Delhi High Court
Delhi Public School Society vs Dps World Foundation And Anr on 18 April, 2016
Author: V. Kameswar Rao
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on April 04, 2016
Judgment delivered on April 18, 2016
+ IA 2920/2016 in CS(COMM) 154/2016,
DELHI PUBLIC SCHOOL SOCIETY ..... Petitioner
Through: Mr.Sandeep Sethi, Sr. Adv. with
Mr.Puneet Mittal, Mr.Bhuvan Gugnani,
Ms.Vasudha Bajaj, Ms.Meghna Aggarwal,
Advs.
Versus
DPS WORLD FOUNDATION AND ANR ..... Respondents
Through: Mr.Amit Sibal, Sr. Adv. with
Mr.Abhishek Saket, Mr.Aadil Singh,
Ms.Vijaya Singh and Mr. V.Singh, Advs.
CORAM:
HON'BLE MR. JUSTICE V.KAMESWAR RAO
V.KAMESWAR RAO, J.
IA 2920/2016
1. By this order, I shall decide IA 2920/2016, which is an application
under Order XXXIX Rule 1 & 2 CPC, 1908 wherein the plaintiff has
sought the following reliefs:
"a) pass an ex-parte ad-interim injunction against the
defendants and in favour of the plaintiff, restraining
the defendants, their life trustees, term trustees,
advisories, members, franchisees, officers, employees,
servants, agents, delegates, representatives, assignees,
associates and all others acting for and on their behalf
from offering their services, advertising, offering
franchisees, selling goods and stationary, adopting,
using and / or dealing in any manner with the
registered trade mark / name 'DPS' and logo
of the plaintiff or any other trade mark identical or
deceptively similar to the registered trade marks of the
plaintiff amounting to infringement and passing off the
plaintiffs registered trade marks;
b) pass an ex-parte ad-interim injunction against
defendants and in favour of the plaintiff restraining the
defendants, their life trustees, term trustees, advisories,
members, franchisees, officers, employees, servants,
agents, delegates, representatives, assignees,
associates and all others acting for and on their behalf
from offering services, advertising, offering
franchisees, selling goods, adopting, using and/or
dealing in any manner with the trade mark / name
'DELHI PUBLIC SCHOOL' and the crest logo of
the plaintiff or any other trade mark identical or
deceptively similar to it amounting to passing off the
plaintiffs trade mark / name;
c) pass an ex-parte ad-interim injunction in favor of
plaintiff and against the defendants, restraining the
defendants, their trustees, members, franchises as the
case may be and their officers, servants, agents,
delegates, representatives, assigns, associates and all
others acting for and on their behalf from using the
impugned trade mark trade mark/name 'DPS', 'DELHI
PUBLIC SCHOOL' and
d) pass an ex-parte ad-interim injunction in favor of
plaintiff and against the defendants, restraining the
defendants, their trustees, members, franchises as the
case may be and their officers, servants, agents,
delegates, representatives, assigns, associates and all
others acting for and on their behalf from directly or
indirectly reproducing, using and/or dealing in any
manner with the plaintiffs crest and or any
other crest identical or deceptively similar amounting
to infringement of the plaintiffs copyright in the said
crests;
e) directed the Telecom Regulatory Authority of India,
Mahanagar Doorsanchar Bhawan (next to Zakir
Hussain College) Jawaharlal Nehru Marg, New Delhi-
110002 to shut down the websites
www.dpsworldfoundation.com and e-mail address
operated by the defendants; and
f) pass such further or other order(s) as this Hon'ble
Court may deem fit and proper in the facts and
circumstances of the case."
Facts and submissions on behalf of the Plaintiff
2. It is noted and as contended by Mr. Sandeep Sethi, learned senior
counsel for the plaintiff that the plaintiff society was registered under the
Societies Registration Act, 1860 in the year 1948-49 as Delhi Public
School with its registered office at F-Block,East of Kailash,New Delhi.
In the year 1962 the name of the Society was changed to Delhi Public
School Society. The defendant No. 2 was a life member of the Society
till October 17, 2015, when he was removed from the membership.
Between the period 1994-2004, the defendant No. 2 was the president of
the Society. In the year 1948 the plaintiff first conceived and adopted the
distinctive crest of the school at (1) of Annexure-A to this judgment,
which comprises of a hand holding a torch (mashaal) along with the
school motto 'Service Before Self‟ and the words 'Delhi Public School‟
written inside a shield device with other distinctive artistic features
comprised therein. The said crest is registered under different classes
including class 41, relating to education. The registration was in the year
2007. The said artistic Crest device was first created and designed by an
employee of the plaintiff under a contract of service, and which Crest is
an original artistic work and the plaintiff is the first owner of the same
under the provisions of the Copyright Act, 1957. He states, that apart,
plaintiff is also the first publisher of the said artistic work and on this
account is the lawful and true owner of the same and has the exclusive
right to use and reproduce the said artistic work to the exclusion of all
others. Since then, the unique Crest of the plaintiff has become a mark
which is identified with the name of plaintiff and is widely recognized in
India as well as across borders and considered synonymous with the
plaintiff and the various schools established by it. Mr. Sethi also states
that in the year 1996- 1997 plaintiff conceived and adopted another Crest
of the school at (2) of Annexure-A, which comprises of a torch
(Mashaal) on a book along with the school motto 'Service Before Self‟
written inside a shield device surrounded by creeper and the words 'Delhi
Public School' written at the bottom with other distinctive artistic
features comprised therein. The said artistic Crest device was first
created and designed by the plaintiff and which Crest is an original
artistic work and the plaintiff is the first owner of the same under the
provisions of the Copyright Act, 1957. That apart, plaintiff is also the
first publisher of the said artistic work and on this account also, plaintiff
is the lawful and true owner of the same and has the exclusive right to
use and reproduce the said artistic work to the exclusion of all others.
Mr. Sethi would state, that the plaintiff was formed with an object to
establish progressive schools or other educational institutions in Delhi
and outside Delhi, open to all without any distinction of race, caste or
special status. In order to achieve its objectives, plaintiff decided to
establish its first school in the year 1949 under the name and style of
"Delhi Public School", its abbreviation "DPS" and its logo/crest. The
plaintiff established its schools at various places in India. Schools
established by the Society itself are known as "Core Schools" and which
are 11 in number. The Society has also entered into agreements with
other societies/trusts for establishing schools at various places known as
"Affiliated Schools" and these are more than 170 in number. He states,
the plaintiff has established15 schools outside India, which shows the
immense goodwill and reputation enjoyed by the plaintiff not only in
India but also abroad. Approximately 3,00,000 students are studying in
the schools running under the aegis of the plaintiff. Mr. Sethi would
state that in order to secure statutory rights in respect of the aforesaid
trade marks, the plaintiff has filed several applications for its registration
in the office of the Registrar of Trade Marks. He has referred to page 32
of the plaint to show that the trademarks which have been registered and
the applications of the trademarks, which are pending registration.
3. The plaintiff has also adopted the trade mark / name "Delhi Public
School", "DPS", and the crest logo at (1) and (2) of Annexure-A to this
judgment and are using the same for its core and affiliated schools. The
plaintiff has earned immense goodwill and reputation amongst the
parents, students, staff and public at large. The name Delhi Public
School / DPS is well known for the quality education provided by the
institutions set up by the plaintiff. According to him, the use of the marks
„DPS‟ and „Delhi Public School‟ are so extensive that the said marks
have always been perceived by the General Public as indicative of the
source of the plaintiff and the aforesaid words are therefore associated by
the general public with plaintiff and nobody else.
4. Mr. Sethi states that in the last more than 65 years of service in the
field of imparting education, the plaintiff has produced lakhs of students
who are occupying prominent and prestigious positions in government as
well as private sector and are doing very well in life. The staff members
of the school have also attained distinction in the field of education and
have been awarded with the prestigious awards by the government. On
July 16, 2015, for the first time, plaintiff came to know that the
defendant no.1 is functioning under the trade name "DPS World
Foundation" by adopting the identical trademark/name "DPS" and a
deceptively similar logo/ crest mark at (3) of Annexure-A through a
letter dated June 12, 2015 addressed by founding trustees of defendant
No.1, to the alumni of the schools running under the aegis of plaintiff,
informing them about the formation of defendant No.1, a trust, and terms
and conditions for the membership of defendant No.1. He further states,
defendant No.2 is the spouse of the chairperson of defendant No.1, who
is key managerial personnel of defendant No.1, responsible for day to
day management, control and operation of defendant No.1. Defendant
No. 1 is the brain child of the defendant No.2, who while holding the
position of the life member of the plaintiff, deceived the plaintiff by
secretly forming the defendant No.1 and adopting plaintiffs trademarks.
He states that the aforesaid crest/logo was extensively used by plaintiff
during defendant No.2's tenure as president of the plaintiff.
5. According to him, on further investigation by the plaintiff, the
plaintiff came to know that the defendants are also maintaining a website
www.dpsworldfoundation.com wherein, the impugned trade mark of the
defendants "DPS" and crest / logo at (3) of Annexure-A is prominently
displayed. The plaintiff from the aforementioned link also came to know
that on August 16, 2015 the defendant No. 1 was inaugurated and
defendants' vision, inter alia, is to establish schools or other educational
institutions, similar to that of the plaintiff and is using the aforesaid
impugned trademarks in relation to the said services.
6. He would draw my attention to various documents like the
registration certificate, objectives of the plaintiff, registration of the
trademarks at page 32 of the plaint. He has drawn my attention to page
85 of the documents, which is a communication dated June 12, 2015 by
the trustees of the defendant No. 1, wherein, the authors of the letter
conceding that they are admirers/followers of the „DPS Society‟ had
acknowledged of being touched by experience at some point of time in
their life and also a part of them remained with the „DPS‟ and also
referring to Dipsites Association which provided a platform for
enhancement and consolidation of the „DPS‟ product, besides sustaining
of the bond itself. He would highlight that the letter would reveal, a
need was felt that a permanent platform of „DPS‟ foundation be created
to provide for effective connect for all people who have been part of the
„DPS‟ experience or indeed continued to be part of it. In other words, it
is his submission that the said letter acknowledges, the need to promote
the DPS ethos and ethics and expansion of DPS vision. According to
him, the words „DPS‟ connotes, the schools established by the plaintiff
society. He has drawn my attention to page 91 of the documents to
highlight the reasons behind creating a DPS World Foundation, which
according to him, has the genesis to the Delhi Public Schools run by the
plaintiff. He would draw my attention to the membership being offered
by the DPS World Foundation, at page 150, to trust‟s/societies intending
to set up Delhi Public Schools in the country and even abroad. He
would refer to various advertisements issued from time to time including
the advertisement issued in the Times of India newspaper dated June 07,
2015, for recruiting staff, teachers, employees etc. for the school at
Greater Noida. On 14.10.2015 defendants got similar advertisement
published in Times Ascent for DPS World School, Patna. On November
4, 2015 defendants got similar advertisement published in Times Ascent
for DPS World School, Alwar. Defendants on December 23, 2015
published an advertisement in Dainik Bhaskar newspaper for appointing
teachers, librarian, accountant, peon etc. Defendant on January 27, 2016
published an advertisement in Times of India, New Delhi newspaper
inviting applications for the post of principal/headmistress, teachers,
accountant, receptionist, etc., for their branch in Noida Extension.
7. Mr. Sethi submits that upon the knowledge of the aforesaid
infringing activities of the defendants, the plaintiff served a show cause
notice dated July 24, 2015 to the defendant No.2 asking him as to why
an action should not be taken against him, inter alia, amongst others for
having his clandestine association in the creation of defendant No.1 and
adoption of impugned infringing trade marks, for setting up schools
across India and giving franchisee of such schools to other people, which
was in contradiction to the position then held by him as a life member of
the plaintiff. Defendant No.2 vide its reply dated August 21, 2015
admitted that he is associated with defendant No.1. He states none of the
allegations have been denied. That vide notice dated September 17, 2015
issued by the plaintiff to the defendant No.2, the defendant No.2 has
ceased to be a life member of the plaintiff from October 17, 2015.
Defendant No. 2 has filed a suit bearing no. CS (OS) 3094/2015 against
the plaintiff praying, inter alia, to declare notice dated September 17,
2015 as null and void. He submits, on further enquires plaintiff has
come to know that the defendants are offering their patron membership
for Rs.1,00,000/-and their franchise under the impugned trade marks for
Rs.25,00,000/-in India and Rs.35,00,000/-abroad, and have till date
entered into as many as 35 franchise agreements, details of which, could
be culled out from the defendants.
8. It is his submission that the defendant No. 2 has been an eminent
member of the plaintiff and held highest position in the Society. He also
subscribes to the ethos and values of the Society and the schools run by
it. The defendant No. 2 is not an outsider. While he was the member of
the Society, he himself has filed various petitions seeking protection of
its intellectual property against different parties. In that regard, he has
drawn my attention to para 11 of the plaint. It is an attempt on the part
of the defendants with mala fide intention to encash and ride upon the
immense goodwill and reputation of the plaintiff. More particularly, in
the educational field, with which, the plaintiff is associated for so many
years. He states, the very objective of establishing defendant No.1 as
„DPS‟ World Foundation, would reveal, an attempt to take unfair
advantage in business and contrary to the honest trade practices in
commercial matters. He has also drawn my attention to page 168 to show
that the foundation intends to allow and grant revocable licences to the
institutional members to use the name DPS World and DPS World
School and its logo and motto during the period of memorandum of
understanding with such institutional members. He would draw my
attention to pages 245-266 of the documents to show, various schools
established by the plaintiff society abroad with the similar logo. He also
draws my attention to pages 257-259, which is a letter written by the
defendant No. 2, wherein the defendant No. 2 has referred to the Delhi
Public School Society as „DPS Society‟. Similarly, he has drawn my
attention to page 259 to highlight that the defendant No. 2 himself
recognises the Delhi Public School as DPS. He refers to various
agreements entered with the franchises for opening of Delhi Public
Schools at various places in India and abroad. He refers to one of the
agreements dated April 22, 1998, for opening of a school, signed by the
defendant No. 2 himself on behalf of the plaintiff, with Texmaco Group,
Indonesia, referring the Delhi Public School as DPS.
9. Mr. Sethi‟s submission is, the conduct of the defendants is to cause
damage and injury both to the plaintiff‟s business and to its goodwill and
reputation. The representation is not only limited to the origin of the
services but to the quality as well, since the defendants could not match
the outstanding educational services provided by the plaintiff and the
tremendous amount of goodwill earned by the plaintiff by pioneering in
the sphere of education in India and by way of its successful
existence in this field for the past almost 65 years, having established
around 200 schools in India and overseas. He states that because of
unlawful adoption of the plaintiff‟s registered trade mark/name and logo
of the defendants, it is sure that the potential students, staff and parents
would believe that the defendants are endorsed by and franchisee of the
plaintiff in regard to their services and the Defendants command and
provide the same quality and reliability i.e. synonymous with the services
of the plaintiff which as a matter of fact the plaintiff has built up over last
several years. According to him, the general public would also believe
that the Defendants are licensed or authorized by the plaintiff to use the
plaintiff‟s trade mark / name and logo. He states, irreparable loss, injury
and damage to the plaintiff in its business, goodwill and reputation and
by use of the impugned trade marks by the defendants, value of the
plaintiffs trade marks is getting diminished. He submits, it is an
established principle under the law of infringement that in order to come
to the conclusion that one mark is deceptively similar to another, the
broad and essential features of the two are to be considered. He states, it
would be enough if the impugned mark bears such an overall similarity to
the other mark as would likely to mislead a person usually dealing with
one to accept the other if offered to him. He states, it has further been
held that marks are remembered rather by general impression or by some
significant details than by any photographic recollection of the whole.
Moreover, variation in detail might well be supposed by customers to
have been made by the owners of the trade mark they are already
acquainted with for reasons of their own. He states, that under the
scheme of the Copyright Act, 1957 and the provisions contained
thereunder the offence of infringement of copyright is complete if the
reader, spectator or the viewer after having read or seen both the works is
clearly of the opinion that the subsequent work appears to be a copy of
the original on a visual comparison of the two competing works. He
states, it is equally well established that there might be and there will be
obvious differences deliberately introduced to avoid a possible charge of
infringement of copyright. However, a bad copy does not cease to be a
copy. If the court on a consideration of all the relevant circumstances and
the comparison of the competing artistic labels comes to a conclusion
that basically and in substance one is a reproduction of the other, further
modifications or variations will not alter that effect of infringement. He
states, the Copyright Act, 1957, being a complete code in itself, any
infringement under the said Act is liable to be injuncted forthwith
without there being any other additional requirement as prescribed under
the provisions of the Trade Marks Act, 1999, or the principles of
common law.
10. Mr. Sethi would heavily rely upon Section 29 of the Trade Marks
Act, 1999 to contend that the impugned trademark/logo and motto is in
violation of the said Section. He states, the very fact that the defendants
have lifted the word „DPS‟, which is the registered trademark of the
plaintiff, is enough to show the infringement of the same. That apart, it is
his case, even the fact that the plaintiff had been in the education field,
running the schools in the name and style of Delhi Public School would
make a case where the defendants intend to pass off their schools being
established as DPS World Schools as the schools of the plaintiff. He
would rely upon the following judgments/orders in support of his
submissions:
(1) Mantari Overseas Ltd. Vs. Mantari Industries Ltd. 1996
(PTC)(160) 142 on the aspect of similarity in
Tradename/Corporate name.
(2) Laxmikant V. Patel Vs. Chetanbhat Shah and Another
2002 (3) SCC 65 in relation to his plea of pass off.
(3) Midas Hygiene Industries (P) Ltd. and Another Vs. Sudhir
Bhatia and Others (2004) 3 SCC 90
(4) CS (OS) 1521/2008, Delhi Public School Society Vs. Gopal
Prasad Das and Ors., date of decision: October 29, 2014
(5) Sushma Berlia Vs. Kamal Kumar, 2015 (147) DRJ 450
(6) Tata Sons Limited Vs. Hoop Anin and Ors., 188 (2012)
Delhi Law Times 327
+
(7) Ex-parte injunction order dated 28.08.2008 passed in favour
of the plaintiff in CS(OS) No.1519/2008 in case titled as Delhi
Public School Society vs. DPS Trust;
(8) Judgment dated 14.12.2012 passed in favour of the plaintiff
in CS(OS) 1519/2008 in case titled as Deli Public School
Society vs. DPS Trust;
(9) Ex-parte injunction order dated 28.08.2008 passed in favour
of the plaintiff in CS(OS) No.1521/2008 in case titled as Delhi
Public School Society vs. Gopal Prasad Das & Ors.;
(10) Judgment dated 29.10.2014 passed in favour of the
plaintiff in CS(OS) No. 1521/2008 in case titled as Delhi Public
School Society vs. Gopal Prasad Das & Ors.;
(11) Ex-parte injunction order dated 28.08.2008 passed in
favour of the plaintiff in CS(OS) No.1518/2008 in case titled as
Delhi Public School Society vs. DPS Trust & Ors.;
(12) Judgment dated 29.10.2014 passed in favour of the
plaintiff in CS(OS) No.1518/2008 in case titled as Delhi Public
School Society vs. DPS Trust & Ors.;
(13) Ex-parte injunction order dated 28.08.2008 passed in
favour of the plaintiff in CS(OS) No.1520/2008 in case titled as
Delhi Public School Society vs. DPS Trust & Ors.;
(14) Judgment dated 29.10.2014 passed in favour of the
plaintiff in CS(OS) No.1520/2008 in case titled as Delhi Public
School Society vs. DPS Trust & Ors.;
(15) Ex-parte injunction order dated 23.04.2012 passed in
favour of the plaintiff in CS(OS) No.1092/2012 in case titled as
Delhi Public School Society vs. DPS Ferozabad & Ors.;
(16) Order dated 30.09.2013 confirming the ex-parte order
dated 23.04.2012 passed in favour of the plaintiff in CS(OS)
No. 1092/2012 in case titled as Delhi Public School Society vs.
DPS Ferozabad & Ors.;
(17) Judgment dated 11.09.2015 passed in favour of the
plaintiff in CS(OS) No.1092/2012 in case titled as Delhi Public
School Society vs. DPS Ferozabad & Ors.;
(18) Ex-parte injunction order dated 19.09.2011 passed in
favour of the plaintiff in CS(OS) No. 114/2011 in case titled as
Delhi Public School Society vs. DPS Bharatpur & Anr.;
(19) Order dated 07.08.2012 confirming the ex-parte order
dated 19.09.2011 passed in favour of the plaintiff in CS(OS)
No. 114/2011 in case titled as Delhi Public School Society vs.
DPS Bharatpur & Anr.
(20) Shri Pankaj Goel vs. M/s Dabar India Ltd. 2008 (38)
PTC 49 Para 19, 22, 24 & 25
(21) Globe Super Parts vs. Blue Super Flame Industries 1986
AIR (Del) 245 para 42
(22) Plasticiindia Foundation vs. Ajeet Singh & Anr. 95
(2002) DLT 235 para 10 to 12
(23) Ramdev Food Products (P) Ltd. vs. Arvind Bhai Patel
and others AIR 2006 SC 3304
(24) Sanofi India Ltd. vs. Universal Neutraceuticals Pvt. Ltd.
2014 (215) DLT 585
(25) Evergreen Sweet House vs. Evergreen and others 2008
(38) PTC 325;
(26) Yahoo Inc. Vs. Akash Arora 1999 (78) DLT 285;
(27) Marico Limited vs. Pratik Goyal & Anr. 2014 (214) DLT
539;
11. On the other hand Mr. Amit Sibal would submit the following:
1) That the Defendant No. 1, a Trust registered under the Indian
Trusts Act, is a platform to provide an effective connect to all people who
have been a part of the DPS experience i.e. Dipsites Association (Alumni
of Delhi Public School), Faculty of Delhi Public Schools, spouses of
Alumni, parents of Delhi Public School students. He states the foundation
has been envisaged with the noble objective to give the charter of
excellence in education, social service and advancement of human
values.
2) Several illustrious Dipsites and former teachers are part of the DPS
World foundation in the capacity as life members, trustees, etc with an
endeavor to bring them all together in the forum of the DPS Foundation.
He states Members of the DPS foundation have a strong link with DPS
value system and share the common heritage and legacy that all Dipsites
are entitled to.
3) The Foundation is a DIPSITES knowledge initiative and an
independent effort of Dipsites in which every Alumni has a participation.
4) The DIPSITES Association is also a registered body under the
Societies Registration Act, 1860, and its aims and objectives consist of
promoting the interest of the Alma Mater, to aid and assist the Managing
Committees of the Schools in all matters, to promote contacts and to
maintain a spirit of co-operation.
5) The Defendant No. 2 was the founding President of the said
DIPSITES Association and is a Life Member/Patron of the same.
12. He states, the founding trustee of Defendant No. 1 i.e. the
Foundation includes Ms. Louise Khurshid who is the spouse of a Dipsite
and former President of the plaintiff Society and a parent to Dipsites thus,
taking her association to the World of Dipsites to over 30 years. He states
that Mr. Rajiv Soni is the President of the Dipsites Association and is
also a Dipsite himself and Mr. Rajiv Bhatnagar is also a former Dipsite.
The goodwill that the Plaintiff is seeking to appropriate to itself is
actually a goodwill generated by the DIPSITES, be it students, staff or
teachers without which the Plaintiff Society has no goodwill. Thus the
entire goodwill and reputation that the Plaintiff Society is seeking to
appropriate to itself belongs to each and every DIPSITE, the staff and
teachers and not to anyone else. He further argues that DPS World
Foundation is a creation of this group of people and it is for this reason
that the DPS World Foundation proudly proclaims that it is "A
DIPSITES KNOWLEDGE INITIATIVE AND AN INDEPENDENT
EFFORT OF DPS ALUMNI (DIPSITES).NOT A PART OF DELHI
PUBLIC SCHOOL SOCIETY, NEW DELHI. The said Advisory is in
fact a proclamation of the Foundation that it is different and takes pride
in disassociating itself from the Plaintiff Society. He argues that
Defendant No. 1 has no intent to mislead anyone nor does it want to have
any association with the Plaintiff Society in any manner, which can be
gathered from the Advisory filed at Page 102 of the Plaintiff‟s
Documents.
13. It is his submission that the Defendant No. 1 is not making any
fraudulent gain or misrepresentation to any member of public, which is
evident from the documents filed by the Plaintiff Society along with the
Plaint at Page 217-218, 220-221, 223-224, 225-226 in the List of
Documents. He states that the documents containing the advertisements
published by the Defendant No. 1 Foundation and its members clearly
and in unequivocal and unambiguous manner shows that the Defendant
No. 1 disassociates itself with the plaintiff.
14. He would further submit that as far as Defendant No. 2 is
concerned, he is one of the most well known and prominent alumni of the
Plaintiff School and in fact today the Delhi Public School has become
synonymous with Defendant No. 2 and every Dipsite today proudly
represents himself/herself as a product of Mr. Salman Khurshid's school.
He further states that Defendant No. 2 is an eminent lawyer who has
contributed immensely to the Bar. Apart from being an eminent Lawyer,
Defendant No. 2 is also a member of the All India Congress Committee
and has served the Govt. of India in various capacities as Deputy
Minister, Minister of State, as well as Cabinet Minister while holding the
position of Minister for Corporate Affairs, Minister for Minority Affairs,
Minister for Law & Justice and also Minister for Foreign Affairs.
15. He further states that the Crest Logo with Leaf was an idea
conceived by Defendant No. 2 in his personal capacity. The idea was
shared by Defendant No. 2 in his personal capacity with the then art
teacher at Delhi Public School, Vasant Kunj and Defendant No, 2, who
was then the President of the Plaintiff Society requested her to draw a
logo with a crest based on his idea and description for his personal use.
He further states that the Plaintiff Society had no permission or authority
to use the said Logo, which was a creation of and conceived on the basis
of the idea of Defendant No. 2 and the usage, if any, is purely illegal and
unauthorized. He states that Defendant No. 2 was the first to use the
Logo on his Letter Heads, which no other members have used at any
given time.
16. He further states that the Art Teacher who made the drawing based
on Defendant No. 2's idea has sworn an Affidavit stating that the Crest
was drawn by her at the instance of and based on the idea of Defendant
No. 2 and that all rights vest in favour of Defendant No. 2.
17. He states that in view of the submissions made herein above
Defendant No. 1 reiterates that it is entitled to and is rightly using the
name „DPS‟ World Foundation and is further more the owner of the
copyright that lies in the crest logo as the same has been vested in it by
the owner of the said Crest i.e. Defendant No. 2.
18. He further states that Defendant No. 1 Foundation is using the
below Logo which is further designed by Defendant No. 2 keeping in
view the ideals of the Foundation i.e. "STRIVING TOWARDS
PERFECTION" and showing clearly that it has no relationship with
Plaintiff Society by inscribing "A DIPSITES KNOWLEDGE
INITIATIVE".
19. He would further submit that the Plaintiff Society has no right on
the same for the reason that the Copyright vests in Defendant No. 2 and
if the Plaintiff has used it at any given time, then the same is without
any permission or authority of Defendant No. 2 and amounts to
infringement of Copyright of Defendant No. 2.
20. He further states that the Plaintiff Society being a juristic person
could not have conceived nor created the artistic Crest Logo and
therefore Plaintiff‟s averments with regard to the same are devoid of
logic and amount to suggestio falsi. He states that there is nothing in the
pleadings to substantiate the Plaintiff‟s bald averments with regard to
the Plaintiff being the First Owner or First Publisher of the artistic Crest
Logo or for that matter who is the person who has designed the same
for the obvious reason that the Plaintiff is not even aware of the same.
He argues that no case can be made out for violation of copyright unless
the name of the person is disclosed or asserted in the pleadings and
hence the suit is liable to be dismissed on this ground itself, as far as the
claims on Crest Logo is concerned.
21. He states that the Plaintiff‟s trademark certificate over the Delhi
Public School Logo as set out under Class 16 reflects that the
trademark is subject to the condition and limitation that the Plaintiff
Society has, "No exclusive right over the device of Torch separately
and Delhi Public School". He relies on letter of the Attorney of the
Plaintiff dated August 25, 2008 wherein, the plaintiff has agreed to
giving up the exclusive rights. Similarly, the Delhi Public School
Logo as set out under Class 35 & 36 reflects that the trademark is
subject to the condition and limitation that, "No right for Delhi Public
School". He states that in this respect, the letter of the Attorney of the
Plaintiff dated September 24, 2008 is being filed with the list of
documents wherein they have agreed to give up the exclusive rights
and also, the plaintiffs trademark certificate over the Delhi Public
School Logo as set out under Class 41 i.e. Education, clearly and
categorically records that it is subject to the condition and limitation of,
"No right to Delhi Public School separately". He states that this
assumes significance and leaves no manner of doubt that the Plaintiff
Society has no exclusive right to Delhi Public School separately.
22. He has further stated that it is necessary to underline the fact that
using variations of the Shield/Leaves/Torch in a Device is common
practice and these elements are common to the Registered
Logos/Marks of various organizations including international bodies
like the UNICEF, UNDP, UNHCR, CISF, Wayne State University,
Philippine School (Bahrain) and many more. This is because a Torch/
Creeper/ Leaves or a Torch surrounded by Creeper/Leaves symbolizes
Learning, Discipline, Excellence, Concern for Environment, Victory
etc. and many organizations which adopt these values use such
elements in their Devices.
23. He would state that in India itself, several educational
societies/institutions are using the registered logo and the trade name
of the Plaintiff Society such as the Delhi Public School Ghaziabad,
Vasundhra, Delhi Public School Pvt. Ltd, North Delhi Public School,
Shalimar Bagh, Delhi, Delhi Public School, Sambalpur, Odisha which
dilutes the strength of the Plaintiffs Trademark manifold, as it is not
distinctive enough in a crowded market.
24. The Plaintiffs Registered Logo comprises of elements which are
non-distinctive and often used by organizations to symbolize Learning,
Discipline, Excellence, etc.
25. He has further stated that in such a situation where the supposed
goodwill vested in the words 'Delhi Public School Society as well as in
the Registered Logo stands diluted because of years of decimation of
quality and the organization being infected with nepotism, corruption,
and anti-democratic practices. The Plaintiff society has also given up
the exclusive right and goodwill to the mark by not only accepting the
order of the Registrar but also submitting the following in various
proceedings:
that the "DELHI" "PUBLIC" and
"SCHOOL" together or separately is
common to use and it has been used by
various applicants, therefore the
registration of the mark in favour of more
than one applicant is rightly allowed.
(statement of a Licensee of the Plaintiff)
"That the Applicant hereby agrees to
the condition of having No Exclusive
Right over the devise of Torch
Separately and on DELHI PUBLIC
SCHOOL".
26. He has argued that the DPS World Foundation is using a logo
with the motto "Striving toward Perfection" whereas the Plaintiff
Society is using the motto "Service before Self. The DPS World
Foundation has a torch/Mashaal on an open book, superimposed on a
shield and surrounded by laurel leaves whereas the Plaintiff Society has
a hand holding a Torch/Mashaal and the words Delhi Public School
below this. It is necessary to indicate that the Defendant No. 1's Logo
displays the words DPS World Foundation and below this it
prominently and conspicuously states "A Dipsites Knowledge
Initiative". He states that this would clearly demonstrate that Defendant
No. 1 is a Dipsites Knowledge Initiative.
27. He submits that without prejudice and without admitting that the
Plaintiff has any exclusive right on the words "DELHI" "PUBLIC"
"SCHOOL" the Defendant No. 1 submits that at no point of time, on
any material or any media, it has used the words 'Delhi Public School'
as part of its Trade name or as part of its Logo or Motto, though
Defendant No. 1 can name its schools as Delhi Public World School.
He states that the Plaintiffs averments with regards to usage of the
words 'Delhi Public School‟ by the Defendant No. 1 amounts to
misrepresentation of material facts. The Defendant No. 1‟s name uses
the word 'DPS World School' in which the alphabet D stands for
'Dipsites'. He further states that Plaintiff cannot by virtue of registration
of word DPS, an acronym for Delhi Public School prevents any other
organization or school from using such acronym. For Example Doon
Public School would be known as DPS too, similarly there are several
other schools whose acronym can stand as DPS.
28. He has stated that 'DPS' is only an acronym and using acronyms
in the place of the full names of educational institutes is common
practice, for example Indian Institute of Technology is called IIT and
Indian Institute of Management is called IIM. Such use in common
parlance cannot be said to confer monopoly rights under Trademarks
regime on the acronym, particularly because acronyms, by their very
definition, can stand for multiple things. He states that nobody can
claim exclusive right to use any word, abbreviation, or acronym which
has become publici juris.
29. He would further submit that the DPS World Foundation has not
misrepresented on any of its documents, website, etc that it is in any
manner connected or a part of the Plaintiff Society. Further the class of
consumers who are likely to avail/enroll on the programmes i.e.
Education of the DPS World Foundation would belong to a reasonably
educated, informed and aware section of society which is an extremely
relevant consideration while adjudicating an alleged claim of passing
off. He submits infact, while dealing with cases of Trademark
Infringement or passing off the courts must bear in mind the nature of
goods or services offered and the class of consumers who can get
misled. He further submits that Schools and Education Institutions are
not like fast moving consumer items or medicines. A parent, while
choosing the school for his/her kid would do a extensive due diligence
and background check of the school before admitting the child where
the future of the child would be groomed and nurtured. It would be a
long relationship extending from nursery to class 12 i.e. almost a 14
year long association. Thus the parameter for judging such cases cannot
be on the basis of fast moving consumer items. He further submits that
in the present case, as has been stated in the foregoing para's, the
Defendant No. 1 has neither made any misrepresentation nor is
fraudulently trying to encash on the alleged goodwill of the Plaintiff
Society. He submits that Defendant No. 1 has immense goodwill by
virtue of its association with Defendant No. 2, being the brightest
Dipsite.
30. He further submits that the plaintiff Society with a mala fide
intent to mislead this Court, has stated in the Plaint that all their
trademarks are registered, which is blatantly a false submission. He
submits that neither „DPS‟ nor "Delhi Public School" are registered
under class 41 for Education.
31. He states furthermore, the Plaintiff herein, by his own admission,
became cognizant of the Defendant No. 1 in the month of July 2015.
Despite such knowledge, the Plaintiff Society took no steps to protect
their alleged Trademark and Word mark, which disentitles them from
the discretionary remedy of an injunction.
32. The defendant No. 1 in its written arguments, states as under:
(i) that, the instant case is not for a FMCG product or a
pharmaceutical product but relates to services in the field of
Education. Education is neither a business nor a commercial
activity, it is charitable in nature and hence has to be viewed
differently as compared to cases involving commercial
business ventures.
(ii) The case of the Plaintiff is for infringement of its
Trademark (i) "DELHI PUBLIC SCHOOL" (unregistered
in any of the classes), (ii) "DPS" (unregistered in Class 41
for Education) and the two Logos one being registered (iii)
(at 1 of Annexure-A)
(with disclaimers to Torch and word "DELHI PUBLIC
SCHOOL") and the other being unregistered (iv) . (at 2
of Annexure-A).
NO CASE OF INFRINGEMENT IS MADE OUT
(iii) As far as Defendant No. 1 is concerned, it is known as
"DPS World Foundation" and its Schools are known as
"DPS World Schools". Defendant No. 1 is not using
unregistered Trademark DELHI PUBLIC SCHOOL or
Plaintiff‟s registered Logo, hence no case of Infringement or
Passing off can be made out under Section 29 of the
Trademarks Act, 1999.
(iv) Defendant No. 1 is using a Logo (at 3 of
Annexure A) which is neither identical nor similar to
Plaintiff‟s registered Logo. The Defendant‟s Logo contains
the words "DPS World Foundation" and "Striving
Towards Perfection" inscribed within it whereas the
Plaintiff‟s registered Logo contains "DELHI PUBLIC
SCHOOL" and motto "SERVICE BEFORE SELF" (with
disclaimers to Torch and the word "DELHI PUBLIC
SCHOOL) . Even on comparision of the Registered Logo of
the Plaintiff and that of Defendant‟s Logo are different both
visually and even otherwise. Thus no case of Infringement
under Section 29 of the Trademarks Act or Passing off can be
made out on the basis of comparision with Registered Logo
of the Plaintiff.
(v) As far as Plaintiff‟s claim on the unregistered Logo is
concerned, the same is disputed on various counts i.e. (i)
there is no specific pleading to the effect that who is the
author of the copyright (ii) Copyright is claimed by
Defendant No. 2 and Santosh Jain (admitted by Plaintiff in
Rejoinder) (iii) the usage of the same is also not shown in
India atleast after 2008 and the only document that has been
relied upon is the usage in Dubai by DELHI PRIVATE
SCHOOL, (iv) Delhi Private School is not a party nor
Plaintiff can claim a right on the basis of usage outside India.
(vi) DELHI PUBLIC SCHOOL is neither a derived word
nor an invented word and is a classic example of Generic
name. To be more precise, it is a purely descriptive word,
which even the Plaintiff Society is aware of. Perhaps, it is
also for this reason that the mark "DELHI PUBLIC
SCHOOL" is not registered in any class and even the
Plaintiff Society has given up the exclusivity by their various
letters (Pages 36 to 51 of the List of Documents filed by the
Defendant)
PLAINTIFF‟s CASE OF PASSING OFF ALSO NOT
MAINTAINABLE
(vi) At best the Plaintiff‟s case hinges on Passing Off, though
according to Defendants even the same is not maintainable as
Plaintiff fails to bring its case within the realm of Passing Off
and its test based on classic trinity namely (i)
Misrepresentation (ii) Likelihood of Confusion and (iii)
damage.
(vii) The Defendant No. 1 DPS WORLD FOUNDATION is
a Trust, registered under the Indian Trusts Act, which is a
Charitable Organization. As far as word "DPS World" is
concerned, it is a Trust created by DiPStes (alumni of various
DPS Schools, parents of DPS alumni as well as teachers and
staff of various DPS Schools) having filial link to their alma
mater and the "DiPSites" have rightfully identified
themselves as "DPS". The Plaintiff cannot take away the
rights of the DiPSites to identify themselves by this name or
usage of "DPS World" for Defendant No. 1 trust.
(viii) Alumni of Delhi Public Schools, it teachers, staff have a
filial link to the various Delhi Public Schools and thereby the
Name "DPS World" is derived from. The adoption of the
name DPS World where DPS stands for DiPSites is honest
and legitimate as the members have a filial link to their alma
mater and there is an organic relationship which none can
take away from DiPSites. Infact a DiPSites Society of
Alumni has been in existence since 1982 in which the
founding President was Defendant No. 2 and over which
Plaintiff has no control. Every member of DiPSites are also
members of Defendant No. 1.
(ix) The Charter at Page 141 of Plaintiff‟s Document clearly
spells out the very basis on which the Defendant No. 1 has
been formed and Page 145 Clause 1.2 spells out who can be a
member of the Defendant No. 1 Foundation. The very basic
difference between Plaintiff‟s Society and Defendant‟
Foundation is that Plaintiff considers Education as a
Commercial activity whereas Defendant truly believes that
Education is a Philanthropic activity, which also underlines
why the DiPSites joined hands to form the Defendant
Foundation.
(x) Plaintiff Society nor its schools are identified as DPS.
Various license Agreements filed by Plaintiff Society (Pages
106, 119 at Page 120, Page 128 at Page 129, Page 137 at
Page 138 of Rejoinder Document of Plaintiff) shows that
the license has been granted for use of purely generic and
descriptive word "Delhi Public School its Motto and
Logo". Not a single document has been shown to prove
that either the Plaintiff Society or the Schools are named
as DPS. None of the document filed by the Plaintiff showing
License agreement has mentioned "DPS". No evidence of
valid user has been produced by the Plaintiff for the word
DPS.
(xi) Plaintiff has heavily relied upon some of the letters of
Defendant No. 2 wherein Defendant No. 2 has used the words
"DPS" to prove their case that it is known as DPS. Mr. Sibal
would state, that the documents are internal correspondences
and, the author for the sake of convenience has used
abbreviation or acronyms, and therefore it cannot be the basis
for claiming a Trademark. Plaintiff has not shown any
document to show that any of their school is named as
"DPS".
(xii) As far as Leaf Crest Logo of Defendant No. 1 is
concerned the Plaintiff has no copyright. The copyright over
the same is claimed by Defendant No. 2 and the logo has
been drawn by one Ms. Santosh Jain based on idea and initial
design of Defendant No. 2. Plaintiff admits that the logo has
been drawn by Ms. Santosh Jain in the Rejoinder (pages 13,
and 19 of the Plaintiff‟s Rejoinder) though in the suit the
Plaintiff has not disclosed the name of the artiste and claimed
that the logo was designed by Plaintiff i.e. a juristic person.
(xiii) The Plaintiff has not placed any document to show its
usage in India and the only document they have placed is of a
Dubai School at (Pages 88 and 89 of Rejoinder Document)
which identifies itself as "DELHI PRIVATE SCHOOL".
Thus no case of passing off can be made out for a logo, which
is not in use by the Plaintiff and the copyright of which is also
not with Plaintiff.
(xiv) The defendant No.1 underlined the difference between
trademark infringement in commerce and the usage of
trademarks in the field of education. Further, the deliberation
involved in selecting a school for one‟s ward is an exercise
that consumes one‟s life during the deliberation, and there is
much anxious hand ringing, stress and tears that the process
involves and, a lot of due diligence is done in order to ensure
an informed choice. The Relationship with a school is not a
momentary one like a FMCG Product, but is a life long filial
relationship, which continues to exists even after one has left
his alma mater. Thus, there being no danger of confusion in
such a case as the reasonable man in this situation will never
have imperfect recollection rather, he would be armed with
much more knowledge than can be gathered by merely
looking at trade mark passively. In a catena of judgments the
Courts have dealt with this aspect and have laid down that
there can be no confusion in the case of trade marks in the
field of education in both school and colleges.
Skyline Education Institute v. S.L. Vaswani [(2010) 2
SCC 142] at Para 26
S.K. Sachdeva v. Shri Educare Limited [2016
SCCOnline Delhi 473] at Para 21
Shri Ram Education Trust v. SRF Foundation [2016
SCCOnline Delhi 472] at Para 19
Khoday Distilleries v. Scotch Whiskey Association
[(2008) 10 SCC 723] at Para 74-77
Cadlla Healthcare Ltd. v. Cadila Pharmaceuticals
[(2001) 5 SCC 73] at Para 16 & 35
(xv) It is the case of the Defendant that the highest protection
available to any trademark, is its registration and exclusive
usage, which by the own admission of the Plaintiff has been
waived off. Also, the protection available to a mark is under
the category/class under which it is registered and the same
cannot be extended to all the classes/categories under the
Trademark Act. It is an admitted position that the Trademark
of the Plaintiff is under objections under Class 41 of the
Trademark Act and the right for exclusive usage of the words
"Delhi" "Public" and "School" has been surrendered by the
Plaintiff under Classes 16, 35, 36, 41 and 42 way back in the
year 2008. The same is also available on record of this Court
(at pages 36-51) of the Defendants documents filed along
with the Reply to Application under Order XXXIX Rule 1 &
2 filed by the Plaintiff.
(xvi) Plaintiff concedes that the Defendant No. 1 has
employed an Advisory and words on crest about
Foundation/Dipsites Initiative but has stated that the same is
in small font. Hence, the complaint of the Plaintiff is about
font and the same can be worked around (Rejoinder Pg. 39).
The Advisory has been published right from the beginning
putting defendants in better position than parties allowed to
use trade marks by court subject to Disclaimers. (Shri Ram
School case, Goenka School Case).
(xvii) Plaintiff also seems to be making false statement about
Delhi Public School Ghaziabad. It‟s a society created by
Plaintiff society members some more than two decades back
and is still operational. Meanwhile the following are active:
DELHI POLICE PUBLIC SCHOOL, Delhi Public School
Pvt Ltd, Delhi Public Educational Society, Modern Delhi
Public School, North Delhi Public School, all public sector
Delhi Public Schools, DPS Kids etc.
NO CASE IS MADE OUT FOR COPYRIGHT
INFRINGEMENT ON UNREGISTERED LOGO
(xviii) No Copyright vests in the Plaintiff with regard to the
logo of the Defendant No.1 as it was designed and used by
Defendant No. 2. The Logo used by the Defendant No.1 was
prepared on the basis of the inputs and ideas given by
Defendant No. 2 in his personal capacity to an Art Teacher
for his use. The artist has given affidavit that she did it for
Defendant No. 2. (Page 33-35 of the Documents filed by the
Defendant along with its Reply). It is a very interesting aspect
that in the Plaint and the Application the Plaintiff Society
does not even say who made the drawing and merely states
that a juristic person (Plaintiff Society) conceived and
adopted another crest logo for the schools without a whisper
regarding the author or their agreement with the author for the
assignment of the artistic work to the Plaintiff. In this regard
he pointed a coordinate bench of this Court in Tech Plus
Media Private Ltd. vs. Jyotijanda & Ors. [2014 (60) PTC
121 (Del)] held at Para 20 that "The plaintiff is a juristic
person and is incapable of being the author of any work in
which copyright may exist. However the plaintiff can be the
owner of a copyright under an agreement with the author of
the said worl. For the plaintiff to maintain the present suit, it
is incumbent upon the plaintiff to disclose the said work and
the author thereof and the agreement under which the author
has made the plaintiff the owner of the copyright in the said
work". He would state, the present and past letter heads of the
Plaintiff Society has never used the crest after about 2004.
33. He would rely upon the following judgments in support of his
contention:-
S. JUDGMENTS CITATION
NO
1. CADILA HEALTHCARE LTD. VS (2001) 5 SCC 73
CADILA PHARMACEUTICALS
LTD.
2. KHODAY DISTILLERIES (2008) 10 SCC 723
LIMITED VS. SCOTCH WHISKEY
ASSOCIATION
3. GOENKA INSTITUTE OF ILR (2009) VI DELHI
ANJANI KUMAR GOENKA &
ORS.
4. ARAVIND LABORATORIES VS 2011-4-L.W. 55
MODICARE
5. SHANMUGAVEL VS 1995(II) CTC 260
ASSOCIATED PUBLISHERS
(MADRAS) LTD.
6. ST. STEPHENS COLLEGE VS ST. (2011) SCC ONLINE
STEPHENS COLLEGE ALUMNI DEL 4184; (2011)
ASSOCIATION 183 DLT 567
7. S.M. DYECHEM LTD. VS (2000) 5 SCC 573
CADBURY (INDIA)
8 J.K. OIL INDUSTRIES VS ADANI 2010 (115) DRJ 685
WILMAR LIMITED
9. WANDER LTED AND ANOTHER 1990 (SUPP) SCC
10. SHRI RAM EDUCATION TRUST 2016 SCC
VS SRF FOUNDATION ONLINE DEL 472
11. S.K. SACHDEVA VS SHRI 2016 SCC ONLINE
EDUCARE LTD. DEL 473
12. RAJESH JAIN VS. AMIT JAIN & 2014 SCC ONLINE
ORS. DEL 1984
13. HEINZ ITALIA & ANR VS. (2007) 6 SCC 1
DABUR INDIA LTD.
14. SKYLINE EDUCATION (2010) 2 SCC 142
INSTITUTE VS S.L. VASWANI &
ANR
15. AMRITDHARA PHARMACY VS. (1963) 2 SCR 484
SATYA DEO GUPTA
16. STAR INDIA PVT. LTD. VS. LEO 2002 SCC ONLINE
BURNETT INDIA PVT LTD. BOM 942
17. M/S KIRORIMAL KASHIRAM 2010SCC ONLINE
MARKETING & AGENCIES PVT. DEL 2933
LTD. VS. M/S SHREE SITA
CHAWAL UDYOG MILL
18. JAMES CHADWICK & BROS. 1951 SCC ONLINE
LTD. VS. THE NATIONAL BOM 33
SEWING THREAD CO. LTD.
19. S. SYED MOHIDEEN VS. P. (2016) 2 SCC 683
SULOCHANA BAI
20. SHRI EDUCARE LTD AND ANR Special Leave to
VS S.K. SACHDEVA AND ANR Appeal (C) No(s).
4667/2016 Date of
Decision:04/03/2016
21. SATILILA CHARITABLE 2005(30)PTC561(Del)
SOCIETY AND ANR. VS.
SKYLINE EDUCATION
INSTITUTE (I) (P) LTD.
22. TECH PLUS MEDIA PRIVATE 2014 (60) PTC 121
LTD. VS. JYOTIJANDA & ORS. (Del)
23. INDIA HABITAT CENTRE MIPR 2008 (2) 0379
THROUGH ITS DIRECTOR VS.
SUNITA AEREN, SANJEEV J.
AEREN, INDIRAPURAM
HABITAT CENTRE AND VICE
CHAIRMAN, GHAZIABAD
DEVELOPMENT AUTHORITY
34. Having heard the learned counsel for the parties, the issue need to
be considered at this stage, is whether the plaintiff has made out a prima
facie case and balance of convenience is in its favour for grant of interim
relief restraining the defendants from using the trademark/name "DPS"
prefixed to the words "World Foundation" and "World School", which is
a case of infringement and /or passing off by the defendant No. 1, as the
school of the plaintiff and further adopting the crest/logo in violation of
copy right of the plaintiff‟s. It is not disputed that the plaintiff‟s society
has the registration of the trademark "Delhi Public School" in several
classes 16, 35, 36, 42 and similarly in trademark/name "DPS" in several
classes but not in class 41 and the registration of the crest logo of the
school at (1) of the Annexure-A to this judgment.
35. It is noted from the above that the plaintiff society was initially
formed in the year 1948-49 when it started the Delhi Public School. In
the year 1962, the name of the society was changed to Delhi Public
School Society. The plaintiff established various schools in India and
abroad. The schools established by the society are 11 in number and are
known as core schools. It has also entered into an agreements with other
societies/trusts for establishing various schools known as affiliated
schools. It had also schools established outside India.
36. The case of the plaintiff is that the use of mark/name "DPS" are so
extensive that the said mark/words have always been pursued by the
general public as indicative of the source of the plaintiff and therefore,
the aforesaid mark is associated by the general public with the plaintiff
and nobody else.
37. The defendant No. 1‟s trustees include the spouse of the defendant
No. 2, who was a life member of the plaintiff society and held the
position of the President of the plaintiff society for ten years. The
defendant No. 2 was the founding President of the "Dipsites"
Association (Alumni Association) which is in existence since 1982 and
is a life member of the same. The case of the defendant No. 1 is that the
goodwill that the plaintiff is seeking to appropriate itself, is actually the
goodwill generated by Dipsites and as such, it belongs to each and every
Dipsite, staff and teacher and not to anyone else. In other words, the
alumni of Delhi Public School, its teachers/staff have a filial link to
various Delhi Public Schools, and where the name "DPS" is derived
from. The adoption of the name "DPS World" where DPS stands for
"Dipsites" is honest and legitimate adoption as members have a filial
link.
Plea of Infringement:
38. There is no dispute that the suit has been filed by the plaintiff for
infringement of the trademark/name „DPS‟. It is also not in dispute that
the plaintiff has registration of trademark/name „DPS‟ in class 16 paper,
cardboard, photographs, stationary etc, Class 35 advertising, business
management, business administration, office functions, Class 36
insurance, financial affairs, monetary affairs, real estate affairs and Class
42 food and drink, medical, industrial research and computer
programming and the trademark/name „Delhi Public School‟ in class 16,
35 and 36. In order to constitute Infringement under the provisions of
Section 29 of the Trademarks Act, it would be necessary to show that the
impugned trademark is identical or deceptively similar to the registered
trademark and once the plaintiff is able to establish that the impugned
mark is identical or deceptively similar to the registered mark, then, it is
irrelevant whether the defendant No. 1 is using the impugned mark in
respect of the goods and services which are not similar in nature. In the
case in hand, even if the registration of the trademark „DPS‟ is not in
class 41, the plaintiff having registration in other classes would be
entitled to protection. It is registered in respect of goods such as printed
matter, goods made from paper and card board, stationery, adhesives for
stationery instructional and teaching material etc. as also in respect of
food, drink, computer programming, scientific and industrial research.
The mark/name of the defendant No. 1 „DPS World Foundation‟ or
„DPS World School‟, would surely, cause infringement of the registered
trademark „DPS‟ of the plaintiff.
Passing off:
39. Further, from the perusal of various documents filed and referred
to during the submissions, the following is noted:
(i) In the circular dated June 12, 2015, the Founding Trustees of
defendant No. 1 themselves referred to "DPS" at various places, which
if read in context is, a reference to the Delhi Public School.
(ii) The "DPS" and "Dipsites" are referred to in different context i.e. as a
School and as Alumni Association respectively, .
(iii) In letter dated August 21, 2004 (page 88), the words "DPS" refer to
the Delhi Public School. Similarly, the brochure giving the history of
„DPS World‟ at page 91, refers to the „DPS‟ in the context of Delhi
Public School.
(iv) The membership form of defendant No. 1 which depicts "DPS" at
different places is also in the context of Delhi Public School.
(v) The Charter of DPS World Foundation depicts "DPS" in the context
of Delhi Public School. In fact, the same depicts DPS/Dipsites in the
context of Delhi Public School and alumni of the schools.
(vi) The correspondence at page 257-261 of the plaintiff‟s documents
referred to the Delhi Public School Society as DPS.
(vii) Similarly, in various agreements signed by the defendant No. 2 in
his capacity as President of the Society refers to Delhi Public School
Society as DPSS.
(viii) In the booklet issued on completion of 50 years of the existence of
Delhi Public School, Mathura Road, New Delhi, the same is referred as
DPS.
40. From the above, it is clear (at least at this stage) that, the
mark/name "DPS" owe its origin to Delhi Public School and not to
„Dipsites‟ as sought to be contended by Mr. Sibal. Further, it is noted
that, the spouse of the defendant No. 2, who is the trustee of defendant
No. 1, was herself not a „Dipsite‟. That apart, the Institutional
membership of the defendant No. 1 is also open to a Trust/Society
intending to set up a DPS World School in India/abroad, with no earlier
connection with Delhi Public School. So, to connect defendant No. 1
with Dipsites Association is not appealing. It is also noted, the aims and
objectives of the Dipsites Association includes, to aid and assist the
Managing Committees of the schools in all matters, which are the
schools under the plaintiff. The aims and objective nowhere stipulates,
establishment of schools.
41. It is a matter of record, in terms of the various judgments/orders
passed with regard to the mark/name "DPS", this Court has held that,
schools established by the plaintiff society, are known as Delhi Public
Schools and are popular by the branch names and the public at large and
students, staff refers to the same as „DPS‟.
42. Insofar as the submission of Mr. Sibal, relying upon the judgment
of this Court in the case of J.K.Oil Industries (supra), wherein, this
Court has held that, in order to bring home the tort of passing off, the
plaintiff has to establish and prove the three tests i.e. (i) the defendant
has made a false representation or implied deception. Mere confusion
will not suffice; (ii) because of such false representation, an unwary
consumer is deceived though, there is no necessity to prove intent; (iii)
the false representation has injured the plaintiff‟s goodwill and not just
its reputation, is concerned, suffice to say, the ingredients of passing
off as referred to above, will have to be proved by the plaintiff by
leading evidence during the course of the trial.
43. The test of confusion and deception in order to prove the case of
passing off has been very well discussed in the case of Laxmikant V.
Patel vs. Chetanbhat Shah and Another (supra), wherein the Supreme
Court while considering a plea of passing off and grant of ad interim
injunction held, in no uncertain terms that a person may sell his goods or
deliver his services under a trading name or style which, with the
passage of time, may acquire a reputation or goodwill and may become a
property to be protected by the Courts. It was held that a competitor
initiating sale of goods or services in the same name or by imitating that
name causes injury to the business of one who has the property in that
name. It was held that honesty and fair play are and ought to be the basic
policy in the world of business and when a person adopts or intends to
adopt a name in connection with his business or services which already
belongs to someone else, it results in confusion and has the propensity of
diverting the customers and clients of someone else to himself and
thereby resulting in injury.
It was held in Laxmikant V. Patel (supra) that the principles which apply
to trademark are applicable to trade name also. Para 10 of the aforesaid
judgment reads as under:-
"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 his 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 adopt 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."
In this case, the Supreme Court further observed that:
"Where there is probability of confusion in business, an
injunction will be granted even though the defendants adopted
the name innocently."
On a prima facie view, based on the documents, orders, this Court is of
the view that, the plaintiff has made out a case for interim relief with
regard to the usage of the trademark „DPS‟. Further, the balance of
convenience is also in favour of the plaintiff.
44. The reliance placed by Mr. Sibal, on the judgment of Satilila
Charitable Society and Anr. (supra) to contend that the education has
never been treated as trade or business in this country and since time
immemorial, it has been treated as religious duty and charitable activity,
is concerned, suffice to state, in the present day context, with
privatisation, the position has changed. The fact that the defendant No. 1
has made membership open to the institutional members on payment of
fee, surely, the belief that the education is religious duty and charitable
activity, is weaning. In any case, such a plea need to be considered at a
later stage, after the trial is concluded, based on evidence.
45. Insofar as the judgment of Shri Ram Education Trust (supra) is
concerned, the Division Bench has primarily set aside the order of the
learned Single Judge, by holding in para 15 and 16 as under:
"15. The Plaintiffs have not been able to prima facie show
that they are entitled to use the family name to the exclusion
of the Defendant. Both the brother having common lineage,
prima facie have common rights and cannot exclude the
other. It is not disputed that the name SHRI RAM was first
used by Late Sir Shri Ram, who established educational
institutions such as Shriram College of Commerce, Lady
Shriram College for Women, Shriram Institute for Industrial
Research etc. The name SHRI RAM was adopted by the
family in relation to their respective endeavours.
16. When the name SHRI RAM has admittedly been first
adopted by the grandfather of the parties, the plaintiffs
cannot appropriate the same to the exclusion of the
defendant. The goodwill and reputation in the trademark
adopted by the grandfather shall enure to the benefit of all
the heirs, unless something to the contrary is shown so as to
exclude the other heirs. One member of the family cannot,
without something more being shown to the contrary, claim
exclusive ownership of the mark. All the heirs of the person
who first adopted a mark and put the same to use and
earned goodwill and reputation shall, prima facie, have
equal rights to adopt and use the same. Something more
than mere prior adoption by one of the heirs would have to
be shown so as to extinguish the rights of the other heirs".
The case so relied upon is not applicable to the facts of this case and is
distinguishable.
46. Insofar as the contention of Mr. Sibal that Delhi Public School is
neither a derived word nor an invented word and is a classical example
of generic name, is concerned, suffice to state, the mark "Delhi Public
School", is registered as a trademark in different classes way back in the
year 2007. That apart, the mark/name „Delhi Public School‟ was coined
65 years back. It needs to be seen that the trademark/name Delhi Public
School has acquired a secondary meaning to transform it and give it a
distinctiveness with an exclusive right with registered/prior user, which
requires evidence to be laid during the course of trial. Be that as it may,
in the case in hand, the issue is related to the trademark/name „DPS‟, by
which, the schools of the plaintiff are recognised. It is a matter of
evidence that, DPS has attained distinctiveness, goodwill and reputation.
That apart, the reliance placed by Mr. Sethi on several orders of this
Court in support of his contention, wherein, this Court had held "DPS"
enjoyed goodwill and reputation in the field of school education, is a
relevant factor for determining the prima facie case in favour of the
plaintiff.
47. Insofar as the submission of Mr. Sibal that there is a difference
between the trademark usage in commerce and usage of trademark in
education, is concerned, the same would not be correct in the present day
context. Be that as it may, it needs to be ascertained in the trial, whether
the usage of DPS would not create confusion in the mind of a parent
while choosing the school of the plaintiff and the judgments relied upon
by Mr. Sibal in Skyline Education Institute (supra), S.K. Sachdeva v.
Shri Educare Limited (supra), Khoday Distilleries (supra) and Cadilla
Healthcare Ltd. (supra) would not be relevant while deciding the issue
of grant of interim relief.
48. The submission of Mr. Sibal that the defendant No. 1 has suo
moto and right from its inception has been showing their disassociation
with the plaintiff society by putting up an Advisory, which reads as
under:
"A Dipsites Knowledge Initiative and an independent
effort of DPS Alumin (Dipsites). Not a part of Delhi
Public School Society, New Delhi"
49. Suffice to state, the Advisory as noted at page 102 is only on the
website of the defendant No. 1. Such an Advisory has not been put in
the various advertisements issued in newspapers. The advertisement
reads as "A Dipsites Knowledge Initiative" which is different from the
Advisory issued by the defendant No. 1 on its website. Still, it is a
matter of evidence whether such an Advisory would not create confusion
or is sufficient notice to the public at large that the defendant No. 1 is not
associated with the plaintiff in any manner, or would not pass off its
institution/schools as the plaintiff‟s schools. Further, it need to be seen,
that, whether the Advisory is sufficient for the plaintiff to protect its
common law right in trademark, when I note, in one of the
advertisements, (at page 245 of the plaintiff‟s documents), the
photograph of defendant No. 2 is shown, who, in terms of the stand of
the defendant No. 1, is one of the most well-known and prominent
alumni of the plaintiff school, and in fact, the Delhi Public School has
50. The submission of Mr. Sibal, by referring to various documents,
that the plaintiff has given up the exclusive right on the mark Delhi
Public School and its device Torch (Mashaal), is concerned, the same
has been denied by the plaintiff in its rejoinder. Rather, it is the case of
the plaintiff that the trademark certificate over the logo at (1) to
Annexure-A, as set out in class 16 reflects that the trademark is subject
to the condition and limitation that the plaintiff‟s society has "no
exclusive right over the device of Torch separately and Delhi Public
School". It is the stand of the plaintiff that from the letter of the attorney
of the plaintiff dated August 25, 2008, the plaintiff has not agreed to
give up exclusive rights. Similar is the case with respect to the logo set
out under class 35 and 36 and insofar as the logo set out under class 41
i.e. the education which records that it is subject to the condition and
limitation of "no right to Delhi Public School separately", the said
condition is with respect to the label mark at (1) to Annexure-A and not
in respect to word mark „Delhi Public School‟.
51. One of the submissions of Mr. Sibal is that the delay would
disentitle the plaintiff the relief inasmuch as the plaintiff by its own
admission, became cognizant of the defendant No. 1 in the month of July
2015 and despite such knowledge, the plaintiff has not taken any steps
to protect the trademark till February 2016, when the present suit was
filed. Suffice to state, the reliance has been placed by Mr. Sethi on the
judgment of the Supreme court in the case of Midas Hygiene Industries
(P) Ltd. and Another (supra), wherein, this Court has held 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".
52. That apart, in Ramdev Food Products Pvt. Ltd. (supra), in paras
106 to 111, the Supreme Court held as under:-
" 106. In M/s. Power Control Appliances and Others
v. Sumeet Machines Pvt. Ltd. [(1994) 2 SCC 448], this
Court stated:
"Acquiescence is sitting by, when another is invading
the rights and spending money on it. It is a course of
conduct inconsistent with the claim for exclusive rights
in a trade mark, trade name etc. It implies positive acts;
not merely silence or inaction such as is involved in
laches......."
107. In an infringement of trade mark, delay by itself
may not be a ground for refusing to issue injunction as
has been observed by Lahoti, J. (as His Lordship then
was) in Midas Hygiene Industries (P) Ltd. v. Sudhir
Bhatia and Others [(2004) 3 SCC 90] in the following
terms:
"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." (Emphasis
supplied)
108. The defence of acquiescence, thus, would be
satisfied when the plaintiff assents to or lay by in
relation to the acts of another person and in view of that
assent or laying by and consequent acts it would be
unjust in all the circumstances to grant the specific
relief.
109. Kerr in his "Treatise on the Law and Practice of
Injunction", Sixth Edition at pages 360-361 states as
under:
"Mere delay after knowledge of the infringement to take
proceedings, not sufficient to call the Statute of
Limitations into operation, or where the infringement
continues, is not, it seems, a bar to the right of an
injunction at the trial. Lapse of time unaccompanied by
anything else is, it seems, no more a bar to a suit for an
injunction in aid of the legal right than it is to an action
deceit.
But delay may cause the Court to refuse an interlocutory
injunction, especially if the defendant has built up a
trade in which he has notoriously used the mark..."
110. Specific knowledge on the part of the plaintiff and
prejudice suffered by the defendant is also a relevant
factor. [See Spry on Equitable Remedies, Fourth
Edition, page 433].
111. Applying the aforementioned principles in the
instant case, it is evident that the time gap between the
issuance of the notice and filing of an application for
grant of injunction was not a voluntary act on the part
of the appellant herein. It had to wait for the outcome of
various proceedings pending before different courts.
The respondents having themselves taking recourse to
judicial proceedings, as noticed hereinbefore, cannot
now be permitted to set up the defence of acquiescence
on the part of the appellant. Indisputably, in a case of
infringement of trade mark, injunction would ordinarily
follow where it is established that the defendant had
infringed the trade mark and had not been able to
discharge its burden as regard the defence taken by it."
53. It is also noted from that, a show cause notice was issued to the
defendant No. 2 for having association in the creation of the defendant
No. 1; adoption of impugned infringing trademark; for setting up the
schools across India; franchise of such schools to other people which
was in contradiction to the position then held by him as a life member of
the plaintiff. Defendant No. 2 submitted his reply on August 28, 2015,
wherein, according to the plaintiff, the defendant No. 2 has admitted that
he is associated with the defendant No. 1. Vide notice dated September
17, 2015 issued by the plaintiff to the defendant No. 2, the defendant No.
2 ceased to be a life member of the plaintiff with effect from October 17,
2015. The defendant No. 2 has filed a suit, CS (OS) 3094/2015,
declaring the notice dated September 17, 2015 as null and void. This
suit has been filed in February 2016. In any case, the issue of delay is a
mixed question of fact and law and needs to be decided in trial upon
furnishing evidence.
Crest Logo:
54. There is no dispute that the plaintiff has registration in the crest
logo at 1 of Annexure-A to this judgment. It is the case of the plaintiff
that the crest logo at 3 of Annexure „A‟ infringes the crest logo/mark at 1
of Annexure-A and also the plaintiff copyright with regard to identical
crest logo at 2 of Annexure-A.
55. There is also no dispute that the crest logo at 1 of Annexure-A is
registered in class 41 (Education). It is to be seen whether the crest logo
of the defendant No. 1 at 3 of Annexure-A is identical or deceptively
similar to the crest logo at 1 to the plaintiff. Apparently, it does not
appear to be identical or deceptively similar for the plaintiff to contend
infringement of its registered crest logo at 1 of Annexure-A. The only
common feature, is the Torch (Mashaal). The crest logo of the defendant
No. 1 does not feature the hand. Additionaly, it has a book in the
background. That apart, the crest logo of the defendant has creepers on
both sides, which are not there with the crest logo of the plaintiff. The
crest logo of the defendant No. 1 is not identical or deceptively similar
so as to infringe the registered crest logo of the plaintiff. I may note,
here, that the defendant No. 1 has stated in its reply that it is neither
using the registered crest logo of the plaintiff at 1 of Annexure „A‟, nor it
intends to use the same in future.
Crest logo at 2 and 3 of Annexure-A:
56. Insofar as crest logo at 2 of Annexure-A is concerned, the plaint
records, that in the year 1996-97, the plaintiff conceived and adopted the
crest of the school which comprises of a Torch (Mashaal) on a book
along with the school moto "Service Before Self" written inside a shield
device surrounded by creepers and the words "Delhi Public School",
written at the bottom with other distinctive artistic feature comprised
therein. The said artistic device was first created and designed by the
plaintiff and which crest is an original artistic work and the plaintiff is
the first owner of the same under the provisions of the Copyright Act,
1957.
57. The defendant No. 1, in its reply, has taken a stand that the
plaintiff has not named the persons, who has designed the same. It is
stated, no case can be made out from infringement or passing off unless
the name of the person is disclosed or ascertained in the pleadings. It is
also stated that the idea and preliminary drawings were conceived by the
defendant No. 2 and the crest logo was drawn by an Art Teacher from
Delhi Public School, Vasant Kunj, in her private capacity. The defendant
No. 1 relied upon an affidavit filed by the Art Teacher, wherein, the
Teacher reiterated the said fact. In other words, it is the case of the
defendant No. 1 that the defendant No. 2 is the rightful owner of the
copyright so far as the crest logo is concerned. Further, the defendant
No. 1 has highlighted the distinctive features between its crest logo and
the plaintiff‟s crest logo.
58. In rejoinder, the plaintiff, denying the averments that the idea was
conceived by defendant No. 2 in his personal capacity, has mentioned
the name of Art Teacher as Santosh Jain, who designed the logo in 1996-
97 in her official capacity on the instructions of the then, the President of
the plaintiff, i.e. defendant No. 2. It is also stated, that the defendant
No. 2 has never used the logo at 2 of Annexure-A in his personal
capacity, but used the same in official capacity as an office bearer of the
plaintiff. It is also stated that after defendant No. 2 ceased to be the
President of the plaintiff, he continued to use the crest logo, fully
knowing that it is the plaintiff‟s property.
59. Noting the averments made by the parties herein, the issues i.e. in
what capacity, the defendant No. 2 gave instructions to Santosh Jain;
what is the consequence of an employee designing a work in which
copyright exists; the usage of the logo by the defendant No. 2 as
President of the plaintiff; the usage of the logo by the plaintiff after the
defendant No. 2 ceased to be the President of the plaintiff etc. need to be
ascertained, which is possible by way of evidence to be adduced during
the trial.
60. The plea of Mr. Sibal that the plaintiff being a juristic person, is
incapable of being an author of the work in which copyright exists, by
relying upon the judgment of this Court in TechPlus Media Ltd. (supra)
is appealing, but the fact that the plaintiff has named the Art Teacher,
who has designed the crest logo in the rejoinder, cannot be overlooked.
Surely, the effect of such a stand in the rejoinder and not in the plaint,
need to be considered, but, what is more appealing is the plea of Mr.
Sibal that the last time, the plaintiff has used the crest logo at 2 of
Annexure A was only in the year 2008 and not thereafter. Even though,
Mr. Sandeep Sethi, relied upon page 248 of the plaintiff‟s document,
which is a letter dated June 8, 2015 of the Delhi Private School in Dubai,
to contend that the crest logo is still being used, suffice to state, the
school concerned, was Delhi Private School in Dubai. There is no
explanation, nor any document has been shown by the plaintiff to show
that, even after 2008 till recently, the crest logo has been in continuous
use in India. In the absence of any evidence to controvert the plea of Mr.
Sibal, this Court, is of the view that, the discretion cannot be exercised in
favour of the plaintiff on the aspect of crest logo while considering the
application under Order 39 Rules 1 and 2 CPC.
61. The aforesaid conclusion being in the facts of this case, I do not
think, it is necessary to deal with the judgments referred to by the
counsel for the parties.
62. In view of the detailed discussion above, I am of the view that the
application needs to be allowed on the following terms:
1. The defendants, their life trustees, terms trustees, members,
franchisees, officers, employees, agents, delegates,
representatives, associates and all other acting for and on their
behalf, are restrained from offering their services, advertising,
offering franchisees, selling goods, and stationery, adopting, using
and/or dealing in any manner with the registered mark/name
„DPS‟ or any other mark identical or deceptively similar to the
registered mark of the plaintiff, amounting to infringement and
passing off the plaintiff‟s registered trademark till the disposal of
this suit;
2. The defendants, their life trustees, terms trustees, members,
franchisees, officers, employees, agents, delegates,
representatives, associates and all other acting for and on their
behalf are restrained from using the impugned trademark/name
"DPS", or any other trademark identical or deceptively similar to
it, amounting to passing off the plaintiff‟s trademark/name, till the
disposal of the suit.
The application is disposed of.
CS (COMM) 154/2016
Let the written statement be filed by the defendants within four
weeks. Replication by the plaintiff within three weeks thereafter.
List before the Joint Registrar on July 18, 2016.
(V.KAMESWAR RAO)
JUDGE
APRIL 18, 2016
akb
ANNEXURE „A‟
Plaintiff‟s registered mark Plaintiff‟s unregistered mark
(1) (2)
Defendant No. 1‟s mark
