Shemford Schools Private Ltd. & ... vs M/S Shemford International ...
2014 Latest Caselaw 3202 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                 Order delivered on: July 21, 2014

+                       CS(OS) No.1014/2011

      SHEMFORD SCHOOLS PRIVATE LTD & ANR ..... Plaintiffs
                 Through Mr.Aayushmann Gauba, Adv.

                        versus

      M/S SHEMFORD INTERNATIONAL SCHOOL ..... Defendant
                  Through Mr.Jayant Kumar, Adv.

      CORAM:
      HON'BLE MR. JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (Oral)

1. In terms of the last order, the defendant has filed the affidavit on 14th July, 2014. Earlier, the statement was made on behalf of the defendant that the defendant has already given up the user of the trademark "SHEMFORD" as alleged by the plaintiffs and time for filing the affidavit was, therefore, sought by the defendant. In the affidavit filed by Mrs.Sheela Chaudhary, Proprietor of the defendant-School a statement has been made that she has already changed the name of her school from "SHEMFORD INTERNATIONAL SCHOOL" to "STEMFORD INTERNATIONAL SCHOOL". She has also filed the approval letter dated 29th November, 2012 received from the District Education Officer, Primary Education, Sikar. In para 6 of the affidavit, the statement is made that she is not, in any manner, dealing under the mark "SHEMFORD". The use of the mark "SHEMFORD

INTERNATIONAL SCHOOL" was limited to newspaper advertisements in 2011, at which time the School was not actually providing educational services. She has also given an undertaking that she shall not use the mark "SHEMFORD" in future in any manner whatsoever.

2. Learned counsel for the plaintiffs, after having gone through the affidavit filed by Mrs.Sheela Chaudhary, on behalf of his clients has strongly opposed the mark "STEMFORD INTERNATIONAL SCHOOL, as according to him, the trademark/name "SHEMFORD" used by the plaintiffs as part of the name of their School and the mark "STEMFORD" proposed to be used by the defendant are deceptively similar and it amounts to infringement of the plaintiffs' registered trademark.

3. After filing the affidavit, the defendant has left it for the Court to decide - whether the two names are deceptively similar or not.

4. Brief facts of the case are that the plaintiffs had filed the suit for permanent injunction, restraining infringement of trademark, passing off, rendition of accounts, damages etc. against the defendant. The case of the plaintiffs is that the plaintiff No.2, who is the Managing Director of plaintiff No.1, hails from a family of renowned educationists Dr. (Mrs.) Bimla Arora and Dr. D.R.Arora, who revolutionized the pre-school education in India in the year 1989 by establishing schools, under the renowned and celebrated trademark SHEMROCK. The plaintiff No.2 is their son and is also one of the Directors of Golden Edutech Private Limited, a company that runs and franchises SHEMROCK schools across the country. The plaintiff No.2 has played a major role in the growth of the organization. As

recognition to his leadership role in the Indian School System, he was nominated as the Chairman of the 2006 conference of Independent Schools of India. In addition, he has been awarded the "Young Entrepreneur of the year 2006" by the Governor of Delhi, for his dynamic leadership in building the Shemrock Group of Schools. Plaintiff No.2 in the year 2008 so as to expand the horizon of the educational activities provided by SHEMROCK group of Schools from a pre-school curriculum to full-fledged Senior Secondary School, coined and adopted a unique, arbitrary and highly distinctive trademark/service mark SHEMFORD and put the same to commercial use. The first Senior Secondary School under the said mark SHEMFORD was opened in Rohini, New Delhi in the year 2008.

5. It is further submitted that the plaintiffs are the registered proprietor of the trademark SHEMFORD (label) under No.1697133 in Class 16 and under No.1697134 in Class 41. Besides, the plaintiffs have also filed certain other applications for registration of trademark SHEMFORD before the Registrar of Trademarks, New Delhi which are pending. The details of such pending applications are mentioned in para 10 of the plaint. It is also stated that the said trade mark and name SHEMFORD is a completely arbitrary and unique expression having no dictionary or literal meaning and/or known reference under any language or trade practices. The said mark has acquired distinctiveness through the prolonged, continuous and well established use thereof by the plaintiffs throughout India and abroad. The said trademark SHEMFORD has also been advertised widely by the plaintiffs through various modes and media of advertisement,

promotion and publicity including publications in well-known newspapers, magazines along with the physical publicity of the mark. The plaintiffs also operate a fully functional and interactive website being www.shemford.com.

6. It is also stated in the plaint that the defendant is operating the trade name Shemford International School as noticed by the plaintiffs while seeing the advertisement dated 27th March, 2011 in the daily newspaper in Sikar, Rajasthan inviting applications for admissions in school as well as for appointment of Counsellors, Teachers and Attendants.

7. The suit as well as the interim application was listed first time before Court on 29th April, 2011. After hearing the plaintiffs, the Court passed the interim order restraining the defendant, its agents, servants, proprietor, directors, if any, directly or indirectly, from providing its services, using, advertising, or otherwise dealing under the said trademark "SHEMFORD" or any other trademark, which is identical or deceptively similar to plaintiffs' trademark for and in relation to the services of providing education by running schools, institutions or any other goods/services which may be cognate or allied thereto, or leading to either infringement of registered trademark of the plaintiffs or passing of the goods or services of the defendant as those of the plaintiffs.

8. The said order was continued from time to time and it was only on 15th April, 2014 when the statement was made by the learned counsel for the defendant that the defendant has already given up the user of the mark "SHEMFORD". An affidavit has been filed by the defendant in this regard. However, it appears to the Court that in

fact, the two names, i.e. "STEMFORD" as changed by the defendant and the trade mark "SHEMFORD" of the plaintiff are deceptively similar. In view of the settled law, it amounts to infringement of trademark and passing off. Reference in this regard can be made to the judgment of K.R.Chinna Krishna Chettiar vs. Sri Ambal and Co. and Another, reported in AIR 1970 Supreme Court 146.

"9. The vital question in issue is whether, if the appellant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered (see In the matter of Broadhead's Application for registration of a trade mark, 1950-67 RPC 209). It is for the Court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature "Andal". There is a striking similarity and affinity of sound between the words "Andal" and "Ambal". Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks.

10. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal."

9. This Court is of the considered view that despite of the interim order, the defendant has used the said name "STEMFORD INTERNATIONAL SCHOOL" since May, 2012 which is deceptively similar to the trademark of the plaintiff and in fact, in violation of the Court's order. However, considering the overall facts and circumstances of the case, the defendant is given one last opportunity to change the name completely to some other name which may not be identical with or deceptively similar to the plaintiff's trade mark "SHEMFORD" and passing off its services as the services of the plaintiffs. The suit of the plaintiffs is accordingly decreed in terms of para 31(i), (ii) & (iii) of the plaint. Rest of the prayers are not pressed. A decree be drawn accordingly.

(MANMOHAN SINGH) JUDGE JULY 21, 2014/ka