Delhi High Court - Orders
Scrum Alliance, Inc vs M/S Henry Harvin India Education Inc. & ... on 26 July, 2024
$~35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 615/2024 & I.A. 34487/2024, I.A. 34488/2024, I.A.
34489/2024, I.A. 34490/2024, I.A. 34491/2024
SCRUM ALLIANCE, INC. .....Plaintiff
Through: Mr. Naqeeb Nawab, Advocate.
versus
M/S HENRY HARVIN INDIA EDUCATION INC. & ORS.
.....Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 26.07.2024 I.A. 34489/2024 (Exemption from filing clear/certified copies of documents)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), on behalf of the plaintiff, seeking exemption from filing translated copies, clearer copies/documents with correct margins.
2. Exemption is granted, subject to all just exceptions.
3. Applicant shall file legible, clear, and original copies of the documents, on which the plaintiffs may seek to place reliance before the next date of hearing.
4. Accordingly, the present application is disposed of.
CS(COMM) 615/2024 Page 1 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:35 I.A. 34488/2024 (Application for seeking leave to file additional documents)
5. This present application has been filed on behalf of the plaintiff under Order XI Rule 1(4) read with Section 151 of the Code of Civil Procedure, 1908 ("CPC") as amended by the Commercial Courts Act, 2015 seeking leave to file additional documents.
6. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, and the Delhi High Court (Original Side) Rules, 2018.
7. The application is disposed of, with the aforesaid directions. I.A. 34491/2024 (Application for seeking exemption from filing Court fees)
8. Learned counsel appearing for the plaintiff submits that Court fees has already been purchased, and that the same shall be deposited, within a period of one week from today.
9. Liberty is so granted.
10. With the aforesaid directions, the present application is disposed of. I.A. 34490/2024 (Eemeption from Pre-Institution Mediation)
11. The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of CPC seeking exemption from undergoing Pre-institution Mediation.
12. Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-institution Mediation, is granted.
CS(COMM) 615/2024 Page 2 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:35
13. Accordingly, the application stands disposed of. CS(COMM) 615/2024
14. None appears for the defendants despite advance notice.
15. Attention of this Court has been made to the proof of service. On pointed query, learned counsel appearing for the plaintiff has drawn the attention of this Court to the documents folder, to show the documents pertaining to the E-mails, on which service has been done, in order to submit that the E-mails of the defendants, have been taken from the Ministry of Corporate Affairs website. Thus, it is apparent that despite valid service, defendants have not appeared before this Court.
16. Let the plaint be registered as suit.
17. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiff's documents, without which, the written statement shall not be taken on record.
18. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiff, an affidavit of admission/denial of documents of the defendants, be filed by the plaintiff, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the timelines.
19. List before the Joint Registrar (Judicial) for marking of exhibits, on 10th September, 2024.
20. List before the Court on 28th October, 2024.
CS(COMM) 615/2024 Page 3 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:36 I.A. 34487/2024 (Application under Order XXXIX Rule 1 and 2 read with Section 151 CPC for ex-parte ad-interim injunction)
21. The present suit has been filed for permanent injunction, restraining the infringement of certification trademarks, as well as passing off, infringement of copyright, delivery up, damages and rendition of accounts.
22. Learned counsel appearing for the plaintiff submits that the present suit relates to the malafide adoption and/or offending use of the marks - CSM, Certified Scrum Master, Certified Scrum Master Training, CSPO, Certified Scrum Product Owner, Certified Scrum Product Owner Course, CSD, Certified Scrum Developer, Certified Scrum Developer Training Course and the logo by the defendants, in respect of education/training services, which are identical to the services offered by the plaintiff.
23. Learned counsel appearing for the plaintiff submits that the defendants are claiming to be 'Global Registered Education Ally' (REA) of Scrum Alliance, i.e., the plaintiff herein. However, the said statement is completely false, as the defendants are neither a 'Global Registered Education Ally' (REA) of the plaintiff, nor authorized to provide certification courses under the impugned marks, being identical and/or deceptively similar to the plaintiff's marks. The defendants have no accreditation or affiliation with the plaintiff.
24. Attention of this Court has been drawn to the rival marks of the plaintiff and defendants, which is reproduced as under:
CS(COMM) 615/2024 Page 4 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:36
25. It is submitted that the plaintiff has honestly and with bonafide intention, adopted the inherently distinctive certification trademark 'CERTIFIED SCRUMMASTER' and the mark 'CSM', since at least as early as in the year 2003. Subsequently, the plaintiff has created the highly stylized and artistic certification marks / . Ever since the adoption, the plaintiff has been continuously, extensively and exclusively using the CSM marks - 'CERTIFIED SCRUMMASTER', CS(COMM) 615/2024 Page 5 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:36 'CSM' / , internationally and in India.
26. The plaintiff has also honestly and with bonafide intention adopted the other distinctive certification trademarks, being 'CSPO' (adopted since 2006 worldwide, 2008 in India), 'CERTIFIED SCRUM PRODUCT OWNER' (adopted since 2006 worldwide, used since 2008 in India), , (adopted since 2006 worldwide, used since 2011 in India), 'CERTIFIED SCRUM DEVELOPER' (adopted since 2010 worldwide, used since 2011 in India), (adopted since 2010 worldwide, used since 2011 in India), 'Registered Education Ally' (REA) and . Ever since their respective dates of adoption, the plaintiff has been continuously, extensively and exclusively using the said certification trademarks internationally, and in India.
27. It is submitted that in India, the plaintiff is the registered proprietor of the following CSM certification trademarks:
CS(COMM) 615/2024 Page 6 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:36 S. No. Trade Mark Reg. No. Cl. Appl. Date User Claim
1. CSM 3298081 41 30/06/2016 26/03/2009
2. 3298083 41 30/06/2016 03/09/2013
3. 3298085 41 30/06/2016 03/09/2013
4. CERTIFIED 3298087 41 30/06/2016 31/05/2005 SCRUMMASTER
5. CSM 3298080 42 30/06/2016 26/03/2009
6. 3298082 42 30/06/2016 03/09/2013
7. 3298084 42 30/06/2016 03/09/2013
8. CERTIFIED 3298086 42 30/06/2016 31/05/2005 SCRUMMASTER
28. It is submitted that the aforesaid certification trademark registrations are renewed, valid and subsisting on the Register of Trademarks in India, as on date. Thus, the plaintiff's rights to use the said certification trademarks is statutorily protected and consequently, the plaintiff is entitled to use the CS(COMM) 615/2024 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:36 same upon and in relation to its operations and/or certifying services, without any interruption or impediment thereof, to the exclusion of the others.
29. It is submitted that recently, in or around second week of July, 2024, plaintiff's attention was drawn to an article dated 07th June, 2024 on the internet titled as 'What is Scrum Framework, and how does it work?', which reads as under:
30. By referring to the aforesaid document, it is submitted that it has falsely been stated that Henry Harvin, defendant herein, is offering Certified Scrum Master Training Course from Registered Education Ally (REA) of the plaintiff.
31. Further, an embedded link to the said course was also provided in the CS(COMM) 615/2024 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:38 aforesaid article. Upon perusal of the said link, the web page brought one to a course under the name 'CERTIFIED SCRUM MASTER TRAINING-
® CSM '. The link to the impugned CSM course was being offered by the entity Henry Harvin, and was also using the plaintiff's marks.
32. It is submitted that the plaintiff does not have any concern with the defendants' use of the word mark 'HENRY HARVIN'.
33. It is submitted that considering the identity of the rival marks and the identical and/or near identical services, it is evident that the defendants had the plaintiff's prior and famous marks in mind, when it chose to adopt the impugned marks.
34. The defendants have misrepresented themselves as a 'Global Registered Education Ally (REA) of Scrum Alliance', which is completely false. The defendants are not a Registered Education Ally (REA) of the plaintiff, and have no association/connection with the plaintiff. Thus, it is submitted that such misrepresentation is calculated to cause confusion and deception amongst the general public. Unassuming members of the public are bound to get confused between the plaintiff and the defendants. Attention of this Court was drawn to a screenshot of such misrepresentation, which is reproduced, as under:
CS(COMM) 615/2024 Page 9 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:38
35. Thus, learned counsel appearing for the plaintiff submits that the confusion and deception orchestrated by the defendants, strikes at the root of the plaintiff's hard-earned goodwill and reputation. The defendants' activities of infringement, and passing off, are causing injury to the plaintiff on a day to day basis, as also to the public at large, who spend their time, efforts and finances on the defendants' impugned courses, under the impression that the impugned courses are offered by/affiliated with/certified by the plaintiff, when they are not.
36. Thus, it is the submission of learned counsel for the plaintiff that the plaintiff is the rightful owner of the plaintiff's marks, and has the exclusive rights to use the same. By using the impugned marks and by misrepresenting their connection with the plaintiff, the defendants have allured and misled the general public/prospective candidates into believing that the services offered by them are provided, sponsored, certified, affiliated with, and or licensed by the plaintiff, whereas no such connection exists.
37. I have heard learned counsel for the plaintiff and have perused the documents on record. The plaintiff has established a prima facie case in its favour. The balance of convenience is also in favour of the plaintiff and against the defendants, in order to safeguard the rights and legitimate interest of the plaintiff. The plaintiff shall suffer irreparable loss by violation of its Intellectual Property Rights and the unlawful benefits gained by the defendants.
38. Accordingly, it is directed that till the next date of hearing, the defendants, their partners, principals, employees, agents, distributors, franchises, representatives, assignees and all those connected with the defendants in their business, are restrained from using the impugned marks - CSM, CERTIFIED SCRUMMASTER, CERTIFIED SCRUMMASTER CS(COMM) 615/2024 Page 10 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:38 TRAINING, and/or any other mark or domain name or trade name, which are deceptively or confusingly similar to the plaintiff's registered marks, amounting to infringement/passing off.
39. It is clarified that the defendants can continue their business with their logo , for the time being, and this aspect shall be considered later on. Further, it is clarified that the defendants are free to adopt any other mark, which is not similar to the plaintiff's marks.
40. Issue notice to the defendants by all modes. Let reply be filed within a period of four weeks. Rejoinder thereto, if any, be filed within a period of two weeks, thereafter.
41. Compliance of Order XXXIX Rule 3 be done, within a period of ten days from today.
42. List before the Court on 28th October, 2024.
MINI PUSHKARNA, J JULY 26, 2024 Ak/au CS(COMM) 615/2024 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 00:55:39