Ritnand Balved Education ... vs Ranchhod M Shah & Ors
2018 Latest Caselaw 6345 Del

                                                             SINDHU KRISHNAKUMAR

                                                             16.10.2018 19:57

$~
*      IN THE HIGH COURT OF DELHI AT NEW DELHI
                            Reserved on : 24th September, 2018
                            Date of decision :16th October, 2018
+                          CS (COMM) 236/2016
       RITNAND BALVED EDUCATION FOUNDATION                              ..... Plaintiff
                           Through:      Mr. Rajesh Yadav, Mr. Rajan Chawla
                                         & Mr. Shyam Singh, Advocates (M-
                                         9899649343).
                           versus

       RANCHHOD M SHAH & ORS                     ..... Defendants
                    Through: Mr. Mohan Vidhani, Mr. Rahul
                              Vidhani & Mr. Ashish Singh,
                              Advocates (M-9811083706).
       CORAM:
       JUSTICE PRATHIBA M. SINGH
                           JUDGMENT

Prathiba M. Singh, J.

1. The Plaintiff has filed the present suit seeking injunction restraining use of the name 'AMITY INTERNATIONAL SCHOOL' i.e. Defendant No.6 by Defendant No.5 - Gyanoday Educational & Medical Trust. Defendants No.1 to 4 are the trustees of the Defendant No.5's Trust.

2. The case of the Plaintiff is that it started its first school by the name of 'AMITY INTERNATIONAL SCHOOL' in 1991 in Saket, New Delhi. Over the years, it has established several schools under the name of 'AMITY INTERNATIONAL SCHOOL'. Apart from this, the Plaintiff's Trust also runs various other educational institutions including 'AMITY UNIVERSITY' in Uttar Pradesh, Rajasthan, Haryana, Madhya Pradesh, and 'AMITY LAW SCHOOL'. 'AMITY UNIVERSITY' has campuses at Noida, Gurgaon,

Lucknow, Jaipur and Gwalior. The Plaintiff claims that since it has been established, the Plaintiff has acquired a huge reputation, both in India and abroad. It has repeatedly been awarded as the "No.1 private university." According to the Plaintiff, it holds registrations in various classes, under the Trade Marks Act, 1999, as detailed in para 18 of the plaint. It operates a website called www.amity.edu. The case of the Plaintiff is that the use of 'AMITY', especially in relation to education, would constitute violation of the Plaintiff's rights and that 'AMITY' is a well -known mark under Section 2(l)(zg).

3. The defence put forth by the Defendant is that a Trust by the name Gyanada Educational Trust started AMITY SCHOOL, Bharuch as a lower primary school in 1986 for standard 1st to 3rd in Gujarat. The school has since been running and is in fact affiliated to the Central Board of Secondary Education. A large number of documents have been placed on record to submit that AMITY SCHOOL, Bharuch has been in existence since 1986. It is averred that vide a MoU dated 27th December, 2004, Gyanada Educational Trust permitted the use of the name AMITY by Defendant No.5 - Gyanoday Educational & Medical Trust, Bharuch. The said MoU is relied upon by the Defendants. It is the case of the Defendants that the Trustees of Gyanada Educational Trust are the same as those of Gyanoday Educational & Medical Trust. They belong to one family, and thus the Defendant is a prior user of the mark 'AMITY' as compared to the Plaintiff which adopted the mark 'AMITY' only in 1991.

4. The Defendant, therefore, pleads that it is a prior user of the mark 'AMITY'. Its rights to use the word 'AMITY' cannot be in any manner constrained by the Plaintiff.

5. The present suit was filed in May, 2014. On 30th May, 2014, this Court granted the following order in favour of the Plaintiff:

"Learned counsel for the plaintiff submits that plaintiff is running a school known as 'Amity International School' not only in Delhi but also in NOIDA, Ghaziabad, Gurgaon, Lucknow and Amethi as well. Plaintiff is a 'Amity Group of Education Institutions' which was established in the year 1991. Besides this, plaintiff has also 'Amity University' in Utter Pradesh, Rajasthan, Haryana and Madhya Pradesh. Plaintiff is also running 'Amity Law School', 'Amity Business School' and 'Amity School of Engineering' in various parts of the country. Plaintiff's registered trade mark 'Amity' has acquired high reputation in the field of educational activities.

It is alleged that defendants have started a school under the name and style 'Amity International School' at Bharuch, Gujarat in order to encash goodwill and reputation of plaintiff.

I have heard the learned counsel and perused the plaint along with documents annexed therewith and am of the view that plaintiff has succeeded in disclosing a, prima facie, case in its favour. In case defendants are not restrained from using the registered trade mark of the plaintiff 'Amity', plaintiff shall suffer loss and injury, inasmuch as, balance of convenience is also in favour of the plaintiff.

Accordingly, till further orders, defendants are restrained from using the registered trade mark of plaintiff 'Amity' or any other deceptively similar mark as that of plaintiff in respect of educational services."

6. However, vide order dated 24th November, 2014, on an application under Order XXXIX Rule 4 filed by the Defendant, the order was suspended in the following terms:

"IA No.23128/2014 (O.XXXIX Rule 4 CPC) & IA No.23129/2014 (O.VII Rule 10 CPC) in CS (OS) 1776/2014

1. The learned counsel for the applicants/Defendants has taken me through a host of documents placed on record including the advertisements (page nos.24, 26 and 29) which show that the Defendants had issued advertisements for hiring services for their school in the year 1986.

2. The learned counsel for the Defendants has also referred to the certificate issued with regard to affiliation to Central Board of Secondary Education (CBSE). The documents clearly reveal that the date of opening of the school, as mentioned in this certificate is 06.11.1986.

3. In para 33 of the plaint, the Plaintiff has averred that they the plaintiff came to know about existence of the Defendants' school only in September, 2013.

4. Issue notice.

5. Ms. Tanvi Misra, Advocate accepts notice.

6. Reply to the applications be filed within four weeks.

7. In the meanwhile, operation of the order dated 30.05.2014 is suspended till further orders.

8. List before the Joint Registrar for completion of pleadings on 07.04.2015."

7. The Defendants have thereafter moved an application under Order VII Rule 10 and an application for vacation of injunction and an application under Order VII Rule 10 CPC, which are being disposed of by the present order.

8. The Plaintiff had moved I.A.7611/2017 under Order XI Rule 5 calling upon the Defendants to disclose the MoU which was allegedly entered into between the Defendant No.5 and Gyanada Educational Trust. The said application was allowed on 7th February, 2018 and the Defendants were

directed to place on record the said MoU within a week.

9. On 12th April, 2018, the Joint Registrar directed the parties to be present on 16th April, 2018 for sealing of the said MoU. The Plaintiff then moved an application under Order XI Rule 5 being I.A. 4858/2018 alleging that the Defendants had deliberately laminated the MoU dated 27th December, 2014 before placing the same on record in order to avoid an examination of the authenticity of the said document. On this application, the following order was passed on 24th September, 2018:

"I.A. 4858/2018 (U/o 11 Rule 5 CPC).

1. This is an application for seeking a direction that the original MoU dated 27th December, 2004 be de- laminated and placed on record in compliance with the order dated 7th February, 2018. The original MoU was directed to be placed before the Court vide order dated 7th February, 2018 by the Ld. Joint Registrar. It is the case of the Plaintiff and the Counsel, Mr. Yadav that the Defendants, after producing the original in Court, thereafter chose to get the document laminated before filing it for placing in a sealed cover. Thus, they have effectively hindered the examination of the said MoU.

2. Since the document is now laminated, any direction for de-lamination could destroy the document irreversibly.

3. The effect of the said lamination by the Defendants and whether it was in violation of the orders of the Court including the order dated 7th February, 2018, is being left open at this stage. If the same was done in order to avoid an examination of the authenticity of the document, an adverse inference would be liable to be drawn against the Defendant. Mr. Vidhani submits that when the original document was produced before the Joint Registrar, the document was already laminated. The Court is not expressing any opinion on this submission."

Arguments were thereafter heard on all the three applications moved by the Defendants and the injunction application filed by the Plaintiff. The present order disposes of all the said applications.

10. Mr. Rajesh Yadav, Advocate appearing for the Plaintiff submits that the adoption of the name AMITY INTERNATIONAL SCHOOL by the Defendants is completely dishonest and mala fide as the name is identical to the Plaintiff's well-known range of schools called AMITY INTERNATIONAL SCHOOL. The first school of the Plaintiff having been opened in 1991, the Defendants were well aware of the reputation of the Plaintiff. He further submitted in the reply to the first examination report filed by the Defendants before the Registrar of Trademark, the Defendants took a stand that two marks are different.

11. He further submits that the Defendant's trust which is running AMITY INTERNATIONAL SCHOOL is not the same trust which established AMITY SCHOOL, Bharuch. Thus, prior user rights cannot devolve upon the present trust.

12. On the other hand, Mr. Mohan Vidhani, counsel appearing for the Defendants submits that both the trusts are run by the same management. The Trustees are the same. The adoption of the name 'AMITY' for a school was first by the Defendants and not by the Plaintiff. He heavily relies upon documentation relating to the various permissions issued by the State Education Department, Gujarat for approving the various classes of AMITY SCHOOL, Bharuch from time to time. He also relies upon the provisional affiliation with the CBSE granted in the year 2014 to AMITY SCHOOL, Bharuch. It is also submitted by Mr. Vidhani that the use of the word 'International' is descriptive and generic, and there can be no monopoly

over the word 'International'. He relies on the MoU entered into between AMITY SCHOOL, Bharuch and Georgia Southwestern State University in 2008, to submit that the Defendants were enjoying a very good reputation. He submits that as per the settled law, a prior user of a mark can never be injuncted.

13. Before going into the merits of the application for injunction, the application under Order VII Rule 10 is being decided. I.A.23129/2014 (U/o VII Rule 10 CPC)

14. The objection raised by the Defendants is that this Court does not have the territorial jurisdiction to entertain the present suit as the school is located in Gujarat. All the other educational institutions run by the Defendants are also located in Gujarat.

15. It is noticed from the documents placed on record that though the Defendants' institutions are located in Gujarat, the Defendants have obtained affiliation with the CBSE in Delhi for their schools. Moreover, the website of the Defendants' school www.aisbharuch.org is accessible across the country. Further, students who wish to acquire details about the Defendants' institutions can easily visit the website with a view to taking admission in them. The school is taking part in several activities across the country, which have been publicised in local and national media. It has also applied for a registered trademark without any territorial restriction. The website also asks teachers and educators to fill in their details and apply for jobs. All these facts go to show that though the several locations of the Defendant's educational institutions are in Gujarat, the activities of school are not restricted to the said location. Thus, there is clear use of the mark AMITY within the jurisdiction of this Court.

16. Further, even under Section 134 of the Trade Marks Act, this Court has the jurisdiction as the Plaintiff has its registered office in Delhi and does not have any institution in Bharuch, Gujarat. Thus, the tests as laid down by the Supreme Court in IPRS v Sanjay Dalia, (2015) 10 SCC 161 and a Division Bench of this Court in Ultra Home Construction Pvt. Ltd. v Purushottam Kumar Chaubey & Ors. 227 (2016) DLT 320 (DB), in order to invoke the jurisdiction of this Court are also satisfied. The relevant portion of the Ultra Home judgment is set out herein below:

"13. It is evident from the above observations that the interpretation given to the expression "carries on business" in the context of a defendant under Section 20 of the Code has also been employed in the context of a plaintiff under the said Sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under Section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of Section 134(2) or Section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be

deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of Section 134(2) and 62(2)) at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity:

        S.no Place             of Place        of Place where Place where
                Plaintiff's       Plaintiff's      cause         of Plaintiff can
                Principal         Subordinate/     action arose       additionally
                Office      (Sole Branch Office                       sue      under
                office         in                                     section 134(2)
                s.no.1)                                               and section
                                                                      62(2)
           1.           A                --               C                  A
           2.           A                B                A                  A
           3.           A                B                B                  B
           4.           A                B                C                  A
            .....

14. The present case falls under S. No. 3 in the above table. The appellant / plaintiff has its principal office in Delhi (place A). Its subordinate office is at Deogarh, Jharkhand (place B) where it runs one of its hotels (Amrapali Clarks Inn), albeit in collaboration with Clarks Inn hotels. The alleged cause of action has accrued at Deogarh, Jharkhand (place B). Therefore, the appellant/plaintiff could, in respect of the alleged cause of action in this suit, institute a suit against the defendants at Deogarh, Jharkhand (place B) but not in Delhi. Thus, the conclusion arrived at by the learned single judge that this court did not have

the territorial jurisdiction to entertain the suit cannot be faulted."

17. The present case, falls in category (4) as mentioned in the table above. The Plaintiff has its registered office in Delhi and has no office or institution in the location where the Defendants' schools are operating i.e., Bharuch. Thus, the Plaintiff is entitled to invoke the jurisdiction of this Court under Section 134 of the Act. The application under Order VII Rule 10 CPC is liable to be dismissed as this Court has jurisdiction to entertain the present suit.

I.As. 11142/2014 (stay), 23128/2014 (U/o XXXIX Rule 4 CPC)

18. The ex-parte injunction which was granted on 30th May, 2014, was suspended by this Court on 24th November, 2014, on the submission made by the Defendants that the Defendants' school was opened on 6th November, 1986. Thus, there appears to have been some confusion created between the AMITY SCHOOL, Bharuch which is not a party to the present suit and AMITY INTERNATIONAL SCHOOL- Defendant No.6.

19. From the documents placed on record, the Defendants claimed that AMITY SCHOOL, Bharuch was set up in 1986, and expanded year to year. This school was established by Gyanada Educational Trust, which is also not a party to the present suit.

20. The present suit is restricted in its relief against the AMITY INTERNATIONAL SCHOOL- Defendant No.6, and the Trust running it i.e. Defendant No.5 along with its Trustees. The injunction applications are thus restricted to the relief qua 'AMITY INTERNATIONAL SCHOOL' and the Trust running it.

21. The Defendants have argued that the trustees of the schools, AMITY

SCHOOL, Bharuch and AMITY INTERNATIONAL SCHOOL being the same, the benefit of the prior use by the Gyanada Educational Trust ought to be given to Gyanoday Educational and Medical Trust. In the written statement, though it was initially pleaded that there exists a MoU between the two Trustees, until the filing of the application for discovery by the Plaintiff, the Defendants did not file the said MoU on record. The MoU dated 27th December 2004 which was filed before this Court on 16th February, 2018, reads as under:

"Memorandum of Understanding We Gyanada Educational Trust, run a school under the name and style of AMITY since the year 1986 here by give permission to use name and style of AMITY in respect of services related to education, cultural and sporting activities to Gyanoday Educational & Medical Trust, Bharuch.

Gyanoday Educational & Medical Trust, Bharuch hereby agreed to pay Rs.1/- per year to the Gyanada Educational Trust for use of the name and style AMITY of Gyanada Educational Trust.

This Memorandum of Understanding is at will in case any dispute between the party arise in that case the opinion and desire of should be consider and the decision Gyanada Educational Trust, should be final. In witness whereof Gyanada Educational Trust and Gyanoday Educational & Medical Trust have caused their name and seal to be hereunto affixed the 27th Day of December 2004."

It is on the strength of this MoU that Defendant No.5 claims to be a prior user than the Plaintiff.

22. As per the Defendants, both the Trusts exist even as on date. Both the said trusts are independent and distinct entities and one Trust cannot be confused with the other. The Defendant no.5 claims to be a licencee of the

Gyanada Educational Trust. However, the said alleged Licensor itself does not have any statutory rights as the mark AMITY is not registered by it. The only rights, if any that Gyanada Educational Trust, may claim is in respect of the use of the name AMITY SCHOOL, Bharuch and nothing more. The use by the first trust of the name AMITY SCHOOL, Bharuch since 1986 cannot give protection to the Defendants to justify adoption of the name 'AMITY INTERNATIONAL SCHOOL', which is identical to the Plaintiff's school, in 2004. The Plaintiff's 'AMITY INTERNATIONAL SCHOOL' has been in operation since 1991 and is known by the said name. It is nigh possible that the existence of AMITY SCHOOL, Bharuch may have never come to the knowledge of the Plaintiff. However, the minute an identical name 'AMITY INTERNATIONAL SCHOOL' was adopted and trademark registration was applied for, the Plaintiff has taken action. A perusal of the website of the Defendants' school clearly shows that the entire emphasis is on 'AMITY INTERNATIONAL SCHOOL'.

23. It is a settled position under Trademark law that this area of law is meant to protect not just the rights of the owners, but also to avoid any confusion from being caused amongst the members of the public. There is no doubt that AMITY INTERNATIONAL SCHOOL of the Plaintiff is well known, and there are several branches of the said school. The use of an identical name by the Defendants would not merely confuse the students and parents but also those persons who wish to collaborate with the Defendants. There would be no way of knowing as to whether the AMITY INTERNATIONAL SCHOOL of the Defendants is the same as that of the Plaintiff or not. The area of operation i.e. education is one such area in which any chance of confusion should be completely avoided. This is

because schools, universities and colleges have very expansive activities and operations. Students studying in educational institutions participate in events, competitions, cultural festivals, and sports meets across the country. The use of identical names for two schools, completely disconnected from each other, would result in enormous confusion and could also result in having a damaging effect on careers of children. The chances of mistaken identities are very high and especially in the educational field, such confusion ought to be avoided.

24. Mr. Vidhani has relied upon a number of judgments to argue that the Defendants are the prior users of the mark. There is no doubt in the proposition that prior user rights are superior to registration as held in Century Traders v Roshan Lal Duggar, AIR 1978 Delhi 250 by a Division Bench of this Court. However, insofar as the present case is concerned, the competing marks are identical i.e. 'AMITY INTERNATIONAL SCHOOL'. The Plaintiff is the prior user of the name 'AMITY INTERNATIONAL SCHOOL' since 1991. The Defendants are subsequent users of the name 'AMITY INTERNATIONAL SCHOOL' since 2004.

25. The Defendants claim prior user rights on the basis of use of the name 'AMITY SCHOOL BHARUCH' by an affiliated trust. The question as to whether the Plaintiff can obtain an injunction against 'AMITY SCHOOL BHARUCH' run by Gyanada Educational Trust is not the subject matter of the present dispute.

26. The present dispute is restricted in its relief against the 'AMITY INTERNATIONAL SCHOOL' run by Defendant No.5 - Gyanoday Medical and Educational Trust. The only link that has been shown is the execution of the MoU between the two Trustees. The Gyanada Educational Trust does

not own any registration of the mark AMITY. The MoU seeks to give permission to use the name and style of AMITY to Defendant No.5 Trust for education, cultural and sporting activities. Even this MoU does not permit the Defendants to use the name 'AMITY INTERNATIONAL SCHOOL'. It is pleaded in the written statement that Defendants No.1 to 4 are educationists. If that is so, then the reputation of the Plaintiff's schools ought to have been are within their knowledge owing to the large scale publicity undertaken by the Plaintiff under the name AMITY.

27. While the words 'INTERNATIONAL' and 'SCHOOL' could be descriptive/generic in nature when taken on a standalone basis, when taken in conjunction i.e. 'AMITY INTERNATIONAL SCHOOL', the name is absolutely identical to the name of the Plaintiff's school. In a passing off suit, confusion and deception has to be avoided at all costs. This would apply with greater force in the field of education. Clearly when the injunction was suspended, it was done so on the basis of the submission that the Defendant No.6 school was in existence in 1986. After the filing of the pleadings and documents, it is clear that this is not the correct position. Insofar as Defendant No.6 is concerned, it came to existence in 2004 i.e. 13 years after the Plaintiff's 'AMITY INTERNATIONAL SCHOOL'.

28. Thus, the Defendants are not the prior users of the mark and name 'AMITY INTERNATIONAL SCHOOL'. The Plaintiff has established its prior rights in the name 'AMITY INTERNATIONAL SCHOOL'. The Defendant obtained its CBSE affiliation on 7th September, 2014. It was affiliated with the State Education Board on 5th July, 2006.

29. An interim injunction is granted restraining the Defendants from using the name 'AMITY INTERNATIONAL SCHOOL' during the pendency

of the present suit. Since the Defendant No.6's school is affiliated with the Central and the State Boards, the said injunction would, however, come into effect from the academic session 2019-2020 so that no inconvenience is caused to the students who are already admitted in the school. Insofar as the students who are currently in 9th and 11th standards, they are permitted to apply for their Board Exams of Class X and XII with the respective Boards with the current name of the school and the certificates that would be issued to them would be in the current name of the school i.e. 'AMITY INTERNATIONAL SCHOOL'.

30. Defendants are further restrained from opening any new school or educational institutions using the name AMITY INTERNATIONAL SCHOOL.

31. Insofar as rights of 'AMITY SCHOOL BHARUCH' and Gyanada Educational Trust are concerned, the same are not the subject matter of the present suit as neither of them are parties to the present suit. If the Defendant no.5 wishes to use the mark `AMITY SCHOOL BHARUCH', on the basis of the MoU, it is permitted to move an application and implead the Gyanada Educational Trust. Upon such an application being moved, the same shall be considered in accordance with law.

32. All the observations in the present order are prima facie in nature and shall not have any bearing at the trial of the suit. I.As are disposed of.

PRATHIBA M. SINGH, J.

JUDGE OCTOBER 16, 2018 Rahul