Delhi High Court
Triumphant Institute Of ... vs Time Plus Institute & Anr on 16 April, 2019
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO(OS) (COMM) 87/2019
TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION
PVT LTD ..... Appellant
Through Mr. Sanjeev Sindhwani, Sr. Advocate
with Ms. Bitika Sharma, Ms. Anusuya
Nigam, Mr. Lakshay Kaushik, Ms.
Ruchika Wadnawan & Ms. Vrinda
Pathak, Advocates.
versus
TIME PLUS INSTITUTE & ANR ..... Respondents
Through None.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 16.04.2019
CM APPLs 18201/2019 & 18202/2019 (Exemptions)
1. Exemptions are allowed, subject to all just exceptions.
2. The applications stand disposed of.
FAO(OS) (COMM) 87/2019, CM APPL 18200/2019 (stay) & CM APPL
18203/2019 (u/O XXVI Rule 9 CPC)
3. Challenge in this appeal is to the order dated 08.04.2019 passed by a
learned Single Judge of this Court on two applications being I.A.
no.5138/2019 filed under Order 39 Rules 1 & 2 C.P.C. and I.A.
no.5139/2019 under Order 26 Rules 9 of CPC. The learned Single
Judge has declined the grant of an ad-interim injunction and also
appointment of a Local Commissioner.
4. Learned Senior Counsel appearing for the appellant submits that the
learned Single Judge has failed to consider that 'TIME' is the registered
trademark of the appellant. The appellant has been using the trademark
'TIME' since the year 1993. The details of the registration have been
extracted in para 13 of the plaint, which read as under :
"13. The Plaintiff is the registered proprietor, prior user
and lawful owner of the mark 'T.I.M.E' and its variants in
Classes 16, 38 and 41. Details of the various trademark
applications registered in favour of the Plaintiff have
been provided below:
S.No. Trade Mark TM Date of Class
Application Application
No.
1 1343168 09.03.2005 41
2 2109877 04.03.2011 41
3 1408314 22.12.2005 41
4 3201141 03.03.2016 41
5 2109879 04.03.2011 16
6 2820861 01.10.2014 16
7 T.I.M.E. TUTIONS 2820862 01.10.2014 16
(WORD)
8 time4education 2559941 05.07.2013 38
(WORD)
9 time4education 2712609 04.04.2014 38
(WORD)
10 2712599 04.04.2014 38
11 2712608 04.04.2014 38
12 1725338 26.08.2008 16
"
5. Mr. Sindhwani, learned senior counsel appearing for the appellant
submits that the appellant has also been vigilant in protecting its
trademark, which is evident from the fact that as many as 8 proceedings
were initiated. In all the earlier proceedings, ex-parte injunctions were
granted and 5 cases stand decreed and other stand disposed of all in
favour of the appellant herein. Counsel points out that the appellant is
the registered proprietor of the mark "T.I.M.E." and their formative
marks in classes 16, 38 and 41 and the prior adopter of the same for the
coaching and training services for competitive exams. Further the
appellant also enjoys valuable common law rights in the said marks by
virtue of being the first to coin and adopt the said marks, having used
the mark continuously, exclusively and extensively since the year 1993
in the field of Coaching and Training Institutes for various competitive
exams.
6. A comparison of the two marks have been scanned at page 13 of the
paper book to show that the respondent has not only copied the name,
colour scheme, writing style but the logo as well. Counsel for the
appellant/plaintiff states that by offering its services under the identical
mark TIMESIAS, the defendants/respondents are trying to deceive the
general public and their consumers are bound to believe that the
defendants'/respondents' services are connected and approved by the
plaintiff/appellant. He also states that the impugned mark is structurally,
phonetically and deceptively similar to that of the plaintiff's/appellant's
registered trade mark.
7. Counsel for the appellant submits that the appellant has a very strong
presence throughout the country and has 12 coaching centres within the
territorial jurisdiction of this court. Counsel further submits that over
the passage of time, the appellant has made a special name in the field
of coaching classes, owing to the hard work and the specialized faculty
employed by the appellant. Counsel further contends that one of the
reasons for declining an ex-parte injunction as observed by the learned
Single Judge in para 8 of order dated 08.04.2019 is that the registered
office of the appellant is in Andhra Pradesh and out of more than 200
centres, only one centre is in Delhi, which is factually incorrect and
thus, it is for this reason, it has been observed that the business of
coaching has a territorial nexus. Counsel contends that had the learned
Single Judge correctly noted that there were in fact 12 coaching centres
in Delhi alone, the observations of the learned Single Judge would have
been otherwise and in favour of the appellant.
8. Mr. Sindhwani, learned senior counsel, contends that the learned Single
Judge has wrongly observed that the acronym of the appellant/plaintiff
is itself an imitation of an earlier well-known marks "TIMES" and
"Times of India". Learned counsel submits that there was a suit filed
against the appellant by "M/s Time Inc., USA" and no injunction was
granted in their favour against the appellant. There was an amicable
settlement arrived at between the appellant herein and M/s Time Inc.,
USA, who was the plaintiff in the suit before the learned Single Judge
of this Court being CS (OS) 1389/2003 and the appellant continued to
use the mark with minor changes of changing its mark/logo from
"TIME" to "T.I.M.E.". Pursuant to this settlement, the appellant has
used the trademark "T.I.M.E." and the domain name continuously and
extensively. He further submits that "Times of India" has also not
opposed the use of the mark and in fact as per his instructions, they are
not even in the field of education. He further clarifies that the acronym
of the appellant is vested on the full name of the Institute, which is
Triumphant Institute of Management Education.
9. Learned senior counsel further submits that in case the ex-parte
injunction is declined, serious prejudice would be caused to the rights of
the appellant. Counsel for the appellant has placed reliance on the
observation made by another Division Bench of this Court in the order
dated 23.11.2016 passed in FAO (OS) (COMM) 127/2016 titled as
"ITC LIMITED Vs. M/S ARORA OFFSET PRINTERS & ORS",
more particularly paras 3 and 4. Counsel further submits that a local
commissioner was also appointed in the said matter. The relevant part
of the order dated 23.11.2016 reads as under :
"3. Learned senior counsels for the appellant urge that in
view of the law declared by the Supreme Court in the
judgment reported as (2002) 3 SCC 65 Laxmikant
V.Patel Vs. Chetanbhai Shah & Anr., where so telling is
the infringement of a trade-mark and/or a trade-dress,
injunction must ensue. As observed in paragraph 17 of
the decision, in such a case a refusal to grant an
injunction in spite of the availability of facts, which are
prima-facie established by overwhelming evidence and
material available on record justifying the grant thereof,
occasion a failure of justice and such injury to the
plaintiff as would not be capable of being undone at a
later stage.
4. In afore-noted decision the Supreme Court was
constrained to issue an ad-interim injunction in spite of
overwhelming facts shown to the learned Trial Judge but
ad-interim injunction not granted."
10. Counsel has further placed reliance on B.K. Engineering Vs. U.B.H.I.
Enterprises, reported in 1985 (27) DLT 120, more particularly paras 34,
45, 55 and 56, which we reproduce below :
"34. "B.K." is the manufacturer's mark of the plaintiffs.
This is seen by the public. In a "common field of
activity" it is likely to deceive prospective purchaser if
the defendants are allowed to market their product under
the mark "B.K.-81". There is likelihood of diversion of
trade from the plaintiffs to the defendants. This is an
injury against which an injunction is directed in the
action of passing off. The plaintiffs can well complain
that their goodwill suffers from an "injurious association"
with the defendants' goods. In Harrods Ltd. v. R. Harood
Ltd., (1924) 41 RPC 74 (22) the public thought that the
great, departmental store had stopped to money lending.
An action of passing off lies if one trader represents his
business as being that of or connected with that of, the
plaintiff, as is the case here. There is a false suggestion
by one competing trader in the same line of business that
his business is connected with that of the other. This, I
apprehend, would damage the reputation and thus the
goodwill of the plaintiffs' business.
45. The learned judge observed that if one "carefully"
examines the products one can distinguish the defendants'
hells from the plaintiffs' bells as the name of U.B.H.I.
Enterprises is engraved on the defendants' bell. I do not
agree. It is no answer to a complaint of misrepresentation
to say that, an observant person who made a careful
examination would not be misled. The test is the
impression likely to be produced on the casual and
unwary customer, (per Lord Selborne in Senger
Manufacturing Co. v. Loog, (1882) 8 App. Cas 15 (27).
18).
55. The mainstay of the defendants' case is that they are
using their mother's name "B.K." to which they are
entitled. I cannot accept this contention. Firstly it is not
the defendants' name. The name of the partner who
appeared before the learned judge and made a statement
is Man Mohan Singh. Even if a man uses his own name
as to be likely to deceive and so to divert business from
the plaintiffs to the defendants he will be restrained.
Pears' soap is the stock example of this. A man name
William Johan Pears cannot set up a soap business and
call his soap "Pears Soap". He is not entitled to
abbreviate his own name so as to lead to deception.
[Parker Knoll (supra) at p. 276 per Loard Denning].
Another example I gave in the course of arguments was
of Haman soap. On the cake it is stamped "A Tata
Product". Is it open to a rival trader to call his soap. "Tata
Soap" simply because Tatas do not make "Tata Soap" as
such by name? The fundamental question is whether
there is a likelihood of deception of the public by the use
of a particular name. If there is likelihood the
complainant can bring an action against the deceiver, the
maker of the representation. As Lord Parker said that the
case of action is complete with the representation. It is no
longer true that the cause of action is complete only upon
sale. It was true to say this in 1896 when Lord Halsbury
decided the leading case of Reddaway v. Banham. It is
true after 1915 when the leading cases of Parker-
Knoll and Warnink were decided. The roots of passing
off tort lay in deceit, yet the fraud was practised not upon
the plaintiff but upon the customers of the defendant who
purchased the goods believing them to be of the plaintiffs
manufacture.
56. If there is a real prospect of injury to the plaintiff's
goodwill he is entitled to injunction. Applying this
principle it seems to me that "B.K." is the most valuable
single asset of the plaintiffs. Prima facie they possess a
substantial reputation in this. The adoption of "B.K.-81"
by the defendants would lead persons to think that "B.K.-
81" is the product of a business associate or an affiliate of
B.K. Engineering Co. There is a real risk that a
substantial number of members among the public would
in fact believe that there is a business connection between
the plaintiffs and the defendants. The defendants cannot
be allowed to cash in on the popularity of the plaintiffs'
product in which they have built up a goodwill. If not
prevented they will harm the plaintiffs' business. In my
opinion there is sufficient material to support a claim for
temporary injunction at this stage."
11. We have heard learned senior counsel for the appellant. As per plaint,
the plaintiff is the registered proprietor, prior user and lawful owner of
the mark 'T.I.M.E.' and its variants in classes 16, 38 and 41 and is in
the business of running coaching services for various national as well as
international competitive examinations. The appellant has a chain of
more than 270 Institutes throughout the country including 12 Institutes
in Delhi alone. The appellant has been in this business since the year
1993 and has grown from strength to strength, as is evident from the fee
calculation figures and the amount spent on advertisements. We also
find that the respondent has only recently commenced his business in
the month of March, 2019. We also find that the nature of business of
the appellant and the respondent is identical in nature and there is every
likelihood that students are likely to be misled by the use of identical
name & writing style and identical colour scheme. The appellant is not
only the registered proprietor of the trademark 'TIME' but is also a
prior user. For all the reasons stated hereinabove, we are satisfied that it
is a fit case for grant of an ad-interim injunction and also for
appointment of a local commissioner. In case the ad-interim injunction
is not granted, the appellant will suffer irreparable loss and damage to
their goodwill and reputation. The appellant is also likely to suffer
monetary damages in terms of loss of consumers.
12. Accordingly, till the next date of hearing, the respondent, its
proprietors, directors, partners, principal officers, agents, family
members, servants, dealers, distributors and/or anyone acting for or on
their behalf are restrained from using the trade mark/name/domain
name 'TIME' / 'T.I.M.E'/ 'TIME+' or any other mark/trade
name/logo/label, which is identical or deceptively similar to the
appellant's well-known trademark 'T.I.M.E' in relation to services
identical or similar to that of the appellant so as to result in
infringement of the appellant's common law and statutory rights.
Respondent, its proprietors, directors, partners, principal officers,
agents, family members, servants, dealers, distributors and/or anyone
acting for or on their behalf is further restrained from using the trade
mark/name/domain name 'TIME' / 'T.I.M.E'/ 'TIME+' or any other
mark/trade name/logo/label which is identical or deceptively similar to
the appellant's well-known trademark 'T.I.M.E' in relation to services
identical or similar to that of the appellant so as to result in passing off,
misrepresentation and dilution of the appellant's rights.
13. We are also of the view that it would be in the interest of justice that a
local commissioner is appointed to visit the premises of the respondent
at Time Plus Institute, B-4, Bareja Sadan Market, Badarpur, New Delhi-
110044. Accordingly, Mr. Arjun Nihal, Senior Advocate
(Mob.9999453649), is appointed as a local commissioner. The local
commissioner will take into custody the infringing products including
packaging, brochures, stationery, pamphlets or any other print or
electronic material or otherwise bearing the impugned trade name/mark
'TIME' and its variants. The offending materials may be sealed,
inventory to be prepared by the local commissioner and other relevant
documents should be taken on pendrive and should be handed over to
the respondent on Superdari.
14. The fees of local commissioner shall be Rs.1,00,000/- and the local
commissioner would be entitled to police protection. The compliance of
Order 39 Rule 3 CPC shall be made within 10 days from today.
15. CM APPL 18203/2019 stands disposed of.
16. List the appeal and stay application being CM APPL 18200/2019 on
08.05.2019.
17. Copy of this order be given dasti under signature of the Court Master.
G.S. SISTANI, J
JYOTI SINGH, J
APRIL 16, 2019 ck /
