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CS (OS) No.1980/2014 Page 1 of 62
.* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment pronounced on: 11th May, 2015
+ I.A. No. 12216/2014 in CS (OS) No.1980/2014 SRF FOUNDATION & ANR ..... Plaintiffs Through Ms.Anuradha Salhotra, Adv. with Mr.Sumit Wadhwa, Adv. versus RAM EDUCATION TRUST ..... Defendant Through Mr.N.K.Anand, Adv. with Ms.Vaishali Mittal & Mr.Siddhant
Chamola, Advs.
CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J. 1. By this order, I propose to decide the application being I.A.
No.12216/2014 under Order XXXIX Rule 1 and 2 CPC filed by
plaintiffs seeking interim injunction against the defendant restraining
it from using mark/name SHRI RAM in respect of running the
schools. The plaintiffs have filed a suit for permanent injunction,
passing off, account of profits under the Trade Marks Act, 1999
(hereinafter referred to as the “Act”).
2. The brief facts of the case as per plaint are :
i) The plaintiff No.1 is a registered non-profit society engaged
in several social and community development initiatives
including running of schools under the name of The Shri
CS (OS) No.1980/2014 Page 2 of 62
Ram School. The plaintiffs claim that they are the prior user
of the mark/name SHRI RAM in respect of the schools as far
as the parties in suit are concerned. The plaintiff No.2 is
engaged in setting up schools in India and abroad.
ii) The plaintiff No.1 established The SHRI RAM SCHOOL in
the year 1988 in Vasant Vihar, New Delhi. It is the case of
the plaintiffs that the school has been designed to provide
each student a diverse education in a safe and supportive
environment that promotes sound values, self-discipline,
motivation and excellence in learning. From a modest
beginning in five tents with sixty four eager children, the
school has grown to strength in excess of seven hundred
children and a hundred and eight staff. THE SHRI RAM
SCHOOL – Moulsari, Gurgaon is the senior school of THE
SHRI RAM SCHOOL – Vasant Vihar. THE SHRI RAM
SCHOOL – Aravali, Gurgaon was established in the year
2000 in DLF City Phase IV, Gurgaon.
iii) It is alleged by the plaintiffs that in order to fulfil its objective
to meet the shortage of good schools in India, plaintiff No.2
entered into an agreement with Educomp Infrastructure and
School Management (EISML), a subsidiary of Educomp
Solutions to set up five schools over the next 2-3 years
under the name “THE SHRIRAM MILLENIUM SCHOOL”
which would imbibe the core ideals enshrined in the
pedagogical philosophy of plaintiff No.1’s THE SHRI RAM
SCHOOLS. The overall guidelines and framework of the
CS (OS) No.1980/2014 Page 3 of 62
curriculum, courses, contents, teaching, methodology,
academic policies and pedagogic strategies of these schools
were to be the same as the plaintiff No.1’s schools under the
name “THE SHRI RAM SCHOOLS”.
iv) Under the Agreement with EISML, the plaintiff No.2 opened
THE SHRIRAM MILLENIUM SCHOOL, Noida in April, 2010
and THE SHRIRAM MILLENIUM SCHOOL, Faridabad in
April, 2012.
v) In the year 2011 the plaintiff No.2 jointly with the Haryana
Police Department set up THE SHRI RAM POLICE PUBLIC
SCHOOL in Bhondsi, Haryana for the children of Police
Personal and the General Public. The plaintiffs at present
are associated with schools at six different locations.
vi) It is alleged that the plaintiffs’ schools under the name SHRI
RAM have carved out a unique space as institutions of
excellence and are well known for their value based
innovative caring and child-centered approach to educate
young children and the institutions are popularly known as
THE SHRI RAM SCHOOLS. In the year 2002, THE SHRI
RAM SCHOOL, Vasant Vihar was ranked number 04
amongst all schools of Delhi by Outlook India. The said
school was rated the ‘Best Day’ school in the country by an
independent 15 city survey carried out by Education World
Magazine in the years 2008, 2009 and 2011. In 2010, THE
SHRI RAM SCHOOLS in Delhi and Gurgaon were
recognized as the “Number One” schools in Gurgaon and
CS (OS) No.1980/2014 Page 4 of 62
Southwest Delhi by The Hindustan Times. In 2011, THE
SHRI RAM SCHOOL, Aravali was ranked as the “Number
One” school in India by the Delhi based Center for
Forecasting and Research Private Limited and the
Education World Magazine. Further THE SHRI RAM
SCHOOL, Vasant Vihar was ranked 6th in the list of “Top
Schools in India” for the year 2013 in the ranking released
by IndiaRanker.com.
vii) The plaintiffs’ use of the word “SHRI RAM” in relation to
schools since the year 1988 i.e. for almost 25 years, the
same has become exclusively identified with the schools of
the plaintiffs and/or the core values and educational
philosophy of the plaintiffs said schools. An application for
registration of the trademark THE SHRI RAM SCHOOL was
filed by the plaintiffs on 6th June, 2008 under No.1696277 in
Class 41 which is pending with the Registrar, Trade Marks.
viii) The top rankings by independent surveys, quality education
and national and international awards has garnered
extensive reputation and goodwill to the plaintiffs. The
plaintiffs have incurred substantial expenditure in setting up
its Shri Ram Schools in the year 1988.
ix) In or around June 2011, the defendant opened the SHRI
RAM GLOBAL PRE SCHOOL at the address Trinity House,
4106, Ashoka Marg, Near DLF Galleria, DLF Phase IV,
Gurgaon, Haryana 122002. The said school was opened
right next to the plaintiff No.1’s The Shri Ram School, Aravali
CS (OS) No.1980/2014 Page 5 of 62
at Hamilton Court Complex, DLF Phase IV, DLF City,
Gurgaon-122002. Immediately on the opening of the said
school and the proximity of the two schools, the principal of
the plaintiff’s school started getting a number of enquiries
from parents including as to whether the School is a part of
The Shri Ram School or admission in the SHRI RAM
GLOBAL PRE-SCHOOL guaranteed an automatic
admission to THE SHRI RAM SCHOOL. As the SHRI RAM
GLOBAL PRE-SCHOOL had been opened by a trust
founded by the brother of the plaintiff’s, Mr. Arun Bharat
Ram, Chairman of the Board of Governors of plaintiff No.1
wrote a letter to his brother i.e. Trustee of the defendant
apprising him of the substantial reputation of ‘The Shri Ram
School’ run by the plaintiffs.
x) Instead of giving up the use of the trademark SHRI RAM the
defendant expanded its operations under the trademark
SHRI RAM and opened the SHRI RAM CENTENNIAL
SCHOOL, Dehradun at Knowledge Village Sherpur, Shimla
Road, Dehradun - 248197, SHRI RAM CENTENNIAL
SCHOOL, AGRA at Village Sikandarpur, Dayalbagh, Agra,
UP - 282005, SHRI RAM CENTENNIAL SCHOOL, INDORE
at 90 C, Bombay Hospital Service Road, Behind Bombay
Hospital, Vasant Vihar Colony, Vijay Nagar, Indore, Madhya
Pradesh 452010. The defendant is also proposing to open
SHRI RAM GLOBAL PRIMARY WING in Sector 45,
CS (OS) No.1980/2014 Page 6 of 62
Gurgaon barely 240 meters from the head office of the said
SRF Limited.
The plaintiffs accordingly put up notices in Indore,
Gurgaon and Dehradun informing the general public that
THE SHRI RAM SCHOOL had no relation or connection with
these schools.
xi) The plaintiff No.1 received a letter dated 17th February, 2014
from M/s. Factum Lawyers & Co. on behalf of the defendant
claiming to "hold unmatched goodwill; reputation and
standing in the market through its educational institutions,
schools running under the brand name of SHRI RAM
GLOBAL SCHOOL/SHRI RAM CENTENNIAL SCHOOLS"
even though these schools were opened nearly two decades
after the establishment of THE SHRI RAM SCHOOL in 1988
and none of the schools of the defendant have been able to
reach the recognition, milestone or ranking, as achieved by
the schools of the plaintiff. The legal notice called upon the
plaintiff No.1 to withdraw the advertisements and to tender a
public apology for releasing these advertisements in two
leading newspapers of the metros wherever such
advertisements have been released failing which appropriate
legal action would be taken.
xii) On 2nd May, 2014 the plaintiff No.1 received a copy of the
order dated 28th April, 2014 of The Competition Commission
of India rejecting a complaint filed by the defendant against
CS (OS) No.1980/2014 Page 7 of 62
the plaintiff No.1 inter alia alleging that the plaintiff No.2 had
intentionally placed the hoardings.
3. Counsel for the plaintiffs submits that the plaintiffs have no
objection if the said mark/name SHRI RAM is used by the defendant
in relation to any other different activities or services except in
relation to the services of school on the reason that as far as running
of school bearing the mark SHRI RAM is concerned, they are prior
user and have acquire unique goodwill, name and reputation and it
would create confusion and deception if allowed to the defendant
who was aware about the same on the date of adoption and it is
done by the defendant in order to make misrepresentation.
4. The plaintiffs have filed large number of documents in support
thereof. The details of few documents are mentioned below:-
(i) Document evidencing the extensive expenditure incurred by
the plaintiffs in establishing its Shri Ram School in 1988.
(ii) Year 2000 School Book of THE SHRI RAM SCHOOL,
Vasant Vihar showing that the first batch of students passed
out in the year 2000 who joined in the year 1988 e.g.
PALLLAVI SARAN, head girl joined the school in the year
1988.
(iii) Print out from www.outlookindia.com ranking the plaintiffs
SHRI RAM SCHOOL, VASANT VIHAR as the 4th best
school in India in the year 2002.
(iv) Interview of Mrs. Manju Bharatram to Times of India dated
2nd July, 2005 giving reasons for starting of THE SHRI RAM
SCHOOL.
CS (OS) No.1980/2014 Page 8 of 62
(v) Newspaper article from Times City dated 18th May, 2006
showing that the plaintiffs The Shri Ram Schools had a 100
percent pass result.
(vi) Print out from the web-site www.hindustantimes.com
showing the result of the 2010 HT-C FORE SURVEY of
South West Delhi’s top Schools in which plaintiffs SHRI
RAM SCHOOL, Vasant Vihar was ranked number 1.
(vii) Print out from the web-site www.hindustantimes.com
showing the result of the 2010 HT-C FORE SURVEY of
Gurgaon’s top Schools in which SHRI RAM SCHOOL,
Aravali was ranked number 1.
(viii) Print out from the web-site www.rediff.com showing the result
of a Pan India Survey in the year 2011 conducted by the
Centre for Forecasting & Research Pvt. Ltd. and Education
World Magazine in which THE SHRI RAM SCHOOL, Delhi
was ranked first in the country.
(ix) Print out from the web-site www.indiaranker.com giving the
updated list as of 1st June, 2013 of the Top Schools in Delhi.
THE SHRI RAM SCHOOL, Vasant Vihar is at No. 6 and
THE SHRI RAM SCHOOL, Aravali is at No. 12.
(x) Newspaper cutting of Times of India showing that Shivali
Malhotra and Bhavya Kulshreshta both students of The Shri
Ram School, Aravali topped ICSR scoring 98.75%.
(xi) Photocopy of a newspaper article from Sunday Hindustan
Times, New Delhi dated 20th May, 2012 containing
percentage range of top scorers from two prominent ICSE,
CS (OS) No.1980/2014 Page 9 of 62
ISC schools of which one was plaintiffs’ The Shri Ram
School.
(xii) Newspaper article from Times of India, New Delhi dated 18th
May, 2011 showing that the students of the plaintiffs The
Shri Ram School, were toppers in all streams of Class XII
and also Class X in the Gurgaon region.
(xiii) Newspaper cutting of Times of India showing that Abishek
Gupta, a student of The Shri Ram School, (DLF III) topped in
commerce with 97.25%.
(xiv) Newspaper cutting of Times of India showing that Nehal
Garg, a student of The Shri Ram School, Aravali topped the
District Gurgaon in commerce scoring 97.25%.
(xv) Photocopy of certificate issued by Education World for
“India's Most Respected Schools Survey Awards, 2011” to
The Shri Ram School, Aravali.
5. Counsel for the plaintiffs has stated that there is a panic
amongst the public at large who are unable to recognize who is
having which school. The founder of plaintiff No.1 is Arun Bharat
Ram and Mr. Vivan Bharat Ram is the founder of the Trust of
defendant. Both are real brothers being the sons of Dr. Bharat Ram
and grandsons of Late Sir Shri Ram.
6. Arun Bharat Ram in his e-mail messages and websites has
admitted that the plaintiffs are educational services provider who has
a legacy of interest in education in India by his grandfather Shri Ram
who has reputed educational institutions such as the Shri Ram
College of Commerce in 1926 and the Lady Shri Ram College in
CS (OS) No.1980/2014 Page 10 of 62
1956 in Delhi. He is the Chairman of Shri Ram Education
Foundation and manages Shri Ram College for Women.
7. The defendant is represented by Mr. N.K. Anand, Advocate,
who argued that the use of the name/mark SHRI RAM is a bonafide
use. The plaintiffs cannot have the monopoly rights over the mark
SHRI RAM. It is the name of the grandfather of the founding
members of the plaintiffs’ schools and defendant’s trust. The plaintiffs
cannot claim the prior user in respect of the educational institution
like school if the College under the mark SHRI RAM is being run prior
to the use of plaintiffs.
8. It is argued by Mr. Anand that the reputation and goodwill that
is enjoyed by the Shriram brand in present times was first established
by the efforts and endeavours of Late Sir Shri Ram, who was
renowned for his endeavours in the industrialization and
modernisation of education in India. Late Sir Shri Ram’s contributions
towards upliftment of educational services and facilities in India are
widely acknowledged and respected across India. The legacy of
educational excellence as established by Late Sir Shri Ram was
furthered to greater heights by the successive generations of the
Shriram family.
Mr.Anand, has referred the following few dates and events in
order to show that the plaintiff cannot claim the proprietorship and are
not entitled to claim the monopoly of the mark/word Shri Ram. The
following are the details of events which is not disputed by the
plaintiffs:-
CS (OS) No.1980/2014 Page 11 of 62
S.No. Date Relevance
1. 1920 Establishment of the “Commercial High School” by Sir Shri Ram.
2. 1939 Responsibility of management of the Anglo Sanskrit Victoria
Jubilee Senior Secondary School undertaken by Sir Shri Ram.
3. 1947 Establishment of the Shriram Institute of Industrial Research by
Sir Shri Ram.
4. 1951 The Commercial High School was renamed as the Shriram
College of Commerce in recognition of the contributions of Sir Shri
Ram.
5. 1957 Establishment of the Lady Shriram College for Women by Sir Shri
Ram in memory of his wife.
Establishment of the Mawana Sugar Works Primary School to
cater to the educational needs of employees of the Mawana
Sugar Works.
6. 1964 The Commercial Education Trust was renamed as the Shri Ram
Education Foundation.
7. July 1, 1974 Mawana Sugar Works Primary School was renamed as the
Shriram Primary School.
8. 1989 First Division in the Shri Ram Family amongst Shri Murli Dhar,
Shri Charat Ram and Shri Bharat Ram (sons of Sir Shri Ram)
9. April 18, 1990 Letter addressed by Shri Bansi Dhar acknowledging the goodwill
vested in the Family Name Shri Ram.
10. 1992 Appointment of Mrs. Sukanya Bharat Ram as Member in the
Governing Body of the Lady Shriram College for Women.
Shriram Primary School was renamed as Shri Ram Junior High
School.
11. 1997 Establishment of Mangaur Impex Private Limited
12. May 1, 1998 Division in the family of Shri Bharat Ram amongst his sons
conferring parallel rights to further the legacy of the Shri Ram
family.
13. 1999 Shri Ram Junior High School was further renamed and given its
present name, i.e. the Shriram School, Mawana
CS (OS) No.1980/2014 Page 12 of 62
14. 2000 Eventual Change of Name of Mangaur Impex Private Limited to
Shriram Global Enterprises Limited
Establishment of Shriram Centre for Computer Education Ltd.
promoted by Shriram Global Enterprises Ltd.
Shriram Centre for Computer Education Ltd. renamed as Shriram
Global Technologies and Education Ltd.
15. March 31, 2002 Resignation of Mr. Vivek Bharat Ram as Managing Director of
SRF Limited, the holding company of the Plaintiff.
16. 2003 Shriram Global Technologies and Education Ltd. entered into a
Joint Venture with New Horizons Worldwide Inc., and was
renamed as New Horizons India Ltd.
17. May 6, 2004 Letter addressed by Shri Charat Ram to his son, Mr. Siddharth
Shriram advising for the sharing the goodwill as vested in the
“Shriram” brand amongst all members of the Shri Ram family.
18. January 17, 2008 Trademark Application No. 1642131 for the Shield Device for “Shri
Ram School of Business” in class 41 filed by Shriram Global
Enterprises Limited (associate affiliate of the Defendant)
19. June 6, 2008 Trademark Application No. 1696277 for the mark “The Shri Ram
School” in class 41 filed on behalf of the Plaintiffs.
20. January 13, 2009 Examination Report issued in respect of the Plaintiff’s Application
No. 1696277 in class 41 cites the Shield Device of the
Defendant’s affiliate (Application No. 1642131)
21. March 29, 2010 The Shield Device (Application No. 1642131) for the “Shri Ram
School of Business” in class 41 secures Trademark Registration
vide certificate no. 856741.
22. April 23, 2010 Establishment of the Shri Ram Education Trust (the Defendant)
23. 2011 The Joint Venture “New Horizons India Limited” was renamed as
Shri Ram New Horizons.
Establishment of the “Shri Ram Global Pre-School” by the
Defendant in furtherance of its Family lineage in Gurgaon.
24. December 21,
2012
Letter addressed by the Principal of the Lady Shriram College for
Women to Ms. Sukanya Bharat Ram, thanking her for her
services and contributions in the development of the reputation of
the College as Member of the Governing Council.
25. 2014 Hoardings and advertisements of a disparaging nature set up by
the Plaintiffs in front of the Defendant’s schools across various
CS (OS) No.1980/2014 Page 13 of 62
cities drawing dissociation from the Defendant’s schools.
26. February 17,
2014
Legal Notice addressed by the Defendant to the Plaintiffs in
protest of the Hoardings and Advertisements issued by the
Plaintiffs.
27. March 20, 2014 Reply to the Legal Notice addressed by the Plaintiffs to the
Defendants.
28. April 28, 2014 Order of the Competition Commission of India in Case No. 15 of
2014 dismissing the complaint against the Plaintiffs filed by the
Defendant.
29. July 8, 2014 Plaint along with Application under Order 39 Rules (1) and (2)
filed by the Plaintiffs against the Defendant being CS (OS) 1980 of
2014 before the Hon’ble High Court of Delhi.
9. It is alleged by the defendant that the subsequent division had
occurred in the family of Shri. Bharat Ram, commonly known as the
Bharat Ram Group in the year 1998, whereby parallel rights were
conferred to his sons as the legacy of the Shri Ram Family while
ensuring that values and ethics propounded by Late Sir Shri Ram
and Shri. Bharat Ram were protected and furthered in the future.
10. Mr. Anand has referred many documents and relevant dates
about the educational activities of family members and grandfather of
active persons of both the parties. The details of which are
mentioned herein below :
I. A Trust for education was established in the year 1920 under the
name "Commercial Education Trust", the name of which was
later changed to "Shri Ram Education Foundation" in the year
1964. This trust oversaw the administration of seven educational
institutions, including the Shri Ram College of Commerce as well
CS (OS) No.1980/2014 Page 14 of 62
as the Lady Shri Ram College for Women, the relevant details of
which are mentioned herein below:
(i) Shri Ram College of Commerce : The institution was
established in the year 1920 by Sir Shri Ram under the
name "Commercial High School". It was later elevated to
function as an "Intermediate College" in the year 1926. The
same was further elevated as a Degree College in the year
1930 and college offering Post - Graduate studies in the
year 1934. This educational institution was later renamed
the "Shriram College of Commerce" in the year 1951 in
recognition of the contribution made by its founder, Sir Shri
Ram.
(ii) Lady Shri Ram College for Women: This educational
institution was established by Sir Shri Ram in memory of
his wife in the year 1957, under whose Chairmanship the
educational institution continued to function until his demise
in the year 1962.
II. In addition to establishing the Commercial Education Trust and
managing the Anglo Sanskrit Victoria Jubilee Senior Secondary
School, Sir Shri Ram further contributed to education and its
development in India by establishing the Shriram Institute of
Industrial Research in the year 1947.
III. The legacy of educational excellence as established by Sir Shri
Ram stood furthered by his successors as the second son of Sir
Shri Ram, Shri. Bharat Ram had served as the Chairman of the
Board of Governors of the esteemed Lady Shri Ram College for
CS (OS) No.1980/2014 Page 15 of 62
Women. Shri Charat Ram, son of Sir Shri Ram had also
contributed to his father's legacy of educational excellence and
related services in India. He had established the Shri Ram
Centre for Industrial Relations, Human Resources, Economic
and Social Development in the year 1963.
IV. Shri Bansi Dhar, son of Shri Murli Dhar and grandson of Sir Shri
Ram. He was instrumental in the development of Shri Ram
College of Commerce as he was a member of the Governing
Council in addition to being the Treasurer of the said educational
institution. He was also responsible for the development of other
educational institutions such as the Shriram Institute of Industrial
Research in the capacity of its Vice Chairman and the Lady Shri
Ram College for Women.
V. The Shriram Family is also credited with tremendous contribution
to the field of the performing arts. It is submitted that Ms. Sheila
Bharat Ram, wife of Shri. Bharat Ram had established the
Shriram Centre for Performing Arts/ Indian National Theatre
Trust.
Ms. Sumitra Charat Ram, wife of Shri Charat Ram had
established the Shriram Bhartiya Kala Kendra in the year 1952.
The Shriram Bhartiya Kala Kendra imparts training in Indian
classical dance styles including Kathak, Bharatanatyam, Odissi,
Chhau, as well as training in Hindustani Classical music.
VI. It is mentioned that SRF Limited had established the SRF
Foundation, plaintiff No. 1 herein. As Managing Director of SRF
Foundation, the founder and chairman of the defendant herein
CS (OS) No.1980/2014 Page 16 of 62
was actively involved in the affairs of SRF Limited. Further, Smt.
Sukanya Bharat Ram, Trustee of the defendant Trust herein had
also served as a member on the Governing body of the Lady
Shri Ram College for Women for a period of 20 years from 1992
to 2012. She is also a member on the Board of Trustees of the
Kasturba Gandhi National Memorial Trust, which provides inter
alia educational services to rural communities in North Delhi.
VII. In the year 1989, through a Scheme of Arrangement, the Shri
Ram Family witnessed its first division, a tripartite division
amongst the sons of Sir Shri Ram i.e., Shri Murli Dhar, Shri
Charat Ram and Shri Bharat Ram thereby granting parallel rights
to carry forward the rich legacy of Sir Shri Ram. Subsequent
division had occurred in the Family of Shri. Bharat Ram,
commonly known as the Bharat Ram Group in the year 1998,
whereby parallel rights were conferred to his sons as the legacy
of the Shri Ram Family while ensuring that values and ethics
propounded by Sir Shri Ram and late Shri. Bharat Ram were
protected.
Reliance is also placed upon letter dated 6th May, 2004
addressed by Dr. Charat Ram to his son, Shri Siddharth Shriram
wherein he recognized the tremendous goodwill enjoyed by the
"Shriram" brand. Through this letter, Dr. Charat Ram had
advised for sharing of such goodwill and for avoiding all
disputes. The contents of the letter are reproduced herein below:
"... "Usha" and "Shriram" are brands that enjoy tremendous goodwill and are synonymous with
CS (OS) No.1980/2014 Page 17 of 62
Shriram group entities. There has been decades of harmony between these enterprises, and the brands have been used by many of the Shriram enterprises for their respective brands. This has benefited the enterprises and in the process also enriched the brands.
All the enterprises have contributed towards the goodwill of the brands through usage on quality products and earning the trust of the customers. Any dispute can only damage the brand and in turn the reputation of Shriram enterprises built up through years of hard work".
VIII. Thus, it is evident that the elders in the Shriram family including
inter alia Shri. Bharat Ram of the DCM Shriram Group as well as
Sh. Charat Ram of the Usha Group shared the same views as
their founding father Sir Shri Ram, that the Shri Ram Family
should retain all such rights to make use of their family name
and must protect the family name from falling into the hands of
outsiders.
Thus being a Founder and Chairman of the defendant,
vide his letter dated 26th September, 2011 had reminded the
Chairperson of the plaintiff No. 1 of the stellar contribution of
members of the Shriram Family in upholding and further
strengthening the reputation and goodwill enjoyed by the
educational institutions established by the Shriram Family. There
was a fear in the minds of the plaintiffs that at one time, the
share holdings may divest in the hands of outsiders. The
plaintiffs felt it necessary to ensure that the use of the word
CS (OS) No.1980/2014 Page 18 of 62
"SHRI RAM" remains within the family as was the desire of the
founding fathers of the said family.
Therefore, it is submitted that the plaintiffs and the defendant
herein have concurrent rights to make use of their family name
"Shriram" in relation to their schools.
11. It is submitted that the use of the name “Shri Ram” by the
defendant in relation to running the services of schools is in
furtherance of the common family name of the plaintiffs and the
defendant, which constitutes a bonafide use under the provisions of
the Trade Marks Act, 1999 as the elders in the Shri Ram family had
always professed a principle of “Live and Let Live” while advising
family members to maintain peace and harmony in the family.
Further, the elders in the Shri Ram family shared the common view
that all members of the Shri Ram family possess concurrent rights to
make use of their family name. Dr. Bansi Dhar in a letter dated 18th
April, 1990 had clearly advised that no member of the Shri Ram
family must be restricted from making use of the tremendous goodwill
vested in the name Shri Ram. Further, Dr. Charat Ram, son of Late
Sir Shri Ram vide letter dated 6th May, 2004 addressed to his son Mr.
Siddharth Shriram had clearly stated that the collective efforts of
various enterprises in the Shriram Family had enriched the brand
Shri Ram over the years and that any dispute between such
enterprises must be prevented.
12. It is submitted by the defendant that the names of the
defendant’s schools that is “Shri Ram Global School”, “Shri Ram
Centennial School” and “Shri Ram Global Pre-School” are sufficiently
CS (OS) No.1980/2014 Page 19 of 62
distinctive from the name of the plaintiff’s Schools, i.e. “The Shri Ram
School” and “Shri Ram Millennium School”. The names of the
defendant’s schools make use of additional elements as suffix which
distinguishes clearly the schools of the defendant from those of the
plaintiffs. The defendant also makes use of a particular Shield Device
in relation to its schools and educational institutions, which is
completely different and distinguishable from the mark of the
plaintiffs.
With regard to goodwill, reputation and prior user claimed by
the plaintiffs that due to prior establishment of the plaintiff’s Shri Ram
Schools on the initiative of Mrs. Manju Bharat Ram in the year 1988,
the name Shri Ram and the consequent goodwill vested in it in
relation to schools is the sole property of the plaintiffs is incorrect and
unacceptable. Various factions of the Shri Ram family have not only
made use of the Family Name prior to the plaintiffs but have also
obtained trademark registrations for the name “Shri Ram”.
13. It is submitted that the Shri Ram Family, in its efforts to uplift
educational excellence in India had established ‘The Shri Ram
School Mawana” in the year 1957. The said school running under the
Chairmanship of Mr. Siddharth Shriram predates the establishment of
the plaintiff’s schools by over 30 years. Therefore, neither are the
plaintiffs the only faction of the Shri Ram family which has been in the
field of running schools in India nor are they the first amongst the Shri
Ram family to do so.
14. With regard to confusion and deception, it is argued by the
defendant’s counsel that the plaintiffs have placed reliance upon
CS (OS) No.1980/2014 Page 20 of 62
letters and e-mails allegedly emanating from the general public. The
same are in the nature of inquiries raised internally either by the
employees of SRF Ltd., the holding company of the plaintiff or by
members of the plaintiffs’ schools themselves. The E-mail dated 27th
March, 2014 from one Ms. Payal Gulati highlighted the difference in
between the devices of the plaintiff’s marks and the defendant’s by
stating that the other school “does not have the Shri Logo”.
15. However, it is not denied on behalf of defendant that the
plaintiffs are the prior user of the mark/name SHRI RAM in relation to
running the schools between the parties. But, it is stated that the
plaintiffs are not the exclusive proprietor of the same. It is admitted
that the defendant established its first school, namely the Shri Ram
Global Pre-School in Gurgaon in the year 2011. Subsequently, the
defendant has established its schools in various cities of the country
including New Delhi, Dehradun, Indore, Rohtak, Siliguri among
others.
16. It is informed by Mr. Anand that at present, the defendant runs
nineteen schools under two banners namely, the Shri Ram Global
Schools and the Shri Ram Centennial Schools by itself or under the
contracts with third parties. The defendant is holding the registered
trademark under the name SHRI RAM.
17. In a nut-shell, the case of the defendant is that the defendant's
right to use the name SHRI RAM for schools emanates from the
common lineage from the legacy of Late Sir Shri Ram. Thus, the
plaintiffs’ action is not sustainable. There are other factions of the
Shri Ram family using the name SHRI RAM for schools particularly
CS (OS) No.1980/2014 Page 21 of 62
other members of the family in Mawana. There is bonafide use of the
family name SHRI RAM by the defendant who is using the mark
SHRI RAM in different ways along with logo and thus there is no
confusion amongst the general public. It is not denied that Late Sir
Shri Ram did not run any school under the name SHRI RAM.
18. It is admitted on behalf of the plaintiffs that purpose of the
scheme of arrangement of 1998 was to provide a framework to arrive
at the division of the family assets and meet the family liabilities. Thus
the inherent right to use the name SHRI RAM vests with each
member of the Shri Ram family but such right is subject to restricting
oneself to its domain of business and not encroaching upon/infringing
others right and the letter of Dr. Bansi Dhar only dealt with his view
against any restriction to use of the name DCM and SHRI RAM by a
particular group of the Shri Ram family i.e. no faction of the Shri Ram
family could object to the use of the name SHRI RAM by another
faction, however, the same would in effect be subject to limiting the
use of the name SHRI RAM to their respective and exclusive domain
of business so as to avoid competition and confusion regarding trade
origin.
19. It is submitted by the plaintiffs that there is no bonafide use of
the family name SHRI RAM by the defendant as many misleading
statements of the defendant are malafide attempts on its part to
associate itself and its SHRI RAM schools with the plaintiff's well-
known SHRI RAM schools in Delhi and Gurgaon so as to piggy bank
on its reputation and goodwill and gain illicit profits out of the same.
The defendant in fact is using the name/mark SHRI RAM as a trade
CS (OS) No.1980/2014 Page 22 of 62
mark.
20. With regard to dissimilarity between the school name of the
defendant and the plaintiffs, it is argued by the plaintiffs that the use
of an identical name SHRI RAM for its schools by the defendant
evidently makes it similar to the name of the plaintiff's well-known
SHRI RAM schools.
21. The use of the words “Centennial” and “Global” by the
defendant in conjunction with the name SHRI RAM for its schools do
create confusion and deception as THE SHRIRAM MILLENNIUM
SCHOOL and SHRI RAM CENTENNIAL SCHOOL are deceptively
similar. The term “Centennial” used by the defendant in conjunction
with the name SHRI RAM for its schools is synonymous with the term
'Millennium” used by the plaintiffs in conjunction with the name SHRI
RAM for its schools. Even the use of the Shield device would not
make any difference as the foremost and essential feature of the
defendant's school name is the word 'SHRI RAM”.
22. Pertaining to the email dated 27th March, 2014 from Ms. Payal
Gulati it is submitted by the plaintiffs that the same does not highlight
the difference in the devices of the plaintiffs and defendant's mark.
Rather, this email evidences the fact that the devices used along with
the name SHRI RAM are irrelevant for the purpose of creating
dissimilarity between the marks and that the essential and the
prominent feature of both marks is the name SHRI RAM, because
otherwise Ms. Gulati on seeing the Shield Device of the defendants
would have understood that the defendant's SHRI RAM schools do
not originate from the plaintiffs and thus, would have not written the
CS (OS) No.1980/2014 Page 23 of 62
aforesaid email.
23. It is argued that the confusion has further occurred by
defendant's franchisee's own admission in the defamation suit that
the general public refrained from seeking admission in the
defendant's SHRI RAM school in Indore pursuant to being made
aware of the non-connection between the plaintiffs’ SHRI RAM
schools and the defendant's SHRI RAM schools. This in effect
means that before being made aware of the non-connection, the
general public believed the defendant's SHRI RAM schools to be
connected/associated with the plaintiffs’ SHRI RAM schools.
24. It is stated by the plaintiffs that the defendant as per Exhibit E
of its Brand License and Franchisee Agreement dated 26th
September, 2012, was charging a one-time fee of Rs. 1.15 Crore
from its franchisee for the licensed right to start SHRI RAM branded
schools in a particular territory followed by an additional amount of
Rs. 5 Lakhs per pre-school that is opened by the franchisee within its
franchise territory after the first pre-school.
25. I have also gone through the records of the present case
including the plaint, written statement and documents filed therewith.
I have also considered the submissions advanced by the learned
counsel for the parties at the bar. Some of the points mentioned in
the written submissions filed by the parties were not part of their
respective pleadings. Now, I shall proceed to discuss various aspects
which fall for consideration in the present case.
26. The plaintiffs claim to be prior user of the mark SHRI RAM in
respect of the schools since the year 1988. The defendant on the
CS (OS) No.1980/2014 Page 24 of 62
contrary does not dispute the said position but raises a defence that
the mark SHRI RAM is not merely proprietary interest of the plaintiffs
for manifold reasons including that the defendant is real brother of
the plaintiffs and belongs to Shri Ram family and is closely connected
with the field of the education operating under the mark SHRI Ram. It
is also the case of the defendant that there are documents
suggesting that the family members can use the word SHRI RAM to
promote the same and thus the defendant is entitled to use the mark
SHRI RAM being a family member. I have considered the
submissions advanced by the learned counsel for the parties on the
aspect of the proprietorship of the mark SHRI RAM. I am of the view
that there is a material available on record which indicates that the
family members of the Sir Shri Ram has been using the mark SHRI
RAM in respect of the diverse kind of the business and services
including education in colleges. There is no material on record which
prima facie suggests that a faction of the family members as per
family settlement has been specially allowed to run the school or the
groups emanating from Shri Ram family which limits their rights to
use the mark SHRI RAM in respect of the particular field of the
business. It is though altogether different matter that there may be a
line in the business which has been adopted by the Shri Ram family
in good senses by not intruding in each other’s business for all this
period. Still, for prima facie purposes, it cannot be said that the
plaintiffs have been provided with the mark SHRI RAM solely for
running the schools as per any written document executed by the
family members. It is now to be considered as to whether the
CS (OS) No.1980/2014 Page 25 of 62
plaintiffs have any right to run the school exclusively under the name
SHRI RAM. It has come to record that prior to plaintiffs’ schools who
have acquired unique goodwill and reputation, none of the family
member of Late Bharat Ram had started school under the said
name but no doubt family members were actively involved in the
educational institutions apart from other activities. It has also brought
to my knowledge that one of other faction of family relation has been
running school prior to the plaintiffs. But, the objection was raised by
the plaintiffs’ counsel that the said plea is not taken in written
statement and it was pointed out by the counsel that prior to the
plaintiffs use, the said school under the name SHRI RAM was
opened for the education of employees children of Sugar Mill only
which has no goodwill and name who is running the said school
outside Delhi in remote area in a small way.
27. It is necessary to refer the sample scanned copy of their
representation in order to understand in which manner the parties are
using the name/mark SHRI RAM as well as respective logos :
Plaintiffs’ Mark
CS (OS) No.1980/2014 Page 26 of 62
Defendant’s Mark
It is apparent from the above mark, the name/mark SHRI RAM
is being used by both the parties is common and the same is also an
essential part of their services, though the logos are different.
28. First question before this Court is as to whether the use of the
mark/name SHRI RAM in the manner depicted are deceptively
similar or not. The said issue has been discussed by the Division
Bench of this Court in the case of The Himalaya Drug Company
vs. M/s. S.B.L. Limited, 2013 (53) PTC 1 which reads as under :
“20. It is settled law that where the defendant's mark contains the essential feature of the plaintiff's mark combined with other matter, the correct approach for the court is to identify an essential feature depending particularly "on the court's own judgment and burden of the evidence that is placed before the Court". In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public
CS (OS) No.1980/2014 Page 27 of 62
and not by merely comparing the dissimilarities in the two marks.
21. The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole". In the decision reported as (1951) 68 RPC 103, 105, De Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words "Vick's VapoRub" as the essential feature, registered in Jamaica, and the defendants used a similar label with the words "Karsote Vapour Rub" as the essential feature, and it was shown that the expression "VapoRub" had become distinctive of the plaintiff's goods in Jamaica, an action for infringement was successful. (See De Cordova v. Vick Chemical Co. (supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June Perfect Ld., AIR 1972 SC 1359, 1362, M/s. National Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited and AIR 1991 Bom 76, M/s. National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and Another)”.
From the principles laid down in the cases referred in the
judgment above, it is clear that the mark SHRI RAM is being used as
essential feature in their logos and the same are deceptively similar.
CS (OS) No.1980/2014 Page 28 of 62
29. The next submission of Mr. Anand is that there are few
admissions made by the plaintiff No.2 in the Trade Marks Registry in
its reply to the examiner report in the application filed for registration
of a trademark SHRI RAM in order to waive the objection under
Section 9 of the Act. Mr. Anand admits that the said plea was not
taken in the written statement and reply to the injunction application.
In order to satisfy my conscious, I allowed him to take this objection.
He referred the said reply filed by the plaintiff No.2 to the examination
report. The same is read as under :
“We respectfully submit that ‘Shri Ram’ is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark ‘Shri Ram’. As evident from the search report attached with the examination report, several ‘Shri Ram’ formulative marks are peacefully co-existing on the Registrar of Trade Marks. The subject matter is a fancy justaposition of the words ‘Shri Ram’ and ‘Educare’.” “Re the remaining cited marks i.e. SHRIRAM (Registration Nos.1238981 and 1515318), SHRI RAM SCHOOL OF BUSINESS WITH LABEL (Registration No.1642131), SHRI RAM CHANDRA MISSION (Registration Nos.1288968 and 1288972, we wish to invite the learned Registrar’s attention to the well established judicial principle of entirety. According to the said judicial principle, conflicting marks should not be broken into separate components and read for the sake of comparison; they should be dealt with as a whole. Accordingly, we aver that ‘Shri Ram’ is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark ‘Shri Ram’. We submit that ‘Shri Ram’ is common to the trade. It is the combining elements that make the conflicting marks distinguishable from each another. The marks taken as whole are different each other such that there is no likelihood
CS (OS) No.1980/2014 Page 29 of 62
of confusion and deception between them by their co-existence.”
Mr. Anand submits that in view of the said admission, the
plaintiffs are not entitled for interim relief as prayed for.
30. The counsel for the plaintiffs has informed to the Court that
the plaintiffs have withdrawn their application number 1696276 by
letter dated 15th April, 2014 prior to the filing of this suit on 8th July,
2014. It is submitted that the plaintiffs have derived no advantage in
application number 1696276 from the argument put forth in the letter
dated 8th June, 2012 as the same was subsequently withdrawn. The
said letter dated 8th June, 2012 was not written in any adversarial
proceeding and was withdrawn prior to the filing of this suit without
affecting any third party right or the rights of the plaintiffs. It was
written due to oversight. In fact, the mark SHRI RAM was registrable
if the same was distinctive on the date of application. Counsel
submits that the defendant itself has filed the application for
registration which is now registered trade mark, hence the objection
of the defendant is without any force and both the marks are
deceptively similar otherwise, the trade marks office ought not to
have raised the objection about the conflicting of two marks of the
parties.
In view of aforesaid, now it is to be examined as to whether on
merit the mark was distinctive on the date of filing of the suit or it was
a registerable mark or not.
31. Admittedly, the plaintiffs have been using the said mark/name
since 1988 for running the schools who are providing services. The
CS (OS) No.1980/2014 Page 30 of 62
definition of the mark includes the name under Section 2(m) of the
Act which reads as under :
“2(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;”
32. The names and surnames have been protected by this Court
and various other High Courts as well as by Supreme Court in the
following cases:
i) In the case of Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. [2002 (2) SCC 147], the Supreme Court observed that “It is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities.”
ii) The following observations of this Court in Dr. Reddy’s Laboratories Ltd. versus Reddy Pharmaceuticals Limited, 2004 (29) PTC 435 (Del.), which was also affirmed by the Division Bench are very relevant in this regard:
“15. The plea raised by the defendant that it has a bona fide statutory right to use the trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected for the reason that the trade mark "Dr. Reddy" in spite of not bring registered has acquired considerable trade reputation and goodwill
CS (OS) No.1980/2014 Page 31 of 62
in the community dealing with drugs and pharmaceutical not only in India but abroad also. This trade mark is now distinctively associated with the plaintiff's company. Its long and continuous user by the plaintiff is prima facie established. The use of trade name/mark "Reddy" by the defendant is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other "Reddy" has a right to start a rival business by using the same trade name on the plea that it is his surname. This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to associate in their business ventures persons having similar surnames wind ants was held to be an act of passing off the goods and it was observed that the use of such family name as a trade mark was not permissible. The plea of the defendants that the surname of the partners of its firm could be used to carry on trade in their own name was rejected. It was held that prima facie the defendants were intentionally and dishonestly trying to pass off their goods by use of name "Bajaj" and as such the plaintiff had made out a case for grant of injunction.
19. Section 35 of the TMM Act is also of ho help to the defendant as the use of name "Reddy" on pharmaceutical preparations by the defendant is not shown to be bona fide. The drugs and pharmaceutical preparations being manufactured by the plaintiff may be having different names but that does not disentitle the plaintiff to claim protection in regard to its trade mark "Dr. Reddy" which has earned substantial trade reputation and goodwill. This trade mark has acquired a distinctive reputation. Use of an identical or deceptively similar trade mark may mislead the customers on account of similarity. "Dr. Reddy" and "Reddy" are similar trademarks phonetically and are capable of creating confusion.
CS (OS) No.1980/2014 Page 32 of 62
There is identity of goods, identity of trade mark and identity of consumers. The defendant is not at all an honest and concurrent user of the trade mark "Reddy" and it is apparent on record that it has started using the trade mark "Reddy" on its pharmaceutical preparations in bad faith knowing fully well that the plaintiff company has enormous trade reputation and goodwill in the trade mark " Dr. Reddy" which is completely associated with plaintiff and has acquired a secondary meaning in business circles.”
33. It is a question of fact, to be decided on the evidence, whether a name or mark has acquired a secondary meaning so that it denotes or has come to mean goods made by a particular person and not goods made by any other person, even though such other person may have the same name. If it is proved on behalf of a claimant that a name or mark has acquired such a secondary meaning, then it is a question for the Court whether a defendant, whatever may be his intention, is so describing his goods that there is a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the claimant.
33. The effect of said so called letter written by the plaintiff No.2
to the trade mark office is to be examined by this Court. It is settled
law that the registration merely recognizes the rights which are
already pre-existing in common law and does not create any rights.
This has been explained by the Division Bench of this Court in the
case of Century Traders vs Roshan Lal Duggar & Co, AIR 1978
Del 250 wherein it was observed:
“First is the question of use of the trade mark. Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection
CS (OS) No.1980/2014 Page 33 of 62
with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout "THE State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected."(Emphasis Supplied)
34. The said view is also supported from the judgment of the
Division Bench of Bombay High Court in the case of Sunder
Parmanand Lalwani and Others v. Caltex (India) Ltd., AIR 1969
Bombay 24, which has been held vide paras 32 and 38 as follows:
"32. A proprietary right in a mark can be obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our Trade Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive
CS (OS) No.1980/2014 Page 34 of 62
mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J. in 1956 RPC 1. In the matter of Vitamins Ltd's Application for Trade Mark at p.12, and particularly the following: "A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated". Law in India under our present Act is similar.”
35. The said views emanating from the courts in India clearly
speak in one voice which is that the rights in common law can be
acquired by way of use and the registration rights were introduced
later which made the rights granted under the law equivalent to the
public user of such mark. Thus, registration is merely a
recognition of the rights pre-existing in common law and in case
of conflict between the two registered proprietors, the
evaluation of the better rights in common law is essential as the
common law rights would enable the court to determine whose
rights between the two registered proprietors are better and
superior in common law which have been recognized in the
form of the registration by the Act. (Emphasis Supplied)
CS (OS) No.1980/2014 Page 35 of 62
36. The applicability of the said principle can be seen as to which
proprietor has generated the goodwill by way of use of the mark /
name in the business. The use of the mark/ carrying on business
under the name confers the rights in favor of the person and
generates goodwill in the market. Accordingly, the latter user of the
mark/ name or in the business cannot misrepresent his business as
that of business of the prior right holder.
37. The prior user is considered to be superior than that of any
other rights. Consequently, the examination of rights in common law
which are based on goodwill, misrepresentation and damage are
independent to that of registered rights. The mere fact that both prior
user and subsequent user are registered proprietors are irrelevant for
the purposes of examining who generated the goodwill first in the
market and whether the latter user is causing misrepresentation in
the course of trade and damaging the goodwill and reputation of the
prior right holder/ former user.
38. It is also recognized principle in common law jurisdiction that
passing off right is broader remedy than that of infringement. This is
due to the reason that the passing off doctrine operates on the
general principle that no person is entitled to represent his or her
business as that of business of other person. The said action in
deceit is maintainable for diverse reasons other than that of
registered rights which are allocated rights under the Act.
39. The defendant has also referred the E-mail dated 28th
September, 2011 by stating that there are admission/ no objection on
CS (OS) No.1980/2014 Page 36 of 62
the part of plaintiffs to use the name SHRI RAM for running the
schools. The extract of the said E-mail reads as under:
"I want to mention that if you ever wanted to divest or reduce your shareholding, you would then be reduced to minority shareholding in your company. You must remember that the 'Shri Ram' brand might then go to wrong outsiders. One would have no control over how they would use this brand."
40. Even otherwise, let us take the face value of the said letter
written by the plaintiff in Trade Mark Registry making some
admissions to the effect that no monopoly can be claimed and the
mark SHRI RAM applied is not similar to the mark of the defendant’s
mark. But at the same time, if Court would find that it is a distinctive
mark then the same is protectable under the law, the said admissions
are totally immaterial as per settled law as well as with regard to E-
mail dated 28th September, 2011.
41. The law of admission has its genesis from the rules of
evidence wherein it is well settled that the admission is best evidence
and no further evidence is required once the admission is clear and
unambiguous. However, the admissions are usually made of some
facts and not of pure questions of law.
As observed by Phipson in his Law of Evidence (1963 Edition,
Para 678) as the weight of an admission depends on the
circumstances under which it was made, these circumstances may
always be proved to impeach or enhance its credibility. The effect of
admission is that it shifts the onus on the person admitting the fact on
the principle that what a party himself admits to be true may
CS (OS) No.1980/2014 Page 37 of 62
reasonably be presumed to be so, and until the presumption is
rebutted, the fact admitted must be taken to be established. An
admission is the best evidence that an opposing party can rely upon,
and though not conclusive is decisive of matter, unless successfully
withdrawn or proved erroneous.
42. The admission in the context of Indian Evidence Act, 1872
shall always be of facts due to the definition of the admission under
Section 17 of the Act and the same is confined to statement which
may suggest inference as to fact or relevant fact. A logical corollary to
this which follows is that the admissions shall always be of facts or
relevant facts but cannot be of law.
If one examines the concept of admissions on the basis of law
of pleadings as envisaged under the Code of Civil Procedure, it is
realized that the cardinal rule of pleadings is that the pleadings
should contain the facts, material facts and not the law. There again,
it is not practical or feasible to give rise to any such admission of the
law or legal position. Afortiori, it follows that the admission of the
legal position or legal principle which may or may not be correct is no
admission in law and it is inconsequential in law.
43. In the case of Ram Bharosey vs Ram Bahadur Singh, AIR
1948 Oudh 125, the Court had observed that the admission by a
party on pure question of law is not binding on him. The same view
was also taken by the Nagpur Bench in the case of Gulabchand vs.
Bhaiyalal, AIR 1929 Nag 343. There cannot be an estoppel against
the law or statutory provisions. When one is concerned with the
statutory right or constitutional guarantee, there cannot be any
CS (OS) No.1980/2014 Page 38 of 62
estoppel against the same as held in the case of A.C. Jose Vs Sivan
Pillai & Ors, (1984) 3 SCR 74.
44. Once there is no estoppel against the statute, the admissions
or concessions made by the counsel for the parties under the wrong
understanding of law cannot operate to the detriment of the party
making such admissions and it is only on the basis of correct legal
position, the rights of the parties are to be determined.
This proposition has been laid down in the case of Union of
India And Ors. vs Mohanlal Likumal Punjabi & Ors, (2004) 3
SCC 628 wherein the Supreme Court observed as under:
“In our view the concession, if any, is really of no consequence, because the wrong concession made by a counsel cannot bind the parties when statutory provisions clearly provided otherwise. It was observed by Constitution Bench of this court Sanjeev Coke Manufacturing Co v. Bharat Coking Coal Ltd (1983 (1) SCC 147) that courts are not to act on the basis of concession but with reference to the applicable provisions. The view has been reiterated in (1988 (6) SCC 538) and Central Council for Research in Ayurveda and Sidhha & others versus Dr. K Santhakumari (2001 (5) SCC 60). In para 12 of Central Council's case (supra) it as observed as follows:
"In the instant case, the selection was made by the Departmental Promotion Committee. The Committee must have considered all relevant facts including the inter se merit and ability of the candidates and prepared the select list on that basis. The respondent, though senior in comparison to other candidates, secured a lower place in the select list, evidently because the principle of "merit-cum-seniority" had been applied by the
CS (OS) No.1980/2014 Page 39 of 62
Departmental Promotion Committee. The respondent has no grievance that there were any mala fides on the part of the Departmental Promotion Committee. The only contention urged by the respondent is that the Departmental Promotion Committee did not follow the principle of "seniority- cum-fitness". In the High Court, the appellants herein failed to point out that the promotion is in respect of a "selection post" and the principle to be applied is "merit-cum-seniority". Had the appellants pointed out the true position, the learned Single Judge would not have granted relief in favour of the respondent. If the learned counsel has made an admission or concession inadvertently or under a mistaken impression of law, it is not binding on his client and the same cannot ensure to the benefit of any party." (Emphasis supplied)
45. Again in Uptron India Ltd vs. Shammi Bhan and Anr. 1998
(6) SCC 538, the court also explained the said principle as one of
species of the principle that there cannot be any estoppel against
the statute. It was held that a case decided on the basis of wrong
concession of a counsel has no precedent value. That apart, the
applicability of the statute or otherwise to a given situation or the
question of statutory liability of a person/institution under any
provision of law would invariably depend upon the scope and
meaning of the provisions concerned and has got to be adjudged
not on any concession made. Any such concessions would have no
acceptability or relevance while determining rights and liabilities
incurred or acquired in view of the axiomatic principle, without
exception, that there can be no estoppel against statute.
CS (OS) No.1980/2014 Page 40 of 62
46. In view of the above discussion, it is clear that the admissions
made of law or legal provisions are inconsequential, they cannot
operate as an estoppel against the person making it. The courts are
not to act upon the admissions of wrong legal principles made by the
parties. Rather, the court has to adjudicate rights and liabilities of
parties basing on the true legal position emerging from the interplay
of the provisions of the statute and not upon any such wrong
admissions.
47. Therefore, it is evident that if the mark SHRI RAM was/is
distinctive as per law and both rival marks are similar, in case any
admission is made by the plaintiffs the same has no consequence.
The same cannot operate to the detriment of the plaintiff No.2. The
said admission whatsoever does not help the case of the defendant
who itself had applied for registration of the mark SHRI RAM which
is registered in the name of the defendant. It is not understood if the
said plea is taken then why the defendant has filed the application
for registration of the said mark who made its admission of
distinctiveness of the same mark at the time of registration.
It appears from the E-mail apparently that Arun Bhagat Ram
warned his brother not to share the name SHRI RAM with the third
party otherwise the quality of the name is likely to be tarnished.
However, despite of the same, the name SHRI RAM was allowed by
the defendant to the third party by way of licensing
agreements/contract. Even otherwise, he has not allowed the
defendant to use the name SHRI RAM in the said E-mails. Prima
facie I do not find specific admission on the part of the plaintiffs to
CS (OS) No.1980/2014 Page 41 of 62
share the mark SHRI RAM with the defendant for running the
schools.
48. The next submission of Mr. Anand is that one of the family
members is operating school in Mawana prior to the plaintiffs, thus,
the plaintiffs cannot claim the exclusive rights to the use of the mark
SHRI RAM.
49. It is also argued by the plaintiffs’ counsel that the reliance on
the existence of The Shri Ram School, Mawana is untenable for the
fact that this school's presence is limited to a town in Uttar Pradesh,
with limited access to the general public and lacks
reputation/goodwill. It is not denied that the said school was
established as the “Mawana Sugar Works Primary School” in the
year 1957 and not as the Shri Ram School, Mawana. The use of the
name SHRI RAM by this school prior to the plaintiffs was as a
primary school. This school is yet to become full-fledged as it
currently caters to students till only Class XI. The school is located
within the campus of Mawana Sugar Limited Factory. The plaintiffs
submit that the school was established to cater to the educational
requirements of the employees of Mawana Sugar Works and not the
general public. It is submitted that no such plea was taken in the
written statement.
50. It is contended by the plaintiffs that the defendant itself
became aware of the Mawana school much later as there is no
mention of the same in the pleadings. It is only the plaintiffs faction
of the Shri Ram family that started schools under the name SHRI
RAM. No other faction has been in the business of running schools
CS (OS) No.1980/2014 Page 42 of 62
under the name SHRI RAM. Therefore, the goodwill in the name
SHRI RAM in the field of schools in India is indeed a result of the
efforts of plaintiffs. Hence, the defendant cannot be allowed to use
the identical name SHRI RAM for its schools, amounting to the
continuing detriment of the plaintiffs who have built up a goodwill
and reputation in the name SHRI RAM for its schools after years of
hard work. It is specifically argued by the plaintiffs that Mawana
School has no goodwill and reputation, it was originally established
for the purpose of giving education to the children of the employees,
and is now being used for other children after the use of the name
SHRI RAM by the plaintiffs and the said plea does not help the case
of the defendant. In view of settled proposition of law that in case of
an action of passing off the rights of prior user are to be considered
between the parties at the interim stage.
51. It is the case of the plaintiffs that they have created the
enormous goodwill and reputation in the mark SHRI RAM vis-a-vis
schools. The plaintiffs are not claiming goodwill in the name SHRI
RAM to all fields of education. They are limiting their claim of
goodwill in the name SHRI RAM only to Schools and no other field
of education. The goodwill in THE SHRI RAM SCHOOL is not the
result of any effort on behalf Late Sir Shri Ram. Late Sir Shri Ram
did not run any school under the name SHRI RAM. The defendant
has not given any evidence to show that there is any other member
of the family which is running a school which has a reputation in the
SHRI RAM name except evidence is of one school in Mawana which
has no reputation.
CS (OS) No.1980/2014 Page 43 of 62
52. In the case of Century Traders (supra) the said aspect to
some extent has been discussed in para 14. The extract of the same
reads as under :
“(14) Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned Single Judge and led him to commit an error.”
Under these circumstances, the plea raised by Mr. Anand,
learned counsel for the defendant about the third party user has no
merit. The said school Mawana has no commercial activities prior to
the use of the plaintiffs and it is run by the party in the restricted area,
no evidence contrary to the contention has been produced by the
defendant. Even the said objection was not taken up in the written
statement or reply to the interim application.
53. It is necessary that in order to succeed in an action for
passing off, four main primary requirements have to be satisfied by a
party who intends to seek the relief of injunction :
i) Prior user;
ii) Party who is claiming right must be the proprietor of the
mark.
CS (OS) No.1980/2014 Page 44 of 62
iii) Confusion and deception; and
iv) Delay, if any
54. As far as prior user is concerned, it is not denied by the
defendant that the plaintiffs are the prior user of the mark SHRI RAM
in relation to services of school between the plaintiffs and defendant.
With regard to Mawana School operated by third party, the plea of
the defendant has been rejected in earlier part of my order. Thus, it
is clear that the plaintiffs are the prior user of the name/mark SHRI
RAM in relation to the services of schools.
Confusion and Deception and Passing Off
55. In the present case, the defendant has many schools in the
same vicinity as the school of the plaintiffs. The details of the school
under the name SHRI RAM are given as under :
Plaintiffs Defendant
A. The Shri Ram School, Hamilton Court Complex, Phase-4, DLF Aravali, Gurgaon, Haryana.
Shri Ram Global Pre School 4106, DLF Phase-4, Gurgaon, Haryana
B. The Shri Ram Early Years, Vipul Greens, Sector 48, Sohna-Gurgaon Road, Gurgaon, Haryana.
Shri Ram Global Pre-Primary Wing, 4401, DLF Phase-4, Gurgaon, Haryana.
Similarly, if the plaintiffs have school in Delhi, the defendant
has also opened school in Delhi in February, 2015 i.e. after filing the
present suit.
i) In the case of Laxmikant V. Patel vs. Chetanbhat Shah &
Anr., (2002) 3 SCC 65, the Court in paras 8 and 10 held as under :
“8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he
CS (OS) No.1980/2014 Page 45 of 62
would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant companys name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the
CS (OS) No.1980/2014 Page 46 of 62
customers and clients of someone else to himself and thereby resulting in injury.
56. Salmond & Heuston in Law of Torts (20th Edn., at p.395)
call this form of injury as “injurious falsehood” and observe the
same having been “awkwardly termed” as “passing off” says as
under :
“The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.”
57. As per Kerly (Law on Trade Marks and Names, para
16.16) passing off cases are often cases of deliberate and
intentional misrepresentation, but it is well-settled that fraud is not
a necessary element of the right of action, and the absence of an
intention to deceive is not a defence though proof of fraudulent
CS (OS) No.1980/2014 Page 47 of 62
intention may materially assist a plaintiff in establishing probability
of deception. Christopher Wadlow in Law of Passing Off (1995
Edn., at p.3.06) states that the plaintiff does not have to prove
actual damage in order to succeed in an action for passing off.
Likelihood of damage is sufficient.
58. In the case of B.K. Engineering Co. vs. Ubhi
Enterprises, 1985 (5) PTC 1, the Court in paras 49, 51 and 52
held as under :
“49. A fair and honest trader will not give misleading name to his product to the continuing detriment of a plaintiff who has built up his goodwill in the business after years of hard work for example, 13 or 14 years, as in this case. It is this intangible right to property which the law seeks to protect. xxxx xxxx xxxx 51. The modernisation of the tort of passing off lies in this that what was previously a misrepresentation of goods has now become a misappropriation of another man's property in the business or goodwill, or misappropriation of another's personality. You cannot make use of the plaintiff's expensive labour and effort. You cannot deliberately reap where you have not sown. You cannot filch a rival's trade. Passing off is thus a remedy for injury to goodwill. 52. .......The modern character of the,tort of passing off was clearly brought out in Cadbury (supra). At p. 218 Lord Searman said :
"THE tort is no longer anchored, as in its early nineteenth century formulation, to the name or trade-mark of a product or business. It is wide enough to encompass other descriptive material,
CS (OS) No.1980/2014 Page 48 of 62
such as slogans or visual images which radio, television or newspaper advertising campaigns can lead the market to associate with the plaintiff's product, provided always such descriptive material has become part of the goodwill of the product. And the test is whether the product has derived from the advertising a distinctive character which the market recognoises."
In view of settled law, facts and circumstances of the present
case, it is apparent that chances of confusion and deception cannot
be ruled out.
59. Further, it is apparent in the present case that the
commencement of its use in the year 2011 by defendant by opening
its first school in Gurgaon is in close proximity to the plaintiffs’ Shri
Ram School, Aravali. When the defendant adopted the name SHRI
RAM for its schools, the plaintiffs SHRI RAM schools were named
the best school in Gurgaon and South West Delhi as well as in India.
The defendant calls its students “Shri Ramite” which is same to the
name given to the students of the plaintiffs Shri Ram schools since
as early as the year 2000. The defendant claimed that it has a
School in Delhi when it does not.
60. It is also evident from the material placed on record that the
defendant had never been in the field of running schools until the
year 2011 when it started its first school. The plaintiffs are the only
faction of the Shri Ram family which has been in the field of running
schools. The defendant's trustees have been on the board for other
educational institutions such as Lady Shri Ram College and Sri Ram
CS (OS) No.1980/2014 Page 49 of 62
College of Commerce. The defendant has adopted the trademark
SHRI RAM after 23 years of use of the name SHRI RAM by the
plaintiffs for its schools and it has created confusion and deception
amongst the students, parents and large number of people in India
when two sets of schools are operating under the same name.
61. The learned counsel for defendant does not dispute the fact
that the name/surname are protectable under the law. Once the
name/surname which are distinctive and used on commercial
manner or put into commerce, the same are protected as per the
various judgments delivered by the courts including Supreme Court.
Few decisions are mentioned herein below :-
i) In the case of Mahindra and Mahindra (supra) the defendant
was restrained from using the name/mark Mahindra which is
the own name of the defendant.
ii) In the case of Dr. Reddy’s Laboratories Ltd. (supra) the
defendant’s surname was Reddy, still the interim order was
passed on account of malafide user.
iii) In the case of B.K. Engineering Co. (supra) the defendant
was restrained from using the mark BK being an abbreviation
of their deceased mother's name Balwant Kaur.
iv) In the case of M/s. K.G. Khosla Compressors Ltd. and Ors.
vs. Khosla Extrakting Ltd. and Ors., 1986 (6) PTC 211, the
defendants were restrained from using the mark Khosla being
surname of the Director of the defendant company.
v) In the case of Bajaj Electricals Limited vs. Metal & Allied
CS (OS) No.1980/2014 Page 50 of 62
Products and Anr., AIR 1988 Bom 167, the defendants were
restrained from its surname Bajaj in relation to allied and
cognate goods.
vi) In the case of M/s Virendra Dresses vs. M/s Varindra
Garments AIR 1982 Delhi 482, the defendants were
restrained to use the name Varindra, which was name of
owner of the defendant firm.
62. Learned counsel for the defendant has referred the following
decisions in support of his submissions :
i) Bagla & Co. vs. Bagla Cosmetics, 2000 (20) PTC 355
ii) Jaggi Ayurvedic Pharmacy vs. Jaggi Ayurvedic Research Foundation, 2010 (42) PTC 769 (Del.)
iii) Precious Jewels & Anr. vs. Varun Gems, (2015) 1 SCC 160
iv) Goenka Institute of Education & Research vs. Anjani Kumar Goenka & Ors., 2009 (40) PTC 393 (Del.)
v) Jay Engineering Works Ltd. vs. Chinar Trust and Anr., 2005 (31) PTC 639
vi) Godrej Sara Lee Ltd. vs. Reckitt Benckiser (I) Ltd., 2006 (32) PTC 307 (Del.)
a) With regard to the case of Bagla and Company (supra) the
said case does not help the defendant as in the present case the
business of running schools is not an offshoot of any original family
business commenced by the Patriarch Late Sir Shri Ram together
with his sons under the SHRI RAM name in relation to school. It is a
fact that Late Sir Shri Ram did not run any school under the name
SHRI RAM. The Plaintiffs were the prior, first and the only faction of
the Shri Ram family to begin using the mark SHRI RAM for schools.
The plaintiffs have no objection if the defendant may use the
CS (OS) No.1980/2014 Page 51 of 62
mark/name SHRI RAM in relation to other activities except running
the services of schools.
b) The second case referred by Mr. Anand is Jaggi Ayurvedic
Pharmacy (supra); the facts of this case are different from the facts
of the case at hand. The trademark in question in this case i.e.
JAGGI, was the family surname whereas in the case at hand the
trademark in question is the name of the grandfather of the parties
i.e. SHRI RAM, and not their surname. The use of the trademark
JAGGI was started by the predecessor of the parties to the suit for
his ayurvedic clinic which name was subsequently adopted by the
sons and grandsons of the predecessor for their respective ayurvedic
businesses whereas in the case at hand it is a fact that Late Sir Shri
Ram did not run any school under the name SHRI RAM. The
plaintiffs were the first and the only faction of the Shri Ram family to
begin using the mark SHRI RAM for schools and create a goodwill in
the word SHRI RAM in relation to schools.
c) The third case referred by Mr. Anand is Precious Jewels
(supra); the facts of this case are different from the facts of the case
at hand. The trademark in question in this case i.e. RAKYAN, was
the family surname whereas in the case at hand the trademark in
question is the name of the grandfather of the parties i.e. SHRI RAM,
and not their surname. Section 35 of the Act is therefore not
applicable. That use of the trademark RAKYAN was started by the
predecessor of the parties to the suit for the business of “jewellery”
which name was subsequently adopted by the successors of the
family for their respective jewellery businesses i.e. 15 different
CS (OS) No.1980/2014 Page 52 of 62
jewellery businesses in total. Whereas in the case at hand it is a fact
that Late Sir Shri Ram did not run any school under the name SHRI
RAM. The plaintiffs were the first and the only faction of the Shri Ram
family to begin using the mark SHRI RAM for schools. The defendant
at the time of use was fully aware about the use of the plaintiffs.
Even when the plaintiffs come across the user, the defendant was
informed.
d) In the case of Goenka Institute of Education & Research
(supra) the Court observed that both the parties started using the
name GOENKA as part of its institutions i.e. Appellant had been
using the name GOENKA as part of the name of its trust since 1995
in different state i.e. Rajasthan who claimed prior user as well as
concurrent rights and the respondent had been using the name
GOENKA as part of its school name since the year 1994. In the case
at hand, the defendant's first SHRI RAM pre school was established
in the year 2011, whereas the schools under the name SHRI RAM
started in or around 2013-2014 and the defendant trust under the
name SHRI RAM was started in the year 2010 as compared to the
use of the name SHRI RAM by the plaintiff's for its schools since the
year 1988. The defendant had started its school within the same
area having full knowledge about the well established school running
by the plaintiffs. Therefore, the facts are materially different.
e) In the case of Jay Engineering Works Ltd. (supra) the court
held that the applicant and both the respondents have a common
ancestor (the term is being used in a general sense). They are legal
persons who trace their origin to their founder Late Sir Shriram, well-
CS (OS) No.1980/2014 Page 53 of 62
known industrialist who is also the founder of some of the premier
educational institutions of Delhi. This is reflected in the application
where it is stated in Para 11 “The Petitioner and the Respondent
have been associated in business and commonly known as Usha –
Shriram Group of Companies.” It is further stated in para 12 that both
the parties have been marketing their products under the marks Usha
and Usha Shriram and acted together and jointly along with other
group companies to restrain other parties from using 'Usha'. The
facts in the present case are dis-similar.
f) In Godrej Sara Lee Ltd. (supra) the plaintiff had mislead the
Court by stating that it became aware of the disparaging activities of
the defendant in September, 2005 when in actuality the
advertisement had been running since February, 2005. The plaintiff
was thus held to be guilty of concealment of material facts and the
interim order was vacated. The facts in the said matter were totally
different as each day delay in the action of disposing of product of the
plaintiff on the television advertisement is crucial. In the said matter,
the plaintiff alleged in the plaint that it came to know of the
disparaging advertising in September, 2005. The court observed that
it could not be possible as the alleged disparaging advertisement was
shown on commercial television on large scale since February, 2005
on this account the interim order was lifted
63. “Bonafide use” normally means the honest use by the person
of his own name without any intention to deceive anybody or without
any intention to make use of the goodwill which has been acquired by
another trader. The words “bonafide use” is the governing words and
CS (OS) No.1980/2014 Page 54 of 62
heart and soul of the said Section. The party cannot blindly read this
Section that under the statute, he is entitled to use his own name,
surname in respect of same goods and services. No different
meaning can be given to this Section, if the use is not bonafide and
the same is tainted and dishonest. Under these circumstances, this
Section 35 of the Act would not apply in the facts of the present case.
64. Even otherwise no doubt proprietorship right claimed by the
plaintiff is to be determined after the trial in the matter as to whether
the mark SHRI RAM belongs to the plaintiff in respect of running the
school or not or the defendant being the family member is entitled to
claim any right to use the same. It is a matter of fact however prima
facie this Court finds that the use of the name SHRI RAM in relation
to running of the schools particularly in the same area is not bonafide.
65. In the case at hand, the plaintiffs have disclosed to the Court
the fact that they became aware of the defendant's infringing activities
in the year 2011, which was brought to the notice of the defendant’s
trustee by the plaintiffs’ chairman at a personal level as it was then a
off pre-school. But immediately on becoming aware of the rampant
opening of schools by the defendant under the name SHRI RAM in
the year 2014, plaintiffs initiated the present suit. There is a force in
the argument of the plaintiffs’ counsel to extent that despite of
communication, the defendant has been continuing to open the new
schools by itself or through contract with the third party.
66. It also appears from the material placed on record that in
respect of running the schools, no doubt the plaintiffs are the prior
user than the defendant. One thing is also clear between the family
CS (OS) No.1980/2014 Page 55 of 62
members that they would have always an understanding between
themselves that the confusion or deception does not occur. If the
name SHRI RAM is used for the last more than 65 years for college
there is no Shriram College by any other family members. Similarly
for the past 58 years, no other college under the name of Lady
Shriram has been established by any member of the family. It means
that all parties have maintained discipline so that no actual deception
and confusion is occurred and no harm would cause to other
party/relation.
67. No doubt that the father’s of both the parties and grandfather
were involved in the field of education bearing the mark SHRI RAM
prior to the schools of the plaintiff but it is a matter of fact, no school
was run by them on commercial scale prior to the date of the plaintiffs
who have no objection if the defendant may claim legacy of
grandfather Sir Shri Ram in relation to other activities of education
except for running the school. The defendant has also issued large
number of licenses and appointed franchisees and is getting license
fee, despite of e-mail written by the brother not to allow them,
otherwise quality of education and name of Shri Ram would be
affected, but the defendant did not care about it.
68. It is pertinent to mention here that after filing the present suit,
the defendant had entered into contract with their parties uptil March,
2015 disclosing that the construction of twenty one more schools
which are to be operated from the period of 1st September, 2015 to
1st April, 2020 under the name of Shri Ram Global Pre-School, Shri
Ram Centennial School at various parts of India despite of pendency
CS (OS) No.1980/2014 Page 56 of 62
of the suit. The said information was provided by the counsel for
defendant when the matter was put up for clarification. It is clear that
the plaintiffs have been able to prima facie established the case of
confusion, deception and prior user.
69. But at the same time there exists a unexplained delay of
about 3 years in approaching the court which prima facie indicates
towards the inference as to acquiescence. This is due to the reason
that as per plaintiffs own saying in the suit the defendants adopted
the mark SHRI RAM in respect of the school in the Gurgaon region in
the year 2011. If the plaintiffs and defendants schools are established
within the same region/ area in Gurgaon and the plaintiffs are
affected by the said misuse of the same, the plaintiffs ought to have
given the legal notice alarming the defendant about the proprietary
rights over the mark SHRI RAM owned by the plaintiffs.
70. The plaintiffs have not adopted the said recourse but
remained quiet knowing well that the defendant being its brother has
been using the mark SHRI RAM in respect of the schools in the year
2011 through defendant without objecting to its misuse at the earnest
opportunity given the fact that both the schools are located at the
proximity to each other. It is only in the year 2014, when the
defendant expanded the schools in other areas which according to
the defendant are 19 in number, the plaintiffs approached this court
objecting to the use of the mark SHRI RAM by the defendant. The
caution notices issued by the plaintiffs are also the notice to the
public not to mislead in believing that the defendant school is
belonging to plaintiffs. But the plaintiffs never objected by specifically
CS (OS) No.1980/2014 Page 57 of 62
directing the notice to the defendant in the year 2011 until the year
2014. The said no objection for the continuous period of 3 years
given the proximity of relation between the founding members of the
plaintiffs and defendant being real brothers and the admitted
knowledge of the plaintiffs in the plaint can be good enough for the
prima facie purposes as assent or sitting by or encouragement
allowing the defendant to expand/ grow its business without objecting
to the misuse of the same all this while leading to prima facie
inference of the acquiescence. The said plea of unexplained delay
leading of the acquiescence is thus a relevant consideration for the
passing off action, the grant of the relief in which rests on the
equitable considerations and is affected by the principle of
applicability of the acquiescence.
71. The grant or non grant of injunction has to be measured within
the parameters of three tests laid down by this court. However, the
court must weigh the comparative hardship of one party as against
the another and has to decide whether the injunctory relief is
warranted or whether interim directions would suffice. Injunctions
should not result in extreme prejudice to the defendant. The balance
of convenience doctrine is of essence in cases for consideration of
the issue of grant of injunction.
72. In American Cyanamid Vs. Ethican (interlocutory) 1975
RPC 513 (at 541, 542), it was observed that it was sufficient if a
‘triable issue’ was there. According to Lord Diplock, the Court must
also be satisfied if there is a “serious question to be tried” : therefore
it should not try to assess relative merits by looking into prima facie
CS (OS) No.1980/2014 Page 58 of 62
case in the affidavit evidence but should instead turn at once to the
balance of convenience; if damages to be awarded at the trial can
adequately compensate plaintiff and the defendant could pay them,
injunction could be refused; if not, injunction could be refused; if not,
injunction could be granted; if defendant could be compensated by
way of damages later by plaintiff, injunction by way of damages
later by plaintiff, injunction could be granted; where there is doubt
about the adequacy of damages to one or both ; any factor which
may affect balance of convenience is to be considered. If the
balance is even, the relative strength of the case is to be considered.
73. The principle of law relating to temporary injunction during
pendency of the suit is well recognized in the decision of the
Supreme Court in the case of Dalpat Kumar vs. Prahlad Singh AIR
1993 SC 276. The relevant portion of the observations of the
Supreme Court in the said case states as under:-
“…..It is settled law that the grant of injunction is a
discretionary relief. The exercise thereof is subject to the
Court satisfying that;
(1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant.
(2) The court’s interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue before the legal right would be established at trial; and
(3) That the comparative hardship or mischief or inconvenience which is likely to occur from withholding
CS (OS) No.1980/2014 Page 59 of 62
the injunction will be greater than that would be likely to arise from granting it.
The Supreme Court further held:
“……Prima facie case is not to be confused with prima
facie title which has to be established, on evidence at
the trial. Only prima facie case is a substantial question
raised, bona fide, which needs investigation and a
decision on merits. Satisfaction that there is a prima
facie case by itself is not sufficient to grant injunction.
The court further has to satisfy that non-interference by
the court would result in ‘irreparable injury’ to the party
seeking relief and that there is no other remedy
available to the party except one to grant injunction and
he needs protection from the consequence of
apprehended injury or dispossession of apprehended
injury or dispossession. Irreparable injury, however,
does not mean that there must be no physical
possibility of repairing the injury, but means only that
the injury must be a material one, namely on that
cannot be adequately compensated by way of
damages. The third condition also is that ‘the balance
of convenience’ must be in favour of granting injunction.
The court while granting or refusing to grant injunction
should exercise sound judicial discretion to find the
amount of substantial mischief or injury which is likely to
be caused to the parties, if the injunction is refused and
compare it with that it is likely to be caused to the other
side if the injunction is granted. If on weighing
competing possibility or probabilities of likelihood of
injury and if the court considers that pending the suit,
the subject matter should be maintained in status quo,
an injunction would be issued. Thus the court has to
CS (OS) No.1980/2014 Page 60 of 62
exercise its sound judicial discretion in granting or
refusing the relief of ad interim injunction pending the
suit.”
74. In M/s. Gujarat Bottling Co. Ltd. and others Vs. Coca
Cola Company and Others, AIR 1995 SC 2372, it was observed as
under:-
“46……. The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies. See : Wander Ltd. and Anr. v. Antox India P. Ltd. [1990] Supp. SCC 727 at pp. 731-32. In order to protect the defendant while granting an interlocutory injunction in his favour the Court can require the plaintiff to furnish an under taking so that the defendant can be adequately compensated if the uncertainty were resolved in his favour at the trail.”
75. The injunction being an equitable remedy, the court has to
exercise its discretion from various facets which arise in particular set
of circumstances in each matter. There may be cases in which grant
of an injunction will only meet the ends of justice and an alternative
safeguard for the preservation of rights of the challenging party
cannot at all be thought of. Thus, balance has to be strike down in
the present case in view of peculiar facts of the present case
CS (OS) No.1980/2014 Page 61 of 62
otherwise, great hardship would not only cause to the defendant but
also to the students and their family members who have already paid
their fees and have taken admission in the school. Their interest
and equity is involved. It would be appropriate that the defendant be
put to terms and restricted interim orders for future purposes are
passed of the defendant instead of issuance of injunction.
76. By disposing of interim application, the following orders are
passed :
i) The defendant is allowed to continue the schools under the
mark SHRI RAM as of today’s date, however the defendant
shall within the period of six months display/use the
disclaimer in their signboard and all stationary material that
they have no connection or relation with the plaintiffs’ school.
ii) They are forthwith restrained from using the mark SHRI RAM
in relation to running of schools which are under construction
under the Contract to be opened from the 1st September,
2015 to 1st April, 2020 as per the details provided by the
defendant. However, it is clear that for future school which
are yet to be run, the defendant would be entitled to give
bonafide description in the nature that the school is run by
Vivan Bharat Ram under the legacy of his grandfather Shri
Ram
iii) The trial in the matter is expedited.
iv) The order passed in the application shall have no bearing
when the matter would be finally decided after trial and the
finding arrived on the issue of delay would not be binding on
CS (OS) No.1980/2014 Page 62 of 62
other cases pending against the third parties as the interim
orders for existing schools are not passed in view of peculiar
facts and circumstances of the matter.
77. The application being I.A.No. 12216/2014 is disposed of
accordingly.
I.A.No. 14188/2014
78. In view of detailed order passed in I.A. No. 12216/2014, the
abovementioned application for clarification of order dated 9th July,
2014 is also disposed of being infructuous.
CS (OS) No.1980/2014
79. List the matter before the Joint Registrar for completion of
admission/denial of documents on 1st July, 2015.
(MANMOHAN SINGH) JUDGE
MAY 11, 2015.