Delhi High Court
Rockfurd Education Pvt. Ltd. & ... vs Luv Kush Infrastructure Pvt. Ltd. on 28 November, 2017
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 28.11.2017
+ CS(OS) 234/2014
ROCKFURD EDUCATION PVT. LTD. & ORS. ..... Plaintiffs
Through Mr. M.K.Miglani and Mr. Gaurav
Miglani, Advs.
versus
LUV KUSH INFRASTRUCTURE PVT. LTD. .... Defendant
Through None.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (ORAL)
1. Arguments have been heard in the suit. Despite service none has
appeared on behalf of Defendants. Since, Defendant did not appear, nor
written statement was filed, they were proceeded ex parte vide order dated
15.04.2014.
2. The plaintiffs have filed the present suit seeking a decree of
permanent injunction against the defendant for infringement of the registered
Trade Marks/labels of the plaintiffs „SHEMROCK‟ and „SHEMFORD‟ and
for claiming rights in their registered Trade Mark. Other connected reliefs
are also sought.
3. It is the contention of the plaintiffs that they provide services relating
to education and training through running schools under the trademarks
SHEMROCK and SHEMFORD for the past several years. It is stated that
CS(OS) 234/2014 Page 1
the Plaintiff no. 1 and 3 are companies registered under the Companies Act,
1956 and are alleged to have rights to use and license the trademarks
SHEMROCK and SHEMFORD respectively. The Plaintiff no. 4 who is one
of the Directors of the Plaintiff no. 1 and 3 is stated to be the registered
owner and proprietor of the trademark SHEMFORD, while the Plaintiff no.
2 is the registered owner and proprietor of trademark SHEMROCK.
4. It is stated that the Plaintiff no. 2 and her family members laid down
the foundation of SHEMROCK pre-schools in 1989, and the Plaintiff‟s
schools under the said trademark are now spread all over India with over 250
branches, both self-owned and franchised. It is stated that over 150,000
children have received the foundation of their success in their SHEMROCK
pre-schools since 1989 and Plaintiff no. 2 has been conferred with several
awards for revolutionizing the pre-school education in India. The Plaintiffs
further state that in 2007, so as to expand their educational activities from a
pre-school curriculum to a full-fledged school, the Plaintiff no. 4, who is
also the son of Plaintiff no. 2 adopted the trademark SHEMFORD and
started to use the same.
5. The Plaintiff no. 2 is stated to be registered proprietor of trademark
(device) SHEMROCK under no. 1243533 in Class 41, in respect of services,
inter alia, education and training, while the Plaintiff no. 4 is the registered
proprietor of trademark SHEMFORD under no. 1697134 in Class 41, in
respect of services, inter alia, education and training, and as such the
Plaintiffs have an exclusive right to use the said trademarks. It is further
stated that the Plaintiff no. 2 has created an artistic logo (flower design) of
SHEMROCK copyrights which has been registered by the said Plaintiff
under no. A-103530/2013, and as such the Plaintiff no. 2 has exclusive rights
CS(OS) 234/2014 Page 2
to reproduce the said logo.
6. It is stated that the said trademarks have been alleged to have been
continuously and extensively used, and the Plaintiffs have furnished their
revenue figures under the respective trademarks details of which are
mentioned in Para 15 of the Plaint. It is further stated that the said
trademarks have been widely advertised through various modes of publicity,
including print media and the expenses incurred on promotion of said
trademarks run into several lakhs of rupees. The Plaintiffs urge that
trademarks SHEMROCK and SHEMFORD are inherently distinctive and
have even otherwise acquired distinctiveness through prolonged, continuous
and extensive use, and as such the said trademarks have come to be
associated with the Plaintiffs. It is further urged by the Plaintiffs that their
group of schools has been featured in Limca Book of World Record for
having launched most schools in the shortest time and the same is indicative
of the widespread recognition and goodwill of the Plaintiffs‟ said
trademarks.
7. Defendant is stated to be an ex-master franchisee of the Plaintiff no. 1
who was associated with the Plaintiff no. 1 till January 08, 2013, when the
Master Franchise Agreement executed between the Defendant and the
Plaintiff no. 1 on January 08, 2010, expired by the efflux of time. It is stated
that the Defendant was appointed as a Master Franchisee for the state of the
Gujarat by virtue of the said Agreement dated January 08, 2010 and the
Defendant was under an obligation to introduce potential franchisees to the
Plaintiffs and help them set up schools under the said trademarks
SHEMROCK and SHEMFORD in Gujarat.
8. The Plaintiffs state that in the month of January 2014 they were
CS(OS) 234/2014 Page 3
surprised to learn from one of their proposed franchisee in the region that the
Defendant had itself started operating a school under the name SHEMROCK
AND SHEMFORD SCHOOL. It is stated that the Plaintiff in the second
week of January, 2014 made inquiries which confirmed the above activities
of the Defendant. It is stated that the said activity of the Defendant is not
only in violation of the Franchise Agreement executed between the Plaintiff
no. 1 and the Defendant, but the same is also in violation of the statutory and
common law rights of the Plaintiffs in the said trademark SHEMROCK and
SHEMFORD and the use of the said trademarks by the Defendant is likely
to cause confusion and deception in the minds of public who recognize and
avail the services of the Plaintiffs under their renowned trademarks and in all
circumstances are bound to be confused by use of identical trademarks by
the Defendant.
9. The Plaintiffs further contends that Defendant is using an identical
logo "Shemrock Flower Device" as that of the Plaintiff and as such the
Defendant is liable for trademark infringement, infringement of copyright
and passing-off.
10. Sh. Amol Arora, Plaintiff no. 4, has led evidence as PW-1. He has
exhibited a list as Ex. PW-1/6 which is a computer print out of the list of
SHEMROCK and SHEMFORD schools of the Plaintiffs. He also tendered
the registration certificate of trademark (device) SHEMROCK as Ex. PW-
1/7 and the registration certificates of the mark SHEMFORD as Ex. PW-1/8
(Colly) and Ex. PW-1/9 (Colly). Exhibit PW-1/10 are copies of copyright
registration certificates issued to the Plaintiffs. Various invoices issued by
the Plaintiffs under the said trademark have been exhibited as Ex. PW-1/11
(Colly.). He has further tendered various advertisements issued by the
CS(OS) 234/2014 Page 4
Plaintiff as Ex. PW-1/13 (Colly). The certificate issued by Limca Book of
World Record in favor of Plaintiff‟s group is exhibited as Ex. PW-1/15.
11. In view of the averments made in the plaint and the un-rebutted
evidence filed by the Plaintiffs, the Plaintiffs have established that they are
the registered owners of the said trademarks SHEMROCK and
SHEMFORD, and copyrights in the Shemrock Flower Device logo thus they
have a statutory right to the exclusive use of the same.
12. The Defendant is running and operating a school under the name
SHEMROCK and SHEMFORD school causing infringement and passing
off of Plaintiffs trademarks which may not only damage the goodwill and
reputation of the plaintiffs, but shall also adversely affect the interest of
common public. The act of the Defendant lacks bonafide.
13. Accordingly, a decree is passed in favour of the plaintiffs and against
the defendant in terms of Para 33(i), (ii) and (iii) of the prayer clause of the
plaint.
14. The Plaintiffs shall be entitled to costs of the suit. Suit stands disposed
of accordingly. All pending applications, if any, stands disposed of.
JAYANT NATH, J
NOVEMBER 28, 2017/Sar
CS(OS) 234/2014 Page 5
