Delhi District Court
S K Educations Pvt Ltd vs Bachpan Convent School on 4 April, 2025
IN THE COURT OF SH. ANIL KUMAR SISODIA:
DISTRICT JUDGE, COMMERCIAL-04:CENTRAL:
TIS HAZARI COURTS: DELHI.
CS (COMM) 315/2024
M/s S.K. Education Pvt. Ltd.
Through its Authorized Representative,
Mrs. Kusum Lata,
9988/B-1, Sarai Rohilla,
New Rohtak Road,
Delhi-110005 ............Plaintiff
Vs
Bachpan Convent School
Through its In-charge /Principal/Director
Chandipur, Jogiyan C.B. Ganj,
Bareily, Uttar Pradesh-243502. .............Defendant
Date of filing of the suit : 29.02.2024
Date of reserving judgment : 28.03.2025
Date of judgment : 04.04.2025
Judgment
1.This is a suit under Section 28, 29, 134 and 135 of the Trademarks Act, 1999 for permanent and mandatory injunction to restrain the defendant from infringing and passing off the registered trademark Digitally signed ANIL by ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:56:20 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 1/16 "Bachpan" and rendition of account etc. against defendant.
2. Briefly stated, facts of the case are that the plaintiff is engaged in imparting and promoting educational services in the field of play school education since 2002. The plaintiff has established a chain of approximately 1000+ play schools in all states of India by providing franchisees to intending parties desirous of setting up play schools under the brand name "BACHPAN" in return for a licensing fee payable to the plaintiff by the franchisee schools towards the use of the plaintiff's registered mark and goodwill. It is stated that the plaintiff under its brand name/trademark/registered mark "Bachpan" has developed various techniques, activities, manuals, workbooks, books, uniforms and methods to make children apply their mental and physical skills while playing and enjoying a nurturing atmosphere with other children. The plaintiff therefore established and developed a unique method to let children learn and develop their mental and physical skills in a playful manner through various activities and games. It is stated that the plaintiff has obtained registration for its word mark "BACHPAN" in 2003 and in class 16 and, in 2008 in class 41 with respect to education.
3. It is averred that in the year 2022 the plaintiff case to know that the defendant, without the authorization of the plaintiff, is running a school in the name and style of "BACHPAN CONVENT" which is deceptively similar/identical to the registered trademark of the plaintiff. The plaintiff had sent a legal notice dated 12.08.2022 and in reply dated Digitally signed by ANIL ANIL KUMAR KUMAR SISODIA Date:
SISODIA 2025.04.04 15:56:33 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 2/16 08.09.2022 to the legal notice of the plaintiff, the defendant neither gave any satisfactory response nor agreed to cease and desist from using the registered mark of the plaintiff. The plaintiff again sent a legal notice dated 15.09.2022 requesting to stop infringing the registered word mark of the plaintiff. Despite service of notice, the defendant remained silent and continued to infringe the mark which is solely owned by the plaintiff only.
4. The plaintiff further conducted online enquiry and discovered that the defendant is operating a facebook account, promoting and advertising the plaintiff's trademark seeking market networks. The defendant is evidently running the play school with the sole purpose of gaining wrongfully and alluring the parents into getting admission in their school by using identical names. It is stated that the adoption of the plaintiff's mark indicates that the defendant is trying to dilute the goodwill and reputation of the plaintiff with ulterior motive and a mala-fide intention, since a common man would, in ordinary circumstances, presume that the institution of the defendant is in association of the plaintiff.
5. It is stated that the illegal trade activities of the defendant is causing irreparable loss, injury, damage, and prejudice to the plaintiff. The plaintiff is suffering irreparable damage and injury on account of misappropriation of the goodwill and reputation that vests in the plaintiff's trademark "BACHPAN".
Digitally signed by ANIL ANIL KUMAR KUMAR SISODIA Date: SISODIA 2025.04.04 15:56:53 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 3/16
6. The plaintiff has prayed to grant an injunction restraining the defendant, its agents, officer, employees, representatives, franchisees, associates, assignees etc. from using the mark "BACHPAN" and/or any other mark or name identical or deceptively and confusingly similar to the plaintiff's earlier and registered trademark "BACHPAN", either as a trademark or as a part of a trademark or any other manner whatsoever which amounts to an infringement and passing off the business and services as those of the plaintiff till the disposal of the suit and also to restrain the defendant from disposing of or dealing with its assets in manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies, which may be finally awarded to the plaintiff.
7. Defendant was served with the summons of the suit through email and WhatsApp on 27.03.2024. Written statement was filed by the defendant on 09.05.2024. In the written statement, defendant has taken preliminary objections that this court has no jurisdiction to try and entertain the present suit as the defendant is neither residing in Delhi nor working for gain within the local limits of jurisdiction. The plaintiff has not approached the court with clean hands and has concealed material facts from this court. The plaintiff is thus guilty not only of suppressio veri, but also of suggestio falsi and accordingly, deserves to be non suited immediately on this score as well. It is stated that the plaintiff's trademark 'BACHPAN' play school is totally different from Digitally signed by ANIL ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:57:02 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 4/16 'BACHPAN CONVENT SCHOOL' run by the defendant from I class to VIII class and the services provided by the plaintiff and the services provided by the defendant are totally different and the defendant is not using LOGO of the plaintiff in any manner. The suit of the plaintiff is not maintainable inasmuch as the plaintiff is not a legal person and the name of 'Bachpan' is a generic English word and the plaintiff cannot claim monopoly of the same.
On merits, the contents of the plaint have been denied and a prayer has been made for dismissal of the suit with cost.
8. Plaintiff has filed replication to the WS and has reiterated the contents of the plaint and have denied the contents contrary to it.
9. On the basis of pleadings of the parties, following issues were framed on 21.10.2024 :-
1. Whether the suit of the plaintiff is barred by limitation?(OPD)
2. Whether the plaintiff is entitled for the relief of permanent injunction as prayed for?(OPP)
3. Whether the plaintiff is entitled for a decree of rendition of accounts against the defendant as prayed for?(OPP) Digitally signed ANIL by ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:57:18 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 5/16 4 Whether the plaintiff is entitled for a decree of damages against the defendant, as prayed for? (OPP)
5. Relief.
10. The plaintiff examined Ms. Kusum Lata as PW-1, who has tendered her affidavit as Ex PW1/A and proved the following documents:-
Sr. Documents Exhibits No.
1 Copy of Incorporation Certificate of S.K. Ex. PW-1/1 Education Private Limited 2 Copy of various legal proceeding certificate of Ex. PW-1/2 (colly) Trademark 3 Copy of screenshots of social media handles of Ex. PW-1/3 the plaintiff 4 Typed copy of the State wise list of the total Ex. PW-1/4 franchisee play schools of the plaintiff across India 5 Certified copy of the document indicating Ex. PW-1/5 is de-
expenses incurred by the plaintiff for exhibited and same advertisement, promotion and revenue is now marked as generated by the plaintiff Mark A 6 Copy of the expenditure affidavit of the Ex. PW-1/6 plaintiff 7 List of orders/judgments passed in favour of Ex. PW-1/7 (colly) the plaintiff 8 Legal notice dated 17.08.2022, reply of the Ex. PW-1/8 defendant dated 08.09.2022 and the second Digitally signed ANIL by ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:57:28 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 6/16 legal notice by the plaintiff dated 15.09.2022
9 Copy of the screenshot of the social media Ex. PW-1/9 (colly) handle of defendant 10 Non starter report dated 04.10.2023 Ex. PW-1/10 PW-1 was cross examined by counsel for the defendant and thereafter, PE was closed.
11. Defendant examined Sh. Irfan Ali as DW-1, who filed evidence by way of affidavit Ex. DW-1/A and proved the following documents:-
Sr. No. Document Exhibit
1 School Registration certificate DW-1/1
2 Certificate u/s 65B of Indian Evidence Act DW-1/2
3 Copy of certificate of BSA registration is Mark 'A' and
marked and its logo Mark 'B'
DW-1 was cross examined by counsel for plaintiff and thereafter, DE was closed.
12. I have heard Ld. Counsel for plaintiff and Ld. Counsel for defendant. I have also perused the record carefully including the written synopsis filed on behalf of the plaintiff as well as defendant.
13. Issue wise findings on the basis of evidence and arguments are as under: -
Issue No. 1:Digitally signed
by ANIL ANIL KUMAR KUMAR SISODIA Date:
SISODIA 2025.04.04 15:57:37 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 7/16 "Whether the suit of the plaintiff is barred by limitation? (OPD)"
14. The onus of proving this issue has been cast on the defendant. In the WS, the defendant has taken a defence that the plaintiff acquiesced to the defendant's use of mark in as much as the suit has been filed after a long gap of 12 years and the suit has been filed beyond the period of limitation. Counsel for the defendant has also argued on the similar lines and has submitted that the suit has been filed after a long gap of 12 years and the same is barred by limitation.
15. Per contra, counsel for the plaintiff has argued that the plaintiff came to know about the violation of trade mark of the plaintiff by the defendant in the year 2022 and had even sent a notice dated 12.08.2022 in an attempt to amicably settle the matter but the defendant in his reply dated 08.09.2022 did not give any satisfactory reply. The plaintiff again sent a legal notice dated 15.09.2022 to the defendant demanding damages of Rs. 5,00,000/- against infringement and passing off. He argued that PW-1 in her examination-in-chief has proved the aforesaid legal notices as Ex. PW-1/8 (colly). Even in cross-examination, PW-1 has testified that the plaintiff came to know that defendant was running the school in Bachpan Convent School in the year 2022. It was argued that the present suit has been filed by the plaintiff on 29.02.2024, which is within the period of limitation.
Digitally signed ANIL by ANIL KUMAR
SISODIA
KUMAR Date:
SISODIA 2025.04.04
15:57:46 +0530
CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 8/16
16. Perusal of the record would show that the plaintiff in its plaint has categorically stated that plaintiff came to know about the defendant running its school in the name and style of Bachpan Convent School in the year 2022.
17. The claim of the defendant that defendant has filed the suit after 12 years and has thus acquiesced to the use of the name "BACHPAN" has remained unsubstantiated. The defendant neither in the WS nor in its evidence has produced any record to show since when it had been running a school under the name and style of 'Bachpan Convent School'. It is pertinent to mention here that along with the WS defendant has only filed Certificate of School Registration with District Basic Education Officer, Bareilly mark 'A' which was issued on 28.03.2022 and Certificate of School Recognition Ex. DW-1/1 valid from 28.03.2022 to 28.03.2023. There is absolutely nothing on record to show that the defendant is running the school for last 12 years as claimed by it.
On the other hand, PW-1 in her cross examination has remained firm on its stand that the plaintiff came to know about the defendant running the school in the name of Bachpan Convent School in the year 2022. PW-1 also proved the notice dated 12.08.2022, reply of the defendant dated 08.09.2022 and the second legal notice dated 15.09.2022 as Ex.PW-1/8 (colly). The suit has been filed on 29.02.2024. Article 113 of the Schedule to The Limitation Act, 1963 prescribes a period of Digitally signed ANIL by ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:57:55 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 9/16 limitation of three years for any suit for which no period of limitation is provided elsewhere in this schedule and the period of limitation begins to run from the period when the right to sue accrues. In the present case the right to sue is accrued only when the plaintiff came to know about the defendant running the school in the name and style of Bachpan Convent School in the year 2022. The suit has been filed within three years from the accrual of cause of action to sue. Hence, it cannot be said that the suit filed by the plaintiff is beyond the period of limitation. Therefore, the issue is decided in favour of the plaintiff and against the defendant.
Issue no. 2 "Whether the plaintiff is entitled for the relief of permanent injunction as prayed for? (OPP)"
18. The onus to prove this issue was cast on the plaintiff. The plaintiff has examined PW-1 to prove its case. PW-1 in her affidavit by way of evidence has proved on record the certificate of incorporation of the plaintiff company as Ex. PW-1/1 and the copies of various legal proceeding certificates showing the registration of the word mark "BACHPAN" in favour of the plaintiff as Ex. PW-1/2 in class 16 as well as class 41. These certificates show that the plaintiff is using the word mark "BACHPAN" along with its logo since 2002. The plaintiff has further placed on record the copy of the screenshots of the media handle of the plaintiff as Ex. PW-1/3 (colly) and the typed copy of state-wise list Digitally signed ANIL by ANIL KUMAR KUMAR SISODIA Date:
SISODIA 2025.04.04 15:58:03 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 10/16 of the total franchisee play school of the plaintiff across India as Ex. PW- 1/4. From the perusal of the legal proceedings certificates of the trade mark, it is established that plaintiff is the proprietor of the registered trade mark/word mark "BACHPAN" since 2002.
19. The defendant in the cross-examination of PW-1 has not disputed the registered trade mark in favour of the plaintiff. The only defence taken by the defendant is that the school of the defendant is not a play school but it is from class I to class IX and the logo of the defendant is different from the logo of the plaintiff. It was also argued on behalf of the defendant that "BACHPAN" is a word commonly found in a dictionary and therefore, the trade mark has not become distinctive with the plaintiff. It was also argued that the plaintiff has filed the suit to extort money from the defendant and no confusion has been caused by the defendant by using the name Bachpan Convent School in the minds of the public and has not infringed the trade mark of the plaintiff in any manner.
20. Section 9 (1) of the Trade Marks Act provides for absolute grounds for refusal of the registration and one of such grounds is where the trade mark is devoid of any distinctive character. However, proviso to Section 9 (1) states that a trade mark shall not be refused registration, if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
ANIL Digitally signed
by ANIL KUMAR
KUMAR SISODIA
Date: 2025.04.04
SISODIA 15:58:12 +0530
CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 11/16
Thus, once a trade mark has been registered by the trade mark registry, no person can use the same without the permission of the proprietor of the registered trade mark. In the present case, use of the word "BACHPAN" by the defendant is a clear case of infringement of registered trade mark of the plaintiff. In Midas Hygiene Inds. Pvt. Ltd. Vs. Sudhir Bhatia & Ors. On 22.01.2004 and (2004) 3SCC 90, it was held that in cases of infringement either a trademark or of copyright, normally an injunction must follow. Merely delay in bringing action is not sufficient to defeat grant of injunction in such cases.
21. The plaintiff is using its registered trade mark in the field of education i.e. running the play schools. The defendant is also running a school using the mark similar to the mark of the plaintiff. The defence raised by the defendant that its mark has not caused any confusion in the minds of the public is without any substance. The use of the trade mark "BACHPAN" in the name of its school by the defendant is likely to cause confusion in the mind of the general public that the school of the defendant has some connection with the play schools of the plaintiff.
22. The plaintiff is thus entitled for the relief of permanent injunction against the defendant for restraining the defendant from using the registered trade mark 'BACHPAN' and/or any other deceptively similar trade mark, brand name, logo, design etc. to the mark of the plaintiff.
ANIL Digitally signed
by ANIL KUMAR
KUMAR SISODIA
Date: 2025.04.04
SISODIA 15:58:21 +0530
CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 12/16
23. In view of the aforesaid discussion, I am of the considered opinion that the plaintiff has discharged the onus cast on it. The issue is accordingly decided in favour of the plaintiff and against the defendant.
Issue no. 3 and 4:
"Whether the plaintiff is entitled for a decree of rendition of accounts against the defendant as prayed for?(OPP) Whether the plaintiff is entitled for a decree of damages against the defendant, as prayed for? (OPP)"
24. Both these issues are taken up together as they can be disposed off by a common discussion. The onus of proving these issues was cast upon the plaintiff. The plaintiff has claimed a decree of rendition of account against the defendant on the ground that the plaintiff has suffered financial losses due to illegal activities of the defendant and an injury on account of misappropriation of goodwill and reputation that vest in the plaintiff's trademark "BACHPAN". It was further stated that the profits earned by the defendant by misappropriating plaintiff's goodwill in its registered trademark is liable to be restored and defendant is liable to render accounts of profit to the plaintiff.
25. Per contra, defendant has submitted that no loss has been caused to Digitally signed by ANIL ANIL KUMAR KUMAR SISODIA Date:
SISODIA 2025.04.04 15:58:30 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 13/16 the plaintiff and the plaintiff is not entitled for any damages as claimed by it.
26. At the outset, it may be mentioned here that the plaintiff has not placed on record any documentary evidence to show the loss of earnings due to the misappropriation of the registered trademark by the defendant. Although, PW-1 has claimed in her cross-examination that plaintiff is having 4-5 franchisee schools running by the name of Bachpan Play School in Bareilly but she has not given the details of those schools nor their addresses nor has placed any franchisee agreement to substantiate its claim. PW-1 also claimed that the franchisee school of Bareilly had written to the plaintiff company that parents and children are getting confused due to use of "BACHPAN" by the defendant in the name of its school but no such letter has been placed on record. PW-1 has also not procured and placed on record the list of children from its franchisee schools, who had taken admission in the school of the defendant due to such confusion and thus, financial loss was caused to the plaintiff company. Even otherwise, the admitted case of the plaintiff is that it is running play schools. It is not the case of the plaintiff that it is also running primary or secondary schools using the trade mark "BACHPAN", whereas the school of the defendant starts from Class I. Hence, the claim of the plaintiff that it suffered financial losses due to the use of "BACHPAN" by defendant in the name of its school cannot be believed.
Digitally signed ANIL by ANIL
KUMAR
KUMAR SISODIA
Date:
SISODIA 2025.04.04
15:58:46 +0530
CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 14/16
27. Hence, in view of the aforesaid discussion, I am not inclined to grant the relief of rendition of accounts to the plaintiff as plaintiff has not been able to show even tentatively that it had suffered financial losses due to infringement of the trade mark of the plaintiff.
Nevertheless, the plaintiff has been successful in establishing that defendant has been infringing the registered trademark of the plaintiff and has attempted to ride on the goodwill earned by the plaintiff. Therefore, in such cases it becomes necessary to burden the defendant with damages for its misdeeds. A larger public purpose involved in granting damages in favour of the plaintiff in the cases of infringement of trade marks is to discourage such parties from indulging in the acts of deception and thus even if the same has a punitive element, it must be granted. Accordingly, I deem it appropriate to grant punitive damages of Rs.2,00,000/- in favour of the plaintiff and against the defendant. The issues are accordingly decided in favour of the plaintiff and against the defendant.
Relief:
28. In view of my findings on the issues herein above, the suit is decreed in favour of the plaintiff and against the defendant with costs.
A decree of permanent injunction is passed in favour of the plaintiff and against the defendants, their officers, servants, employees, Digitally signed ANIL by ANIL KUMAR SISODIA KUMAR Date:
SISODIA 2025.04.04 15:59:01 +0530 CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 15/16 staff, agents, representatives, assignees or any other associated person (s) from running or administering play school, directly or indirectly under the trade mark "BACHPAN" and/or any other deceptively similar to the plaintiff's registered marks and restraining them all from doing any other thing amounting to infringement and passing off of the registered marks and copyright of the plaintiff.
Defendant is directed to pay damages of Rs.2,00,000/- to the plaintiff within one month from the passing of this judgment failing which, said amount shall carry simple interest @9% p.a. from date of decree, till realization. Plaintiff is also entitled to costs of suit as prayed for.
Decree sheet be prepared accordingly. File be consigned to record room after due compliance.
ANIL Digitally signed
by ANIL KUMAR
KUMAR SISODIA
Date: 2025.04.04
SISODIA 15:59:09 +0530
Announced in the open Court (ANIL KUMAR SISODIA)
th
Dated : 04 April 2025 DISTRICT JUDGE-04, CENTRAL
TIS HAZARI COURT, DELHI
CS (COMM) 315/2024 M/s S.K. Education Pvt. Ltd. Vs Bachpan Convent School Page No. 16/16