The HC of Delhi was dealing with the petition filed under Order 39 Rule 4 CPC for vacation of the ad-interim order dated 03.09.2021.
Brief Facts:
The facts of the case are that the plaintiff adopted the mark The British School in the year 1963 and hence, there has been an exemplary long use of this name i.e., for about 58 years. The plaintiff alleges of earning revenue in crores of Rupees and likewise is its expenditure in lacs on promotion. Admittedly the defendant adopted its mark in the year 2005 and never explained as to why it adopted this name or that the defendant was never aware of the mark of the plaintiff, prior to its own registration.
On 03.09.2021, the Court said that “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.” Three months’ time was given to the defendant to change its name, however now they have come before this court to get the stay order vacated, in the tenth hour.
HC’s observations:
After the submissions made by both the parties the HC observed that The British School is an essential feature of the mark of the plaintiff and its adoption by the defendant shall certainly infuse confusion in the minds of the students as also their parents as they shall believe the defendant has connection with the plaintiff and thus, the defendant shall ride upon the goodwill of the plaintiff.
The Court relied upon the case of Sushma Berlia & Others vs Kamal kumar & Others, where the Court held that “Similarity of the name 'APEEJAY' in the defendant No.2's association was sufficient to lead to the public to think that the defendants' association was the association of the plaintiffs. It might mislead the people into thinking that the defendants' association was a branch of the plaintiffs' school and sponsored by the school. If the defendants' association is guilty of any misdoing the same is likely to reflect discredit upon the plaintiffs' school.”
The Court found that the facts do clarify the plaintiff is a prior user of the mark ‘The British School’ since the year 1963 and since there has been no explanation of the defendant as to if it was never aware of the use of the trademark by the plaintiff or why it was using the similar trademark, the injunction must follow.
The Court relied upon the case of The Timken Company vs Timken Services Private Limited where the Court observed that “The defence set up by the defendant that the defendant was not even aware about the plaintiff’s name, trade mark and registration in 1989. The plaintiff has placed sufficient material on record to show that the plaintiff was a well- known mark as back as in 1989 when the defendant adopted the same. The defendant’s knowledge of the plaintiff’s trade mark and copyright can be inferred from the fact that the defendant not only adopted the same name but also adopted similar art work, font and colour as that of the plaintiff, which could not have been possible unless the defendant had knowledge and it chose deliberately to infringe the plaintiff’s right.”
The Court relied upon the case of M/s.Midas Hygiene Industries Private Limited & Another vs Sudhir Bhatia & Others, where it was stated that “The delay in bringing an action would not come in way of injunction.”
HC held:
The HC after evaluating various submissions made by both the parties held that “Being a prior user and adopter, the plaintiff is entitled to get the defendant restrained to use the mark deceptively similar of plaintiff’s mark irrespective of the fact the defendant got its mark registered prior in time. The mark of the defendant when compared as a whole with the mark of plaintiff it certainly shall create confusion, especially, when both are in identical field viz. educational. The similarity in the name shall certainly cause damage not only to the career of students but also to the reputation of the plaintiff.”
The HC dismissed the petition.
Bench: Hon'ble Mr. Justice Yogesh Khanna
Case Title: The British School Society V. The British International School
Case Details: CS(COMM) 408/2021, I.A. No.11113/2021 and 15652/2021
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