Delhi High Court
Ruptech Educational India vs Registrar Trade Marks on 18 August, 2022
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 18th August, 2022
+ C.A. (COMM.IPD-TM) 125/2021
RUPTECH EDUCATIONAL INDIA ..... Appellant
Through: Mr. Davesh Vashishtha & Mr.
Sharabh Srivastava, Advocates (M-
9958445115)
versus
REGISTRAR TRADE MARKS ..... Respondent
Through: Mr. Harish V. Shankar, CGSC with
Mr. Srish Kumar Mishra, Mr. Sagar
Mehlawat & Mr. Alexander Mathai
Paikaday, Advocates (M-
9810788606)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed by the Appellant - Ruptech
Educational India, which is engaged in providing educational and allied
services. The Appellant operates under the well-known mark 'SCOTTISH
HIGH INTERNATIONAL SCHOOL', as a day boarding Senior Secondary
School, which was set up in 2005. The Appellant claims to have many similar
registered trademarks in various classes, such as 'SCOTTISH HIGH', bearing
application no. 1813509, which was a multi-class application, and
'SCOTTISH HIGH INTERNATIONAL SCHOOL', bearing application no.
1446026, in Class 25.
3. One such mark which the Appellant applied for on 2 nd January, 2018,
is 'SCOTTISH HIGH EARLY YEARS', bearing application no. 3717101.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.08.2022
16:20:59
The said mark was applied for in respect of services falling in Class 41, viz.,
'Education; providing of training; entertainment; sporting and cultural
activities; boarding schools; books publication of camp services;
correspondence courses; educational examinations' etc.
4. An examination report issued by the Trademark Registry on 27 th
January, 2018, cited two other trademarks bearing nos. 3608272 and 3613387,
in Class 41. The marks were 'SCOTTISH HIGH EARLY YEARS
NURTURING CREATIVITY' and 'SCOTTISH EARLY YEARS'
respectively. The same were applied for by one Ms. Mansi Aggarwal from
Delhi. Apart from these two marks, no other conflicting marks were cited in
the examination report. The same was replied to by the Appellant on 27 th
February, 2018. However, vide the impugned order, dated 5 th January, 2021,
the mark was rejected under Section 11 of the Trade Marks Act.
5. Mr. Vashishth, ld. Counsel appearing for the Appellant submits that the
concerned applicant, Ms. Mansi Agarwal, whose marks were cited against the
Appellant's mark, has already withdrawn the aforementioned trademark
applications. In fact, a suit being CS(COMM) 639/2018 titled Ruptech
Educational India Vs. Mansi Aggarwal, was filed against the said person.
Thereafter, the matter had been sent for mediation to attempt an amicable
resolution of the disputes between the parties. Vide order dated 4th May, 2022,
a settlement agreement dated 8th December, 2021 was taken on record in the
said suit. The same has been handed across to the Court today, by the ld.
Counsel. As per the said settlement, the applicant had agreed to withdraw the
two aforementioned applications filed by her.
6. It is submitted by the ld. Counsel for the Respondent, that pursuant to
the order dated 4th May, 2022, which decreed the suit in terms of the
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.08.2022
16:20:59
settlement, the applicant has also withdrawn the said two applications. This is
also evident from the status shown on the website of the trademarks registry,
as on 3rd August, 2022.
7. The Court has perused the order dated 4th May, 2022 passed in the suit
filed by the Appellant against Ms. Mansi Aggarwal, who was the Defendant
in the said suit. The said order records that the parties have resolved their
disputes vide settlement agreement dated 8th December 2021. The terms of
the Agreement have also been recorded in the said order. The relevant terms
are extracted below:
"1 Learned counsels appearing on behalf of the parties
submit that the parties have amicably resolved their inter
se disputes before the Delhi High Court Mediation and
Conciliation Centre. A Settlement Agreement in terms of
the settlement incorporated in paragraph F(1) to (16) of
the Settlement.
"1. The Second Party acknowledges the statutory
and common law rights of the First Party in the
SCOTTISH formative trade marks referred to in the
Plaint of the present Commercial Suit and the
Second Party undertakes to never object to the use
and/or registration of the SCOTTISH formative
trade marks owned and/or registered and/or used by
the First Party in any manner whatsoever before
any judicial and/or quasi-judicial authority in the
future.
2. The Second Party undertakes to never seek
registration or claim any proprietary rights, legal
title or ownership or any interest whatsoever, before
any judicial authority or otherwise, over the word
"SCOTTISH" per se and/or in any mark/name
consisting of the word "SCOTTISH" and/or any
word similar to "SCOTTISH" and/or any
mark/name which is identical to the First Party's
registered trademarks as specified in the Plaint in
the commercial suit.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.08.2022
16:20:59
3. The Second Party undertakes that within 10
working days of signing of this agreement, the
Second Party will make appropriate
communication/representation to the Trade Marks
Registry for immediate withdrawal of its following
Trade Mark Applications:
MARK APPLICATIO CLASS STATUS USER
N NO. AND CLAIM
DATE
3608271 dated 41 Opposed Proposed to
08/08/2017 be used
SCOTTISH 3613387 dated 41 Opposed Proposed to
EARLY 16/08/2017 be used
YEARS
The Second Party agrees to provide to the First
Party or its counsel, relevant documentary proof
that the necessary correspondence/communication
for withdrawal of the above applications and/or any
other application pending before the Trade Marks
Registry for registration of a mark consisting of the
word "SCOTTISH" or any word similar to
"SCOTTISH" has been made by the Second Party
to the Trade Marks Registry. Without Prejudice, the
Second Party is entitled to use the tree device
per se, if required.
4-16............
2. This Court has perused the terms of settlement and the same
are found to be lawful.
3. Suit stands decreed in terms of the Settlement Agreement
dated 08.12.2021. Terms of the Settlement Agreement shall
form part of the decree.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.08.2022
16:20:59
4. Needless to state, the parties concerned shall remain bound
by the terms of the Settlement Agreement and the undertakings
given therein. "
8. Subsequent to the above order, vide letters dated 25th May, 2022, the
Defendant in the suit has withdrawn the said two trade mark applications filed
by her. Pursuant to the said letters, two orders dated 8 th July, 2022 and 12th
July, 2022, have also been passed by the Examiner of Trade Marks, directing
withdrawal of the said applications. The status of these applications as
reflected on the website of the Trade Marks Registry, as on 3 rd August 2022,
which has been handed to the Court today, also shows that the said
applications have been `Withdrawn'.
9. Mr. Harish V. Shankar, ld. CGSC submits that on the date when the
order was passed, the applications were still alive.
10. Considering the fact that the applications which were cited against the
Appellant's mark stand withdrawn, the objection under Section 11 would no
longer be valid. Accordingly, the impugned order dated 5th January, 2021, is
set aside. The application of the Appellant bearing no. 3717101, in class 41,
is directed to be advertised in the trademarks journal. Upon advertisement, the
said application shall proceed in accordance with law.
11. The observations in the present order shall not in any manner affect any
opposition proceedings, if any, filed by any third party, after the mark is
advertised.
12. The appeal is disposed of in the above terms.
PRATHIBA M. SINGH
JUDGE
AUGUST 18, 2022/Rahul/SS
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.08.2022
16:20:59
