Triumphant Institute Of ... vs Time Coaching/Education & Ors.
2014 Latest Caselaw 2165 Del

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                             Judgment dated 30.04.2014

+                         CS(OS) 664/2013

       TRIUMPHANT INSTITUTE OF
       MANAGEMENT EDUCATION                    .......... Plaintiff
                 Through : Mr.Pravin Anand and Ms.Saukshmya,
                                                             Advs.

                                 versus
       TIME COACHING/EDUCATION & ORS.                       ..... Defendants
                  Through : None

       CORAM:
              HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (Oral)

1. Plaintiff has filed the present suit for permanent injunction

restraining violation and infringement of rights in the trademark

T.I.M.E., passing off, unfair competition, dilusion, rendition of

accounts, delivery-up etc. against the defendants.

2. Summons in the suit and notice in the application under Order

XXXIX Rules 1 and 2 were issued on 10.04.2013. On an

application for appointment of Local Commissioners, filed by the

plaintiff, five Local Commissioners were also appointed in the

matter. Counsel for defendants no. 3 and 4 entered appearance on

11.07.2013. Despite service, none appeared for defendant nos. 1

and 2 who were proceeded ex parte on 11.07.2013 on which date

fresh summons were also issued to defendant no. 5. Written

statement was filed on behalf of defendant nos. 3 and 4 on

23.09.2013 and admission/denial of documents was completed

vide order dated 21.01.2014. Subsequently, the matter was

referred for mediation between the plaintiff and defendant nos.3

and 4 to the Delhi Court Mediation and Conciliation Centre

wherein amicable settlement was arrived at between the parties.

On 11.03.2014, the suit was decreed in favour of the plaintiff and

against defendant nos. 3 and 4 in terms of the Settlement

Agreement marked as Exhibit C-1. Ex parte evidence of plaintiff

was closed on 25.04.2014.

3. Plaintiff has filed ex-parte affidavit by way of evidence of Mr. Sai

Kumar Swamy, PW-1, the Director and the authorized signatory

of the plaintiff company. The ex-parte affidavit by way of

evidence of PW-1 has been marked as Ex. PW-1/A.

4. In his affidavit, PW-1 has deposed that the plaintiff is the

renowned owner of comprehensive chain of coaching institutes

and training centers running all over India under the name and

style of „T.I.M.E‟ which has been derived as an acronym of their

Company name i.e. „TRIUMPHANT INSTITUTE OF

MANAGEMENT EDUCATION‟.

5. PW-1 has further deposed that Plaintiff is the registered owner and

lawful proprietor of the trademark as well as logo - „T.I.M.E

Triumphant Institute of Management Education‟ in class 41 and

has over 232 offices in 116 towns and cities across the country and

offers training for national level exams such as CAT, NIMCET

and CLAT, IIT Foundation program aimed at students of the 8th,

9th and 10th standards, and the IIT JEE Program (aimed at 11th and

12th standard students). PW-1 has further deposed that the plaintiff

provides training for state-level exams like the ICET in Andhra

Pradesh, the Maharashtra CET and other local exams in different

states. He has further deposed that in addition to the national and

state level programs, the Plaintiff also caters to aspirants looking

at higher education abroad and offers training for international

tests such as the GRE and GMAT.

6. Mr. Sai Kumar Swamy , PW-1 has further deposed that the

Plaintiff no longer sees itself as being limited to the arena of

„coaching‟ but has expanded in the much broader space of

„education & training‟. It has further been deposed by PW-1 that

the Plaintiff‟s institute „T.I.M.E Triumphant Institute of

Management Education‟ is constantly diversifying & entering new

areas of imparting education and it has successfully forayed into

the pre-school segment as well with T.I.M.E. Kids chain of

schools in the year 2008 which currently has 122 pre-schools

across the 31 cities.

7. It has further been deposed by PW-1 that the Plaintiff‟s activities

have grown over the last twenty two years and the said mark has

acquired huge reputation and goodwill in the field of

training/coaching services in India. He has further deposed that

the Plaintiff‟s coaching institute being one of India‟s top coaching

institutes, trains more than 1,50,000 aspirants of various

competitive exams every year and is regarded as one of the best

coaching institutes in India for selection in various competitive

examinations including the following:

 CAT (National entrance examination for MBA, IIMs) ICET (Common entrance examinations held for admissions to MBA and MCA courses in Andhra Pradesh)  XAT (Xavier Aptitude test Jamshedpur)  CMAT ( Common Management Admission Test. Common entrance examination held for admissions to MBA courses all over India)

8. PW-1 has further deposed that apart from MBA/MCA, Plaintiff

also offers coaching and preparation for variety of other

examinations like engineering/medical entrance examinations,

IIT-JEE, BBA/BCA entrance examinations etc.

9. It has further been deposed by PW-1 that the plaintiff has a brand

turnover of approximately Rs. 240 Crores. The details of

Plaintiff‟s turnover since last six years is reproduced below:-

                        FINANCIAL YEAR           BRAND TURNOVER
                                                 AMOUNT (in Crores)

10. PW-1 has also deposed that a copy of Chartered Accountant

certificate detailing the Plaintiff‟s turnover in the Year 2010-2011

and the Chartered Accountant Certificate indicating the

promotional/advertising expenditure of the Plaintiff Company

(and not the brand) in the financial year 2010-2011 are exhibited

as Exhibit PW1/3 and Exhibit PW1/4 respectively.

11. PW-1 has further deposed that the Plaintiff has been advertising its

coaching centers since the year 1992 extensively all over the

country including by way of publication in various local

newspapers and national dailies. The said advertisements of the

Plaintiff; T.I.M.E. Triumphant Institute of Management Education

are not only for advertising the coaching centers under the said

name but also to invite prospective franchisees from various parts

of the country. Copies of various press clippings and

advertisements of the Plaintiff have been exhibited as Exhibit

PW1/5 and original Corporate Brochures of the Plaintiff have

been exhibited as Exhibit PW1/7.

12. It has further been deposed by PW-1 that the trademark „T.I.M.E‟

was coined by the Plaintiff during its inception in 1992 and has

been continuously used since then till date in respect of its service

of education and training primarily falling in class 41. He has also

deposed that the public at large associate the mark „T.I.M.E.

Triumphant Institute of Management Education‟ with the Plaintiff

and therefore, the mark having earned enormous amount of

goodwill and reputation is entitled to high degree of protection.

He has further deposed that the mark „T.I.M.E. Triumphant

Institute of Management Education‟ in both word and logo form

stands registered in the name of the Plaintiff herein in class 41.

Details of the Plaintiff‟s trade mark registrations as well as

pending applications are reproduced below:-

        S. No     Trademark                  Reg. no. /App.       Class
                                            No.


                 Institute of Management
                 Education (word mark)


                 Institute of Management
                 Education (Logo)

Copy of Trademark Registration Certificate and Online Status

along with the Journal Advertisements for the T.I.M.E. formative

marks of the Plaintiff have been exhibited as Exhibit PW1/ 9.

13. PW-1 has further deposed that the Plaintiff‟s T.I.M.E coaching

institutes owing to the enormous reputation and goodwill acquired

all over India have become one of the top coaching institutes in

India for management and other courses and all students aspiring

for the competitive exams are aware of the Plaintiff‟s coaching

centre.

14. It has further been deposed by PW-1 that the Plaintiff has chosen

to make its online services available by virtue of domain name

www.time4education.com and this has been categorically done to

enable the prospective students/franchisees to get exclusive

information about the Plaintiff as desired. He has also deposed

that the said domain name was registered in the name of T.I.M.E.

Pvt. Ltd. since August 25, 2000 which belongs to the Plaintiff and

the website is fully operational. Internet printouts of the Plaintiff‟s

website www.time4education.com have been exhibited as Exhibit

PW1/12.

15. PW-1 has further deposed that the mark due to its long and

continuous use has acquired the status of the well known mark

under Sections 11(6) and 11(7) of the Trademarks Act 1999 and

the public at large immediately connects and associates the mark

and name T.I.M.E with the Plaintiff‟s educational and

training/coaching services.

16. Mr. Sai Kumar Swamy, PW-1 has further deposed that the said

trade mark/ service mark has been continuously, extensively, and

uninterruptedly used by the Plaintiff in respect of the educational

services provided by them since 1992. He has further deposed that

the aforesaid mark of the plaintiff symbolizes in itself a mark of

quality and has become synonymous with high degree of

excellence.

17. PW-1 has further deposed that the defendants are engaged in

providing educational/training services for CAT, MAT, IIT-

JEE/ISEET/ AIEEE /State Level Exam, GOVT Jobs/Medical

entrance exams in Gorakhpur, Lucknow and Azamgarh under the

impugned mark/name/trading style/trade name TIME/TIMES. He

has further deposed that the Defendant No. 1 is a coaching

institute running under the name TIME

COACHING/EDUCATION whereas defendant No. 2 is one of the

owners of defendant No. 1 and defendants No. 1 and 2 own and

run the website under the impugned domain name

www.timeforedu.com. Coloured printouts of Defendant‟s no.1

website have been exhibited as Exhibit PW1/14. Printout from

the WHOIS database of the Defendant No. 1 website

www.timeforedu.com has been exhibited as Exhibit PW1/15.

18. PW-1 has further deposed that at the time of the institution of the

suit, the website of the Defendants was an active website

promoting the services of the defendants in such a manner that any

normal internet user would presume that the Defendants are

connected with the Plaintiff due to the use of the name/mark

TIME by the defendants. He has further deposed that on bare

perusal of the impugned website, confusion is inevitable as to their

origin because the domain names used by the Defendant No. 1 &

2 are identical to the mark of the Plaintiff. Registration details of

the domain names of the plaintiff and defendants are provided

below:

        Plaintiff‟s Domain name -      Registered    Registered in Valid
                                       since-        the name of upto      -
        www.time4education.com         August        T.I.M.E. Pvt. August
                                       25, 2000      Ltd.          25, 2018
        Defendant No. 1 & 2‟s Registered Registered                 in Valid
        Domain name -                  since-        the    name    of upto     -
                                       August        PrivacyProtect August
        www.timeforedu.com
                                       29, 2012      .org               29, 2013

19. PW-1 has further deposed that the registration of the domain name

www.timeforedu.com by the defendants is completely dishonest,

illegal and mala fide with a view to make monetary gain out of the

Plaintiff‟s goodwill and reputation considering that the plaintiff is

the most well recognized player in the filed of education and

training services in India and enjoys enormous goodwill and

reputation.

20. It has further been deposed by PW-1 that the defendants No. 1 &

2, due to mala fide adoption and subsequent conduct are liable to

pay penal damages.

21. PW-1 has further deposed that defendants No. 1 & 2 are running

the coaching classes under the mark/name TIME with a mala fide

intention to encash upon the goodwill and reputation of the

Plaintiff and to pass off their services as those of the plaintiff and

that such a use has caused loss to the Plaintiffs both by way of

monetary loss as well as by way of dilution of their brand and

hence, it is a fit case for the grant of pecuniary damages to the

Plaintiff.

22. I have heard counsel for the Plaintiff and carefully perused the

documents which have been placed on record along with the

affidavit by way of evidence of PW-1. Plaintiff has proved the

copy of Trademark Registration Certificate and Online Status

along with the Journal Advertisements for the trademark T.I.M.E.

used by the plaintiff which have been exhibited as Exhibit PW1/

9. Plaintiff has also proved the use of its domain name

www.time4education.com since August, 2000 which has been

exhibited as Ex. PW-1/12. Plaintiff has also proved the copy of

Charted Accountant certificate of the details of the Plaintiff‟s

turnover in the Year 2010-2011 and the Chartered Accountant

Certificate indicating the promotional/advertising expenditure of

the Plaintiff Company (and not the brand) in the financial year

2010-2011 which have been exhibited as Exhibit PW1/3 and

Exhibit PW1/4 respectively, to prove the heavy turnover that the

plaintiff has been generating under its trademark "T.I.M.E." due to

high quality of educational services provided by them. Plaintiff

has also relied upon the copies of various press clippings and

advertisements of the Plaintiff which have been exhibited as

Exhibit PW1/5 and original Corporate Brochures of the Plaintiff

which have been exhibited as Exhibit PW1/7 to prove the vast

scale on which plaintiffs have advertised their brand over a period

of years and the enormous expenses incurred by the plaintiff in

advertising/promoting its brand.

23. The local commissioner who visited the premises of defendant

no.2 has also filed his report, wherein he has stated that a board

outside the premises of defendant no. 2, bearing the mark TIME

was found. Further, on being questioned about the other branches

and institutes being run by the name of TIME, the Defendant No.

2 stated that initially he was a partner with EDU TIMES

YOUTHZ Pvt. Ltd., i.e. Defendant No. 3. It was further stated by

Defendant no. 2 that he had left the partnership with EDU TIMES

YOUTHZ Pvt. and now he independently runs classes under the

name "TIME for education foundation"

24. Section 2 (1) (zg) of the Trade Marks Act, 1999 defines "well-

known trade mark", in relation to any goods or services as a mark

which has become so to the substantial segment of the public

which uses such goods or receives such services that the use of

such mark in relation to other goods or services would be likely to

be taken as indicating a connection in the course of trade or

rendering of services between those goods or services and a

person using the mark in relation to the first-mentioned goods or

services.

25. In the case of Tata Sons Ltd v Manoj Dodia and Ors. reported at

2011(46)PTC244(Del), following observations were made by

another bench of this court with respect to the factors that ought to

be looked into while considering what constitutes a "well-known

mark":

"13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties;

(ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand."

[Also See Rolex S A v Alex Jewellery (P) Ltd. reported at 2009 (41) PTC 284 (Del)].

26. On the basis of the documents placed on record, the plaintiff has

been able to establish that the Plaintiff is the registered owner and

lawful proprietor of the trademark as well as logo - „T.I.M.E

Triumphant Institute of Management Education‟, and offers

training for national level exams such as CAT, NIMCET and

CLAT, IIT Foundation program etc. and also caters to aspirants

looking at higher education abroad and offers training for

international tests such as the GRE and GMAT. Plaintiff has also

established that the Plaintiff‟s T.I.M.E coaching institutes owing

to the enormous reputation and goodwill acquired by them all over

India, have become one of the top coaching institutes in India for

management and other courses and all students aspiring for the

competitive exams are aware of the Plaintiff‟s coaching centre.

Further, the plaintiff has also been able to show that the plaintiff

has been advertising its coaching centers since the year 1992

extensively all over the country including by way of publication in

various local newspapers and national dailies and have incurred

humongous expenses in advertising/promoting their services under

the said trademark. The plaintiff has also been able to establish

that the trademark „T.I.M.E‟ was coined by the Plaintiff at the

time of its inception in the year 1992 and has been continuously

used by the plaintiff since then till date in respect of its service of

education and training. Plaintiff has further established that the

mark „T.I.M.E‟ due to its long and continuous use has acquired the

status of a well known mark under Sections 11(6) and 11(7) of the

Trademarks Act 1999 and the public at large immediately

connects and associates the mark and name T.I.M.E with the

Plaintiff‟s educational and training/coaching services and

therefore, the mark having earned enormous amount of goodwill

and reputation is entitled to high degree of protection. Also,

plaintiff has depicted how online services are being made

available by them through their registered domain name

www.time4education.com which was registered in the name of

T.I.M.E. Pvt. Ltd. in August 25, 2000 and which is also entitled to

protection against infringement.

27. In the case of Evergreen Sweet House Vs. Ever Green and Ors.

reported at 2008 (38) PTC 325 (Del), it was observed as under:

"15. A mark, is said to be deceptively similar to another (Section 2(1) (h), Trademarks Act, 1999) if it so nearly resembles that other mark as to be likely to deceive or cause confusion. Section 29(1) deals with a situation where the defendant uses a mark, which is identical or deceptively similar to that of the plaintiff, in respect of the same goods or services, and in such manner that it is likely that such use is taken as being an use as a trademark. This amounts to infringement. To fall within Section 29(1), the defendant's use of the mark must be so that it is likely that the public assumes that the said mark is used as a trademark. Section 29(2) deals with three

situations; one where the defendants mark is identical to that of the plaintiff and in respect of similar goods. Two, where the marks are similar and in respect of goods which are identical or similar. Three, the marks as well as the goods are identical. Infringement does not take place if only one of the three ingredients are satisfied; the plaintiff has to prove that use by the defendant is likely to cause confusion on the part of the public or is likely to have an association with the registered mark."

[Emphasis Supplied]

28. Having regard to the evidence on record and the report filed by the

Local Commissioner, I am of the view that the defendants, who

are engaged in the same line of business as the plaintiff, i.e.

providing educational/training services for entrance exams, are

carrying on their business under the impugned name "TIME"

which is identical to the plaintiff‟s trade name/mark. The

plaintiff‟s trade name/mark has attained the status of a well known

mark by virtue of high quality services provided by them over

years and the consumers and the general public identify the mark

T.I.M.E. with the plaintiff alone. The impugned mark has attained

a secondary significance as belonging to the plaintiff. Use of the

impugned trademark TIME by the defendants is nothing less than

a blatant attempt on their part to ride on the hard earned goodwill

and reputation of the plaintiff that has been acquired by the latter

over a period of years by providing quality education/coaching to

students. Furthermore, adoption of the domain name

www.timeforedu.com by the defendants, to provide online

education services is completely mala fide, dishonest and illegal as

the same is phonetically and visually deceptively similar to the

domain name of the plaintiff i.e. "time4education.com". The

domain name adopted by the defendants, by virtue of being so

deceptively similar to that of the plaintiff, is bound to create

confusion in the minds of public with respect to its origin and any

average internet user would presume that the defendants are

carrying on their business in association with the plaintiff.

Therefore, in my view, adoption of the trade mark "TIME" and

domain name www.timeforedu.com by the defendants amounts

to infringement of the plaintiff‟s trademark "T.I.M.E." and domain

name "time4education.com" under section 29 of the Trade Marks

Act, 1999 and the defendants are also guilty of passing off their

services as those of the plaintiff, thus illegally exploiting the

latter‟s goodwill and diluting their well reputed trade mark.

29. Although under para 40(d) of the plaint, the plaintiff has sought a

decree of rendition of accounts of profits illegally earned by the

defendants by use of the impugned trade mark, it is prayed that

punitive damages may be awarded in this case.

30. In the case of Time Incorporated v. Lokesh Srivastava and Anr

reported at 2005 (30) PTC 3 (Del) apart from compensatory

damages of Rs.5 lakhs, punitive damages were also awarded.

[Also see Hero Honda Motors Ltd. v Rafiq Memon reported at

2012 (52) PTC 449 (Del), Gora Mal Hari Ram Ltd. v Ashiqe

Exports reported at 2012 (50) PTC 428 (Del.), L.T. Overseas Ltd.

v Guruji Trading Co. reported at 2005 (31) PTC 254 (Del.),

Relaxo Rubber Ltd. and Anr. v Selection Footwear and Anr.

reported at AIR 2000 Del 60].

31. For the reasons stated above, the plaintiff has made out a case for

grant of decree as prayed in the plaint. Accordingly, the order

dated 10.04.2013 is confirmed and the suit is decreed in favour of

the plaintiff and against the defendants no. 1 & 2 in terms of para

40 (a), (b) and (c) of the plaint. Defendant no.5 is directed to

cancel the domain name hitherto registered in the name of

defendants no. 1 and 2. Plaintiff is also entitled to damages to the

tune of Rs.2.0 lacs.

32. Decree sheet be drawn up accordingly.

(G.S.SISTANI) JUDGE APRIL 30, 2014 ssn/pdf