Delhi High Court
Anjani Kumar Goenka & Anr vs Goenka Institute Of Education & ... on 24 February, 2009
Author: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
+ IA No.15242/2008 & IA No.307/2009 in CS (OS) No.2579/2008
Judgment reserved on: 5th February, 2009
% Judgment decided on : 24th February, 2009
Anjani Kumar Goenka & Anr. ......Plaintiffs
Through : Ms. Pratibha M. Singh, Adv. with
Mr. Alok Kumar, and Ms. Nidhi Bisht,
Advs.
Versus
Goenka Institute of Education & Research .....Defendant
Through: Mr. N.K. Kaul, Sr. Adv. with
Mr. Neel Mason and Mr. Balachandran,
Advs.
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported Yes
in the Digest?
MANMOHAN SINGH, J.
1. By this order I shall dispose of the application filed by the
plaintiffs (IA No.15242/2008) under Order XXXIX Rule 1 and 2 read
with Section 151 CPC as well as application filed by defendant (IA
No.307/2009) under Order XXXIX Rule 4 read with Section 151 CPC
for vacation of injunction granted to the plaintiffs restraining the
defendant, its agents, representatives, assignors from offering its service
in the field of education, under the trade mark, ‗GOENKA' or its school,
‗GOENKA PUBLIC SCHOOL', ‗GOENKA GIRLS
COLLEGE' and ‗GOENKA COLLEGE OF PHARMACY'.
2. Brief facts are that the plaintiffs have filed the suit for
infringement of trade marks and passing off and damages etc. against
the defendant.
3. It is averred in the plaint that the Plaintiff no. 1 is a noted
businessman with experience of over two decades in the field of
imparting education, real estate, travel, tourism and Plaintiff no. 2 is a
company incorporated under the Companies Act, 1956 and is engaged
in the field of imparting education under the license from first Plaintiff.
In 1994, Plaintiffs opened 'G.D. Goenka Public School' at Delhi through
G.D. Goenka Educational Society.
4. It is alleged that by virtue of long, extensive and continuous
use of marks 'GOENKA/G. D. GOENKA' in the field of education the
plaintiffs have acquired distinctiveness. The word GOENKA has
become an essential and integral part of Plaintiffs' services and its name
has acquired distinctiveness and exclusivity.
5. The Plaintiff No.1 is the registered proprietor of the
trademark/service mark "GD GOENKA, GOENKAS, GOENKA
SCHOOL, GOENKA MEDICAL UNIVERSITY, & GD GOENKA
MEDICAL UNIVERSITY" in class 41 and is also the registered
proprietor of the trademark GD GOENKA, GOENKAS, GOENKA and
G in various other classes, details of which are given below:
S. No. Trade Marks Class Status App.no. J/No.
1 GDGOENKA 41 REGD. 1281086 1325 S-1
2 G 41 REGD. 1238908 1325 S-1
3 GOENKAS 41 PUB. 1238911 1338 S-1
4 GOENKA 41 REGD. 1257627 13
INTERNATIONAL 27 S-2
SCHOOL
5 GOENKA 41 REGD. 1257630 1327 S-2
MEDICAL
UNIVERSITY
6 GDGOENKA 41 REGD. 1257629 1328 S-1
MEDICAL
UNIVERSITY
7 GOENKA 41 REGD. 1257628 1327 S-2
SCHOOL
8 GOENKA 3 REGD. 1232682 1327 S-5
9 GOENKAS 3 REGD. 1232688 1327 S-5
10 GOENKAS 12 REGD. 1232689 1328 S-1
11 GOENKA 12 REGD. 1232683 1327 S-5
12 GW(DEVICE) 16 REGD. 1213729 1324 S-1
13 G. D. GOENKA 16 REGD. 1281083 1327 S-4
14 GOENKAS 18 REGD. 1232690 1328 S-1
15 GOENKA 18 REGD. 1232684 1327 S-5
16 GW(LABLE) 25 REGD. 1213731 1327 S-1
17 GOENKAS 25 REGD. 1232691 1356
18 GOENKA 25 REGD. 1232685 1327 S-5
19 GOENKAS 32 REGD. 1232692 1327 S-5
20 GOENKA 32 REGD. 1232686 1327 S-5
21 GOENKAS 33 REGD. 1232693 1328 S-1
22 GOENKA 33 REGD. 1232687 1327 S-5
23 GOENKA 35 REGD. 1238913 1357
24 GOENKAS 35 REGD. 1238910 1335
25 GDGOENKA 35 REGD. 1281084 1325 S-1
26 G 35 REGD. 1238907 13268-1
27 GDGOENKA 36 REGD. 1281085 13258-1
28 GDGOENKA 42 REGD. 1281087 13268-1
29 G 42 REGD. 1238909 13258-1
30 GOENKA 42 REGD. 1238915 1335
6. It is submitted in the plaint that the plaintiffs have schools at
following places :
Self owned
1. G.D. Goenka Public School, Vasant Kunj, New Delhi (CBSE
curriculum)
2. 2. G.D. Goenka World School, Sohna (IB curriculum)
Franchisee :
1. Ludhiana
2. Rohini, Delhi
3. Faridabad
4. Jammu
7. It is stated in the plaint that apart from enjoying huge
turnovers, the plaintiff's trade mark GOENKA/G.D. GOENKA have
been widely advertised in the periodicals, journals and newspapers. This
tremendous publicity has lead it in public identifying services bearing
trademark/service mark GD GOENKA and GOENKA exclusively as
originating from the Plaintiffs'. The said trademark/ service mark has
been continuously extensively, voluminously and uninterruptedly used
by the plaintiffs in respect of the services provide by them since 1994.
The aforesaid services provided by the plaintiff symbolize in itself a
mark of quality and has become synonymous with the high degree of
excellence. The aforesaid services of the plaintiff with the
trademark/service mark GD GOENKA, GOENKA, GOENKAS have
acquired distinctiveness, substantial goodwill and reputation among the
general people and trade in short span of time.
8. It is alleged in the plaint that defendant is also in the
services/business of providing education, training, entertainment,
sporting and cultural activities falling under Class-41. The use of word
‗GOENKA' for its school, college as a GOENKA PUBLIC SCHOOL,
GOENKA GIRLS COLLEGE AND GOENKA COLLEGE OF
PHARMACY as a trade mark and service mark by the defendant is
bound to cause deception and confusion amongst the public and trade,
who, will undoubtedly be misled into thinking that services of the
aforesaid defendant also originate from the plaintiff's in one or the other
manner.
9. It is submitted in the plaint that the plaintiffs came to know
about the defendant trade activities of providing education and training,
as that of plaintiffs, with the trade mark ‗GOENKA' for its school as a
GOENKA PUBLIC SCHOOL from the publication of their
advertisement in Hindustan Times News Paper dated 11.11.2008.
10. By order dated 12th December, 2008 this Court has passed an
ex parte ad interim injunction restraining the defendant Society from
offering its service in the field of education, under the trademarks
―GOENKA‖ for its school, college as ‗GOENKA PUBLIC SCHOOL',
‗GOENKA GIRLS COLLEGE' and ‗GOENKA COLLEGE OF
PHARMACY'.
11. Upon service, the defendant filed an application under Order
39 Rule 4 read with Section 151 CPC being IA No.307/2009 for
vacation of ad interim injunction.
12. It is claimed by the defendant that the four Schools and
Colleges are running under this society using the word Goenka as part
of the name of the Schools/Colleges-
a. Mohini Devi Goenka Mahila Mahavidyalaya
commencing in the year 1995.
b. Goenka Public School commencing in the year 2000.
c. Goenka College of Pharmacy commencing in the year
2004.
d. Mohini Devi Goenka Girls B.Ed College commencing
in the year 2006.
13. The defendant has averred that the name/mark Goenka is a
very common surname and cannot be monopolized by anyone unless it
is shown to have acquired distinctiveness. The plaintiffs have not
placed any evidence on record to show that the surname "Goenka" has
become distinctive of the plaintiffs'. There are only two schools of the
plaintiffs by the said name in Delhi and Sohna Road.
14. It is alleged that the name/mark GOENKA is commonly
used in the filed of education by third parties for educational
institutions. The details of the some of the institutions have been given
in the application filed under Order 39 Rule 4. The Defendant has
shown that one institution, the ‗Goenka College of Commerce in
Kolkata', adopted Goenka well before the Plaintiffs. The name used by
the Plaintiffs is GD Goenka and not Goenka in isolation as a mark by
the plaintiffs.
15. The plaintiffs have, inter alia, filed large number of
documents to show their use of the mark/name in question:-
a] Photostat copies of the registrations of the mark
GOENKA [label], GoENKA School, GOENKA
International School, GOENKA Medical University in
Class 41 in relation to education, providing of training,
entertainment, sporting and cultural activities.
b] Various registration certificates have been filed in order
to show that the mark GOENKA is registered in various
classifications of goods other than the education.
c] The search report of the trademark GOENKA in Class 41
as a service mark, which shows that the plaintiffs are
having most of the trademarks registered in their favour.
d] The statement of receipts/turnover of G D GOENKA
Private Limited from the year 1994-95 to 2006-07.
e] The list of the places where the schools with the name of
GOENKA are being run by the plaintiffs, its franchisees
as well as list of countries where the students are
studying at G d GOENKA World School etc.
f] Copies of the balance sheet from the year 1995 onwards.
g] Advertisement and publicity expenses from the year
1996 to 2008.
h] Photostat copy of the advertisement published in various
well known newspapers from the year 1994 and invoices
etc.
From the documents, prima facie, it appears that the plaintiffs
have been using the name/mark GOENKA and/or part of the GD
GOENKA Public School from the year 1994.
16. The defendant has also filed number of documents by way of
balance sheet, income tax returns, advertisement expenses, copies of
Trust Deeds, Brochures, advertisement materials, prospectus, copies of
the newspaper articles. After having gone through the said documents
filed by the defendant, prima facie, it appears that the defendant has
been using the following names in which the mark GOENKA forms part
of it :-
(i) Goenka Shiksha Avam Shodh Sansthan in the year
2000.
(ii) Mohini Devi Goenka Mahila Mahavidyalaya in the
year 1995.
(iii) Mohini Devi Goenka Girls Mahavidhyalya in the
year 1997.
(iv) Mohini Devi Goenka Girls B.Ed. College in the year
2006.
(v) Goenka College of pharmacy in the year 2004-05.
(vi) Goenka Public School - The defendant has claimed
that this name is being used since 2000 for the course
of CBSE affiliation upto Class XII. The defendant
has also filed some of the documents in support of the
user claim of Goenka Public School. The details of
the said documents are as under :-
(a) Copies of the ledger accounts showing the
advertisement and publicity expenses for the
year 1.4.2007 -31.3.2008;
(b) Students' strength of Goenka Public School
for the year 2006-07; 2007-08 and 2008-09;
(c) Certificate issued by the CBSE under the
name ‗Goenka Public School' dated 13th July,
2005 for the period with effect from 1 st April,
2005 to 31st Mach, 2008;
(d) Certificate of upgradation issued on 26 th
February, 2007 and
(e) Prospectus, brochure, admission notice and
some of the references made in the news
article published in the year 2008.
(vii) Goenka Girls College
17. After having examined the documents filed by the
defendant, prima facie it appears that the defendant has filed the
material on record to show that the said name is being used by the
defendant from the year 2004-05. There is no evidence on record to
show that ‗Goenka Girls College' has ever been used by the defendant,
although in their Website they have made publicity regarding the said
name.
18. The main contentions of the defendant for vacation of the ad
interim order during the course of argument are :-
a] The word ‗GOENKA' per se is a very common
surname/caste in India, therefore, no monopoly
can be claimed by the plaintiffs. In fact, it is a
weak mark/name and is also non-distinctive and
its distinctiveness can only be assessed by the
court at the time of trial and not at this stage for
considering the interim application.
b] The use of the name GOENKA being a part of
trust, school, college, pharmacy and girl colleges
is to be considered as bona fide use being
common surname of the defendant
proprietor/partners/directors and, therefore, under
Section 35 of the Trade Marks Act, 1999, the
defendant is entitled to use the same as a bona
fide user. Section 35 of the Act is an exception to
Sections 28 and 29 of the Trade Mark Act and
therefore, no case of infringement of trade mark
has been made out as two names used by the
plaintiffs and defendant is dis-similar.
c] The defendant Shree Lal Goenka Chairtable Trust
was set up in the year 1990 for the purpose of
education and school etc., which is prior to the
adoption of the plaintiffs' trademark G D
GOENKA. Hence, the defendant's claim is
protected under Section 34 of the Trademark Act,
1999 being the prior user.
d] There is a delay on the part of the plaintiffs for
bringing the action, hence, the balance of
convenience lies in favour of the defendant and,
thus, the injunction is liable to be vacated.
e) There are other parties who are using the
mark/name GOENKA in relation to the same
services and some of them are using the
name/mark GOENKA as part of their name prior
to the plaintiffs.
Bona fide Use of Name
19. The first contention of Mr. Neeraj Kishan Kaul, learned
Senior counsel is that prima facie suit is not maintainable. He referred to
the provisions of Section 35 of the Trade Mark Act, 1999. Section 35 of
the Trade Mark Act, 1999 reads as under:-
"35. Saving for use of name, address or description of
goods or services.--Nothing in this Act shall entitle the
proprietor or a registered user of a registered trade mark
to interfere with any bona fide use by a person of his own
name or that of his place of business, or of the name, or
of the name of the place of business, of any of his
predecessors in business, or the use by any person of any
bona fide description of the character or quality of his
goods or services.‖
Relying upon the above said provision, learned Senior
counsel submitted that the defendant cannot be restrained from using
their own name. Various decisions in support of his submission are
relied upon at the bar on this question (Rajinder Kumar Agarwal vs.
Union of India & Anr., 2007 (35) PTC 616; Ashok Kumar Aggarwal
Vs. Rajinder Kumar Aggarwal 2009(1) AD Delhi 392 Para 10 and S.
Chivers & Sons vs. S. Chivers & Co. 17 RPC (15) page No.420.
Para 10 of the decision cited by the learned counsel for the
defendant in 2009(1) AD Delhi 392 reads as under:-
―10. Every trader has a right to trade in his own name and
ought not to be hampered in its use. One has, therefore,
to consider the interests of other persons having the same
surname who might at any time carry on trade in the
goods. A surname, therefore, is considered prima facie
not adapted to distinguish for the purpose of registration
in part A. For the same reason, a personal name is
considered not registrable in part A. A surname,
therefore, is considered not registrable in part A without
evidence of distinctiveness. Common abbreviation of
surname, or personal name is to be considered on the
same footing as a surname or a personal name. (See P.
Narayanan's Law of Trade Marks and Passing Off (6th
edition), para 8. 20).‖
20. There is no dispute that surname cannot become distinctive
without the evidence of distinctiveness. No protection or registration
can be granted without the evidence. However, the situation in the
present case is different as the plaintiffs have been using the surname
since the year 1994. Therefore, the findings and law laid down in the
case of 2007 (35) PTC 616 and 2009 (1) AD Delhi 392 do not help case
of the defendant. Similarly, the ratio of the decision reported in 17 RPC
Page 420 is also not applicable as in that case, it is held that the plaintiff
had not proved that ‗Chivers' Table Jelly meant their Table Jelly and
nothing else.
Further by virtue of long user established by the plaintiffs
from the year 1994, the mark Goenka is become distinctive and has
acquired secondary meaning.
21. The learned counsel for the plaintiffs, Ms. Pratibha M. Singh
has made her submissions on the question of bonafide use of his own
surname to the following effect that the defence under Section 35 relied
upon by the Defendant permits only "bonafide use by a person of his
own name". The emphasis in this section is on the two terms "bonafide"
and "his own name". Her submissions are that "his own name" has to be
mean the full name of a person as a person cannot be known just by his
first name or last name.
22. She relied upon the case of Rodgers vs. Rodgers (1924) 41
R.P.C. 277 to contend that there are five elements to the supposed
defence of a desire of defendant to use his own name:
a. The Defendant must be using his own full name,
b. He must do nothing more that causes confusion
with the claimant,
c. he must act honestly,
d. he must in general be a natural person;
e. and he must not be using the name so as to
describe his goods.
The supposed defense mav be lost if the defendant does not
use his own name in full without abbreviations or embellishments. In
particular, an individual may not in general claim any right to trade
under his surname alone, or as part of a trading style, where it would
involve passing-off. Failure to use one's full name may itself indicate a
lack of bona fides.
23. Section 35 is based on the UK Trade Marks Act 1938. The
respective statutory provisions relating to use of one's own name under
English and Indian Trademarks Acts are set out hereunder:
Trade Marks Act 1938 The Trade Marks Act,1999
(THE UK ACT)
Saving for use of name, address Saving for use of name, address
or description of goods or description of goods or
services
Section 8 Section 35
No registration of a trade mark Nothing in this Act shall entitle
shall interfere with - the proprietor or a registered
user of a registered trade mark to
interfere with-
(a) any bon fide use by a Any bona fide use by a person of
person of his own name his own name or that of his place
or that of his place of of business, or of the name, or of
business, or of the the name of the place of
name, or of the name, business, of any of his
or of the name of the predecessors in business, or
place of business, of
any of his predecessors
in business; or
(b) the use by any person The use by any person of any
of any bona fide bona fide description of
description of the character or quality of his
character or quality of goods or services.
his goods, not being a
description that would
be likely to be taken as
importing any such
reference as is
mentioned in paragraph
(b) if sub-section (1) of
section four, or in
paragraph (b) of sub-
section (3) of section
thiry-seven, of this Act.
From the above table it is clear that the statutory position in
respect of bonafide use.
24. In the case of Bajaj Electrical Limited, Bombay Vs. Metals
& Allied Products, Bombay, AIR 1988 Bom 167, the Bombay High
Court discussed the case of Rodgers Vs. Rodgers as also Parker Knoll in
para 7 which reads as under :
"Para 7: ..........It is the law of this land that no man is
entitled to carryon his business in such a way as to represent
that it is the business of another, or is in any way connected
with the business of another; that is the first proposition.
The second proposition is that no man is entitled so to
describe or mark his goods as to represent that the goods are
the goods of another. To the first proposition there is, I
myself think an exception: a man, in my opinion, is entitled
to carryon his business in his own name so long as he does
not do anything more than to cause confusion with the
business of another, and so long as he does it honestly. To
the second rule, to which I have referred, I think there is no
exception at all; that is that a man is not entitled so to
describe his goods as to lead to the belief that they are the
goods of somebody else."
25. In the case of Dr. Reddy's Laboratories Ltd. vs Reddy
Pharmaceuticals Ltd., 2004 (29) PTC 435 (Del), it was held as under:-
―Para15: .........No other "Reddy" has a `right to start a
rival business by using the same trade name on the plea that
it is his surname. This would encourage deception. If such a
plea is allowed, rivals in trade would be encouraged to
associate in their business ventures persons having similar
surnames which was held to be an act of passing off the
goods and it was observed that the use of such family name
as a trade mark was not permissible. The plea of the
defendant that the surname of the partners of its firm could
be used to carryon trade in their own name was rejected.
It was held that prima facie the defendant was intentionally
and dishonestly trying to pass off their goods by use of
name "Bajaj" and as such the plaintiff had made out a case
for grant of injunction.‖
This Single Bench judgment was confirmed by the Division
Bench who dismissed the appeal by the defendant and is reported in
2007 (35) PTC 868 (Del) (DB).
26. In the case of Mahendra & Mahendra Paper Mills Ltd.
VS. Mahindra & Mahindra Ltd. 2002 (24) PTC 121 (SC) [Para 23] -
where defendant's name was ‗Mahendrabhai', no protection was given
and injunction was granted by the Apex Court.
27. In the case of K.G.Khosla Compressors Ltd vs. Khosla
Extraktions Ltd (1986 (6) PTC 211 (Del)) similar position arose, the
court held that, prima facie, when the reference is made to ‗Khosla' in
the business trade, it is referred to the plaintiffs and there being no
reason why the name of the defendant should be as it is except that the
name was deliberately used to cash on the goodwill and reputation of
the plaintiffs. In view of the settled law, it is clear that the surname
which is rare in use is protectable. The present case can not be
compared with the mark/name ‗Aggarwal' which is very common
surname and very common sect in India.
28. ‗Bonafide use' normally means the honest use by a person of
his own name without any intention to deceive anybody or without any
intention to make use of the goodwill which has been acquired by
another trader. The mere fact that a party is using his own name which
too closely resembles the registered trade mark of which he is aware
does not prevent the user from being bonafide provided that the party
honestly thought that no confusion would arise if he had no intention to
wrongfully divert the business to himself by using the name. By use of
the name Goenka Public School and Goenka College of Pharmacy in
which the dominant and essential part of the word is ‗Goenka' and in
case the said names are used in the manner of essential and prominent
features, then defendant's case is not protected under Section 35 of the
Act as it would create confusion and deception.
Infringement of Trademark
29. The next submission of Mr. Kaul is that the two names used
i.e. G.D. Goenka Public School and Goenka Public School, Goenka
Girls College, Goekna College of Pharmacy are totally dis-similar, and
in view thereof the question of infringement of trade mark does not
arise. Learned Senior Counsel has referred to 2008(1) AD Delhi 178
Kewal Krishan vs. Rudi Roller Flour Ltd and Anr (DB) and BDA
Private Limited vs. Paul P. John & Anr., 2008 (37) PTC 569.
30. As regards the judgment cited by the learned counsel for the
defendant reported in 2008 AD Delhi Page 178 and 2008 (37) PTC 569
are concerned, the same are not applicable to the facts and
circumstances of this case. In the first judgment it was a case of
registration of trademark where the court held that the mark used by the
defendant Shiv Shakti along with the device of Trishul and Damru, was
used in the descriptive form and when it is read as a whole, there is no
similarity, therefore, the said decision does not help the case of the
defendant. Similarity in the second case where the two names Officers
Choice and Original Choice are in dispute were held to be different. The
facts of the said case were totally different as there was a suppression of
facts in that case. The mark Choice was disclaimed by the plaintiff at
the time of obtaining registration. The said fact was not disclosed in the
plaint amongst other concealments.
31. In an infringement action it is well established law that when
the plaintiffs complains of infringement of trademark by taking the mark
in its entirety or by taking substantial portion of it, or by colourable
immitation or he relies on his title to the exclusive use of the mark in
question for goods of the specified kind. Under Section 28 of the Trade
Mark Act, 1999 the registration confers exclusive right in favour of the
plaintiffs and under Section 29 of the Act when the defendant is using
identical or deceptively similar trade mark then a clear case of
infringement of trademark is made out. Section 31 of the Act says that
the registration granted in favour of the plaintiffs is a prima facie case
of evidence of validity.
32. In the present case, it is an undisputed fact that the plaintiff
No.1 is the registered proprietor of the trademark/service mark ‗G.D.
Goenka‖, ‗Goenkas', Goenka School, ‗Goenka Medical University' and
‗G.D.Goenka Medical University' in class 41. The question before this
court is whether the use of the name Goenka Public School, Goenka
Girl's College and Goenka College of Pharmacy and other names are
deceptively similar or not.
33. The question of resemblance and deception are to be
considered by referring not only to the whole mark, but also to its
distinguishing or essential/substantial feature of the mark.
Essential features
34. A trade mark is infringed if a person other than the registered
proprietor or authorised user uses, in relation to goods covered by the
registration, one or more of the trade mark's essential particulars. The
identification of an essential feature depends partly upon the Court's
own judgment and partly upon the burden of the evidence that is placed
before the Court.
35. In James Chadwick & Bros. Lid. v. The National Sewin"
Thread Co. Ltd., MANU/MH/0063/1951 the Court ruled as under :
―in an action for infringement what is important is to find
out what was the distinguishing or essential feature of the
trade mark already registered and what is the main
feature or the main idea underlying the trade mark. In
Parle Products (f) Ltd. v. J. P. & Co. Mysore. :
MANU/SC/0412/1972 the Supreme Court took the same
view.‖
36. In the judgment of the Supreme Court in Ruston and
Hornby Ltd. v. Zamindara Engineering Co., MANU/SC/0304/1969.
The High Court, in appeal, held that the offending trade mark infringed
the appellant's trade mark "Ruston", and restrained the respondent from
using the trade mark "Rustam", but further held that the use of the words
"Rustam India" was not an infringement of the registered trade mark, as
the appellant's goods were manufactured in England and not in India
and the suffix of the word "India" constituted a sufficient distinguishing
factor. The Supreme Court, white upholding the first part of the High
Court Judgment and reversing the second part, held that an infringement
of a registered trade mark takes place not merely by exact imitation but
by the use of a mark so nearly resembling the registered mark as to be
likely to deceive.
37. In the case of Kaviraj Pandit Durga Dutt Sharma vs.
Navaratna Pharmaceutical Laboratories; AIR 1965 SC 980 it was
held as under :
―30. The mark of the respondent which he claims has
been infringed by the appellant is the mark 'Navaratna
Pharmaceutical Laboratories', and the mark of the
appellant which the respondent claimed was a colourable
imitation of that mark is 'Navaratna Pharmacy'.
"Where common marks are included in the trade marks to
be compared or in one or in one of them, the proper
course is to look at the marks as wholes and not to
disregard the parts which are common".
38. In the case of Taw Manufacturing Coy. Lid. v. Notek
Engineering Coy. Ltd. and another-. (1951) 68 Reports of Patent
Cases 271(2), where the two pictures of the respective parties which are
scanned and shown as under were in dispute :-
It is held that the monopoly right claimed under the
registered trade mark related to Motor Lamps and consisted of a
pictorial device and the word "Taw". The device comprised of a
representation of the full-faced view of a cat's head, wherein the eyes
were drawn in. the form of a motor ear headlamps and the whole was
superimposed upon an open body motor ear viewed from the front in a
manner as to substitute the cat's head for the bonnet and radiator as
normally seen. The device that was the subject matter of challenge
consisted of a square panel with informative particulars printed below.
The panel depicted a full-faced view of a cat's head with the eyes drawn
as motor car headlamps, beneath which was the caption ''Let Notek be
your eyes in fog and darkness". The disposition and lettering was such
as to lead the render to take particular notice of the device with the word
"Notek" beneath it. The question for decision was whether there was
infringement by the latter device of the former registered trade mark.
39. As observed by the Privy Council in De Cordova and
others Vs. Vick Chemical Company, 68 R.P.C. 103, 106 it was held
as under :
―it has long been accepted that, if a word forming part of
a mark has come in trade to be used to identify the goods
of the owner of the mark, it is an infringement of the
mark itself to use that word as the mark on part of the
mark of another trader, for confusion is likely to result.‖
Test of Infringement
40. In the case of Kaviraj Pandit Durga Dutt Vs Navaratna
Pharmaceutical, AIR 1965 SC Page 980 at page 989 and 990, it was
held as under :
―In an action for infringement the plaintiff must, no
doubt, make out that the use of the defendant's mark is
likely to deceive but where the similarity between the
plaintiff's and the defendant's mark is so close either
visually, phonetically or otherwise and the court reaches
the conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff's rights
are violated.‖
41. In the case of American Home Products Vs Mac
Laboratories, AIR 1986 SC 137 at Page 155 Para 36 it was held :
―When a person gets his trade mark registered, he
acquires valuable rights by reason of such registration.
Registration of his trade mark give him the exclusive
right to the use of the trade mark in connection with the
goods in respect of which it is registered and if there is
any invasion of this right by any other person using a
mark which is the same or deceptively similar to his trade
mark, he can protect his trade mark by an action for
infringement in which he can obtain injunction.......‖
42. In the case of National Bell Co. Vs Metal Goods Mfg. Co.,
AIR 1971 SC 898 at Page No.903 it was held as under :
―On registration of a trade mark the registered proprietor
gets under section 28 the exclusive right to the use of
such trade marks in relation to the goods in respect of
which the trade mark is registered and to obtain relief in
respect of any infringement of such trade mark.‖
43. In the case of Avis International Vs Avi Footwear, AIR
1991 Delhi 22 at Page 25 Para 21 it was observed :
―In my view violation of the exclusive statutory rights is
illegal activity, to hold otherwise will negate the
statutory provisions of the Trade and Merchandise Marks
Act‖
44. Validity of the trade mark cannot be challenged in an action of
infringement
In the case of 1999 PTC 81 at Page No.86 Para 15 it was held
as under :
―The validity of the registration of ―DIMMERSTAT‖
cannot be challenged by the defendants in a proceeding
like this for the defendants have a remedy to file
cancellation of the registration in an appropriate forum. ‖
45. From the above, it is clear that the use of the name Goenka
Public School, Goenka Girls College and Goenka College of Pharmacy
in which the mark Goenka forms an essential feature for its service in
the field of education, the two names are prima facie deceptively similar
with the name of plaintiffs G.D. Goenka Public School.
Passing Off
46. In order to establish the case of passing off the learned
counsel for the plaintiffs has referred to the advertisement which
appeared in the Hindustan Times on 11.11.2008 from where the
plaintiffs have got the knowledge about the use of the names. Scan
copy of the said publication is scanned and reproduced :-
47. Learned counsel has argued that in view of the abovesaid
advertisement which appeared in the Hindustan Times on 11.11.2008, it
is a classic example of passing off.
48. It appears that the advertisement of both the parties appeared
simultaneously. The learned counsel for the plaintiffs states that after
the said advertisement, it has received various queries from the public
verifying as to whether Goenka Public School is also belonging to the
plaintiffs or not.
49. Learned counsel for the defendant has argued at great length
on the point of passing off action. The first contention of the learned
counsel for the defendant is that the defendant has established the Trust
in the year 1990 under the name Shree Goenka Charitable Trust from
the surname which is prior in time to the plaintiffs mark and in view
thereof the defendant's case is protected under Section 34 of the Act.
The name of the Trustees were Shyam Sunder Goenka and Aushutosh
Goenka and the name of the Trust was Sri Lal Goenka Charitable Trust
which was derived from the name of the father Sh.Shyam Sunder
Goenka. The second submission of the learned counsel for the
defendant is that there is no similarity between the service mark/names
of the parties, therefore, the question of passing of does not arise. In
support of his submission the learned counsel for the defendant has
referred to the following decisions:-
i) Allianz Aktiengesellschaft Holding vs. Allianz Capital &
Management Services Ltd., 2002 (24) PTC 177.
ii) Hindustan Pencils Ltd. Vs. Universal Trading Co., 2000 Vol.
VII AD Delhi 925.
iii) Ric Products Corpn. Vs. India Nippon Food Ltd., 2007(35)
PTC 15.
iv) Johnson & Johnson & Anr. Vs. Christine Hoden India Pvt.
Ltd. & Anr., AIR 1998 Delhi 249.
v) Britannia Industries Ltd. Vs. Cremica Agro Foods Ltd., 2008
(38) PTC 89.
vi) Vijay Kumar Ahuja Vs. Lalita Ahuja, 2002 Vol. II AD Delhi
223.
50. In passing off action, one has to see as to whether the
defendant is selling goods/service so marked as to be designed or
calculated to lead purchasers to believe that they are plaintiffs' goods.
The law of passing off prevents commercial dishonesty representing
one's goods as the goods of somebody else. It is well settled law that an
action for passing is a common law remedy being an action in substance
of deceit under the law of Tort. In Warnik Vs Townend & Sons
(HULL) Ltd. 1979 AC 731, Lord Diplock identified the following five
characteristics which must be represented in order to create a valid cause
of action for passing off:-
- A misrepresentation.
- Made by a trader in course of trade,
- To prospective customers of his or ultimate customers of
goods or services supplied by him,
- Which is calculated to injure the business or goodwill of
another trader (in the sense that there is a reasonable forceably
consequence) and
- Which causes actual damage to a business or goodwill of the
trader by whom the action is brought or (in quia timet action)
will probally do so.
51. In the case of Laxmikant V. Patel vs. Chetanbhai Shah,
AIR 2002 SC 275 it was held as under :
―A person may sell his goods or deliver his services such
as in case of a profession under a trading name or style.
With the lapse of time such business or services
associated with a person acquire a reputation or goodwill
which becomes a property which is protected by courts.
A competitor initiating sale of goods or services in the
same name or by imitating that name results in injury to
the business of one who has the property in that name.
The law does not permit any one to carry on his business
in such a way as would persuade the customers or clients
in believing that the goods or services belonging to
someone else are his or are associated therewith. It does
not matter whether the latter person does so fraudulently
or otherwise. The reasons are two. Firstly, honesty and
fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or
intends to adopts a name in connection with his business
or services which already belongs to someone else it
results in confusion and has propensity of diverting the
customers and clients of someone else to himself and
thereby resulting in injury.‖
52. In SALMOND & HEUSTON IN LAW OF TORTS
(TWENTIETH EDITION, AT P.395) this form of injury is called as
‗injurious falsehood' and observed the same having been ‗awkwardly
termed' as ‗passing off' and state:-
"The legal and economic basis of this tort is to provide
protection for the right of property which exists not in a
particular name, mark or style but in an established
business, commercial or professional reputation or
goodwill. So to sell merchandise or carry on business
under such a name, mark, description, or otherwise in
such a manner as to mislead the public into believing that
the merchandise of business is that of another person is a
wrong actionable at the suit of that other person. This
form of injury is commonly, though awkwardly, termed
that of passing off one's goods or business as the goods
or business of another and is that most important
example of the wrong of injurious falsehood. The gist of
the conception of passing off is that the goods are in
effect telling a falsehood about themselves, are saying
something about themselves which is calculated to
mislead. The law on the this matter is designed to protect
traders against that form of unfair competition which
consists in acquiring for oneself, by means of false or
misleading devices, the benefit of the reputation already
achieved by rival traders."
53. In Allianz Aktiengesellschaft Holding's case relied upon
by the defendant, the business activities of the parties were totally
different nor the plaintiffs had obtained registration in India. This was
one of the main factor for not granting injunction and the court held that
there is no confusion and deception. It was the case of rectification of
the registered trademark where the main contention of the respondent
was that the two sets of goods are totally different, the Division Bench
of this court has confirmed the registration of the respondent on the
basis of special circumstances.
54. Vijay Kumar Ahuja's case (supra) also does not help the
case of the defendant as in this case it is held by the court that the two
names adopted by the plaintiff are common language words and have
not acquired secondary significance and the injunction was obtained by
suppression of facts. The decision in Hindustan Pencils Ltd's case
(supra) is entirely on different facts. In fact, it was a case of removal of
the trade mark and the court has given the benefit of user under special
circumstances. The defendant on the date of decision of the appeal was
the registered proprietor of the trade mark which was being used on the
date of decision of the appeal for more than 26 years. In view of above,
the decisions referred by the defendant has no direct application in the
facts and circumstances of the present case. Learned senior counsel for
the defendant has argued that registrations obtained by the plaintiffs
contain various contradictory statements about the user of the mark,
therefore, in view of the statements made by the plaintiffs in the Trade
Marks Office, the user from the year 1994 should not be considered.
Since the plaintiffs have filed their evidence, which clearly indicates
that the name of the plaintiffs is being used from the year 1994, no one
can deny the said advertisement published in the well known newspaper
like Hindustan Times, New Delhi Edition dated 15.09.1994, which is
available at Page-132 of the documents filed by the plaintiffs. Similar
advertisements have been published from time to time under the name
G. D. Goenka Public School and their activities from time to time.
55. In the case of Ric Products Corpn's case (supra), the
injunction was not granted in the case of passing off because of the
reason that the court felt that the two names Rich's with topping and
Bells with topping are totally different. As the distinctive features are
Rich's and the word Bells, they are totally different and rest of the
portions were totally descriptive. In the case of Johnson & Johnson
and another (supra) the injunction was refused on the reason that the
defendant main trade mark was COMFITALWAYS and the word
STAYFREE was used by the defendant in order to describe their goods.
In Britannia Industries Ltd's case the injunction has been refused on
the reason that the plaintiff has been using the sub brands Good Day,
Little Hearts, 50-50, Tiger and the word Greetings as a range of biscuits
and in a festival pack. The main trademark was Britannia and the court
held that the plaintiff is not able to prima facie establish its claim that
the sub brand ‗Greeting' has acquired the secondary meaning, therefore,
the injunction was not granted by the court.
56. Learned counsel for the plaintiffs on the other hand has
argued that there is no dispute that the defendant might have formed the
Trust for educational purposes but the fact remains, which is admitted
by the defendant, that they have commenced using the name Mohini
Devi Goenka Mahila Mahavidayala in the year 1995 which is
subsequent to the use of the name by the plaintiffs. Learned counsel for
the plaintiffs has referred to the decision of the Division Bench of this
Court in the case of Century Traders vs. Roshan Lal Dagar, AIR
1978 Delhi 250.
57. The general principle of passing off has been discussed in the
case of Lakshmi V. Patel vs. Chetan Bhai 2002(24) PTC 1 which
stated as follows:-
"Para 8. It is common in the trade and business for a
trader or a businessman to adopt a name and/or mark
under which he would carryon his trade or business.
According to Kerly (Law of Trade Marks and Trade
Names/ Twelfth Edition/ para 16.49)/ the name under
which a business trades will almost always be a trade
mark (or if the business provides services/ a service
mark/ or both). Independently of questions of trade or
service mark, however, the name of a business (a trading
business or any other) will normally have attached to it a
goodwill that the courts will protect. An action for
passing-off will then lie wherever the defendant
company's name, or its intended name, is calculated to
deceive, and so to divert business from the plaintiff, or to
occasion confusion between the two businesses. If this is
not made out there is no case. The ground is not to be
limited to the date of the proceedings; the court will have
regard to the way in which the business may be carried
on in the future, and to its not being carried on precisely
as carried on at the date of the proceedings. Where there
is probability of confusion in business, an injunction will
be granted even though the defendants adopted the name
innocently.‖
58. During the course of the arguments, learned counsel for the
defendant has confirmed that no clear evidence has been placed by the
plaintiffs on record in order to show that the plaintiffs have the
knowledge about the use of the said names by the defendant. However,
the fact of the matter is that the said names i.e. Goenka Public School
and Goenka College of Pharmacy and other names have been used since
very long and there are advertisements in the local newspapers and other
evidence by way of prospectus, brochures as well as domain name used
by the defendant. In view of the said evidence and documents placed on
record, one can easily draw the inference that the plaintiffs are supposed
to have the knowledge of the names of the defendant.
Under these circumstances, it appears that the use of the
name Goenka Public School and Goenka College of Pharmacy would
lead to passing off the services as that of the plaintiffs.
Common to the trade/third party use
59. The next contention of the learned counsel for the defendant
is that the word Goenka is common to the trade and no monopoly can be
given to any person being a very common surname. It has also been
alleged that there are various Schools and Colleges in India who are
using their name in which the mark Goenka forms part of it. The
defendant has given the details of various such Schools and Colleges in
the application under Order 39 Rule 4 as well as in the written
submissions. It is alleged that since there are various parties who are
using the said name and even one of the party has used the said name
prior to the plaintiffs, therefore, the injunction under these
circumstances is liable to be vacated.
60. In the case of Corn Products refining Co. Vs. Shangrila
Food Products Ltd., AIR 1960 SUPREME COURT 142(V47) it was
held as under :
―12......Where there are a "series" of marks, registered
or unregistered, having a common feature or a common
syllable, if the marks in the series are owned by different
persons, this tends to assist the applicant for mark
containing the common feature. This statement of the law
in Kerly's book is based on In re : an application by
Beck, Kollar and company (England) Limited [64 R.P.C.
76]. It is clear however from that case, as we shall
presently show, that before the applicant can seek to
derive assistance for the success of his application from
the presence of a number of marks having one or more
common features which occur in his mark also, he has to
prove that those marks had acquired a reputation by user
in the market.‖
61. In the case of Coolways India Vs. Princo Air Conditioning
and Refrigeration, PTC (Suppl) (1) 470 (Del) it was held as under :
―.......What has to be seen is whether the plaintiff has
acquired a reputation, goodwill in a mark which he is
using in trading his goods uninterruptedly for quite some
time and somebody else is attempting to pass off his
goods under that mark. The contention that a plaintiff
himself using usurping or infringing a third party's
registered trade mark is debarred from claiming the relief
of injunction, in my ivew, is a meritless plea. This a
matter between the plaintiff and the party in whose
favour trade mark is registered. Only he can object to it.
It is not for a third person to take up issue for him and
claim protection on that score. It is not disputed by the
defendant that no action for infringement of trade mark
has been initiated against the plaintiff by any of the
parties, in whose name the said trade mark is claimed as
registered. There is no reason why a person, competing
in trade, is allowed to make use the reputation and
goodwill of another person by attaching to his product a
name or description with which he has no natural
association......‖
62. In the case of P.M. Diesels Ltd. Vs. S.M. Diesels, 1993-
PTC-75, it was held as under :
―Next contention raised by learned counsel for the
defendant is that the word Marshal has become common
to the trade of diesel engines in Rajkot and various other
persons are using the trade mark in one form or other as
inasmuch as some are using Airmarshal, Perfect Marshal,
Powermarshal etc. and the defendant is not the only
person who is using the trade mark Sonamarshal only.
The plaintiff, thereforee, cannot claim its trade mark to
be distinctive of its goods or business and no customer is
likely to be confused or deceived on account of this trade
mark. This contention of the learned counsel for the
defendant is also without force. In this connection it is
sufficient to say that under the law it is the right of two
parties before the court which has to be determined and
the court has not to examine the right of other parties. If
some other manufacturers are using or suffixing the word
Marshal on their diesel engines, it is of no consequence.
Furthermore, if the plaintiff has not taken any action
against several other infringements, this does not mean
that the plaintiff has abandoned its trade mark and cannot
challenge the action of the defendant.‖
63. The Plaintiffs place reliance on the following cases to
support his contention that the third party use is not a defence :
―Essel Packaging Ltd. Sridhar Narra & Anr. 2002(25)
PTC 233 (Del)
Para 22. Merely because some other parties or persons
are using the name ESSEL does not provide a
justification to the defendants for using the said name as
the plaintiff has been using this name much prior to the
adoption of this name by the defendants and its
widespread use of this name shows that this word has
become synonymous with the business of the plaintiff
and its group companies.
Info Edge (India) Pvt. Ltd. & Am. V5. Shailesh Gupta &
Am. 2002(24) PTC 355 (Del). Para 26
Indian Shaving Products Ltd. & Am. V5. Gift Pack &
Anr. 1998 PTC (18), Para 53 and 53"
64. In the case of Pankaj Goel vs. Dabur India Ltd., 2008(38)
PTC 49 (Del) the Division Bench of this Court has recently held as
under in para 21 and 22:-
―22. As far as the Appellant's argument that the
word MOLA is common to the trade and that variants
of MOLA are available in the market, we find that
the appellant has not been able to prima facie prove
that the said ‗infringers' had significant business
turnover or they posed a threat to plaintiff's
distinctiveness. In fact, we are of the view that the
respondent/plaintiff is not expected to sue all small
type infringers who may not be affecting
respondent/plaintiff's business. The Supreme Court
in National Bell vs. Metal Goods, AIR 1971 SC 898
has held that a proprietor of a trademark need not
take action against infringement which do not cause
prejudice to its distinctiveness. In Express Bottlers
Services Pvt. Ltd. vs. Pepsi Inc. & Ors., 1989 (7)
PTC 14 it has been held as under:-
―....To establish the plea of common use, the
use by other persons should be shown to be
substantial. In the present case, there is no
evidence regarding the extent of the trade
carried on by the alleged infringers or their
respective position in the trade. If the
proprietor of the mark is expected to pursue
each and every insignificant infringer to save
his mark, the business will come to a standstill.
Because there may be occasion when the
malicious persons, just to harass the proprietor
may use his mark by way of pinpricks.... The
mere use of the name is irrelevant because a
registered proprietor is not expected to go on
filing suits or proceedings against infringers
who are of no consequence.... Mere delay in
taking action against the infringers is not
sufficient to hold that the registered proprietor
has lost the mark intentionally unless it is
positively proved that delay was due to
intentional abandonment of the right over the
registered mark. This court is inclined to
accept the submissions of the respondent no. 1
on this point... The respondent no. 1 did not
lose its mark by not proceeding against
insignificant infringers.....‖
65. As a settled principle of law, unauthorized or unconsented
use by other party is no defense.
Delay
66. Lastly the learned counsel for the defendant has argued that
there is a delay on the part of the plaintiffs in bringing the action before
this court. In the case of Midas Hygiene Industries Pvt. Ltd. vs.
Sudhir Bhatia and others, 2004 (Vol.28) PTC 121 relevant paras 5
of the said judgment is as under :
―5. The law on the subject is well settled. In cases of
infringement either of Trade Mark or of Copyright
normally an injunction must follow. Mere delay in
bringing action is not sufficient to defeat grant of
injunction in such cases. The grant of injunction also
becomes necessary if it prima facie appears that the
adoption of the Mark was itself dishonest.‖
67. In the case of Swarn Singh vs. Usha Industries (India) and
Anr., AIR 1986 Delhi Page No.343 (DB) it was held as under :
―There is then the question of delay. Learned counsel for
the respondents had urged that the delay is fatal to the
grant of an injunction. We are not so satisfied. A delay in
the matter of seeking an injunction may be aground for
refusing an injunction in certain circumstances. In the
present case, we are dealing with a statutory right based
on the provisions of the trade and Merchandise Marks
Act, 1958. An exclusive right is granted by the
registration to the holder of a registered trade mark. We
do not think statutory rights can be lost by delay. The
effect of a registered mark is so clearly defined in the
statute as to be not capable of being misunderstood. Even
if there is some delay, the exclusive right cannot be lost.
The registered mark cannot be reduced to a nullity.....
68. In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s India
Stationery Products Co., AIR 1990 DELHI 19 it was held as under :
―................. It was observed by Romer, J. in the
matter of an application brought by J.R. Parkingnon and
Co. Ltd., (1946) 63 RPC 171 at page 181 that ―in my
judgment, the circumstances which attend the adoption
of a trade mark in the first instance are of considerable
importance when one comes to consider whether the use
of that mark has or has not been a honest user. If the user
in its inception was tainted it would be difficult in most
cases to purify it subsequently‖. It was further noted by
the learned Judge in that case that he could not regard the
discreditable origin of the user as cleansed by the
subsequent history.‖
69. In the case of M/s. Bengal Waterproof Lim. Vs. M/s.
Bombay Waterproof Manufacturing Co. AIR 1997 SC 1398 it was
held as under :
―20.........It is now well settled that an action for passing
off is a common law remedy being an action in substance
of deceit under the Law of Torts. Wherever and
whenever fresh deceitful act is committed the person
deceived would naturally have a fresh cause of action in
his favour. Thus every time when a person passes off his
goods as those of another he commits the act of such
deceit. Similarly whenever and wherever a person
commits breach of a registered trade mark of another he
commits a recurring act of breach or infringement of such
trade mark giving a recurring and fresh cause of action at
each time of such infringement to the party aggrieved. It
is difficult to agree how in such a case when in historical
past earlier suit was disposed of as technically not
maintainable in absence of proper relief, for all times to
come in future defendant of such a suit should be armed
with a license to go on committing fresh acts of
infringement and passing off with impunity without
being subjected to any legal action against such future
acts.
70. The Defendant in para 9 at page 7 of I.A. 307/2009, has
named a few institutions which are using the word 'Goenka' in their
name. A perusal of the same list itself establishes that all these
institutions are using their own/full name as the name of their institutes.
Apart from one M/s Goenka College of Commerce whose present actual
status could not be traced till date by the Plaintiffs there is no other
institute on record showing use of the mark/word 'Goenka' per se, prior
to that of the Plaintiffs or even otherwise.
71. In the case of Syncom Formulations Versus SAS
Pharmaceuticals, 2004 (28) PTC 632 (Del), it was held as under :
―Frankly, I do not see the need to multiply citations and
authorities on this subject. Suffice it to say that the
accepted position in law is that delay or laches in
approaching a Court for an injunction in a case of
passing off is not fatal - at best, the plaintiff may not be
entitled to a relief of damages or rendition of accounts,
but he may still be entitled to the grant of an injunction,
even in a case of an honest concurrent user. A defence of
estoppel by acquiescence is to be distinguished from a
defence that by delay the mark has become publici juris.
(Kerly's Law of Trade Marks and Trade Names',
thirteenth edition, page 391 paragraph 13.157). One of
the factors that may tilt the scales in favour of a grant of
a temporary injunction in such cases would be, as
pointed out by McCarthy in ―Trade-marks and Unfair
Competition', the protection required to be given to the
general public who have a right not to be deceived or
confused. This is only a factor to be considered by a
Court and is not an absolute proposition; otherwise, in
cases of acquiescence, it may be interpreted to mean that
the contesting parties have acquiesced in deceiving or
confusing the general public, which obviously cannot be
accepted. Consequently, the contention of learned
counsel for the Appellant based on delay is rejected.‖
72. The delay, if any, for the name used by the defendant of
Goenka Public School, Goenka College of Pharmacy is between 4 to 5
years although the plaintiffs have alleged that there was no knowledge
of the plaintiffs about the use of the said names and the plaintiffs for the
first time came to know about the said names from the advertisement in
the newspaper Hindustan Times dated 11 th November 2008. The
learned counsel for the defendant has not denied that no cogent evidence
has been placed by the defendant in order to establish that the plaintiffs
were having knowledge about the activities of the defendant from the
very beginning. However, the learned counsel for the defendant has
submitted that inference can be drawn about the use of the said names
since the plaintiffs are also in the same activities. The plaintiffs must be
aware about the same. Learned counsel for the plaintiffs during the
course of arguments has argued that even in case of user of the
defendant of the names Goenka Pubolic School and Goenka Girls
College for the last about 4 to 5 years, it is not fatal to this case as the
present suit is also for infringement of trade mark wherein the delay is
immaterial. Learned counsel for the plaintiffs have also argued that
since the activities of both the plaintiffs and defendant have to be
extended in future, therefore, in case the injunction is not granted
particularly against the Goenka Public School and Goenka College of
Pharmacy, there would be total confusion and deception amongst the
public at large.
73. As regard the other names used by the defendant i.e. Mohii
Devi Goenka Mahila Vidayala, Mohini Devi Goenka Girls Mahavidyala
and Goenka Shiksha Avam Shodh Sansthan are concerned, it is an
undisputed fact that the said names are being used from 1995, 1997 and
2000 respectively and admittedly there is a long delay on the part of the
plaintiffs to bring the action against the said names, therefore, the
defendant is entitled to use the same. The other reason for allowing the
use of the said name is that being use of full names, it would not create
any deception.
Balance of convenience
74. Learned counsel for the defendant has also contended that
since the defendant has been extensively using the name for very long,
the balance of convenience does not lie in favour of the plaintiffs and,
therefore, the damages are the appropriate remedy if ultimately the
plaintiffs succeed and the plaintiffs can be sufficiently compensated if
the defendant is permitted to use the same.
75. On the other hand, the learned counsel for the plaintiffs
urged on the point of balance of convenience that :
―The Plaintiffs' sole intention is to protect their rights in respect
of their registered trademark 'GOENKA/G.D. GOENKA'. The
balance of convenience in the present case lies in favour of the
Plaintiffs. Further, the class of customer here is a
school/college going student, who in every possibility can
confuse the Defendant's Institute/School to be associated with
the Plaintiffs. In such a situation, where the very future of naive
and innocent students is at stake, no relief is liable to be
granted to the Defendant. It is pertinent to state herein that on
11.11.2008 an ad was taken out by the Defendant in a national
daily, wherein the Plaintiffs' advertisement was published on
the same page.
In Sun Pharmaceuticals vs. Cipla Ltd. [IA
No.6872/2008 in CS (OS) No. 1073/2008] decided on
3.10.2008 a recent judgment of Delhi High Court, the Ld.
Single was of the view that "if a registered proprietor is entitled
to maintain an action for injunction and found entitled to
injunction, the injunction ought not to be denied for the reason
of the alternate relief of directing accounts to be kept.‖
76. a) As observed in Para 73 of my judgment, in order to
maintain the balance between the parties and considering the overall
situation of this matter, I am of the considered view that the
defendant is entitled to use the names Mohini Devi Goenka Mahila
Mahavidyala, Mohini Devi Goenka Girls B.Ed College, Mohini Devi
Goenka Girls Mahavidayala and Goenka Shiksha Avam Sodh
Sansthan.
b) Regarding Goenka Girls School there is no evidence or
pleading by the defendant about the use of the said name except that
the said name is shown in the defendant's website, therefore, the ex
parte ad interim injunction would continue against the use of the said
name during the pendency of the suit.
c) The ex parte ad interim injunction shall also continue against
the defendant for use of the name Goenka Public School and Goenka
College of Pharmacy as it leads to infringement of the registered
trade mark of the plaintiffs and passing of their goods as that of the
plaintiffs. However, the defendant is permitted to use both the names
in relation to their services in case the defendant shall use the full
name Mohini Devi Goenka Public School/ Mohini Devi Goeka
College of Pharmacy.
d) The defendant is granted four months time to discontinue the
use of the name Goenka Public School and Goenka College of
Pharmacy and the ex parte ad interim order would continue against
the defendant after the expiry of the said period.
77. The applications are disposed of in the above terms. Any
expression of opinion made in the above said order is prima facie and
will not affect the merits of the case of the parties.
MANMOHAN SINGH, J
FEBRUARY 24, 2009
sa/sd
