Delhi Public School Society vs Dps World Foundation & Anr
2018 Latest Caselaw 2111 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                  Date of decision: 5th April, 2018
+     CS(COMM) No.154/2016, IA No.6764/2017 (under Order
      XXXIX Rules 1&2 CPC), IA No.7261/2017 (under Section
      135(2) of the Trade Marks Act, 1999 and Order XXXIX
      Rules 1&2 CPC), IA No.6759/2017 (under Order XXXIX
      Rule-2A CPC) & IA No.7920/2017 (under Order I Rule 10
      CPC).
    DELHI PUBLIC SCHOOL SOCIETY                .... Plaintiff
                  Through: Mr. Sandeep Sethi, Sr. Adv. and
                            Mr. Puneet Mittal, Sr. Adv. with
                            Mr. Bhuvan Gugrani and Ms.
                            Vasudha Bajaj, Advs.
                           Versus
    DPS WORLD FOUNDATION & ANR.            ......Defendants
                  Through: Mr. Salman Khurshid, Sr. Adv.
                            with Mr. Vikramaditya Singh,
                            Adv., Mr. Rahul Dubey, Ms. Girija
                            Verma, Advs. along with defendant
                            no.2 in person Mr. Salman
                            Khurshid.
                            Mr. Aadil Singh Boparai, Ms.
                            Sakshi Kotiyal and Mr. Zafar
                            Khurshid, Advs. for Intervener -
                            Applicant.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.

The plaintiff has instituted this suit to restrain the defendants from using the name "Delhi Public School", "DPS" and the following two logos / crests:

2. Vide interim order dated 18th April, 2016, the defendants have

been restrained from using the trade mark / name "DPS".

3. In an appeal being FAO(OS)(COMM) No.21/2016 preferred by

the defendants to the Division Bench, it was inter alia held in the

judgment dated 10th April, 2017 as under:

"38. We, therefore, do not find any justifiable reason to interfere with the finding of the learned Single Judge that the name of defendant No.1 „DPS World Foundation‟ and its logo which included the plaintiff‟s registered trade mark „DPS‟ resulted in infringement under Section 29 of the Trade Marks Act, 1999.

39. However, it may be added that for the trade mark / name „Delhi Public School‟, no registration has been granted to the plaintiff till date. Moreover, as rightly contended by the appellants, it contains separate words „Delhi‟ „Public‟ „School‟ in respect of which the plaintiff cannot seek exclusive rights for passing off purposes.

40. It is also relevant to note that though there was a specific prayer in the application to grant injunction in respect of the trade mark / name „Delhi Public School‟, the same has not been granted by the learned Single Judge.

41. Therefore, may be it is open to the defendant No.1 to adopt the trade name / mark including the words „Delhi‟ „Public‟ „School‟, however, the registered trade mark / name „DPS‟ of the plaintiff cannot be used in any manner whatsoever.

The appeal is accordingly disposed of."

4. In Review Petition No.148/2017 preferred by the plaintiff

before the Division Bench, Mr. Salman Khurshid, appellant no.2

therein, assured the Division Bench that the defendants did not have

any intention of using the words „Delhi‟ „Public‟ „School‟ sequentially

and even if they used the said words, they proposed to break the

sequence either by inserting a word between the words „Delhi‟ and

„Public‟ or between the words „Public‟ and „School‟, apart from

issuing a disclaimer that they were not connected with the plaintiff in

any manner; it was further assured that the same statement would be

made before this Bench as well.

5. Being of the view that the parties, which are educational

institutions, should not spend their time and energy in Courts and

devote the same to the betterment of the education of the children

admitted to their institutions, from time to time, efforts were made for

amicable resolution of the controversy. Though at one point of time, it

appeared that a solution was in sight but the past acrimonious

relationship between the parties did not allow the said efforts to bear

fruit. Hence, issues were framed in the suit and trial commenced.

6. The counsels were heard on several pending applications and

orders thereon reserved on 18th January, 2018.

7. IA No.6764/2017 and IA No.7261/2017, both under Order

XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC)

and both filed by the plaintiff are inter alia for adjudication.

8. Vide IA No.6764/2017, the plaintiff seeks to restrain the

defendants, during the pendency of the suit, from using the registered

trade mark/name „Delhi Public School‟ of the plaintiff or any other

trade mark identical or deceptively similar thereto. It is pleaded in the

application i) that since vide order dated 18th April, 2016, the

defendants were restrained from using the plaintiff‟s trade marks /

name „DPS‟ and the logo only, therefore the scope of

FAO(OS)(COMM) No.21/2016 was confined to the trade mark / name

„DPS‟ and logo only; ii) still the Division Bench in paras

no.38 to 41 of its judgment dated 10th April, 2017 recorded as

reproduced above; iii) that since the findings given by the Division

Bench were contrary to the statements given by the defendants before

the Single Bench, the plaintiff applied for review and in which the

defendant no.2 meted out assurance as noted above; iv) that the use by the

defendants of the mark / name „Delhi Public World School‟ is

deceptively similar to the mark / name „Delhi Public School‟ of the

plaintiff; and, v) that the defendants are also describing „Delhi Public

World School‟ as a „Dipsites Knowledge Initiative‟. The plaintiff thus

seeks to restrain the defendants from infringing the registered trade

mark / name „Delhi Public School‟ of the plaintiff and from using the

word „Dipsites‟.

9. Vide IA No.7261/2017, the plaintiff seeks clarification that the

restraint order passed by this Court vide order dated 18th April, 2016

covers the mark „DPWS‟ and further seeks to restrain the defendants

from using the words / name „Delhi Public World School‟ and „Delhi

Public World Foundation‟.

10. The questions which arise for consideration are, whether this

Bench can, on merits, consider the interim reliefs aforesaid after the

disposal vide order dated 18th April, 2016 of the application of the

plaintiff under Order XXXIX Rules 1&2 of the CPC and after the

disposal of the FAO(OS)(COMM) No.21/2016 preferred thereagainst

and whether the plaintiff is entitled to the said reliefs in terms of the

order of the Division Bench and / or in terms of the order on the

Review Petition preferred by the plaintiff before the Division Bench.

11. The senior counsel for the plaintiff has argued that the plaintiff,

on 26th April, 2016, has been granted registration of mark „Delhi

Public School‟ in Class-42 and use by the defendants of „Delhi Public

World School‟ constitutes infringement thereof. It was further

contended that the test has to be applied in the background of the fact

that the defendant no.2 Salman Khurshid was the public face of the

plaintiff for ten years and has whereafter set up competing educational

institutions and cannot be permitted to use the mark / word „Delhi

Public World School‟ or „Delhi Public World Foundation‟ which are

likely to convey to the public at large, owing to the past association of

the defendant no.2 with the plaintiff, that the defendants are the same

as the plaintiff. It is further argued that the alumni of the plaintiff‟s

schools are referred to as „Dipsites‟ and the defendant no.2 is at best

one of the said alumni and cannot appropriate the word „Dipsites‟, to

himself, which belongs to the whole body of alumni of the plaintiff‟s

schools. It was yet further contended that the said use is also intended

to mislead the public.

12. Per contra, the defendant no.2 arguing in person has contended

that the plaintiff, if at all entitled to any relief, has to go back to the

Division Bench and cannot get any relief before this bench. It was

further contended that the defendants are not stopping other alumni of

the plaintiff‟s schools from using the word „Dipsites‟. It was yet

further contended that a „Delhi Public Secondary School‟ also exists.

It is also the contention that the plaintiff has not amended the plaint

for the plaintiff to be entitled to any additional interim relief than to

what the plaintiff was held entitled to in the order dated 18th April,

2016 and appeal whereagainst has also been disposed of.

13. The senior counsel for the plaintiff, in rejoinder, argued that the

objective of Dipsites Association is not to set up schools and the crest

being used by the defendants also uses the word „Dipsite‟.

14. I have considered the controversy and am of the view that even

if the plaintiff on 26th April, 2016 obtained registration of the name /

mark „Delhi Public School‟, which as on 18th April, 2016 was pending

for registration, but the said registration was granted before disposal of

the appeal preferred against the order dated 18th April, 2016 before the

Division Bench. Significantly, the Division Bench did not grant relief

to the plaintiff of restraining the defendants from infringing the mark

„Delhi Public School‟ of the plaintiff. Though, there appears to be an

error in para 39 of the judgment dated 10th April, 2017 of the Division

Bench to the extent it records that no registration had been granted to

the plaintiff of the mark „Delhi Public School‟ till then, but the

plaintiff, even while seeking review of the said judgment, does not

appear to have agitated the said aspect before the Division Bench and

was satisfied merely with the assurance given by the defendant no.2

before the Division Bench of not using the words „Delhi Public

School‟ sequentially and even if they used the said words, they would

break the sequence either by inserting a word between „Delhi‟ and

„Public‟ or between „Public‟ and „School‟.

15. In the aforesaid facts, following the principle of hierarchy of

Benches, it is felt that any exercise by this Court, to now consider the

entitlement of the plaintiff to the said relief, would be in breach

thereof and the decorum which the benches are required to maintain.

IA No.6764/2017 and IA No.7261/2017 are thus dismissed. I may

however record that the use by the defendants of „Delhi Public World

School‟ is in consonance with the assurance given by the defendant

no.2 before the Division Bench.

16. The plaintiff has also filed IA No.6759/2017 under Order

XXXIX Rule 2A CPC averring that the defendants have violated the

order dated 18th April, 2016 restraining the defendants from using the

trade mark / name „DPS‟ by using the trade mark „DPWS‟ which is

deceptively similar to the plaintiff‟s registered trade mark „DPS‟.

17. „DPWS‟ is acronym for „Delhi Public World School‟, to

restrain the defendants from using which, the applications for interim

relief have been dismissed. In this view of the matter, no case of

violation by the defendants of the order dated 18 th April, 2016 by use

of „DPWS‟ is made out.

18. IA No.6759/2017 is dismissed.

19. IA No.7920/2017 has been filed by Dipsites Association for

impleadment as defendant in this suit. It is pleaded in the said

application that the impleadment of Dipsites Association has become

imperative in the light of the fact that the plaintiff is seeking to assert

exclusive rights in the word „Dipsite‟.

20. The application is misconceived. The plaintiff is not seeking

any relief against the applicant Dipsites Association and the present lis

is a lis in personam and not in rem and the presence of the applicant

Dipsites Association is neither necessary nor proper for adjudication

of the matter in controversy in the suit.

21. IA No.7920/2017 is dismissed.

CS(COMM) No.154/2016

22. List on 11th April, 2018 as already scheduled.

RAJIV SAHAI ENDLAW, J.

APRIL 05, 2018 „gsr‟..