Delhi High Court - Orders
The British School Society vs The British International School on 3 September, 2021
Author: Jayant Nath
Bench: Jayant Nath
$~OS-10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 408/2021
THE BRITISH SCHOOL SOCIETY ..... Plaintiff
Through Mr.Sandeep Sethi, Sr.Adv. with
Mr.Peeyoosh Kalra, Mr.C.A.Brijesh and Mr.Dhruv
Grover, Advs.
versus
THE BRITISH INTERNATIONAL SCHOOL..... Defendant
Through
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
ORDER
% 03.09.2021 IA No.11114-1116/2021 The applications are allowed subject to all just exceptions.
IA No.11117/2021Court fee be filed within two weeks. Application stands disposed of. CS(COMM) 405/2021 Let the plaint be registered as suit.
Issue summons to the defendant through speed post, courier and email, returnable for 16.11.2021.
IA No.11113/20211. Issue notice to the defendant through speed post, courier and email, returnable for 16.11.2021.
2. This application is filed under Order 39 Rules 1 & 2 CPC seeking an ad interim injunction in favour of the plaintiff and against the defendant restraining the defendant by themselves, their servants, partners and agents Signature Not Verified Digitally Signed By:NIRMLA TIWARI CS(Comm.)408/2021 Page 1 Signing Date:06.09.2021 15:14:17 from using or attempting to use or asserting any right to use or importing or exporting or applying to register or to maintain the applications, or to register any of the trademarks 'THE BRITISH INTERNATIONAL SCHOOL' or any other mark similar to plaintiff's Trade mark THE BRITISH SCHOOL or in any other manner whatsoever infringing and passing off the plaintiff's registered and well-known trade mark THE BRITISH SCHOOL/ or in violation of any other rights in any other registered trademark of the plaintiff.
3. It is the case of the plaintiff that in 1963 a group of British parents, supported by the British High Commissioner to India, started the plaintiff school. In 1969, the school moved to the current location in Chanakya Puri, New Delhi. Started with the aim of serving the diplomatic and expatriate community the plaintiff operates under the aegis of The British School Society with the British High Commissioner to India as its President. It offers the National Curriculum of England adapted to an international context, the EYFS Programme, the IGCSE and the IB Diploma Programme. With over 1200 students from 65 nationalities, plaintiff provides student- centred education. It is stated that the plaintiff has a 8:1 student teacher Signature Not Verified Digitally Signed By:NIRMLA TIWARI CS(Comm.)408/2021 Page 2 Signing Date:06.09.2021 15:14:17 ratio.
4. The plaintiff is the registered proprietor of a host of trade/service marks consisting of and/or containing THE BRITISH SCHOOL/ . The details of registration are as follows:-
Mark Reg. No. Date Class Status Conditions 2518104 April 16, 35, Registered Registration of 23, 41 this trade mark 2013 shall give no right to the exclusive use of the words The British School, New Delhi, except substantially as shown in the representation on the form of application.
THE 2518105 April 35 Registered Registration of
BRITISH 23, this trade mark
SCHOOL 2013 shall give no
right to the
Signature Not Verified
Digitally Signed
By:NIRMLA TIWARI CS(Comm.)408/2021 Page 3
Signing Date:06.09.2021
15:14:17
exclusive use of
The British
2518106 April 16, 41 Registered N.A.
23,
2013
THE Registration of
BRITISH this trade mark
SCHOOL April shall give no
2518107 23, 16, 41 Registered right to the
2013 exclusive use of
The British
School.
THE July 16, 25,
BRITISH 5050319 19, 35 and Pending N.A.
SCHOOL 2021 41
TBS July 16, 25,
5050320 19, 35 and Pending N.A.
2021 41
July 16, 25,
5050321 19, 35 and Pending N.A.
2021 41
Signature Not Verified
Digitally Signed
By:NIRMLA TIWARI CS(Comm.)408/2021 Page 4
Signing Date:06.09.2021
15:14:17
5. It is the case of the plaintiff that in September 2020 it came across the defendant's unauthorised use of the marks THE BRITISH INTERNATIONAL SCHOOL which is deceptively similar to the plaintiff's prior, distinctive and well-known trade marks/name THE BRITISH SCHOOL Accordingly the plaintiff served a 'cease and desist' notice upon the defendant. On October 10,2020 a reply was received from counsel for defendant wherein the defendant has refused to comply with the requisitions of the 'cease and desist' notice and is said to have merely made statements constituting bald and/or evasive denials.
6. A perusal of the reply sent by the defendant to the 'cease and desist' notice shows that the defendant has claimed that it was founded in the year 2004-05. It is also claimed that it is the registered owner of the two trademarks i.e. .
....
Signature Not Verified Digitally Signed By:NIRMLA TIWARI CS(Comm.)408/2021 Page 5 Signing Date:06.09.2021 15:14:17 and .
7. Learned senior counsel for the plaintiff, however, points out that the plaintiff has been using the said trademark since 1963. It is further pointed out that plaintiffs have been earning large revenue and also making huge promotional expenditure, details of which are provided in para 8 of the plaint. It is pointed out that in the year 2018-19 a sum of Rs.33,33,270 was spent on promotional figures.
8. Reference is also placed on the judgement of a Co-ordinate Bench of this court in Ritnand Balved Education Foundation vs. Ranchhod M.Shah & Ors., [(2018) 76 PTC 439. In the said matter the Co-ordinate Bench held as follows:-
"25. It is a settled position under Trademark law that this area of law is meant to protect not just the rights of the owners, but also to avoid any confusion from being caused amongst the members of the public. There is no doubt that AMITY INTERNATIONAL SCHOOL of the Plaintiff is well known, and there are several branches of the said school. The use of an identical name by the Defendants would not merely confuse the students and parents but also those persons who wish to collaborate with the Defendants. There would be no way of knowing as to whether the AMITY INTERNATIONAL SCHOOL of the Defendants is the same as that of the Plaintiff or not. The area of operation i.e. education is one such area in which any chance of confusion should be completely avoided. This is because schools, universities and colleges have very expansive activities and operations. Students studying in educational institutions participate in events, competitions, cultural festivals, and sports meets across the country. The use of identical names for two schools, completely disconnected from Signature Not Verified Digitally Signed By:NIRMLA TIWARI CS(Comm.)408/2021 Page 6 Signing Date:06.09.2021 15:14:17 each other, would result in enormous confusion and could also result in having a damaging effect on careers of children. The chances of mistaken identities are very high and especially in the educational field, such confusion ought to be avoided."
9. Keeping in view the user of the plaintiff of the mark since 1963 and the reputation of the plaintiff, plaintiff has made out a prima facie case. The defendant is restrained by an ex parte injunction from using or asserting any right on the trademark 'THE BRITISH INTERNATIONAL SCHOOL' or any other trademark similar to the plaintiff's trademark THE BRITISH SCHOOL/ . The defendant will take steps within three months from the date of receipt of the injunction order.
10. Plaintiff to comply with provisions of Order 39 Rule 3 CPC within five days. Plaintiff is also permitted to serve the defendant with a copy of the order with the Digital Signatures of the Private Secretary.
JAYANT NATH, J SEPTEMBER 3, 2021 n Signature Not Verified Digitally Signed By:NIRMLA TIWARI CS(Comm.)408/2021 Page 7 Signing Date:06.09.2021 15:14:17