
as to ensure that the defendant is not able to pass off its
business and activities as those of the plaintiff and is not
able to encash upon the goodwill and reputation which the
plaintiff-company/society enjoys. In such a case, it would
also be in public interest to grant injunction against use of a
name which is likely to deceive or cause confusion so as to
protect the interest of the persons who are likely to be
confused on account of similarity of the two names. It is
true that no person has an exclusive right in a particular
name or title except to the extent such a right is conferred
by Statutes such as Trademarks Act and Companies Act,
but, a person carrying business or other activity under a
particular name is entitled to seek protection against
CS(OS)No. 2364/2011 Page 4 of 19
adoption and use of such or similar name by another
person where he is able to satisfy the Court that a damage
has been caused or is likely to be caused to him or his
reputation on account of the confusion which is likely to be
caused in the mind of the public due to of the same or
similar name by another person.
3. When this matter came up for hearing for the first
time on 23rd September, 2011, there was representation on
behalf of the defendants. Arguments on the application were
heard on that day as well as on 26th September, 2011.
During the course of arguments, the learned counsel for the
defendants very fairly stated that the defendants are
agreeable not to use the name St. Stephens College Alumni
Association and are ready to use any of the following four
alternative names, suggested by them; (a) Old Stephanian‟s
Association; (b) Stephanians; (c) Association of
Stephanians‟s (d) Association of Old Stephanians. He also
stated that defendant No.1 is ready to put a disclaimer on
its website stating therein that it is not the
recognized/authorized alumni association of the St.
Stephens College, Delhi, it has no connection with St.
Stephens College, Delhi or its official/authorized alumni
CS(OS)No. 2364/2011 Page 5 of 19
association. This, however, was not acceptable to the
plaintiff, who maintained that the defendants despite being
former students of St. Stephens College, Delhi cannot use
the words "St. Stephens College" "St. Stephens" or
"Stephanians".
4. Prima facie, it appears to me that use of the name
Association of Old Stephanians by defendant No. 1, coupled
with the disclaimer or the lines proposed by the learned
counsel for the defendants would ensure that no ex-
Stephanian is confused as to which is the officially
recognized/approved alumni association of St. Stephens
College, Delhi and there would be no reasonable possibility
of any ex- Stephanians mistaking defendant No.1-society as
the official/recognized alumni association of St. Stephens
College, Delhi.
It is not in dispute that defendants 2 to 8 are
former students of St. Stephens College, Delhi. This is a
fundamental right, guaranteed by Article 19 (1)(c) of the
Constitution to every citizen, including those who have
studied in St. Stephens College, to form an association.
Hence, defendants 2 to 8 were well within their
constitutional right in forming an association even if that
CS(OS)No. 2364/2011 Page 6 of 19
association is to consist wholly of ex- Stephanians. If they
have a right to form an association, they also have to
necessarily give a name to it. During the course of
arguments, I was informed that the membership of
defendant No. 1 is open only to those who have been the
students of St. Stephens College, Delhi. Hence, there should
be no valid objection to their using the word stephanian as
a part of the name of the society since being an old
stephanian is the only common link amongst the members
of the society. It is their having been students of St.
Stephens College, Delhi which has brought them together
and prompted them to form defendant No.1 society.
Everyone, who has studied at St. Stephens College, Delhi
can claim, as a matter of right, to describe himself as a
stephanian and this right comes to him on account of
having been a student of the college. Therefore, use of the
word stephanian as a part of the name of the society cannot
be objected at all.
In a matter of passing off what is relevant is
whether there is any likelihood of the defendant being able
to pass off its goods/services as those of the plaintiff. The
name being used by the plaintiff for its alumni i.e. St.
CS(OS)No. 2364/2011 Page 7 of 19
Stephens College Alumni Association and the name
„Association of Old Stephanians‟, cannot be said to be
similar, nearly similar or even resembling each other. There
is no use of the expression St. Stephens College in the name
"Association of Old Stephanians". The name does not
convey an impression that it is the official/approved by
College alumni association of St. Stephens College. The
impression it conveys is that this is an association formed
by those who have, in the past, been students of St.
Stephens College.
5. The Court has to keep in mind that the
membership of defendant No. 1-Assocaiation is open only to
those who have been students of St. Stephens College,
Delhi. Considering the background, education, level of
awareness and credentials of those who have studied at St.
Stephens College, Delhi, it is most unlikely that they can be
misled into believing that Association of Old Stephanians is
the officially sponsored/recognized/affiliated alumni
Association of St. Stephens College, Delhi. Added to this
would be the disclaimer on the website of defendant No. 1
which would convey in no uncertain terms that this
association has no link or connection of any nature
CS(OS)No. 2364/2011 Page 8 of 19
whatsoever either with St. Stephens College or with its
official alumni association. Also, nothing prevents the
plaintiff-society from putting an appropriate notice on its
website with respect to defendant No. 1-society and
addressing individual communications to all the ex-
students informing them that defendant No. 1-association
has neither been recognized by it nor is this, in any manner,
affiliated with the college or its official alumni association.
6. Of course, if defendant No. 1 has to change its
name, it has necessarily to change the domain name being
used by it and it cannot continue to use the name
saintstephens.co.in. The name St. Stephens College Alumni
Association cannot be used by the defendants for any
purpose at all, including for the promotional promotion and
expansion of defendant No. 1-society. Also, the defendants
have no right to use the official crest/logo and motto of St.
Stephens College on their website, stationery or in any other
manner.
7. The learned counsel for the plaintiff has relied
upon International Association of Lions Clubs vs.
National Association of Indian Lions & Ors, 2006 (33) PTC
79 (Bom)., U. Srinivas Malliah and another v. Krishna
CS(OS)No. 2364/2011 Page 9 of 19
Kumar Chatterjee and Ors. AIR 1952 Calcutta 804, Ruston
& Hornsby Ltd. vs. The Zamindara Engineering Co. AIR
1970 SC 1649, interim order dated 06th June, 2002 passed
by this Court in Suit No. 1061/2002 President & Fellows
of Harvard College vs. Mr Harbans S. Bawa.
8. In International Association of Lions Clubs
(supra), the plaintiff Association of Lions Clubs was set up
for organizing, chartering and supervising various service
clubs known as "Lions Clubs", to co-ordinate the activities
and to standardize the administration of these clubs. The
plaintiff was using the mark Lion, Lions and Leo in relation
to their services and their club along with the emblem mark
which had picture of lion on it. Defendants adopted the
words lions and were also found using an emblem similar to
that of plaintiffs. They were also using the domain name
www.indianlions.org.bizli.com. Defendant No. 1-society was
describing itself as a national society of Indian Lions. It was
contended on behalf of the defendant that it was a
registered society and its Memorandum and Articles
permitted it to use the word Lion, Lioness and Leo and it
was not open to the plaintiff to seek injunction restraining
them from using the said words as a name of a society
CS(OS)No. 2364/2011 Page 10 of 19
which was permitted by Rajasthan Cooperative Societies
Act. The contention, however, was rejected holding that
mere registration under Companies Act or under the
Cooperative Societies Act does not confer any right to use
the name of such a nature which is also a trade name or
organization name of some other person. Since the
defendants are no more insisting on the use of the name
under which defendant No.1-society has been registered
and consequently there is no use of the expression "St.
Stephens College", or even "St. Stephens" in the new names
proposed by them and also considering the fact that the
membership of defendant No. 1 is only open to those who
are ex- Stephanians, this judgment can be of no help to the
plaintiff before this Court.
In President & Fellows of Harvard College
(supra), the defendant who was an alumni of Harvard
Business School had without permission of the plaintiff
established an institution by the name of Harvard Business
Research and Education Foundation. The defendant was
using the letter head which showed the crest of Harvard
Business School with a logo/seal in which one of the several
registered shields of the plaintiff had been used. This Court
CS(OS)No. 2364/2011 Page 11 of 19
passed an ex parte interim order restraining the defendant
from using or passing off the trade name Harvard or fro
acting or dealing under the trade mark/name of the plaintiff
or any other mark/name which could be similar or
deceptively similar to the trade mark of the plaintiff as also
from offering any educational material/publication under
the name Harvard/Harvard Business School. It would thus
be seen that the defendant in that case was using the word
Harvard which is a name that had come to be identified with
Harvard College, as a part of the name of an institution set
up by him for imparting education. The defendant was
attracting prospective students by use of the slogan "If you
can‟t go to Harvard--we bring Harvard Education to you".
He had obtained Harvard teaching material and intended to
use that material as a part of its course. The Court felt that
if the defendant was not restrained from doing so, the public
at large was likely to be drawn in by the apparent
misrepresentation of the defendant. The facts of the case
before this Court are clearly distinguishable since neither
the defendants are now insisting on using the name St.
Stephens College or even St. Stephens as a part of the name
of defendant No. 1 nor are they seeking to exploit the name
CS(OS)No. 2364/2011 Page 12 of 19
of the plaintiff college for a commercial purpose. They
being the former students of St. Stephens College, Delhi,
they need to use some such word as would indicate that
they are a society formed by the persons who have been the
students of St. Stephens College, Delhi. This becomes more
necessary considering the fact that the membership of
defendant No. 1-society is open only to those who have been
the students of St. Stephens College, Delhi.
In Ruston & Hornsby Ltd. (supra), which was a
case of infringement, the defendant was found using the
word "RUSTAN" of the plaintiff and the "RUSTAM" of the
defendant and, therefore, it was held that the use of the
word RUSTAM by the respondent constituted infringement
of the appellant's trade mark "RUSTON" being deceptively similar. The Court was of the view that mere addition of word India to the trademark of the respondent was of no consequence in such a use.
During the course of the judgment, the Court observed that the gist of passing off action is that A is not entitled to represent his goods as goods of B and it is enough if there is probability of confusion and no case of actual deception or actual damage needs to be proved. As CS(OS)No. 2364/2011 Page 13 of 19 noted earlier, this is not a case of the infringement. Moreover, use of the name Association of Old Stephanians, to my mind, ensures that there is no probability of ex- stephenians getting confused and mistaking defendant No. 1-society as the official alumni of St. Stephens College.
In U. Srinivas Malliah (supra), it was found that the defendants had applied for registration for a society under the name of Indian National Congress. It was noted by the Court that Indian National Congress was an old organization which is an institution having worldwide reputation and had one crore members with branches in various parts of the country. It was also notices that substantial portion of funds of Indian National Congress came by way of donations and subscriptions. In these circumstances, the Court felt that there was every possibility of a confusion in the mind of the public to the effect that the society of the defendants was a branch of and was sponsored by Indian National Congress. The Court felt that if the society proposed to be set up by the defendants became involved in pecuniary difficulties or was guilty of any misdeeds the same was likely to reflect discredit upon Indian National Congress. It was also felt that many CS(OS)No. 2364/2011 Page 14 of 19 persons may get enrolled as member of the proposed society with a feeling that they will get all the benefits and advantages of congress membership, without having to pay any subscription for the membership of the Society and this, in turn, was likely to deprive Indian National Congress of the subscriptions which these persons would have paid had they become its members. In that case, the defendants, when asked as to how they had taken a fancy for this name for their Society, had no explanation to offer and the Court, therefore, felt that their intention was to injure and cause damage to the plaintiffs which by itself sufficient to grant injunction. Again, the facts of the case before this Court being altogether different and there being no reasonable likelihood of the persons, who can become members of defendant No. 1-society becoming its members under a mistaken belief that they are becoming member of the official alumni association of St. Stephens College, Delhi, there is no reasonable likelihood of defendant No. 1 passing off its services as those of the official alumni association of the plaintiff.
9. The learned counsel for the plaintiff has also submitted copies of the decision of this Court in M/s CS(OS)No. 2364/2011 Page 15 of 19 Helpage India, vs. M/s Helpage Garhwal, AIR 2001 Delhi 499, Dr. Reddy's Laboratories Ltd. vs. Reddy Pharmaceuticals Limited 2004 (76) DRJ 616, British Diabetic Association v. Diabetic Society Ltd and Others (1995) 4 All England Law Reports and Burge v.Haycock (2002) RPC 28. However, since these judgments were not referred during arguments and are otherwise distinguishable on facts, I need not analyze them. Suffice it to note that in the case of M/s Helpage India (supra), the name of the defendant was almost identical to that of the plaintiff, being Helpage Garhwal as against the name Helpage India of the plaintiff, whereas in the case of Dr. Reddy's Laboratories Ltd. (supra), the plaintiff was marketing its drugs under the trade name Dr. Reddy‟s whereas the defendant was using the trademark Reddy claiming that it was entitled to use the trademark Reddy since its Managing Director was one Mr Reddy.
10. During the course of arguments, it was contended by the learned counsel for the defendants that the name St. Stephens College is being used by a number of institutions, including St. Stephen‟s Collge, Uzhavoor, Kottayam, Kerala, St. Stephen‟s College Pathanapuram, Kerala, St. Stephens CS(OS)No. 2364/2011 Page 16 of 19 College of Education for Women, Madurai Address: Hosanna Mount, Kadavur, Chatrapatti Post, New Natham Road, Madurai, St. Stephen College of Teacher Education, Kanyakumari Address: Velayudha, nagar, Kollemcode, P.O. Kanyakumari, St. Stephens School, Pitampura, Delhi, St. Stephen‟s Higher Secondary School, Dahod, Gujarat, St. Stephen‟s School, North Kolkata, Kolkata, St. Stephen‟s School, Sector 45 B, Chandigarh, as an essential part of their name and no action has been taken by the plaintiff to stop user of such name by those institutions, which amounts to the plaintiff waiving its right to exclusive use of the name St. Stephens College and also indicates that the defendants are being targeted for using the name adopted by them, only because they have criticized the functioning of the present principal of the college. This, however, was refuted by the learned counsel for the plaintiff, who stated that all these institutions are using the expression St. Stephens College as a part of their name with the consent of the plaintiff since they are being managed/run by the same persons who are managing St. Stephens College, Delhi. It would be pertinent to note that St. Stephens College is a society registered under Societies Registration Act. When CS(OS)No. 2364/2011 Page 17 of 19 asked as to whether the plaintiff-society had passed a resolution authorizing these institutions to use the name St. Stephens College as a part of their name or had otherwise issued any written authorization to them in this regard, no such resolution/authorization was claimed by him. I, however, need not delve further into this aspect of the matter since the defendants have agreed to change the name of defendant No. 1-society.
For the reasons given in the preceding paragraphs, defendant No. 1 is restrained from using the name St. Stephens College Alumni Association. It is also restrained from using the official crest, logo or motto of St. Stephens College, Delhi as also the domain name http://ststephensalumni.co.in. Defendant No. 1, however, will be entitled to use the name „Association of Old Stephanians‟, subject to the condition that it will display an appropriate disclaimer on its website, as and when it is started under a new domain name, that it is not the official/approved/recognized alumni association of St. Stephens College and it has no connection or affiliation either with St. Stephens College, Delhi or St. Stephens College Alumni Association.
CS(OS)No. 2364/2011 Page 18 of 19
The application stands disposed of in terms of this order.
CS(OS) 2364/2011 Written statement be filed within the prescribed period. Replication can be filed within four weeks.
List before Joint Registrar on 18th November, 2011 for admission/denial of documents and before Court for framing of issues on 04th April, 2012.
(V.K. JAIN) JUDGE SEPTEMBER 28, 2011/bg CS(OS)No. 2364/2011 Page 19 of 19