Delhi High Court
Delhi Public School Society vs Aviral Education Welfareand ... on 16 October, 2023
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision:-16th October, 2023.
+ CS(COMM) 580/2020, I.A. 13900/2023 & I.A. 20500/2023
DELHI PUBLIC SCHOOL SOCIETY ..... Plaintiff
Through: Mr. Puneet Mittal, Sr Advocate with
Mr. Rupendra Pratap Singh and Ms.
Sakshi Mendiratta, Advocates (M.
9717889462)
versus
AVIRAL EDUCATION WELFAREAND
CULTURAL SOCIETY AND ANR ..... Defendants
Through: Mr. Kamal Gupta, Mr. Sparsh
Aggarwal and Mr. Manish Vashist,
Advs for Aviral Education Welfare
And Cultural Society (M.
9810988094)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.
This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Delhi Public School
Society seeking permanent injunction restraining misuse of the Plaintiff's
name - DELHI PUBLIC SCHOOL, mark - DPS as also the accompanying
logos which are extracted below:
Together, these marks are referred to collectively as `DPS marks'.
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
3. The suit has been filed against Defendant No.1- M/s Aviral Education
Welfare and Cultural Society (`AEWCS') which is running the Defendant
No.2 School - Delhi Public School in Sahibabad- Loni Road, Indraprastha
Yojna, Teela Shahbazpur, Bhopura-Loni Road, Sahibabad, Ghaziabad-
201102, Uttar Pradesh.
4. The case of the Plaintiff is that the first school was established in
1949 under the name Delhi Public School. The Plaintiff's Delhi Public
School, R.K. Puram was established in 1972 and the Plaintiff has more than
200 affiliated schools across the country. There are 10 schools which have
been established outside India by the Plaintiff.
5. Considering these facts, the Plaintiff claims enormous goodwill and
reputation in the mark and the name. The Plaintiff also claims rights in all
the DPS marks. Both the said marks and the logos are also registered
trademarks - the details of which are set out as under:
S. Trade Mark Application Class User Date of Status
No No. Application
1. 1608946 16 01.12 08.10.2007 Regist
.1948 ered
2. 1608947 35 01.12 08.10.2007 Regist
.1948 ered
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
3. 1608948 36 01.12 08.10.2007 Regist
.1948 ered
4. 1608949 41 01.12 08.10.2007 Regist
.1948 ered
5. 1608950 42 01.12 08.10.2007 Regist
.1948 ered
6. DPS 1608951 16 01.12 08.10.2007 Regist
.1948 ered
7. DPS 1608952 35 01.12 08.10.2007 Regist
.1948 ered
8. DPS 1608954 42 01.12 08.10.2007 Regist
.1948 ered
9. DPS 1608955 36 01.12 08.10.2007 Regist
.1948 ered
10. DPS 1608953 41 01.12 08.10.2007 Pendi
.1948 ng
11. DELHI PUBLIC 2111505 16 01.12 08.03.2011 Pendi
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
SCHOOL .1948 ng
12. DELHI PUBLIC 2111506 36 01.12 08.03.2011 Pendi
SCHOOL .1948 ng
13. DELHI PUBLIC 2111507 35 01.12 08.03.2011 Pendi
SCHOOL .1948 ng
14. DELHI PUBLIC 2111508 41 01.12 08.03.2011 Pendi
SCHOOL .1948 ng
15. DELHI PUBLIC 2111509 42 01.12 08.03.2011 Regist
SCHOOL .1948 ered
6. The following marks have also been declared as well-known marks by
the office of the Registrar of Trademarks. The said entry as published on the
list of well-known marks is set out below:
S.No. Trademark Proprietor Determining Report Observation
Authority
116. DELHI PUBLIC The Delhi Registrar of N/A The
SCHOOL/ DPS Public Registrar
Trade
School observed
Society, F Marks that the
Block, Mark is
East of well-known
Kailash, with
SERVICE New reference
BEFORE SELF Delhi - Education
DELHI PUBLIC 110065 & Allied
SCHOOL LOGO Services.
(with reference
Education &
Allied Services.)
7. The case of the Plaintiff is that Defendant No. 1 had approached the
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
Plaintiff for a joint venture agreement to run a school under the name and
style Delhi Public School Sahibabad in Ghaziabad- 201102, Uttar Pradesh.
The agreement was entered into on 10th October, 2016 as per which, the
Defendants were permitted to use the trademarks of the Plaintiff. At the time
of entering into the agreement a sum of Rs.25,00,000/- was paid as Signing
Fee, by the Defendant No. 1 to the Plaintiff. For various reasons, the said
agreement was terminated on 24th September, 2018. Despite the said
termination, the Defendants continued to run and operate the school which
then led to the filing of the present suit.
8. Initially, in view of the arbitration clause which was there in the
contract, a petition under Section 9 of the Arbitration and Conciliation Act,
1996 was also filed by the Defendant No. 1. However, no relief was granted
in favour of the Defendant No. 1. Subsequently, the Defendant No. 1 filed a
WP(C) 8219/2020 titled Aviral Education Welfare and Cultural Society &
ors. v. Delhi Public School Society for declaring certain clauses of the
agreement as void. Upon the service of the notice in the said writ petition,
the present suit came to be filed by the Plaintiff.
9. Vide order dated 24th December, 2020, the Court had refrained from
passing off any interim order in view of the writ petition filed by the
Defendant No.1. Thereafter, the interim order was finally passed on 10th
March, 2023 after hearing the parties. Vide the said order, the Court came to
the conclusion that after the termination of the joint venture agreement,
neither the Society nor the School, can run under the name of Delhi Public
School or DPS. The Court had, accordingly, restrained the Defendants from
using the DPS marks. The relevant portion of the said order reads as under:
"10. The above clearly proves infringement, passing off
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
and amounts to false advertisement. Defendants intend
to ride upon the goodwill and cachet enjoyed by DPSS.
Mr. Mittal has also pointed out that for last three years,
Defendants have admitted students representing
themselves to be affiliated to DPSS, without disclosing
that the underlying contract with DPSS (N A), which
gives them the right to use IP rights of DPSS, no longer
exists. In view of the fore-going, the Court is convinced
that DPS has made out a strong prima facie case in its
favour Balance of convenience also lies in its favour
and in case an order of injunction is not granted,
irreparable loss would be caused not only to DPSS, but
also to public at large. Accordingly, during the
pendency of the suit:
(i) Defendants and their directors, employees, trustees,
office bearers, agents, representatives, and all other
person(s) acting for and on their behalf are restrained
from offering for service sale, advertising, adopting,
using, or dealing in any manner with the well-known IP
rights of DPS ('Delhi Public School ', 'DPS' and'
or any other trademark(s)/copyrights(s) that
are identical or deceptively similar to that IP rights of
DPSS; and
(ii) DPS-S is directed to remove the impugned
trademarks and copyrights and also name and
photographs of office bearers of DPSS from their
website (www.dpssahibabad.com) forthwith."
10. Despite the passing of the said order, the Defendants continue to run
the School under the mark/name DELHI PUBLIC SCHOOL/ DPS. Initially,
an appeal being FAO(OS) (COMM) 62/2023) titled Aviral Education
Welfare & Cultural Society & Anr. v. The Delhi Public School Society was
filed by the Defendants which was withdrawn. Thereafter, FAO(OS)
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
(COMM) 69/2023 titled Aviral Education Welfare and Cultural Society &
Anr. v. The Delhi Public School Society came to be filed. Since WP(C)
8219/2020 was also dismissed vide order dated 10th March, 2023 an appeal
being LPA being 213/2022 titled Aviral Education Welfare and Cultural
Society & Ors. v. The Delhi Public School Society was also filed. Certain
parents of the Defendant School also challenged the order passed in the writ
petition being LPA 214/2022 titled Surbhi Dubey & Ors. v. Delhi Public
School Society & Ors. All the three proceedings came to be decided by the
ld. Division Bench vide order dated 21st September, 2023 by which the
judgment of the ld. Single Judge of 10th March 2023, both in the interim
injunction application and in the writ petition came to be upheld.
11. In the meantime, owing to the continuous use of the Plaintiff's mark
and name, the Plaintiff has filed an application under Order XXXIX Rule
2A of CPC. After the judgement of the Ld. Division Bench dated 21st
September 2023, the Defendants have now filed an application being I.A.
20500/2023 seeking extension of time to comply with the injunction order.
12. Today, the said two applications have been considered by the Court.
13. Mr. Puneet Mittal, ld. Sr. Counsel for the Plaintiff submits that for a
period of six years, the Defendants have not paid any maintenance charges
which are to the tune of Rs. 12,00,000/- per year. He further submits that
despite the injunction order, they continue to use the Plaintiff's DPS marks
and have admitted students for the last six academic years. The students
continue to wear the uniform bearing the Plaintiff's mark and name. Thus,
the Defendants are brazenly committing contempt of the orders of this
Court. It is further submitted that even after termination of the agreement
dated 10th October, 2016 the Defendants continued to reflect the Plaintiff's
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
office bearers on its website which is only recently being taken down. Mr.
Mittal, ld. Counsel, submits that the amount of Rs.25,00,000/- is merely a
signing fee and nothing more as is reflected in the receipt which has been
given to the Defendants.
14. Mr. Gupta, ld. Counsel for the Defendants, on the other hand, submits
that the joint venture agreement was for an undefined period. The
Defendants made substantial investment of more than Rs. 30 crores, in
setting up the school. However, within a period of six months after the
school was open, the joint venture agreement was terminated. Thus, the
benefit of the Plaintiff's DPS marks could not be taken by the Defendants at
all. Ld. Counsel further submits that the termination itself is illegal and
contrary to the agreement and Defendants reserve their rights to challenge
the illegal termination and also seek damages. He further submits that an
amount of Rs.25,00,000/-, which was paid, is still lying with the Plaintiff.
Mr. Gupta, ld. Counsel further submits that no services under the agreement
have been rendered by the Plaintiff to the Defendants.
15. On the other hand, Mr. Mittal, ld. Counsel submits that the
Defendants have taken the advantage of the Plaintiff's goodwill and have
inducted more than 500 students in the school which was only because of
the goodwill of the Plaintiff.
16. Heard, ld. Counsels for the parties.
17. On merits, the Defendants have already been restrained from using
the DPS marks and the said orders have also been upheld in appeal. Thus,
there can be no justification for continuing the use of the DPS name and the
mark as also the logos. The case being one relating to education, the career
of hundreds of children would be in jeopardy if allegations made by the
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
Plaintiff are to be gone into and contempt action is initiated. The Court has
put to both the ld. Counsel for the parties as to whether the entire dispute can
be resolved.
18. At this stage, it appears that the Defendants need time to change the
name of the school and in any case the students belonging to Class 10 and
12 have already submitted their candidature to the CBSE. If the certificates
and the marksheets for the students of Class 10th and 12th are not issued in
the name currently in which applications have been submitted to CBSE, the
future of these students could be jeopardised. On the other hand, there is also
no doubt that prima facie the Defendants are in contempt of the injunction
order dated 10th March, 2023.
19. Under these circumstances, due to the fact that the Defendants are
running a school where more than 500 students are currently studying, the
Court is taking a compassionate view of the matter in order to ensure that
the careers of the children are not put to any harm. Thus, contempt action is
not being initiated subject to the ensuing conditions. In the overall facts and
circumstances of this case, this Court is of the opinion that the suit itself can
be brought to quietus by putting in place an arrangement which is in the
overall interest of the students of the school, at the same time suitably
compensating the Plaintiff.
20. Under these circumstances, the following directions are issued:
i) The Defendant School can use the DPS marks/names including
'DELHI PUBLIC SCHOOL', 'DPS' as also the logos only in
respect of the students who are already admitted for the
academic year 2023-2024, for the academic year ending on 31st
March 2024.
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
ii) Any fresh admissions in the Defendant School for the academic
year 2024-2025 shall be under a new name.
iii) The Defendant School shall not use the mark 'DPS', logo and
name or any of the trademarks of the Plaintiff after the current
academic year which is ending on 31st March, 2024.
iv) The certificates for the current students who are currently
undergoing Class 10 and Class 12 as also other children, for the
academic year 2023-2024, shall be issued under the existing
name of the Defendants.
v) Since, no amount has been paid by the Defendants after the
initial amount, a further sum of Rs.20,00,000/- plus GST shall
be paid by the Defendants by 31st December, 2023 to the
Plaintiff.
vi) Subject to this payment alone, current students shall be issued
marksheets and certificates under the name 'DPS'.
21. It is made clear w.e.f next academic year - 2024-25, the use of the
name 'DELHI PUBLIC SCHOOL', mark 'DPS' and the logos shall be
ceased, failing which the trustees of the Defendants shall be personally
responsible. No fresh admissions shall be carried out in the Plaintiff's DPS
marks, henceforth.
22. Mr. Gupta, ld. Counsel for the Defendants under instructions from
Mr. Adarsh Gupta, Secretary, undertakes that after 31st March, 2024, there
shall be no use of the Plaintiff's name, mark and logos by the Defendants.
23. In order to enable the smooth transition, since the Defendants have
already applied to the Joint Director of Education, Meerut for change of new
name, the said application may be processed urgently on an expeditious
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
basis and, in any case by 30th November, 2023, subject to the Defendants
furnishing all the necessary documents. The CBSE shall also expeditiously
process the change of the name of the School in order to give effect to the
above order.
24. The above arrangements shall not prejudice the Defendants from
availing of its remedies in accordance with law in respect of any grievance
regarding the termination of the agreement against the Plaintiff.
25. The suit is decreed in the above terms. Decree sheet be drawn
accordingly.
26. All pending applications are disposed of.
27. This order is passed with the consent of the parties.
PRATHIBA M. SINGH
JUDGE
OCTOBER 16, 2023
Mr/kt
Signature Not Verified
By:DHIRENDER KUMAR
Signing Date:17.10.2023
16:21:34
