St. Stephens College, Delhi vs St. Stephens College Alumni ...
2011 Latest Caselaw 4828 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                     Judgment Reserved on:   26.09.2011
                      Judgment Pronounced on: 28.09.2011

+ CS(OS) 2364/2011

ST. STEPHEN'S COLLEGE, DELHI               ..... Plaintiff
                 Through : Mr. Suhail Dutt, Sr. Adv.
                           with Mr.K.Sultan Singh, Mr.
                           V.Hari Pillai, Mr. Manish
                           Kumar Saryal and Ms.Susha
                           Unni, Advs.
                      versus

ST. STEPHEN'S COLLEGE ALUMNI ASSOCIATION & ORS
                                        ..... Defendants
                 Through : Mr. Upamanyu Hazarika, Sr.
                           Adv. with Mr.Sachin Datta,
                           Ms.Dharitry Phookon, Ms.
                           Gayatri Verma and Mr.Paul
                           Roy Panski, Advs.for D-1.
                           Mr. Pinki Mishra, Sr. Adv.
                           with Mr.Sachin Datta, Adv.
                           for D-6 & 7.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

Whether Reporters of local papers may be allowed to see the judgment? Yes.

2. To be referred to the Reporter or not? Yes.

3. Whether the judgment should be reported Yes. in Digest?

V.K. JAIN, J

IA 15304/2011(O.39 R.1 & 2 CPC)

1. The plaintiff college is a society registered under

Societies Registration Act and is a constituent college of

University of Delhi. The plaintiff is a leading educational

institution, offering degrees to both undergraduate as well

as postgraduate students. The plaintiff college came to be

founded on 1st February, 1881. The plaintiff has sponsored

a number of societies/clubs, including St. Stephens College

Alumni Association, which has been in existence for last 50

years and is an integral part of the plaintiff society. It is

alleged that St. Stephen‟s College Alumni Association on

account of their continuous extensive and uninterrupted

use have come to be associated with plaintiff and is alumni

association. Defendant No. 1 has been formed recently and

registered under Societies Registration Act. While obtaining

registration, defendant No. 3 filed an affidavit stating

therein that there is no society with an identical or

resembling name. This affidavit was false to the knowledge

of defendant No. 3. Defendant No. 1-society had been

founded without any permission from the plaintiff and it is

alleged that this is a mala fide act on account of the

invitation which the previous principal of the plaintiff had

extended to defendant No. 6 to represent the alumni in the

Governing Body, having been withdrawn in May, 2011. A

cease and desist notice dated 5th September, 2011 was sent

by the plaintiff to the defendants, requiring them to stop

using the names "St. Stephens College and/or its

derivatives/logo, College Crest and motto. There has

however been no response from the defendants who have

also created a website http://ststephensalumni.co.in

Defendant No. 1 has also provided a hyperlink from its

website to the website of the plaintiff www.ststephens.edu

and it has also been using the College Crest, copyright in

which vests solely in the plaintiff since the year 1926. It is

alleged that by using the name St. Stephens Alumni College,

defendant No. 1 is passing off its activities as those of the

alumni association of the plaintiff and is misleading the ex-

students of the plaintiff into joining it, believing it to be the

recognized and authorized alumni association of the

plaintiffs. Defendant No. 1 is also collecting subscription,

gifts, donations, etc using the name adopted by it. The

plaintiff has sought injunction restraining the defendants

from using the name St. Stephens College Alumni

Association as also the college crest, motto and logo and

from representing themselves as an alumni association of

the plaintiff. They have also sought injunction, restraining

the defendants from receiving any subscription or collecting

any donations or grant for the membership of defendant No.

1-society. They have sought a further injunction against

defendant No. 1 interfering in the association, management

and affairs of the plaintiff college.

2. It can hardly be disputed that if a company or a

society adopts a name, which is so similar to the name of

the plaintiff as is likely to deceive or to cause confusion, a

Civil Court has jurisdiction, under common law, to grant an

injunction against use of such a name by the defendant, so

as to ensure that the defendant is not able to pass off its

business and activities as those of the plaintiff and is not

able to encash upon the goodwill and reputation which the

plaintiff-company/society enjoys. In such a case, it would

also be in public interest to grant injunction against use of a

name which is likely to deceive or cause confusion so as to

protect the interest of the persons who are likely to be

confused on account of similarity of the two names. It is

true that no person has an exclusive right in a particular

name or title except to the extent such a right is conferred

by Statutes such as Trademarks Act and Companies Act,

but, a person carrying business or other activity under a

particular name is entitled to seek protection against

adoption and use of such or similar name by another

person where he is able to satisfy the Court that a damage

has been caused or is likely to be caused to him or his

reputation on account of the confusion which is likely to be

caused in the mind of the public due to of the same or

similar name by another person.

3. When this matter came up for hearing for the first

time on 23rd September, 2011, there was representation on

behalf of the defendants. Arguments on the application were

heard on that day as well as on 26th September, 2011.

During the course of arguments, the learned counsel for the

defendants very fairly stated that the defendants are

agreeable not to use the name St. Stephens College Alumni

Association and are ready to use any of the following four

alternative names, suggested by them; (a) Old Stephanian‟s

Association; (b) Stephanians; (c) Association of

Stephanians‟s (d) Association of Old Stephanians. He also

stated that defendant No.1 is ready to put a disclaimer on

its website stating therein that it is not the

recognized/authorized alumni association of the St.

Stephens College, Delhi, it has no connection with St.

Stephens College, Delhi or its official/authorized alumni

association. This, however, was not acceptable to the

plaintiff, who maintained that the defendants despite being

former students of St. Stephens College, Delhi cannot use

the words "St. Stephens College" "St. Stephens" or

"Stephanians".

4. Prima facie, it appears to me that use of the name

Association of Old Stephanians by defendant No. 1, coupled

with the disclaimer or the lines proposed by the learned

counsel for the defendants would ensure that no ex-

Stephanian is confused as to which is the officially

recognized/approved alumni association of St. Stephens

College, Delhi and there would be no reasonable possibility

of any ex- Stephanians mistaking defendant No.1-society as

the official/recognized alumni association of St. Stephens

College, Delhi.

It is not in dispute that defendants 2 to 8 are

former students of St. Stephens College, Delhi. This is a

fundamental right, guaranteed by Article 19 (1)(c) of the

Constitution to every citizen, including those who have

studied in St. Stephens College, to form an association.

Hence, defendants 2 to 8 were well within their

constitutional right in forming an association even if that

association is to consist wholly of ex- Stephanians. If they

have a right to form an association, they also have to

necessarily give a name to it. During the course of

arguments, I was informed that the membership of

defendant No. 1 is open only to those who have been the

students of St. Stephens College, Delhi. Hence, there should

be no valid objection to their using the word stephanian as

a part of the name of the society since being an old

stephanian is the only common link amongst the members

of the society. It is their having been students of St.

Stephens College, Delhi which has brought them together

and prompted them to form defendant No.1 society.

Everyone, who has studied at St. Stephens College, Delhi

can claim, as a matter of right, to describe himself as a

stephanian and this right comes to him on account of

having been a student of the college. Therefore, use of the

word stephanian as a part of the name of the society cannot

be objected at all.

In a matter of passing off what is relevant is

whether there is any likelihood of the defendant being able

to pass off its goods/services as those of the plaintiff. The

name being used by the plaintiff for its alumni i.e. St.

Stephens College Alumni Association and the name

„Association of Old Stephanians‟, cannot be said to be

similar, nearly similar or even resembling each other. There

is no use of the expression St. Stephens College in the name

"Association of Old Stephanians". The name does not

convey an impression that it is the official/approved by

College alumni association of St. Stephens College. The

impression it conveys is that this is an association formed

by those who have, in the past, been students of St.

Stephens College.

5. The Court has to keep in mind that the

membership of defendant No. 1-Assocaiation is open only to

those who have been students of St. Stephens College,

Delhi. Considering the background, education, level of

awareness and credentials of those who have studied at St.

Stephens College, Delhi, it is most unlikely that they can be

misled into believing that Association of Old Stephanians is

the officially sponsored/recognized/affiliated alumni

Association of St. Stephens College, Delhi. Added to this

would be the disclaimer on the website of defendant No. 1

which would convey in no uncertain terms that this

association has no link or connection of any nature

whatsoever either with St. Stephens College or with its

official alumni association. Also, nothing prevents the

plaintiff-society from putting an appropriate notice on its

website with respect to defendant No. 1-society and

addressing individual communications to all the ex-

students informing them that defendant No. 1-association

has neither been recognized by it nor is this, in any manner,

affiliated with the college or its official alumni association.

6. Of course, if defendant No. 1 has to change its

name, it has necessarily to change the domain name being

used by it and it cannot continue to use the name

saintstephens.co.in. The name St. Stephens College Alumni

Association cannot be used by the defendants for any

purpose at all, including for the promotional promotion and

expansion of defendant No. 1-society. Also, the defendants

have no right to use the official crest/logo and motto of St.

Stephens College on their website, stationery or in any other

manner.

7. The learned counsel for the plaintiff has relied

upon International Association of Lions Clubs vs.

National Association of Indian Lions & Ors, 2006 (33) PTC

79 (Bom)., U. Srinivas Malliah and another v. Krishna

Kumar Chatterjee and Ors. AIR 1952 Calcutta 804, Ruston

& Hornsby Ltd. vs. The Zamindara Engineering Co. AIR

1970 SC 1649, interim order dated 06th June, 2002 passed

by this Court in Suit No. 1061/2002 President & Fellows

of Harvard College vs. Mr Harbans S. Bawa.

8. In International Association of Lions Clubs

(supra), the plaintiff Association of Lions Clubs was set up

for organizing, chartering and supervising various service

clubs known as "Lions Clubs", to co-ordinate the activities

and to standardize the administration of these clubs. The

plaintiff was using the mark Lion, Lions and Leo in relation

to their services and their club along with the emblem mark

which had picture of lion on it. Defendants adopted the

words lions and were also found using an emblem similar to

that of plaintiffs. They were also using the domain name

www.indianlions.org.bizli.com. Defendant No. 1-society was

describing itself as a national society of Indian Lions. It was

contended on behalf of the defendant that it was a

registered society and its Memorandum and Articles

permitted it to use the word Lion, Lioness and Leo and it

was not open to the plaintiff to seek injunction restraining

them from using the said words as a name of a society

which was permitted by Rajasthan Cooperative Societies

Act. The contention, however, was rejected holding that

mere registration under Companies Act or under the

Cooperative Societies Act does not confer any right to use

the name of such a nature which is also a trade name or

organization name of some other person. Since the

defendants are no more insisting on the use of the name

under which defendant No.1-society has been registered

and consequently there is no use of the expression "St.

Stephens College", or even "St. Stephens" in the new names

proposed by them and also considering the fact that the

membership of defendant No. 1 is only open to those who

are ex- Stephanians, this judgment can be of no help to the

plaintiff before this Court.

In President & Fellows of Harvard College

(supra), the defendant who was an alumni of Harvard

Business School had without permission of the plaintiff

established an institution by the name of Harvard Business

Research and Education Foundation. The defendant was

using the letter head which showed the crest of Harvard

Business School with a logo/seal in which one of the several

registered shields of the plaintiff had been used. This Court

passed an ex parte interim order restraining the defendant

from using or passing off the trade name Harvard or fro

acting or dealing under the trade mark/name of the plaintiff

or any other mark/name which could be similar or

deceptively similar to the trade mark of the plaintiff as also

from offering any educational material/publication under

the name Harvard/Harvard Business School. It would thus

be seen that the defendant in that case was using the word

Harvard which is a name that had come to be identified with

Harvard College, as a part of the name of an institution set

up by him for imparting education. The defendant was

attracting prospective students by use of the slogan "If you

can‟t go to Harvard--we bring Harvard Education to you".

He had obtained Harvard teaching material and intended to

use that material as a part of its course. The Court felt that

if the defendant was not restrained from doing so, the public

at large was likely to be drawn in by the apparent

misrepresentation of the defendant. The facts of the case

before this Court are clearly distinguishable since neither

the defendants are now insisting on using the name St.

Stephens College or even St. Stephens as a part of the name

of defendant No. 1 nor are they seeking to exploit the name

of the plaintiff college for a commercial purpose. They

being the former students of St. Stephens College, Delhi,

they need to use some such word as would indicate that

they are a society formed by the persons who have been the

students of St. Stephens College, Delhi. This becomes more

necessary considering the fact that the membership of

defendant No. 1-society is open only to those who have been

the students of St. Stephens College, Delhi.

In Ruston & Hornsby Ltd. (supra), which was a

case of infringement, the defendant was found using the

word "RUSTAN" of the plaintiff and the "RUSTAM" of the

defendant and, therefore, it was held that the use of the

word RUSTAM by the respondent constituted infringement

of the appellant's trade mark "RUSTON" being deceptively

similar. The Court was of the view that mere addition of

word India to the trademark of the respondent was of no

consequence in such a use.

During the course of the judgment, the Court

observed that the gist of passing off action is that A is not

entitled to represent his goods as goods of B and it is

enough if there is probability of confusion and no case of

actual deception or actual damage needs to be proved. As

noted earlier, this is not a case of the infringement.

Moreover, use of the name Association of Old Stephanians,

to my mind, ensures that there is no probability of ex-

stephenians getting confused and mistaking defendant No.

1-society as the official alumni of St. Stephens College.

In U. Srinivas Malliah (supra), it was found that

the defendants had applied for registration for a society

under the name of Indian National Congress. It was noted

by the Court that Indian National Congress was an old

organization which is an institution having worldwide

reputation and had one crore members with branches in

various parts of the country. It was also notices that

substantial portion of funds of Indian National Congress

came by way of donations and subscriptions. In these

circumstances, the Court felt that there was every

possibility of a confusion in the mind of the public to the

effect that the society of the defendants was a branch of and

was sponsored by Indian National Congress. The Court felt

that if the society proposed to be set up by the defendants

became involved in pecuniary difficulties or was guilty of

any misdeeds the same was likely to reflect discredit upon

Indian National Congress. It was also felt that many

persons may get enrolled as member of the proposed society

with a feeling that they will get all the benefits and

advantages of congress membership, without having to pay

any subscription for the membership of the Society and

this, in turn, was likely to deprive Indian National Congress

of the subscriptions which these persons would have paid

had they become its members. In that case, the defendants,

when asked as to how they had taken a fancy for this name

for their Society, had no explanation to offer and the Court,

therefore, felt that their intention was to injure and cause

damage to the plaintiffs which by itself sufficient to grant

injunction. Again, the facts of the case before this Court

being altogether different and there being no reasonable

likelihood of the persons, who can become members of

defendant No. 1-society becoming its members under a

mistaken belief that they are becoming member of the

official alumni association of St. Stephens College, Delhi,

there is no reasonable likelihood of defendant No. 1 passing

off its services as those of the official alumni association of

the plaintiff.

9. The learned counsel for the plaintiff has also

submitted copies of the decision of this Court in M/s

Helpage India, vs. M/s Helpage Garhwal, AIR 2001 Delhi

499, Dr. Reddy's Laboratories Ltd. vs. Reddy

Pharmaceuticals Limited 2004 (76) DRJ 616, British

Diabetic Association v. Diabetic Society Ltd and Others

(1995) 4 All England Law Reports and Burge v.Haycock

(2002) RPC 28. However, since these judgments were not

referred during arguments and are otherwise

distinguishable on facts, I need not analyze them. Suffice it

to note that in the case of M/s Helpage India (supra), the

name of the defendant was almost identical to that of the

plaintiff, being Helpage Garhwal as against the name

Helpage India of the plaintiff, whereas in the case of Dr.

Reddy's Laboratories Ltd. (supra), the plaintiff was

marketing its drugs under the trade name Dr. Reddy‟s

whereas the defendant was using the trademark Reddy

claiming that it was entitled to use the trademark Reddy

since its Managing Director was one Mr Reddy.

10. During the course of arguments, it was contended

by the learned counsel for the defendants that the name St.

Stephens College is being used by a number of institutions,

including St. Stephen‟s Collge, Uzhavoor, Kottayam, Kerala,

St. Stephen‟s College Pathanapuram, Kerala, St. Stephens

College of Education for Women, Madurai Address: Hosanna

Mount, Kadavur, Chatrapatti Post, New Natham Road,

Madurai, St. Stephen College of Teacher Education,

Kanyakumari Address: Velayudha, nagar, Kollemcode, P.O.

Kanyakumari, St. Stephens School, Pitampura, Delhi, St.

Stephen‟s Higher Secondary School, Dahod, Gujarat, St.

Stephen‟s School, North Kolkata, Kolkata, St. Stephen‟s

School, Sector 45 B, Chandigarh, as an essential part of

their name and no action has been taken by the plaintiff to

stop user of such name by those institutions, which

amounts to the plaintiff waiving its right to exclusive use of

the name St. Stephens College and also indicates that the

defendants are being targeted for using the name adopted

by them, only because they have criticized the functioning of

the present principal of the college. This, however, was

refuted by the learned counsel for the plaintiff, who stated

that all these institutions are using the expression St.

Stephens College as a part of their name with the consent of

the plaintiff since they are being managed/run by the same

persons who are managing St. Stephens College, Delhi. It

would be pertinent to note that St. Stephens College is a

society registered under Societies Registration Act. When

asked as to whether the plaintiff-society had passed a

resolution authorizing these institutions to use the name St.

Stephens College as a part of their name or had otherwise

issued any written authorization to them in this regard, no

such resolution/authorization was claimed by him. I,

however, need not delve further into this aspect of the

matter since the defendants have agreed to change the

name of defendant No. 1-society.

For the reasons given in the preceding paragraphs,

defendant No. 1 is restrained from using the name St.

Stephens College Alumni Association. It is also restrained

from using the official crest, logo or motto of St. Stephens

College, Delhi as also the domain name

http://ststephensalumni.co.in. Defendant No. 1, however,

will be entitled to use the name „Association of Old

Stephanians‟, subject to the condition that it will display an

appropriate disclaimer on its website, as and when it is

started under a new domain name, that it is not the

official/approved/recognized alumni association of St.

Stephens College and it has no connection or affiliation

either with St. Stephens College, Delhi or St. Stephens

College Alumni Association.

The application stands disposed of in terms of this

order.

CS(OS) 2364/2011

Written statement be filed within the prescribed

period. Replication can be filed within four weeks.

List before Joint Registrar on 18th November, 2011

for admission/denial of documents and before Court for

framing of issues on 04th April, 2012.

(V.K. JAIN) JUDGE SEPTEMBER 28, 2011/bg