Social Work And Research Centre vs. Barefoot College International.

Neutral Citation Number : 2023/DHC/001632
$~23
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 827/2022 & I.A. 114/2023, I.A. 115/2023
SOCIAL WORK AND RESEARCH CENTRE ..... Plaintiff
Through: Mr. Aditya Gupta and Mr.
Sauhard Alung, Advs.

versus

BAREFOOT COLLEGE INTERNATIONAL. ..... Defendant
Through: Mr. Kartik Yadav, Mr. Parinay
T. Vasandani and Mr. Siddharth Vyas, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (ORAL)
% 01.03.2023

I.A. 114/2023 (Order XXXIX Rules 1 and 2 of the CPC)

1. The rival trademarks forming subject matter of controversy in
the present proceedings are the following:

2. The plaintiff and the defendant are engaged in the service
industry and are providing community services involving skill
development, empowerment of women and the like.

3. The plaintiff is a society rendered under the Societies
Registration Act, 1860. It claims to have commenced operations in
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
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1972. In order to substantiate this claim, Mr. Aditya Gupta, learned
Counsel for the plaintiff has invited my attention to the following
documents:

(i) a news article in the India Today edition dated 1-15
November 1976 which contains, inter alia , reference to a
medical program submitted by the plaintiff in 1973,
(ii) the ESCAP Human Resources Development Award for
1995 conferred on the plaintiff by the United Nations Economic
and Social Commission for Asia and the Pacific, which refers to
the plaintiff as the “BAREFOOT COLLEGE”, and contains the
following recitals:
“The Social Work and Research Centre, Tilonia, Rajasthan, India,
popularly known as the Barefoot College, is a non governmental
organization headed by Mr Sanjit (Bunker) Roy. The College was
established in 1972.”

(iii) the Indira Gandhi Paryavaran Puraskar 1998 awarded to
“The Barefoot College of Social Work Research Centre” by the
Ministry of Environment and Forests, Government of India for
outstanding contribution of environmental-education,
conservation, management and research programs and
nd
(iv) a message dated 22 October 2011 from the then
Hon‟ble Prime Minister expressing happiness at the award of
Blue Planet Prize, for environment, by the Japan Government,
on the plaintiff.

4. Mr. Gupta points out, further, that the defendant has also
admitted, on its website – which, according to him, is actually the
website of the plaintiff usurped by the defendant – as under:
“In the small activity centre in Tilonia, students are hard at work.
In one room, six women are busy making cotton sanitary napkins.
In another, some women are carefully soldering integrated circuit
boards for solar panels. Outside, older women are learning how to
stitch handicrafts that are to go on sale. We are at Barefoot
Signature Not Verified
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SINGH NEGI
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College, an institution that teaches rural men and women, semi-
literate to illiterate, how to become solar engineers, paramedics
and doctors. Conceptualised by Sanjit Bunker Roy in 1972 , the
school that started out with the goal of eliminating water scarcity
in rural India has been empowering village by making them
sustainable.”

5. This material, apart from other material on which reliance has
been placed in the plaint, submits Mr. Gupta, clearly indicate that the
plaintiff was engaged in social welfare activities, under the
“BAREFOOT COLLEGE” moniker, since 1972.

6. One may now advert to the relevant trademark registrations
held by the plaintiff. The plaintiff was granted registration, by the
Registrar of Trade Marks, of (i) the word mark “BAREFOOT
th th
COLLEGE” on 13 March 2019 w.e.f. 12 July 2018, claiming user
since 1973 and (ii) the device mark
(hereinafter “the two feet
th th
logo”) on 11 January 2019, w.e.f. 12 July 2018. Registration of
both these marks was granted under Class 45, for “personal and social
services rendered by others to meet the needs of individuals”. The
claim of user, by the plaintiff, in both these marks was of 1973. The
registration of the plaintiff in both these marks has remained
unchallenged. They subsist till date.

7. The status of the trademark registrations held by the plaintiff
and the defendant stand tabulated thus by the defendant itself in para
20 of the rejoinder filed in IA 115/2023:

Plaintiff’s Registrations:

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Defendant’s Registrations:

8. The defendant was admittedly incorporated as a Section 8
private limited company in 2015, with Bunker Roy, the founder of the
plaintiff and Bhagwat Nandan as its two directors. The averments to
this effect, as contained in para 13 of the plaint, read thus:
“13. The Defendant, Barefoot College International, was
incorporated in the year 2015 as a company under Section 8 of
the Companies Act, 2013. The founder of the Plaintiff, Mr.
Sanjit (Bunker) Roy was a promoter, director and shareholder in
the Defendant Company. The Defendant Company was
incorporated with the objective of raising funds and
collaborating with the Plaintiff on various projects. The
Defendant Company was set up to pursue common goals as the
Plaintiff and the Defendant was to share a percentage of the
funds received by it with the Plaintiff. The Defendant was
incorporated as Barefoot College International and was
permitted to operate under the said name since this would aid
the Defendant's efforts to generate funds for pursuing common
goals of the parties. The Plaintiffs founder and another senior
staff member were also on the board of directors of the
Defendant and this arrangement was made to ensure alignment
of goals of the parties and to avoid disrepute being brought to
the trademark BAREFOOT/BAREFOOT COLLEGE.”
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
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9. In the corresponding para in written statement, the defendant
has accepted the averments contained in para 13 of the plaint as being
“a matter of record”.

Rival Submissions

Submissions of Mr Aditya Gupta for the plaintiff

10. Consequent to the incorporation of the defendant in 2015, an
st
Agreement dated 1 August 2015 was executed between the plaintiff
and the defendant. As per the said agreement, the defendant was to
function as an implementing agency for supply of solar system as
mandated by the plaintiff and provide training at a transaction value to
be arrived at between the plaintiff and the defendant. Mr. Aditya
Gupta has referred me to the opening recitals in the said Agreement
st
dated 1 August 2015, which read thus:

st
“This agreement is made on this 1 day of August, 2015 at Tilonia
by and between

(1) Social Work & Research Centre, Tilonia, a Society
registered under the Societies Registration Act. 1860.
'acting through its Administrative Incharge Sh. Bhanwar
Singh (hereinafter called the SWRC) and;

(2) Barefoot College International, Tilonia, a Company
registered under the Companies Act 2013, acting through
its Director Shri Bhagwat Nandan (hereinafter called the
BCI)

Whereas the SVRC, widely known as Barefoot College , is a
voluntary organization, working in the field of electrification
through solar power, training rural persons and empowering them
to be solar engineers, women empowerment, education, skill
development, health, drinking water, health etc.
and:

Whereas the BCI a newly setup non-profit making company
established to meet the growing magnitude and evolution of
technology and enterprise activity arising through the global and
Signature Not Verified
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domestic design, fabrication, supply and maintenance of renewable
energy technology to communities and to our own educational
models. BCI activities also include a range of women's enterprise
activities building on the Training Curriculum delivered as part of
BCI's technology activities. BCI Implements the Barefoot
Women's Solar initiative in India and Abroad.”

11. Mr. Gupta has also referred me to a subsequent Agreement of
rd
Work dated 23 September 2019, which was intended to be an
annexure to a pre-executed MOU between the plaintiff and the
defendant, in which it was acknowledged that Barefoot College
International (“BCI”, hereinafter) is an extension and development of
the initial work pioneered by the Social Work and Research Centre.
Thus, submits Mr. Aditya Gupta, the defendant as much has
acknowledged that it was incorporated as an extension of the plaintiff
to carry forward the pioneering work which the plaintiff had been
undertaking since 1972.

12. To establish the fact that the plaintiff was using its registered
trademarks, including the two feet logo even before the defendant was
incorporated in 2015, Mr. Aditya Gupta has referred me to
th th st
(i) posts dated 6 October 2009, 29 October 2012 and 1
November 2012 on the Facebook page of “Barefoot College”,
which reflect the two feet logo,
th
(ii) a screenshot dated 6 December 2014 on the Facebook
page of the plaintiff, which contains the following pictures:





Signature Not Verified
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SINGH NEGI
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13. These posts, submits Mr. Gupta, were prior in point of time to
the incorporation of the defendant in 2015. The defendant has,
however, usurped the said pages and has replaced the two feet logo of
the plaintiff with modified two feet logo of the defendant
.

14. Mr. Gupta‟s submission is that, from 2015 till 2021, the
plaintiff and the defendant were working in tandem and, therefore, the
plaintiff permitted the defendant to use the registered “BAREFOOT
COLLEGE” word mark as well as two feet registered logo of the
plaintiff. This was done because the activities of the defendant were,
as the defendant itself acknowledged on its website, in extension of
the activities which the plaintiff had already been undertaking since
long.

15. During this period, in 2015, Bunker Roy resigned from the
directorship of the defendant and in 2021 he surrendered his
shareholding in the defendant‟s company.

16. As matter soured between the plaintiff and the defendant, they
st
parted ways on 1 April 2021. By way of information of this schism,
the plaintiff inserted the following announcement on its Instagram
page:

“This is to inform that Barefoot College, Tilonia/Social Work
and Research Centre (SWRC) and Barefoot College
International (BCI) will be working as separate entities with
effect from 1 April, 2021, and will hereafter continue their
work, independent of each other.

We look forward to your support as we continue our mission,
and uphold the values on which Bunker Roy founded the
Barefoot College, Tilonia/Social Work and Research Centre
(SWRC) 49 years ago, in 1972. More details about the focus
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 7 of 38

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and substance of our ongoing work is available on our
website”


rd
17. On 3 April 2021, the plaintiff addressed the following email to
the defendant:
“Dear,

As you know, SWRC and Barefoot College International have
parted ways and despite numerous attempts of arriving at a
mutually amicable resolution to our outstanding issues, we
have not been able to close the various issues between the
parties.

We are now writing to inform you that we are withdrawing,
with immediate effect, any permission given to Barefoot
College International, whether impliedly or explicitly, whether
orally or in writing, to use the trademark "BAREFOOT"/
"BAREFOOT COLLEGE" and any other intellectual property
including the logos owned and developed by SWRC. Barefoot
College International is not entitled to use the trademark
"BAREFOOT" "BAREFOOT COLLEGE" in any manner and
the logos owned and developed by SWRC for any business
whatsoever.

Yours sincerely,

Ramkaran,
Development Coordinator,
SWRC Barefoot College,
Tilonia.”

18. Mr. Gupta submits that there was no response to the aforesaid
email, though the defendant admits having received it.

19. Despite the plaintiff having thus specifically withdrawn the
permission granted by it, to the defendant, to use the plaintiff‟s
registered “BAREFOOT COLLEGE” word mark and the two feet
logo, the defendant, it is, admittedly, continued to use the
“BAREFOOT COLLEGE” mark either by itself or as a part of its
mark “BAREFOOT COLLEGE INTERNATIONAL”, and also
continued to use the two feet logo encased, however, by a circle, thus:
Signature Not Verified
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SINGH NEGI
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One may refer to this logo as the “modified two feet logo”.

20. In this context, the plaintiff avers thus, in para 12 of the written
st
submissions tendered by it on 21 January 2023:

“12. The Defendant however continues to use an identical
mark BAREFOOT COLLEGE as part of BAREFOOT
COLLEGE INTERNATIONAL and the logo
in respect of services which are
identical to the Plaintiff‟s services, namely in the field of
education, skill development, social services in the fields of
health, solar energy and drinking water. Moreover, the
Defendant works with the same community as the Plaintiff.”


21. Mr. Gupta submits that the aforesaid continued usage, by the
defendant, of the BAREFOOT COLLEGE mark as well as the
modified two feet logo was in clear transgression of the direction by
rd
the plaintiff in its email dated 3 April 2021, withdrawing the
permission to use the said marks. The right of the defendant to use the
said marks as a permissive user thereof, he submits, ceased with the
rd
said communication dated 3 April 2021. Mr. Gupta has also referred
me to certain e-mails received from his clients which, according to
him, indicate that there was considerable confusion being created in
the public as a result of the continued usage, by the defendant, of
“BAREFOOT COLLEGE” as part of its mark and of the two feet
logo.

22. Mr. Gupta alleges that the defendant has not only continued to
use the aforesaid mark but has taken over the website of the plaintiff
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as well as its social media handles. The plaintiff had initially
permitted the defendant to operate the said plaintiff‟s website
www.barefootcollege.org and social media accounts as the plaintiff
and the defendant were working in collaboration. Mr. Gupta submits
that a comparison of the screenshot from the www.barefootcollege.org
website as well as various social media accounts, which were being
operated by the plaintiff prior to 2021, vis-à-vis their position as it
stands today, reflects that the words BAREFOOT COLLEGE has
been replaced with BAREFOOT COLLEGE INTERNATIONAL and
the earlier two feet logo
has been replaced by the defendant‟s
imitative modified two feet logo
. Mr. Gupta has, for this
purpose, referred to a screenshot of the plaintiff‟s website
th
www.barefootcollege.org as taken on 15 December 2020 and as
th
taken on 11 January 2021, which provided in para 21 of the plaint,
thus:

Signature Not Verified
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23. Mr. Gupta points out that comparison of the two screenshots
reveals that the name and logo
has been
replaced by
. This position, he submits,
continues even after withdrawal, by the plaintiff, of the permission
granted to the defendant to use either the BAREFOOT COLLEGE
word mark or the two feet logo. Mr. Gupta submits that the intent of
the defendant to continue to represent itself as working under the
authorization of the plaintiff is apparent from the fact that, on the
social media handles of the plaintiff which are now being operated by
the defendant, the institution has been represented as BAREFOOT
COLLEGE, rather than BAREFOOT COLLEGE INTERNATIONAL.
He has, for this purpose, referred me to the Facebook page of Barefoot
th
College as on 27 September 2021, bearing, at its head, the title
“Barefoot College-Home/Facebook”, as well as the posts entered by
the defendant on the said Facebook page, of which he has, inter alia ,
referred to the following posts:
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24. Mr. Gupta has also referred me to the Instagram page presently
being operated by the defendant which contains, at the head, the
recitals Barefoot College International (@barefootcollege) • Instagram
photos and videos, followed by the following depiction thereunder:



25. Mr. Gupta has also drawn my attention to the following email
th
dated 13 October 2021 between the defendant and one of its
customers, in connection with the “Reliance Foundation WGDP India
Womenconnect Challenge”:

“Barefoot College International is a globally recognised Section-8
social enterprise, which has been working with last mile rural
communities in 17 states in India and 93 countries globally. The
organization has been working with women in the developing
world to foster localised self-sufficiency and sustainability. We
host innovative programs in Access to Renewable Energy,
Education, Women's Economic and Digital Participation,
Enterprise, Women's Wellness and Water Management; by and
through rural women. Barefoot Solutions produce results for 14 of
the 17 UN Sustainable Development Goals.

Barefoot College International has replicated and scaled its work
through the establishment of campuses in Sierra Leone, Liberia,
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Burkina Faso, Tanzania/Zanzibar. Madagascar and is currently
working with the Government of Fiji for the construction of the
Barefoot Women‟s Vocational Training Centre for the Pacific
th
Islands. In 2019, Barefoot College International was for the 6
year recognized within the Top 20 of the Global Journal's Top
500 NGO list. The global work of Barefoot College and Barefoot
College International are recognized by the Skoll Foundation for
Social Entrepreneurship, the Schwab Foundation for Social
Entrepreneurship. The Catalyst 2030 network, UN women, UN
Small Grants program, Qatar Foundation, among many others .”

26. Mr. Gupta submits that the aforesaid recital is clearly
misleading, as BCI was never recognized by any Foundation. He
submits, therefore, that the defendant is clearly seeking to ride upon
the goodwill which has been earned by the plaintiff through years of
social service. From the same page, Mr. Gupta has also invited my
attention to the recital that “Barefoot College was built by and
exclusively for the poor”. While this recital is correct, insofar as
Barefoot College, established by the plaintiff in 1972 is concerned,
Mr. Gupta submits that the defendant was seeking to portray itself as
having established Barefoot College exclusively for the poor which
was again misleading.

27. Mr. Gupta has also invited my attention to para 21 of the
written statement filed by the defendant, in which it was asserted that
“the concerned social media handles logo on Facebook, Twitter etc.
were in fact created and operated by the defendant”. This assertion,
submits Mr. Gupta, is again an example of how the defendant is
seeking to mislead the public, as posts on the Facebook and Twitter
social media handles of the plaintiff – now being operated by the
defendant after it has illegally taken them over – date back to 2009-
th
2012, whereas admittedly the defendant was incorporated only on 20
July 2015. Equally false, submits Mr. Gupta, is the further recital, in
para 23 of the written statement, to the effect that “after plaintiff
Signature Not Verified
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unilaterally parted ways, the defendant has not used any content
pertaining to the plaintiff on its website”. Mr. Gupta points out that
even after parting of ways between the plaintiff and the defendant in
April 2021 and the specific communication by the plaintiff to the
rd
defendant on 3 April 2021, proscribing further use, by the defendant,
of the BAREFOOT COLLEGE mark or of the two feet logo, these
registered marks of the plaintiff continued to be used by the defendant.

28. The aforesaid facts, submits Mr. Gupta, make out a clear case of
infringement, by the defendant, of the registered “BAREFOOT
COLLEGE” word mark and the two feet
logo of the plaintiff.
rd
While, prior to 3 April 2021, the use of the said marks may not have
amounted to infringement, as the defendant was using them as a
permissive user while it was working in collaboration with the
rd
plaintiff, continued usage of the said marks after 3 April 2021 cannot
enjoy the immunity which permissive user confers and has, therefore,
to be regarded as infringing in nature. Inasmuch as the defendant is
continuing to use the said marks on the website, Mr. Gupta submits
that the defendant has also sought to pass off their services as services
which are being provided by the plaintiff or with its authorization.

29. In these circumstances, Mr. Gupta submits that a clear case for
grant of injunction is made out.

Submissions of Mr Jayant Mehta for the defendant

30. Responding to the submissions of Mr. Gupta, Mr. Jayant Mehta,
learned Senior Counsel for the defendant pleads acquiescence, by the
plaintiff, to the use of the plaintiff‟s registered trademarks by the
defendant.
Signature Not Verified
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SINGH NEGI
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31. Mr. Mehta commenced his arguments by submitting that, while
the plaintiff had sought to set up a case of having extended a licence to
the defendant to use the plaintiff‟s registered “BAREFOOT
COLLEGE” word mark and the two feet logo mark, no such licence
was on record. In that view of the matter, Mr. Mehta submits that the
entire case that the plaintiff has sought to set up, of grant of a licence
to the defendant to use the aforesaid “BAREFOOT COLLEGE” word
mark and the two feet logo mark and of withdrawal of the licence on
rd
3 April 2021, is unsupported by any corroborative material
forthcoming on the record. In fact, submits Mr. Mehta, the defendant
was continuously using the said marks with the knowledge of, and
without any objection whatsoever from, the plaintiff.

32. Mr. Mehta has invited my attention to a Business Development
th
and Consulting Agreement (BDA) dated 25 July 2015, which
commences with the following recital:

“ BUSINESS DEVELOPMENT AND CONSULTING
AGREEMENT

th
This Contract of Engagement dated and effective this 25 day of
July 2015 by and between Barefoot College (SWRC/Barefoot
College International/Hateheli Sansthan), (hereinafter referred to
as The Client), and Step Up & MFC Consulting Ltd. (hereinafter
referred to as The Consultant).”

The aforesaid recital in the BDA, submits Mr. Mehta, reveals that
BAREFOOT COLLEGE was actually a commodious appellation used
to designate the three entities SWRC, i.e. the plaintiff, BCI, i.e. the
defendant and Hateheli Sansthan jointly. As such, he submits that the
plaintiff‟s contention that the plaintiff was entitled to exclusivity of
use of the BAREFOOT COLLEGE mark is devoid of substance.

33. Mr. Mehta‟s contention is, therefore, that the use, by the
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SINGH NEGI
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defendant, of the words BAREFOOT COLLEGE, on the pages from
the social media websites to which Mr. Gupta had drawn reference,
does not reflect any breach of any exclusive right to which the
plaintiff is, in law, entitled.

34. Mr. Mehta has further invited my attention to various
communications, by the defendant, to auditors, as well as the Board
Resolution and the auditors‟ report of BCI, all of which are signed
jointly by Bunker Roy and Bhagwat Nandan, the two directors of BCI.
He, therefore, submits that Bunker Roy was never acting individually,
but was always acting as one of the two directors of BCI.

35. The defendant, submits Mr. Mehta, was using BAREFOOT
COLLEGE since 2015, as part of its corporate name, which was
“BAREFOOT COLLEGE INTERNATIONAL”. BCI, a Section 8
company, he submits, was not the creation of the plaintiff. The
plaintiff could neither have either granted nor revoked the permission
to the defendant to use the “BAREFOOT COLLEGE” mark, once
granted. As part of its corporate name, the defendant BCI, it is
asserted by Mr. Mehta, was well within its authority in using the said
name, of which “BAREFOOT COLLEGE” was merely an inalienable
part. The plaintiff could not, within its authority, direct the defendant
not to use either “BAREFOOT COLLEGE” or the two feet logo.

36. Mr. Mehta has also sought to contest the emphasis placed by
Mr. Gupta on the fact that the plaintiff had, in its favour, registrations
in respect of the “BAREFOOT COLLEGE” word mark as well as the
two feet logo. He draws my attention, in this context, to the following
e-mail trail:

Signature Not Verified
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“Meagan Fallone <mfc.barefoot@gmail.com> Wed. Jan 30. 2019
at 4:21 PM
To: Sanjit Roy <bunker.roy1@gmail.com>
Cc "meagan" <meagan@barefootcollege.org>. Harsh Tiwari
<harsh@barefootcollege.org>. Sue Stevenson BC
<sue.stevenson@barefootcollege.org>. “Lara (Lauren)”
<lauren@barefootcollege.org>. Lawrence Miglialo
< lawrence@barefootcollege.org >

Why on earth would we register a trade mark for Barefoot College
to SWRC?

Why would we not register the Words Barefoot College and the
symbol to BCI so it made sense from a compliance standpoint?

Who headed this initititive? Was anyone informed of what was
being planned?

Meagan Fallone
CEO
Barefoot College International

*

Lawrence Miglialo <lawrence@barefootcollege.org> Fri, Feb 1,
2019 at 3:31AM

To: Meagan Fallone <mfc.barefoot@gmail.com>
Cc: Sanjit Roy <bunker.roy1@gmail.com>, "Meagan
<meagan@barefootcollege.org>. Harsh Tiwari
<harsh@Darefootcollege.org>, Sue Stevenson BC
<sue.stevenson@barefooicollege.org>, "Lara (Lauren)
<lauren@barefootcollege.org>

That is super weird. I never authorized any such thing. Am
emailing Phoenix about this.”


37. Predicated on the aforesaid e-mails, Mr. Mehta contends that
the entire registration, which was obtained in respect of the two feet
logo and the “BAREFOOT COLLEGE” word mark were obtained
surreptitiously, behind the back of the defendant. In fact, the
defendant was expressing surprise as to how such a mark could be
registered without its consent. He has also referred me, in the same
context, to the following e-mail:

Signature Not Verified
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SINGH NEGI
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“Sanjit Roy <bunker.roy1@gmail.com> Fri, Aug 14, 2020 at
9:33 AM

To: Lawrence Miglialo <lawrence@barefootcollege.org>
Cc: Ravi Narayanan <ravinarayanan1@gmail.com>, Leadership
Team <leadershipteam@barefootcollege.org>, Srini
Swaminathan <srini@barefootcollege.org>, Gurjit Singh
<ambgurjitsingh@gmaii.com>, Patrick Sherrington
<ppsherrington@gmail.com>, Shefali Roy <shefali@mac.com>,
Meagan Fallone <mfc.barefoot@gmail.com>, Atalanti Moquette
<atalantimoquette@gmail.com>, "meagan."
<meagan@barefootcollege.org>

Lawrence

Thank you for your rather opinionated reply.

I have appointed Srini as Manager leading these Communication
initiatives. Since he has been appointed you don‟t need to know
who are members of his Communication/website team unless he
wishes to share their names with you. In any case you don‟t
know any of them.

The world will still know Barefoot College as one brand with
BCI and SWRC as two sides of the same coin-Barefoot College.

BCI will be given a link on the SWRC/Barefoot College
website. By designing and planning our own website we will
have avoided duplication and excessive expenditures.

We have a VAST collection of videos photos and stories going
back 48 years that will feature in the SWRC/Barefoot
College/Tilonia website. We really do not need your expertise
since there is enough available in India (what you call locally) at
absurdly less cost.

We will gladly work together-but on our terms now.

Thank you
Bunker”

38. In all these emails, submits Mr. Mehta, there is no assertion by
the plaintiff, to the effect that the defendant could not use either of the
subject marks, namely, the word mark “BAREFOOT COLLEGE” or
the two feet logo. Even after, Bunker Roy had resigned from the
directorship of the defendant, the same position continued, for which
purpose Mr. Mehta has referred me to the following email:
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 18 of 38

Signing Date:05.03.2023
20:17:53

Neutral Citation Number : 2023/DHC/001632
“Shefali Roy <shefali@mac.com> Wed, Jun 17, 2020 at 5:59
PM
To: Ravi Narayanan <ravinarayanan1@gmail.com>, Gurjit
Singh <ambgurjitsingh@gmail.com>, Patrick Sherrington
<ppsherrington@gmail.com>, Atalanti Moquette
<atalanti.moquette@gmail.com>. Harsh Tiwari Ji
<harsh@barefootcollege.org>

Hi Patrick, Harsh and Atalanti,
Here is the latest version of the MOU where we've added our
thoughts and amendments. Patrick, I think Ravi has already
had a chat with you about the topics we don't agree to - this
MOU reflects those conversations with the provisions in italics
and for us to base our future conversations.

To discuss this - perhaps we can do this next week so that it
gives you all time to review and discuss internally? I know we
said we can have a chat tomorrow, but perhaps next week is
th
better. The date Ravi, Gurjit and I can do is 24 June.

Thanks,”

39. Mr. Mehta has also taken me to the draft MOU, which is
th
attached to the aforesaid email dated 17 June 2020 from Shefali Roy,
particularly to the following recitals to be found thereunder:

“ AGREEMENT
This Agreement is made on this ________(Date of Agreement).
PARTIES
 The Barefoot College, Social Work and Research Centre
(SWRC Tlionia), a society registered under the Societies
Registration Act 1860 in 1972 and having its registered
office at 278, SFS Hauz Khas Apartment, New Delhi
and administrative office at Village Tilonia, District
Kishangarh, Rajasthan, India, represented by its Founder
Director Mr. Sanjit Roy;

And
 Barefoot College International (BCI), a Section 8 not for
profit, social benefit company registered under the
Companies Act 2013 in 2015 and having its registered
and administrative office in the "old campus" in Tilonia,
represented by BCI's Chief Executive Office (BCI CEO),
Ms. Meagan Fallone.

Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 19 of 38

Signing Date:05.03.2023
20:17:53

Neutral Citation Number : 2023/DHC/001632
CONTEXT

At a time of intense challenge both to the communities
SWRC/Barefoot College International serve and to the
organisations themselves given an extremely constricted
financial and funding landscape going forward coupled with a
high level of uncertainty surrounding operations, it has become
essential to propose a restructuring which will:

• Create a sound roadmap for the strategic approach for the next
5 years for the entities that make up The Barefoot College -
SWRC Tilonia, BCI Tilonia, and BCI.”


40. Even in the afore-noted draft MOU, which was exchanged
between the parties, submits Mr. Mehta, there was no restraint on the
defendant continuing to use either the word mark “BAREFOOT
COLLEGE” or the two feet logo.

41. Mr. Mehta has also taken me through the e-mails which
th
followed the afore-extracted email dated 17 June 2020. Among
nd th
these are the following emails dated 2 March 2021 and 15 March
2021, from Shefali Roy:

“Shefali Roy <shefali@mac.com>

To: Harsh Tlwarl <harsh@barefootcollege,org> Tue, Mar 2,
2021 at 4:09 PM

HI Harsh –

I've sent the MOU draft and the updated communication
wording to Jay and Atalanti. So we're waiting on their thoughts.

Can you let me know when your Board / subset of Board is ok
to have the next meeting to finalise the doc?

We can do:
Thursday 4 March 2pm 1ST
Friday 5 March 2pm 1ST
Monday 8 March 4pm 1ST
Also how are things on the ground? Is there anything I can help
with?
Please let me know,
*
Signature Not Verified
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CS(COMM) 827/2022 Page 20 of 38

Signing Date:05.03.2023
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Neutral Citation Number : 2023/DHC/001632
Shefali Roy <shefali@mac.com> Mon, Mar 15, 2021 at 5:49
AM

To: Harsh Tiwari <harsh@barefootcollege.org>

Cc: Gurjit Singh <ambassadorgurjitsingh@gmail.com>, Patrick
Sherrington <ppsherrington@gmail.com>, Atalanti Moquette
<atalantimoquette@gmail.com>, Naoko Felder
<naoko@nfkconsulting.com>, Meagan Fallone
<mjfallone@gmail.com>, Neeru Singh
<neerugsingh@gmail.com>. Jay Goenka
<j.goenka@dynamixgroup.co.in>, Abhimanyu Singh
<abhsingh.education@gmail.com>, Susan Abraham
<susan.abraham@forrad.org>

Hello all.

Draft MOD attached v5.

Terms agreed:

Terms that don't have tracked changes.

Terms that require discussion:

Term 10: reinstated term. Documents on ITEC and MNRE -
SWRC believe that not all documents have been shared between
BCI and SWRC so could this be sent through on a pen/usb drive
so that we know all documents are accounted for. We also
believe all physical files must be left on the SWRC campus.

Term 11: reinstated term. While we agree that each entity owns
their own assets as per projects and programs, we'd like this
reinstated so that is clear and incontestable in the future.

Term 14: we've reinstated this so that it is accounted for.

Term 17: we've deleted the addition made by BCI - we don't
believe this is necessary or needed.

Term 20: we've deleted the addition made by BCI - we don't
believe this is necessary or needed.

Term 22: reinstated term. Content and ownership of the BCI
website:
Happy to discuss this in more detail in terms of content and how
this will appear for your website -1 don't think we addressed this
topic on prior calls.

Things to discuss:


 ownership of barefootcollege.org.
Signature Not Verified
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SINGH NEGI
CS(COMM) 827/2022 Page 21 of 38

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Neutral Citation Number : 2023/DHC/001632
 we need to agree content on how you reference
Barefoot College / SWRC / Bunker Roy on your
website - we would like removed:

o any mention or usage of Bunker's name anywhere on
your website
o any of SWRC/Bunker's achievements including
awards, public grants, international recognition on
the BCI website,
o anything that BCI explicitly hasn't had a hand in
achieving or accomplishing prior to its formation,
i.e. anything prior to 2015
o Removal of Ramkaran's name in your Staff section,
and references to rainwater harvesting, water
sanitation in your Solutions> Water section.

We would also like for any of you to not reference Bunker Roy
or Barefoot College Tilonia in any of your professional or
personal bios on social media or professional websites.”

42. Mr. Mehta submits that in none of these mails was there any
assertion by the plaintiff that the defendant could not continue to use
either of the registered trademarks of the plaintiff which form subject
matter of controversy in the present case.

43. In fact, submits Mr. Mehta, if one were to peruse the various
documents and communications to which the plaintiff was a signatory
even after registration of the aforesaid marks in its favour, it would be
apparent that the plaintiff was not using the said marks. He has
st
referred me, in this context, to an Agreement dated 1 August 2015
st
between the plaintiff and the defendant, Agreement dated 1 August
2018 between the plaintiff and the defendant and Agreement of Work-
st
Reserved Fund Project dated 1 April 2018, apart from the balance-
sheet of the plaintiff for the financial year 2005-2006 and various
th
other balance-sheets of the plaintiff and communication dated 25
August 2021 from the plaintiff to the defendant, in all of which the
plaintiff was using the logo
.
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 22 of 38

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44. Thus, submits Mr. Mehta, the plaintiff was never asserting or
using its registered two feet logo mark and was, on the other hand,
tacitly acquiescing to the said logo and mark by the defendant even
after April 2021.

45. Mr. Mehta has next addressed the plaintiff‟s assertion of its
domain name www.barefootcollege.org . He submits that the plaintiff
is asserting ownership of the said domain name solely on the basis of
the WHOIS details relating to the domain name
www.barefootcollege.org available on the internet. The plaintiff‟s
rd
contention that, as the domain name was registered on 23 August
1999, before the defendant was incorporated in 2015, the plaintiff
could claim ownership over the domain name was misguided. He
submits that admittedly, in 2015, the plaintiff had asked the defendant
to manage the aforesaid domain name. The defendant had, in fact,
paid the requisite charges and annual fees to the Registrar for
continued usage of the said domain name. He has referred me, in this
th
context, to an e-mail dated 28 June 2020, in which it was clarified
that the defendant was making all payments for continued use of the
aforesaid domain name. Mr. Mehta submits that, as the plaintiff was
not of the owner of the domain name www.barefoot.org , it could not
seek to injunct the defendant from use of the said domain name.

46. Mr. Mehta has next referred me to a draft agreement which was
exchanged between the parties and which contained the terms on
which the defendants could continue to use the marks which the
defendant seeks to assert in the present suit. The draft agreement, he
submits, did not contain any proscription against the defendant using
the said marks. He submits that the agreement had almost reached the
stage of finalisation with consensus ad idem regarding its terms, and
Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 23 of 38

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Neutral Citation Number : 2023/DHC/001632
that the matter was only pending clearance from the plaintiff. As there
had been meeting of minds between the parties with respect to the
covenants of the said agreement, he submits, that though the
agreement was not finally signed, the plaintiff could not seek to resile
from its terms. In view of the said agreement, Mr. Mehta submits that
the plaintiff could not continue to seek to assert the word mark
“BAREFOOT COLLEGE” or the two feet logo.

47. Mr. Mehta concludes his submissions by contending that, as the
law stands, mere registration of a trademark does not ipso facto entitle
the plaintiff to injunction against a defendant who is using the said
mark. Acquiescence to the use, by the defendant, of the mark, submits
Mr. Mehta, constitutes an absolute defence and, in the face of such
acquiescence, no injunction could be granted in favour of the plaintiff.
He has placed reliance, in this context, on the decisions in Shree Ram
1
Education Trust v. SRF Foundation , Mittal Electronic v. Sujata
2 3
Home Appliances (P) Ltd. and Kent RO System Ltd. v. Gattubhai .

Submissions in rejoinder by Mr. Aditya Gupta

48. Mr. Gupta, arguing in rejoinder has submitted that there was no
contest, by the defendant, to the plaintiff‟s assertion of goodwill,
reputation or prior use. Apropos the submission of Mr Mehta that no
licence agreement, whereby the plaintiff had allowed Defendant 1 to
use the BAREFOOT COLLEGE mark and the three feet logo had
been produced by the plaintiff, Mr Gupta submits that Mr Mehta‟s
submission, if accepted, would further weaken his case as, then,

1
2016 SCC OnLine Del 472
2 th
Judgement dated 9 September 2020 in CS(COMM) 60/2020
3
(2022) 90 PTC 257

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SINGH NEGI
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Defendant 1 would have been using the said marks, registered in the
plaintiff‟s favour, without any permission from the plaintiff and would
not, therefore, even be entitled to the benefit of permissive user. In
this context, Mr Gupta has drawn attention to para 13 of the plaint, in
which it is specifically averred, inter alia , thus:
“The Defendant was incorporated as Barefoot College
International and was permitted to operate under the said name
since this would aid the Defendant‟s efforts to generate funds for
pursuing common goals of the parties. The Plaintiff‟s founder and
another senior staff member were also on the board of directors of
the Defendant and this arrangement was made to ensure alignment
of goals of the parties and to avoid disrepute being brought to the
trademark BAREFOOT/BAREFOOT COLLEGE.”

These averments were admitted, in the corresponding paragraph of the
written statement, to be “matters of record”. Further, in para 16 of the
written statement, Defendant 1 averred thus:
“Rather, the Plaintiff, as well as Mr Sanjit Roy by their conduct,
encouraged/consented to the use by Defendant of the mark
„BAREFOOT COLLEGE INTERNATIONAL‟. Basis such
encouragement/consent/no objection of Plaintiff, as well as of Mr
Sanjit Roy, the Defendant spent significant monies/amounts in
respect of the said mark.”

Mr Gupta submits that, in view of these admissions, the presence, or
absence, of any written arrangement whereby Defendant 1 was
permitted to use the BAREFOOT COLLEGE word mark and the two
feet mark registered in the plaintiff‟s favour, would make no
rd
difference. That permission, he reiterates, stood revoked on 3 April
2021.

49. Responding to Mr Mehta‟s plea of acquiescence, Mr Gupta
th
submits that from 20 July 2015 till 2020, the plaintiff and Defendant
1 were collaborating in further the plaintiff‟s cause and Defendant 1
was, therefore, using the plaintiff‟s marks with its consent. From
st
2020 till 31 March 2021, he submits that the Plaintiff and Defendant
Signature Not Verified
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1 attempted to work out their differences and, when that did not
happen, the permission granted by the plaintiff to Defendant 1 was
st
revoked on 1 April 2021. There could, therefore, be no question of
acquiescence, on the part of the plaintiff, to use, by Defendant 1, of
the trade marks which stood registered in favour of the plaintiff.

50. The draft Agreement on which Mr Mehta relied is, according to
Mr Gupta, of no consequence whatsoever. There was no consensus
ad idem regarding its terms, which was why it was never finalized. In
fact, submits Mr Gupta, Clause 10 of the Draft Agreement read thus:
“10. BCI will change their name so as to not reflect the heritage
and legacy of SWRC/Barefoot College since 1972. (This is also
important to avoid confusion in identity. BCI may remain as the
abbreviated name but Barefoot College may please be removed
from the name to clarify the separation.)

51. The party pleading acquiescence, submits Mr Mehta, must
exhibit hostile user, or invade the rights of the plaintiff. Where,
therefore, the user by the defendant is permissive in nature, the
concept of acquiescence would not apply at all. In support of his
submissions, Mr Gupta places reliance on
4
(i) Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur ,
(ii) Morgardshammar India Pvt. Ltd. v. Morgardshammar
5
A.B. and
6
(iii) Helamin Technology Holding SA v. Haribansh Rai .

52. Similarly, the registration, in favour of the defendant, of the
mark, too, would not impact the present case, as the
mark was registered in Class 30, in respect of “coffee, tea, cocoa and
artificial coffee; rice, tapicao and sago;‟ flour and preparations made

4
(1997) 17 PTC 669 (DB)
5
(2012) 193 DLT 238 (DB) : (2013) 53 PTC 186
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SINGH NEGI
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from cereals; bread, pastries and confectionery; edible ices; sugar,
honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces
(condiments); spices; ice (frozen water)”. The registration of the
mark being of altogether different goods, Mr Gupta
7
submits, relying on A. Kumar Milk Foods Pvt. Ltd. v. Vikas Tyagi ,
that Section 28(3) of the Trade Marks Act could not come to the
rescue of Defendant 1. In fact, submits Mr Gupta, the defendant has
not applied for the registration of any mark in Class 45.

th st
53. The e-mails dated 30 January 2019 and 1 February 2019,
relied upon by Mr Mehta and reproduced in para 36 supra , Mr Gupta
submits, are also of no consequence as the plaintiff did not require any
permission from the defendants to have the BAREFOOT COLLEGE
and the two feet logo registered in its favour.

54. Mr Gupta further submits that the reliance, by Mr Mehta, on the
th
Agreement dated 25 July 2015, to contend that “BAREFOOT
COLLEGE” was a compendious name to designate the conglomerate
of the plaintiff, Defendant 1 and Hatheli Sansthan, is totally
misplaced. The said Agreement, in any event, did not create any trade
mark rights in favour of Defendant 1.

Analysis

55. I have heard learned Counsel for the parties and have applied
my mind to the rival contentions advanced at the bar and perused the
documents on record.

56. Mr. Mehta has taken me through a wide swath of

6
(2016) 65 PTC 452 (Del)
7
(2013) 55 PTC 469 : (2013) 203 DLT 398
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SINGH NEGI
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communications and documents between the parties which, in his
submission, disclose, firstly, (i) that the defendant was using the word
mark “BAREFOOT COLLEGE” and the two feet logo, registered in
the plaintiff‟s favour, with the plaintiff‟s consent and (ii) that the
plaintiff had, thereby acquest to the use of the said marks, which itself
operated to disentitle the plaintiff to an injunction against the
defendant. He has also sought to point out that the plaintiff was itself
not using the said mark but was, rather, using the
mark.
Essentially, the burden of Mr. Mehta‟s song has been that there was
complete lack of assertion on the part of the plaintiff, of the marks
which it seeks to assert today and that the usage of the marks, by the
defendant, was with the consent and acquiescence of the plaintiff and
with its knowledge at all points of time.


57. At this point of time, if the defendant is to be injuncted from use
of its mark, Mr. Mehta would submit that serious prejudice would
result to the defendant, who has, over time, accumulated considerable
goodwill in the said marks. Both the plaintiff and the defendant being
involved in social activities, rather than commercial gain, Mr. Mehta‟s
contention is that some of via media could be worked out, rather than
injuncting the defendant from further use of the word mark
BAREFOOT COLLEGE and the two feet logo.

58. Mr. Aditya Gupta, per contra , submits that this is a clear case of
unauthorised user of the plaintiff‟s mark and that, as rampant
confusion is resulting as a consequence of such user by the defendant,
there is no possibility of amicable resolution of the dispute at least at
this stage.

Signature Not Verified
Digitally Signed By:SUNIL
SINGH NEGI
CS(COMM) 827/2022 Page 28 of 38

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59. There is, clearly, no dispute about the fact that
(i) the mark BAREFOOT COLLEGE has been used by the
plaintiff since 1972, whereas the defendant was incorporated
only in 2015,
(ii) the BAREFOOT COLLEGE word mark and the two feet
logo device mark stand registered in favour of the plaintiff, and
the registrations continue to remain valid and subsisting till
date,
(iii) the defendant, per contra, has no registration in its favour
of either of the said marks,
(iv) the plaintiff has, therefore, priority both of user and
registration vis-a-vis the defendant in respect of the said marks,
rd
(v) the defendant was using the aforesaid marks till 3 April
2021 as a permissive user, consequent on permission having
been granted by the plaintiff, as is admitted by Defendant 1
itself in its pleadings (even if there is no licence granting such
permission forthcoming on the record),
rd
(vi) on 3 April 2021, the plaintiff categorically wrote to the
defendant, requiring the defendant to cease use of both of the
“BAREFOOT COLLEGE” word mark as well as the two feet
device mark, thereby withdrawing the said permission, and
(vii) despite such categorical communication, the defendant
has continued to use the said marks.

60. Mr. Mehta‟s contention that there is no license available on the
record, whereunder the plaintiff had permitted the defendant to use the
“BAREFOOT COLLEGE” word mark and the two feet logo, in fact,
would work against the defendant‟s interest rather than in its favour.
If the defendant was not licensed or permitted by the plaintiff to use
the said marks, the user of the marks by the defendant would be
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infringing ab initio , as Defendant 1 would, then, not have, to its
advantage, even the plea of permissive user.


61. This Court, however, does not deem it necessary to enter into
that arena as the defendant does not dispute receipt of the e-mail dated
rd
3 April 2021, whereby the plaintiff specifically directed the
defendant to discontinue usage of the BAREFOOT COLLEGE word
mark and the two feet logo. In view thereof, the submission, of Mr.
Mehta, that there has been acquiescence on the part of the plaintiff in
allowing usage of the mark by the defendant is clearly devoid of
substance. If the defendant has continued to use the said mark after
rd
3 April 2021, it is completely without authority and is at the
defendant‟s own risk and peril.

rd
62. Mr. Gupta has pointed out that, till 3 April 2021, the plaintiff
and the defendant were mutually cohabiting and that, therefore, as the
defendant was furthering the activities and purpose of the plaintiff, the
plaintiff had itself consciously permitted usage, by the defendant, of
the BAREFOOT COLLEGE word mark and the two feet logo. That
rd
permission was brought to an end on 3 April 2021. The defence of
rd
permissive user which was available to the defendant till 3 April
rd
2021, therefore, was no longer available to it thereafter. After 3
April 2021, therefore, the position that results is that the BAREFOOT
COLLEGE word mark and the two feet logo were, in fact, registered
in favour of the plaintiff and, without any authority whatsoever, the
defendant was infringing the said marks. The BAREFOOT
COLLEGE INTERNATIONAL mark of the defendant clearly
infringes the BAREFOOT COLLEGE word mark of the plaintiff.
Similarly, the
logo of the defendant clearly infringes the
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logo of the plaintiff. Though the registration granted to the
plaintiff in respect of the two foot logo registers the mark in
8
monochrome, section 10(2) of the Trademarks Act specifically
clarifies that, where the mark is registered without limitation of
colour, it shall be deemed to be registered for all colours. The case,
rd
therefore, is one of plain and simple infringement in which, prior to 3
April 2021, a defence of permissive user was available to the
defendant which after that date, has ceased to become available.

63. The plea of acquiescence, as advanced by Mr Mehta is
unacceptable. Acquiescence, as an inhibitor to an infringement action,
9
is statutorily confined to Section 33 of the Trade Marks Act. Where
the principle is thus statutorily confined, it cannot exist, or be invoked,
outside those confines. Acquiescence and waiver are but two sides of
one coin. He who acquiesces, also waives. For acquiescence to apply
against the plaintiff, therefore, it must be positively shown, by the
defendant pleading acquiescence , that
(i) there is positive acquiescence (Section 33 does not
envisaged any “deemed acquiescence”),
(ii) the acquiescence must be for a continuous period of five
years , and

8
10. Limitation as to colour. –

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(iii) the acquiescence must be to use of the trade mark by the
defendant .
As to what would constitute “aquiescence”, as would justify
invocation of Section 33, the Trade Marks Act is silent. Nor is
“acquiescence” defined therein. On acquiescence and waiver,
however, the Supreme Court has, in State of Punjab v. Davinder Pal
10
Singh Bhullar , ruled thus:

10
(2011) 14 SCC 770
11
(1994) 2 SCC 448
12
(2002) 5 SCC 90
13
(1934-35) 62 IA 100 : AIR 1935 PC 79
14
AIR 1959 SC 149
15
AIR 1965 SC 1405
16
AIR 1968 SC 933
17
1992 Supp (1) SCC 5
18
(2001) 5 SCC 629 : AIR 2001 SC 2062
19
(2004) 8 SCC 229 : 2004 SCC (L&S) 1086 : AIR 2004 SC 4282
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SINGH NEGI
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Thus, for acquiescence or waiver to apply against a plaintiff,
(i) the plaintiff must be shown to have been sitting by, when
the defendant was invading his rights,
(ii) the course of conduct of the plaintiff must be inconsistent
with the claim,
(iii) the act of acquiescence has to be positive, and not mere

20
1988 Supp SCC 55 : AIR 1988 SC 233
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inaction or silence,
(iv) the acquiescence must be such as to lead to the inference
of a licence sufficient to create a new right in the defendant,

(v) there must be conscious abandonment of an existing legal
right, advantage, claim or privilege, as would amount to an
agreement not to assert the right , and
(vi) voluntary and intentional relinquishment of the plaintiff‟s
right must be shown to have taken place.
These principles, unquestionably, overlap. They cannot, however, be
overstressed. The law does not lightly presume abandonment, by the
persons whom it governs and to whom it confers valuable rights and
privileges, of those rights and privileges. Intentional abandonment,
therefore, is the sine qua non , such as would result in conferment of
an implicit licence to the defendant to continue to act as it is acting,
and a positive agreement, by the plaintiff, not to assert the right that
the law grants him.

64. The law does not, therefore, recognize “implied acquiescence”,
though, in certain circumstances, acquiescence, or waiver, may be
deemed to have occurred. The distinction is subtle, but sure.
Acquiescence, or waiver, requires a positive course of action. Mere
inaction does not, ipso facto , result in abandonment. Intention,
however, is a state of mind and, like all states of mind, the law may
deem that state of mind to exist, if the requisite corroborative positive
factors converge, or co-exist. Where, therefore, the course of action
adopted by the plaintiff is such that it satisfies all the afore-
enumerated indicia of acquiescence or waiver, acquiescence or waiver
is deemed to have occurred, not as a matter of legal presumption, but
because the necessary psychological animus is found to actually exist.

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65. The bar is high, not to be scaled easily. Most importantly, a
right which is positively asserted at any point of time is, ordinarily, not
to be deemed to have been abandoned later, except where such
abandonment is express, and in the same manner in which the
assertion, earlier, took place .

66. Seen thus, the factors emphasized by Mr Mehta, even
cumulatively, cannot be said to make out a case of acquiescence, by
the plaintiff, to use of the BAREFOOT COLLEGE word mark and the
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two feet logo device mark, after 1 April 2021. We are concerned, in
the present case, with usage of the said marks, by Defendant 1, after
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1 April 2021, not prior thereto. There is no revocation, by the
st
plaintiff, if its directive to Defendant 1 on 1 April 2021 to
discontinue use of the BAREFOOT COLLEGE word mark and the
two feet logo device mark. As Mr Gupta correctly pointed out, a
permissive user of the mark of another has to remain conscious of the
fact that the permission may, at any time, be withdrawn. Permissive
user of the registered trade mark of another does not, with passage of
time, result in a right to claim adverse possession of the right to use
the mark. It remains, at all times, permissive. So long as the
permission subsists, there is no infringement. User after the
permission has ceased is ex facie infringing in nature.

67. Section 28(1) of the Trade Marks Act confers exclusivity, on
the holder of a registered trade mark, to its ownership and use, and to
protection against its infringement. That exclusive right is not
dependent on continued assertion of the mark. The plea of non-
assertion, by the plaintiff, of the BAREFOOT COLLEGE word mark
or the two feet logo device mark is, therefore, of no consequence.
Even otherwise, the present proceedings were instituted in the IPAB,
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by the plaintiff, on 12 October 2021, just a little over 6 months after
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it had, on 1 April 2021, revoked the permission to use its registered
trade marks. Continued non-assertion of the marks can hardly be
pleaded in such a case.

68. The above position applies, mutatis mutandis , in respect of the
domain name www.barefootcollege.org . Though Mr. Mehta has
sought to cast a cloud over the ownership of the said domain name,
prima facie , the submissions of Mr. Gupta in that regard merit
acceptance. There is no dispute about the fact that the domain name
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was in fact created on 23 August 1999, as is apparent from the
WHOIS details available on the internet. It is also not in dispute in
1999, the Defendant 1-company was not even in existence. Clearly,
therefore, the domain name was in usage by the plaintiff for 16 years
even before the defendant was incorporated. In such circumstances,
the plaintiff is, prima facie , entitled to assert the user and ownership of
the domain name.

69. Without prejudice, even were it to be presume that the
defendant had any right of ownership over the domain name
www.barefootcollege.org , that domain name would still infringe the
BAREFOOT COLLEGE word mark which stands registered in favour
of the plaintiff. Even on that ground, therefore, a case for injuncting
the defendant from continued use of the domain name
www.barefootcollege.org exists.

70. I see no reason to enter into all other arguments advanced by Mr
Mehta. There is no prima facie merit in the argument of
acquiescence. The plaintiff has, to its credit, priority both of use and
of registration. The defendant has, in its written statement, clearly
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acknowledged that it was using the BAREFOOT COLLEGE mark
only with the permission of the plaintiff. The day the permission was
withdrawn, the user of the mark became infringing. Continued
infringing user can hardly be explained away by pleading
acquiescence. The communications between the parties do not
indicate any acquiescence, by the plaintiff, to the continued user, by
the defendant, of the BAREFOOT COLLEGE word mark of the two
feet logo device mark.

71. In view of the aforesaid, I am of the opinion that a clear prima
facie case of infringement, by the defendant, of the registered
BAREFOOT COLLEGE word mark and the two feet logo of the
plaintiff is made out. Where a case of infringement is thus found to
21
exist, the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah
22
and Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia , holds that
injunction has necessarily to follow.

72. In that view of the matter, pending further orders, there shall be
a restraint against the defendant using the BAREFOOT COLLEGE
word mark and the
two feet logo of the plaintiff for any purpose
whatsoever. The defendant is, therefore, injuncted from using the
impugned BAREFOOT COLLEGE INTERNATIONAL and

marks in any manner, including user as the name of the Defendant 1-
company, pending disposal of the suit.

73. I.A. 114/2023 stands allowed accordingly.



21
(2002) 3 SCC 65
22
(2004) 3 SCC 90
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I.A. 115/2023 (Order VII Rule 11 of the CPC)

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74. List for hearing and disposal on 16 March 2023.



C.HARI SHANKAR, J
MARCH 1, 2023
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