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Bangalore District Court

Pearson India Education Services Pvt ... vs Global Shiksha India Pvt Ltd on 3 January, 2024

    KABC010157612017




  Form
  No.9
 (Civil)
  Title
 Sheet
   for     PRESENT: SRI PADMA PRASAD, B.A.(Law) LL.B.,
Judgme              XVIII Additional City Civil Judge.
  nt in
  Suits
 R.P. 91   Dated this the 3 rd day of January 2024


    PLAINTIFF:              Specadel Technologies Private
                            Limited,
                            A company incorporated under
                            the Companies Act, 1956,
                            Having its registered office
                            at No.101, 1st Floor,
                            Money Centre, No.121,
                            Hosur Road,
                            Koramangala Industrial
                            Layout, Bangalore-560 095.

                            Represented by its authorised
                            signatory, Mrs. Janaki Valappil.

                       [By Sri P.D.Mukesh Kumar, Advocate]
                           /v e r s u s/
    DEFENDANT:               Global Shiksha India Pvt.
                             Ltd.,
                             Asra Point, No.882, 4th Floor,
                             80 Feet Road, 8th Block,
                             Opp. to NGV/Indoor Stadium,
                             Koramangala,
                             Bangalore-560 095.

                                [By Sri K.M., Advocate]
     2                  O.S.4374_2017_Judgment_IPR.doc


Date of institution of the :              29/06/2017
suit
Nature of the suit         :          For INJUNCTION (IPR)

Date of commencement of :                  3/3/2022
recording of the evidence
Date    on    which    the :              03/01/2024
Judgment               was
pronounced.
                           : Year/s     Month/s      Day/s
Total duration
                               6          6           5



                                       (PADMA PRASAD)
                                      XVIII ACCJ: B'LURU.




          This is a suit for permanent injunction.

          2.   The plaint case in nutshell is that, plaintiff

    is doing the business of providing digital education

    equipment and services, and during its course of the

    business had appointed Suresh Babu as the Sales

    Executive who worked in the plaintiff-company from

    27th January 2015 to 2nd April 2016 and Wasim Raza

    as Sales Associate and worked with the plaintiff for a

    period from 19th December to 24th May 2016 and had

    gained sufficient knowledge of business know-how,

    clientele, market research and analysis, business and
 3                       O.S.4374_2017_Judgment_IPR.doc

    trade strategy etc., The said two employees resigned

    from    the   plaintiff-company      on    25/4/2016     and

    immediately joined its competitor i.e., the defendant.

    Although the contract between the plaintiff and the

    said two employees restrained them from joining any

    competitor or in any manner directly or indirectly

    competing or doing the business as that of the

    plaintiff, the plaintiff did not initiate any action on

    humanitarian grounds. The plaintiff reserves its rights

    to initiate appropriate civil and / or criminal or both

    proceedings      against    the     said   two   employees.

    Subsequent to the resignation and before the exit of

    Wasim     Raza     on      1/5/2016,       15/5/2016     and

    19/5/2016        accessed     the     official   email    ID

    ([email protected]) provided by the plaintiff to

    Wasim Raza during the course of his employment to

    sent all the confidential information to his personal

    email id ([email protected])           and after joining

    the defendant, the said two employees have been

    approaching the employees of the plaintiff luring them

    jobs with higher payment in the defendant company.
 4                    O.S.4374_2017_Judgment_IPR.doc

The plaintiff after gaining the knowledge of the acts of

Wasim Raza conducted an internal enquiry and found

that Wasim Raza and Suresh Babu had approached

two other employees, Jaishankar Nagraj and Abhishek

Bagade, and induced them to share the confidential

data of the plaintiff and in-lieu of the same jobs were

also    offered.   The   said   Jaishankar   Nagraj   and

Abhishek Bagade shared the confidential data of the

plaintiff with Suresh Babu. Abhishek Bagade had sent

the confidential information of the company from his

official email ID ([email protected]) to

his    personal    email ID ([email protected]).

During the course of the internal investigation, it also

came to the notice of the plaintiff that Jaishankar

Nagaraj had been sending the contact details of the

customers of the plaintiff to Suresh Babu over an

online messaging application called Google hangout

and at the instance of Suresh Babu apart from

sharing the customer details leads for sales were also

shared. The plaintiff operates under one of its brand

names "Edurite"          amongst others and has also
 5                      O.S.4374_2017_Judgment_IPR.doc

    obtained trade mark registration for the same. The

    defendant and its employees have been approaching

    the customers of the plaintiff as well as others        in

    order to sell their products which are similar to that of

    the plaintiff based on the confidential information

    shared by the ex-employees of the plaintiff. The

    defendant and its employees have been using the

    brand name "Edurite" belonging to the plaintiff by

    misrepresenting that the defendant is a sister concern

    of the plaintiff. A potential customer of the plaintiff

    Mr.Paresh Nileshwar vide email dated 3/5/2017 has

    reported one such incident stating that the defendant

    had approached him under the guise of being a sister

    concern of the plaintiff and also offered the products

    similar to that of the plaintiff a very attractive price of

    Rs.1,100/- for a educational DVD for class 12 of

    Gujarat    Education      Board     for    the    subjects

    Physics,Chemistry, Mathematics and Biology and

    whereas the actual price of the said DVD is much

    higher.   Further,     the    defendants     have    been

    approaching various other customers and clients by
 6                  O.S.4374_2017_Judgment_IPR.doc

misrepresenting to be the sister concern of the

plaintiff in order to sell its own products and gain

undue advantage and cause huge monetary losses to

the plaintiff. The plaintiff has currently accessed the

losses incurred due to the illegal acts of the defendant

and its employees at about Rs.20,00,000/-. The major

chunk of the business of the plaintiff is through

online sales of the products. The defendant to take

advantage of the same has brought advertisement

space   on    search     engine     websites    such   as

www.google.com capturing the brand name "Edurite"

of the plaintiff and due to which the search results on

www.google.com displayed is the website of the

defendant    and   not   of   the   plaintiff   when   a

user/customer applied a search command "Edurite

worksheet" the results displayed at no.1 is "Buy

Edurite Worksheets Online in India -GlobalShiksha".

The very act of the defendant approaching the

customers of the plaintiff and buy advertisement

spaces including the brand "Edurite" of the plaintiff so

as to lead the customers of the plaintiff to the website
 7                        O.S.4374_2017_Judgment_IPR.doc

    of the defendant has led to causing hue financial

    losses to the plaintiff. Accordingly prayed for the

    reliefs claimed in the suit.

         3.     The defendant filed a written statement

    wherein denied the entire plaint averments and

    claimed that the defendant is a company incorporated

    under Companies Act, carrying on the business of

    providing services relating to education including

    developing, operating and maintaining portals that

    provide information and services relating to education;

    providing a complete solution for all education related

    searches and queries. The defendant is a platform

    through     which    advertisers       can    advertise   their

    offerings online including portal owned, maintained

    operated or managed by the defendant company. The

    defendant    is   also    carrying     on    the   business   of

    wholesale trade in education CDs and books and

    related   material       and   other    materials     including

    through online and offline mediums and providing

    services incidental or complimentary thereto. The

    plaintiff is the competitor of the defendant company.
 8                  O.S.4374_2017_Judgment_IPR.doc

The plaintiff filed this frivolous suit by creating

concocted documents and among other grounds

prayed for dismissal of suit.

      4.   On the basis of above pleading the court

framed following issues:

           (1)   Whether the plaintiff proves that it is
                 the registered owner of trade mark
                 "Edurite"?

           (2)   Whether the plaintiff further proves
                 that the defendant has infringed its
                 trade mark'?

           (3)   Whether the plaintiff further proves
                 that the two employees of defendant
                 who were former employees of the
                 plaintiff are using the confidential
                 information of the plaintiff-company?

           (4)   Whether the defendant proves that it
                 is carrying on the business of the
                 educational services?

           (5)   Whether the plaintiff is entitled for the
                 relief of permanent injunction as
                 prayed for?

           (6)   What order or decree?


     5.    Plaintiff in order to prove its case, examined

its Manager - Finance as PW.1 and            got marked

documents as per Ex.P1 to Ex.P6. On the other hand,
 9                      O.S.4374_2017_Judgment_IPR.doc

    Chief Executive Officer of the defendant company is

    examined as DW.1 and got marked one document at

    Ex.D1.

         6.     Heard the arguments and perused entire

    records of the case. The learned advocate for the

    defendant has filed written arguments.

         7.     My findings on the above issues are as

    under:

         Issue No. 1) ............In the Affirmative
         Issue No. 2) ............In the Negative
         Issue No. 3) ............In the Negative
         Issue No. 4) ............In the Affirmative
         Issue No. 5) ............In the Negative
         Issue No. 6) ............As per final order; for
                                  the following:




         8.     ISSUE NO.1 TO 5:             The Issue No.1

    regarding   the   proving    of   the   plaintiff   has   the

    registered owner of trade mark 'Edurite'; Issue No.2 is

    regarding the infringement of said trade mark by

    defendant; Issue No.3 is framed on the contention of

    plaintiff that two former employees of the plaintiff
 10                    O.S.4374_2017_Judgment_IPR.doc

joined      the   defendant      and       they   are    using    the

confidential information of the plaintiff; Issue No.4 is

framed on the contention of defendant that the

defendant is carrying on the business of educational

services;     issue   No.5      is   regarding     the    plaintiff's

entitlement for the relief claimed in the suit. All these

issues are interlinked with each other and hence they are

taken up together.'


      9.      Before proceeding further in this case, it is

just and necessary to note the plaint prayers. The first

prayer in the plaint is to 'issue a permanent

injunction        restraining        the     defendants,         their

employees,         representatives,          servants,      agents,

executives or anyone claiming through or under them

from using the brand name 'Edurite' in any manner'.

The 2nd prayer is to restrain the defendants or

anybody claiming under them from using the any and

all   the     confidential      information        including      the

customer database on their contact details and sale

lead of the plaintiff, similarly the 3 rd prayer is to

restrain the defendants or anybody claiming under
 11                        O.S.4374_2017_Judgment_IPR.doc

     them from approaching the customers of the plaintiff

     for any business activities in relation to or similar to

     that of the plaintiff.


          10.   If the aforesaid prayers are considered in its

     entirety, then it is the claim of the plaintiff that the

     plaintiff is the trade mark holder of 'Edurite' and that

     has been infringed and passed off by the defendants.

     Similarly, the defendants are using the confidential

     information     of   plaintiff   and   approaching   the

     customers of the plaintiff. The plaintiff in the plaint

     claimed that two of its former employees namely

     Wasim Raza and Suresh Babu joined the defendant

     and they are using the confidential information of

     plaintiff and also approaching the customers of

     plaintiff. Therefore, the plaintiff must prove that the

     plaintiff is the trade mark holder of 'Edurite'      and

     that has been infringed by the defendants through the

     aforesaid Wasim Raza and Suresh Babu by using the

     confidential information they had, when they work

     with the plaintiff. Per contra, the defendant totally

     denied and disputed the plaint case. Hence, the
 12                 O.S.4374_2017_Judgment_IPR.doc

plaintiff has to prove the aforesaid facts in order to

accept the plaint case.


     11.   The plaintiff in support of its case examined

Manager-Finance of the plaintiff company namely

Veerndra Kumar as PW1 by filing evidence affidavit,

wherein he reiterated the plaint averments and also

produced the documents at Ex.P.1 to 6. Ex.P.1 is the

Board Resolution dated 08.02.2022 authorizing the

PW1 to give evidence and prosecute this case. Ex.P.2

is the Assignment deed dated 01.07.2017, Ex.P.3 is

the online printout of google search result, Ex.P.4 is

the E-mail dated 04.05.2017, Ex.P.5 is the certificate

u/sec.65B of Indian Evidence Act in respect of Ex.P.3

and 4. Ex.P.6 is the legal use certificate.


     12.   As per Ex.P.6-legal use certificate, Specadel

Technologies    Private   Limited    has      obtained   the

registration of trade mark 'Edurite' and the trade

mark is registration date is 04.01.2016 and the

certificate is issued as on 16.04.2019 and the said

trade mark is valid up to 04.01.2026. As per the said
 13                         O.S.4374_2017_Judgment_IPR.doc

     document the trade mark type is word and the word

     mark is 'Edurite'. As per this document Specadel

     Technologies        Private     Limited    has        obtained     the

     registration trade mark Edurite. It is the case of

     plaintiff that it has obtained the Assignment of its

     trade     mark      vide      its     Assignment       deed      dated

     01.07.2017.         The    plaintiff      has        produced      the

     Assignment deed at Ex.P.2, as per the said document

     the said      Specadel Technologies Private Limited has

     assigned      the   said      trade    mark     to    the   plaintiff.

     Therefore, the plaintiff proved that it is the registered

     owner of trade mark 'Edurite'.


             13.   In the case on hand, the plaintiff claimed

     that its two previous employees namely Wasim Raza

     and Suresh Babu has left the company and joined the

     defendant and they had the access to the information

     of the plaintiff, while they are working with the

     plaintiff. The said two employees after resigning from

     the plaintiff's company joined the defendant and used

     the confidential information. The defendant in written

     statement at para-5 pleaded ignorance about the
 14                 O.S.4374_2017_Judgment_IPR.doc

employment of Suresh Babu and Wasim Raza with the

plaintiff. Hence, the burden is on the plaintiff to show

that they are the previous employees or they are

earlier employed with the plaintiff before joining the

defendant. Of course the defendant has given evasive

evidence regarding the employment of Suresh Babu

and Wasim Raza with the defendant. It is true that the

defendants have not produced employment of roll of

its employees but that will not prove that Wasim Raza

and Suresh Babu are previous or earlier employees of

plaintiff and the production of employment roll by the

defendant, may only prove the fact that they are the

employees of defendant. Under the context/claim of

plaintiff in the suit it is for the plaintiff to prove that

the Suresh Babu and Wasim Raza are its employees.

The plaintiff has not produced any documents that

are suggested to DW1 regarding the defendant's

employees. When the plaintiff is aware of maintaining

the records of its employees certainly the plaintiff

ought to have produce some documents before the

Court to show that Wasim Raza and Suresh Babu are
 15                      O.S.4374_2017_Judgment_IPR.doc

     its   former    employee   or   they   are   bound   with

     contractual obligations between the plaintiff and said

     Wasim Raza and Suresh Babu. In the absence of any

     such material it has to be accepted that the plaintiff

     has failed to prove that Wasim Raza and Suresh Babu

     are the previous employees of plaintiff and they have

     misused the confidential information of plaintiff after

     joining the defendant.


           14.   The plaintiff also claimed that Wasim Raza

     and Suresh Babu has approached the two other

     employees of plaintiff namely Jaishankar Nagaraj and

     Abhishek Bagade and induced them to share the

     confidential data of the plaintiff and also jobs were

     offered to them. In the plaint para 6 it is further

     stated that said Jaishankar Nagaraj and Abhishek

     Bagade shared the confidential data of the plaintiff

     with the Suresh Babu. It is further stated that

     Abhishek       Bagade    has    sent   the    confidential

     information of the plaintiff from its official E-mail ID

     '[email protected]'         to the personal

     email ID [email protected] . If any mail has
 16                 O.S.4374_2017_Judgment_IPR.doc

been sent from the official Email Id, the plaintiff would

have produced the same before the Court, but the

plaintiff failed to produce any such documentary

evidence in support of said contention. Apart from

that it is also not the case of plaintiff that Jaishankar

Nagaraj and Abhishek Bagade are not in good terms

with plaintiff or they are not presently employed with

the plaintiff. So that, the plaintiff cannot examined

them in support of its contention. Therefore, the

plaintiff has failed to prove the sharing of confidential

information as claimed in the plaint. Further, the

plaintiff has failed to prove any of its claim by placing

any cogent and acceptable evidence. Further, even

Ex.P.4 is also not proved by the plaintiff.


     15.   It is true that the defendant filed the

written statement, wherein it is claimed that it is

carrying on the business of educational services. In

support of said contention, the defendant examined

its Chief Executive officer namely Chader Prakash

Garg as DW1, he also reiterated the written statement

averments and plaintiff not denied the said contention
 17                      O.S.4374_2017_Judgment_IPR.doc

     . Hence, it has to be accepted that the defendant is

     also carrying on the business of educational services.


          16.   In the case on hand, the plaintiff has not

     placed any cogent and acceptable evidence to show

     that the defendant is using the trade mark 'Edurite' as

     claimed in the plaint. Of course the plaintiff has

     produced the online search at Ex.P.3. As per the said

     document     the   plaintiff   searched   for   the   words

     'Edurite worksheets Globalshiksha'. On the basis of

     only this document, it cannot be accepted that the

     defendant has infringed or passing off of the plaintiff's

     trade mark. Admittedly, the name of the company of

     plaintiff and defendant are different and except the

     Ex.P.3, there is no other material on record to show

     that the defendant has infringed the plaintiff's trade

     mark. Therefore, for the aforesaid reasons this court

     is of the humble opinion that the plaintiff has proved

     issue No.1, the defendant has proved the issue No.4

     and the plaintiff has failed to prove the issue No.2 &

     3. In view of these facts, the plaintiff is not entitled for

     the relief claimed in the suit. accordingly, issue No.1
 18                           O.S.4374_2017_Judgment_IPR.doc

& 4 answered in the affirmative and Issue No.2, 3 & 5

are answered in the negative.


         17. ISSUE NO. 6: In view of my finding on the

above issues, I proceed to pass the following:



             The suit of the plaintiff is hereby
                dismissed.
             No order as to cost.
                                       ***

[Dictated to the Judgment Writer directly on computer, Script corrected, signed and then pronounced by me, in the Open Court on this the 3 rd day of January, 2024.] [PADMA PRASAD] XVIII Additional City Civil Judge.

BENGALURU.

1. List of witnesses examined on behalf of the Plaintiff/s:

P.W.1 :: Veerendra Kumar

2. List of witnesses examined on behalf of the Defendant/s:

D.W.1 :: Chader Prakash Garg

3. List of documents marked on behalf of the Plaintiff/s:

Ex.P1 :: Board resolution dated 8/2/2022 19 O.S.4374_2017_Judgment_IPR.doc Ex.P2 :: Assignment Deed dated 1/7/2017 Ex.P3 :: Online printout of Google Search result Ex.P4 :: Email dated 4/5/2017 Ex.P5 :: Certificate Under Section 65B of Evidence Act Ex.P6 :: Trademark Certificate of plaintiff with legal use certificate

4. List of the documents marked for the defendants:

Ex.D1 :: Appointment /Offer Letter.
[PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.