Delhi High Court
Delhi Public School Society vs Delhi Public International ... on 27 July, 2022
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 27th July, 2022
+ CS(COMM) 322/2021 & I.As. 462/2022, 5410/2022
DELHI PUBLIC SCHOOL SOCIETY ..... Plaintiff
Through: Mr. Puneet Mittal, Sr. Advocate with
Mr. Mohit Chandras, Advocates.
(M:981104400)
versus
DELHI PUBLIC INTERNATIONAL SCHOOL ..... Defendant
Through: Mr. Rajshekhar Rao, Sr. Advocate,
Mr. Rajat Malhotra, Mr. Vivek Kr.
Kurn and Mr. Areeb Amanullah,
Advocate for D-5. (M:7428451535)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh(Oral)
1. The present suit has been filed seeking permanent injunction
restraining infringement of trademarks, copyrights, damages, etc., by the
Plaintiff - Delhi Public School Society that runs the Delhi Public Schools
(hereinafter as 'DPS') across the country. The Plaintiff is registered under
the Societies Registration Act, 1860, vide registration no. S.361 of 1948-49.
It was initially registered as Delhi Public School but in the year 1962, the
name was changed to Delhi Public School Society. The Plaintiff has also
obtained registration for its logo under the Copyright Act, vide registration
nos. A-95324/2012 dated 21st December, 2012 and A-111554/2014 dated
21st August, 2014.
2. The case of the Plaintiff is that it was formed with an objective to
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By:DEVANSHU JOSHI CS(COMM) 322/2021 Page 1 of 8
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establish progressive schools/educational institutions within Delhi and
outside. Open to all, without any distinction of race, caste or special status.
The first DPS school was set up in the year 1949 and subsequently,
numerous more were set up. The schools established by the Plaintiff itself
are a total of 12, known as 'Core Schools' while also having entered into
agreements with other societies/trusts for establishing more schools that are
more than 200 in number, known as 'Affiliated Schools.' Further, the
Plaintiff has also established 11 schools in territories outside of India,
displaying its goodwill.
3. In order to ensure statutory rights in respect of the Plaintiff's
trademark, it has filed several applications for registration of its logo, DPS
and Delhi Public School, among others. Further, the Plaintiff claims to be
extremely vigilant about its intellectual property rights due to which time
and again the Plaintiff has filed infringement and/or passing off suits against
other parties that have resulted in decrees in favour of the Plaintiff, wherein,
its mark has been declared 'a highly reputable brand name.'
4. The grievance of the Plaintiff in this suit is that a school named
"Delhi Pubic International School/DPIS," i.e., Defendant No.1 was started
in Nagpur, Maharashtra and is run by Defendant No. 2 - Gaikwad- Patil
Group of Institutions, as mentioned in the plaint, whose day-to-day affairs
are managed and controlled by its Chairman and President, i.e., Defendant
No. 3 - Mr. Mohan Gaikwad and Defendant No. 4 - Ms. Anjali Patil
Gaikwad, respectively. The Defendant No.5 is one Mr. Vijay Kumar Uttam
Bhai Pawar with whom Defendant Nos.2 to 4 claim to have executed an
agreement to obtain rights to use the mark 'DPIS' of the Delhi Public
International School.
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5. The case of the Plaintiff is that the use of the word/mark DPIS is
violative of its mark DPS. Vide interim order dated 17th August, 2021an
interim injunction was granted restraining the Defendants from using the
mark 'Delhi Public School'/'DPS' or any other mark which is identical or
deceptively similar thereto, including the 'DPIS' mark. The operative
portion of the said order dated 17th August, 2021, is set out below:
"12. The Court thus finds a prima facie case in favour
of the Plaintiff. They are a prior adopter, user and
owner since 1948, and the prior registered proprietor
of well-known trademarks 'Delhi Public School' and
'DPS'. The use of the impugned mark- 'Delhi Public
International School'/ 'DPIS' and the impugned logo, is
deceptively similar to the mark of the Plaintiff-Society
and is in breach/ violation of the decree passed by this
Court against Mr. Pal. The adoption of the impugned
marks is thus prima facie invalid. Besides, considering
that parties are in the field of education, deliberate
adoption by the Defendants of impugned trade marks
and logo that are deceptively similar and/or identical
to the Plaintiffs registered trade marks/names and
logos can cause confusion in the minds of the parents,
prospective students and staff desirous of securing
admission or availing services, seeing the
advertisements, promotional material, admission
forms, boards/ hoardings, etc. They are bound to be
misled into availing the services of the Defendant-
School, under the belief that they are those of the
Plaintiff-Society. Mr. Mittal has demonstrated that the
Defendant-School has intentionally misrepresented
itself to be in association with the Plaintiff-Society due
to the prominence of 'Delhi Public School'. Further,
the registered trade mark of Plaintiff-Society- 'Delhi
Public School'/ 'DPS' and the crest logo can be
perceived by general public as indicative of the source
of 'Delhi Public School' being the Plaintiff-Society.
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Therefore, the Court considers it necessary to grant an
interim injunction in favour of the Plaintiff-Society.
13. The Defendants reliance upon orders passed in the
suit in respect of the use of trade mark 'DPS World
Foundation', is misplaced. Defendants have not noticed
that, in the said suit, the Supreme Court subsequently
in challenge against the order of the Division Bench of
this Court, granted injunction in favour of the Plaintiff-
Society, restraining the Defendants therein from using
the mark- 'Delhi Public School'/ 'DPS' or the logo. The
said order was only clarified later to the extent that the
Defendants therein were allowed to use the logo they
sought to do so after deleting certain words. The
balance of convenience also lies in favour of the
Plaintiff-Society and in case the Defendants are not
restrained by an ex-parte injunction, it is likely to
cause an irreparable loss to the Plaintiff-Society.
Accordingly, till the next date of hearing, the
Defendants, their trustees, directors, managing
committee members, office bearers, employees,
delegates, representatives, assigns, associates, agents
or anybody acting on their behalf, are restrained from:
-
(a) adopting, using and/ or dealing in any manner with
the registered trademark of the Plaintiff- 'Delhi Public
School' and 'DPS' and logo or any other
trademark that is identical or deceptively similar to the
Plaintiffs aforenoted trademark amounting to
infringement of the Plaintiffs said trade marks;
(b) offering for sale, adopting, using and/or dealing in
any manner with the registered trade mark of the
Plaintiff- 'Delhi Public School' and 'DPS' and logo [
] of the Plaintiff or any other trade mark
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identical or deceptively similar to the Plaintiffs trade
mark amounting to passing off the Plaintiffs said
trademark and further restraining the Defendants from
representing in any manner that they are connected
with the Plaintiff; and
(c) using or dealing in any manner with the impugned
trademark/ names 'Delhi Public International School'
and 'DPIS' and logo "
6. Subsequently, vide order dated 11th January, 2022, Defendant Nos. 2
to 4 agreed to suffer a partial decree, wherein, a permanent injunction was
passed. Simultaneously, on the said date, it was recorded that the name of
Defendant No. 2 - Gaikwad- Patil Group of Institutions was changed to
'Semana Vidya Va Van Vikas Prashikshan Mandal' which is the actual trust
which was running the school-Defendant no.1. It was also agreed that a
decree be passed as Defendant No.1 school's name - Delhi Public
International School (as mentioned in the Plaint) has been changed to
`Gaikwad- Patil Group of Institutions'. Paragraphs 5 and 6 of the said order
dated 11th January, 2022 are set out below:
"5. On the strength of the aforenoted statement made
by the counsel for Defendants No. 2, 3 & 4, Mr. Mittal
prays that a partial decree to the extent of an
injunction order, as prayed for, may be passed qua
Defendants No. 2, 3 & 4.
6. Mr. Rajat Malhotra, who appears on behalf of the
said Defendants, clarifies that there is no entity by the
name of 'Gaikwad-Patil Group of Institutions',
arrayed as Defendant No. 2. He submits that
Defendants No. 3 & 4 are in the management of a
society under the name of 'Semana Vidya Va Van
Vikas Prashikshan Mandal', which is a society
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registered under the Societies Registration Act, 1860.
He submits that in fact this Society was running the
school under the name of 'Delhi Public International
School', in Nagpur, pursuant to an agreement with
Defendant No. 5. Mr. Malhotra further clarifies that as
of now, on account of operation of the injunction order
passed by this Court, the Defendant No. 1 school has
renamed itself as "Gaikwad Patil International
School". Mr Malhotra submits that Defendant No. 5 is
contesting the suit. He further states that Defendant
No. 1 is not a legal entity and is only the name of the
School. "
7. Thus, the only surviving Defendant in the present suit is Defendant
No. 5 - Mr. Vijay Kumar Uttam Bhai Pawar who is a resident of Gujarat.
This Defendant has moved an application under Order VII Rule 10 and 11
CPC dated, 28th August 2021, seeking rejection of the plaint on the ground
of lack of territorial jurisdiction.
8. It is submitted by Mr. Rajshekhar Rao, ld. Sr. Counsel appearing for
Defendant No. 5 that Defendant No.5 has filed a trademark application
claiming an independent right in the mark 'DPIS' and 'Delhi Public School
International School'. He, further, submits that in any event the school was
located in Nagpur while Defendant No. 5 is based out of Gujarat. Thus, this
Court has no territorial jurisdiction in the matter as per the settled legal
position, as the Plaintiff/ Delhi Public School Society maintains 3
collaborative ventures, namely DPS, Kamatee Road, DPS, Mihan and DPS,
Lava in Nagpur. To substantiate the legal position for territorial jurisdiction,
he relies on the following three judgments:
i. Indian Performing Rights Society Ltd. vs. Sanjay Dalia &
Anr., [SLP(C) No.8253/2013, decision dated 1st July, 2015]
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ii. M/s Dhodha House vs. S.K. Maingi, AIR 2005 SC 730; and
iii. IPRS vs. Aditya Pandey, (2012) 50 PTC 460.
9. On the other hand, Mr. Puneet Mittal, ld. Senior Counsel appearing
for the Plaintiff submits that no agreement was entered into between
Defendant No.5 and the other Defendants Nos. 2 - 4 and the same has also
not been placed on record. There is also no trademark application with
respect to Defendant No. 5's claim to "DPIS/Delhi Public International
School" mark placed on record.
10. In response, a copy of the said application which is stated to have
been filed by the Plaintiff itself with its rejoinder has been handed over to
the Court. The same is, however, not on record.
11. Thus, the issue now boils down to whether any cause of action
survives against Defendant No.5.
12. Considering the fact that Defendant No. 1, the school has already
changed its name and that Defendant Nos. 3 & 4 the management of the said
school have already suffered a decree before this Court the question as to
whether any agreement between Defendant No. 5 and Defendant Nos. 2 to 4
exists/existed, would become academic in nature.
13. Insofar as Defendant No. 5's application for Delhi Public
International School, vide trademark application nos. 3447965 and 3447968
is concerned, the same are not the subject matter of the proceedings before
this Court. However, the said applications that are stated to have been filed
are currently pending and have been objected to by the Registrar as per the
status shown to the Court.
14. Thus, the suit can be disposed of leaving the Plaintiff to avail its
remedies, in accordance with the law qua the said trade mark applications.
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The orders passed in the present suit would however, have no bearing on the
adjudication of any objections or oppositions if filed by the Plaintiff against
the abovementioned trademark applications of Defendant no.5.
15. If Defendant No. 5 establishes or causes to establish any school with
the name 'Delhi Public International School'/'DPIS', the Plaintiff would be
free to avail its remedies in accordance with the law.
16. In the opinion of this Court, the suit no longer survives inasmuch as
the main cause of action in this suit was qua the school being called
'DPIS'/'Delhi Public International School' established in Nagpur, which has
since changed its name.
17. The Court has not expressed any opinion as to the dispute between
Plaintiff and Defendant No. 5. The orders passed by this Court in the present
suit would not have any bearing on the merits of any dispute which may
arise between the Plaintiff and Defendant No.5. All objections and
contentions of both the Plaintiff and Defendant No.5 are left open.
18. The suit is disposed of in these terms. All pending applications are
disposed of.
PRATHIBA M. SINGH
JUDGE
JULY 27, 2022
dj/sr
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Signing Date:30.07.2022
13:38:23
