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19. Therefore, subject to facts and circumstances of each individual case, no one can copy an essential part or predominant part of a trade mark and the benefit of prior use doctrine will also be available to an essential/prominent/predominant part of trade mark i.e. an important part of a trade mark of another person, but, that is however not the end of the matter. When two marks are identical nothing further needs to be seen in the cases of infringement, but if the marks are not identical but only deceptively similar, then, the tests of passing off are to be applied to see if user of a trade mark by a person other than the registered proprietor infringes the trade mark of the registered proprietor i.e. if after adopting an essential feature of a trade mark of a registered proprietor by another person, in the peculiar facts of that case, it is to be seen whether there is deceptive similarity by applying the tests of passing off, and in case there is no passing off of the trade mark, then it cannot be said that there is infringement. The learned Single Judge referred to the judgment in Ruston's case (infra) but has overlooked the relevant part thereof which lays down the ratio that once the two trademarks are not identical, the question which arises is the question of deceptive similarity and the tests to be applied for seeing existence of deceptive similarity in an action for infringement is the same as in an action for passing off.

24. We now answer the issue (as stated in para 21 above) of deceptive similarity and passing off. We are of the view that in the facts and circumstances of the case, there would not arise any deceptive similarity or passing off between FAO (OS) No. 118/2009 Page 29 the two names of "Goenka Public School" and "G D Goenka Public School" for the following reasons:-

(i) The respondents began their educational institutions in the year 1995 in Delhi by opening a single school. No doubt it can be urged that the respondents could have earned distinctiveness with respect to their name so far as the region of Delhi or in and around Delhi concerned, but it cannot be said that respondents have achieved such amount of distinctiveness or secondary meaning that such distinctiveness would be applicable throughout the country in a period of a year in 1995 or in five years in 2000 that anyone else who in a different district in a different State starts using „Goenka‟ as part of its name, it would result in passing off, other institutions as that of the respondents. Nothing has been for the present, placed on record that in one year respondents user has spread so extensively throughout India that respondents can prevent the appellant from using the surname „Goenka‟ more so as „Goenka‟ is a common surname in India.

28. Since, however, education of students is involved in order to ensure that there is no deceptive similarity between the institutions of the appellant and the respondents and so that no student or his/her ward is led into believing that two institutions are similar, we would seek to invoke the rationale of the provision of Section 13 of the Trade Marks Act, 1999 which deals with the principle of honest concurrent user. Under this provision at the time of registration of trademarks which are found to be deceptively similar, power has been vested in the Registrar FAO (OS) No. 118/2009 Page 35 to allow such registration in case of honest concurrent user subject to certain conditions and limitations i.e. such restrictions and directions which the Registrar may impose. The object of this provision is that if there are similar trademarks in the market then in such circumstances, in order to ensure that there is no confusion amongst the public, directions can be issued to ensure that the public in general do not confuse the goods and services of one trademark with that of another, at the same time allowing rival traders who have carried on their business under their trade marks because such trade Marks have been used by both such persons for such time that it has become distinctive qua such traders.

(i) The respondent cannot successfully contend infringement of its trade mark „Goenka‟ because the trade mark has been registered w.e.f. 2003, but the appellant have used the trademark „Goenka‟ per se w.e.f. 2000 when it started its „Goenka Public School‟. Mere registration cannot confer right on the respondents as registration without user is of no effect and respondents have never used the trade marks „Goenka‟ in itself per se.
(ii) The respondents can be said to be prior user of the trademark „Goenka‟ as against the appellant on the ground that the word „Goenka‟ forms a prominent part of its name „G.D.Goenka Public School‟ on their establishing distinctiveness/secondary meaning after trial of the case but as of today no FAO (OS) No. 118/2009 Page 40 injunction can be granted to the respondents because the two trademarks are not identical and when the tests for deceptive similarity are applied there is enough material to hold that there is no deceptive similarity especially because, whereas the appellant is based in Sikar, Rajasthan, the respondents are based in Delhi and both the parties have started using the word „Goenka‟ as part of the name of their institutions near about each other so that it can be said that the appellant is an honest concurrent user of a word „Goenka‟, because since 1995 it was using „Goenka‟ as part of "Mohini Devi Goenka Public School" and for which it had a bona fide reason to adopt because the surname of its trustees was „Goenka‟.