Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 3.12.2012
Judgment pronounced on: 14.12.2012
+ CS(OS) 1519/2008
DELHI PUBLIC SCHOOL SOCIETY ….. Plaintiff
Through: Mr. Ankur Aggarwal, Adv.
versus
D.P.S. TRUST ….. Defendant
Through: None
CORAM:
HON’BLE MR. JUSTICE V.K.JAIN
V.K. JAIN, J.
1. The plaintiff is a society registered under the Societies Registration Act,
1860 and was established with objects inter alia to establish schools or other
educational institutions and to impart education to boys and girls. A logo was
created by the plaintiff society to distinguish its institutions. The logo comprises
inter alia a distinctive design with words „Delhi Public School‟ (in stylized form)
on the bottom, words „service before self‟ (in stylized form) on the top and a hand
holding a mashaal in the centre. The plaintiff society has established various
schools under the name „Delhi Public School‟ and thus the name „Delhi Public
School‟ as also the logo created by the plaintiff society are identified exclusively
with the plaintiff. The plaintiff claims registration of the logo created by it under
the Trademarks Act in Class 16,35,36,41 and 42. The plaintiff also holds
CS(OS) 1519/2008 Page 1 of 15
registration of the word mark „Delhi Public School‟ in Class 36, 35, 16 and 42.
The plaintiff is running eleven core schools besides 118 other schools. The
plaintiff, therefore, claims exclusive rights to use the name „Delhi Public
School‟/‟DPS‟ and the logo created and got registered by it.
2. The defendant no.1 is a trust registered under the Trust Act under the name
„DPS Trust‟, though it has nothing to do with the plaintiff society. It is alleged that
the defendant is using the mark „DPS‟ and „Delhi Public School‟, thereby creating
confusion in the minds of general public about the source and affiliation of its
institutions. It is alleged that the defendants are thereby trying to ride upon the
goodwill and reputation of the plaintiff with ulterior motive and malafide
intentions, since a common man would, in ordinary circumstances, presume that
the institutions of the defendant originate from the plaintiff. It is also alleged that
the quality of the educational services being provided by the defendant under the
mark „DPS‟ is nowhere comparable to the quality of education being imparted by
the plaintiff through its schools. The plaintiff is accordingly seeking an injunction
restraining the defendants from offering any service, advertising or using the mark
„DPS‟ and „Delhi Public School‟ or any other mark/name which is identical or
deceptively similar to the name being used by the plaintiff. The plaintiff has also
sought damages amounting to Rs.20,50,000/- besides rendition of account in
CS(OS) 1519/2008 Page 2 of 15
respect of the profits earned by the defendant by passing off its services as those of
the plaintiff.
3. The defendant was proceeded ex parte vide order dated 13.03.2012.
4. The plaintiff has filed affidavit of its Secretary Mr. R. Taneja by way of
evidence. In his affidavit Mr. Taneja has supported on oath the case set out in the
plaint and has stated that the logo in question was designed/created by the plaintiff
society in order to distinguish its institutions and the name „DPS‟ and the aforesaid
logo have come to be identified with the plaintiff‟s society. He has further stated
that all the schools established by the plaintiff society are known as „Delhi Public
School‟ and are also referred to as „DPS‟. He has further stated that the defendant
trust has nothing to do with the plaintiff society, has been carrying on business in a
clandestine manner using the identical name, logo and the crest mark and had also
issued advertisements advertising its products. On enquiry by the plaintiff, it was
found that not only was the defendant running in the name of „DPS” but it was also
inviting franchisees under the name „DPS Kids‟.
th
5. Vide Supplementary Affidavit dated 5 December, 2012, Shri Rajiv Taneja
has proved certified copies of various registrations in favour of the plaintiff.
Ex.PW-1/3 is the certificate of registration of the trade mark DPS in favour of the
plaintiff society in class 36; Ex.PW-1/G is the registration of the distinctive logo of
the plaintiff which is being used by all the schools run by it. Ex.PW-1/H is the
CS(OS) 1519/2008 Page 3 of 15
registration of the aforesaid logo in class 41 in respect of education, providing of
training etc. Ex.PW-1/I is the registration of the aforesaid logo in class 42 in
respect, inter alia, of computer programming, scientific and industrial research;
Ex.PW-1/J is the registration of the word mark DPS in class 16 in respect of paper
card board and goods made from paper and card board, printed matter, stationary,
paint brushes, teaching material etc. Ex.PW-1/K is the registration of the word
mark DPS in class 35. Ex.PW-1/L is the registration of the logo of the plaintiff in
class 16 in respect of paper card board printed matter, stationary, paint brushes,
teaching material etc. Ex.PW-1/M is the registration of the logo of the plaintiff in
class 35. Ex.PW-1/N is the registration of the word mark „DPS‟ in class 41, inter
alia, in respect of computer programming, scientific and industrial research etc.
6. Ex.PW1/D is the logo of defendant trust. A perusal of the logo of the
plaintiff with the impugned logo would show that they are almost identical. The
shape of the two logos is absolutely identical. The words „Service before Self‟ are
written on the top of both the logos. The words „Delhi Public School‟ is written at
the bottom of the logo of the plaintiff as well as the logo being used by the
defendant. One hand holding a burning torch ( mashaal) is in the centre of both the
logos.
7. A perusal of the material of the defendant which has been exhibited as
Ex.PW1/D(Colly) would show that the defendant is using the name „Delhi Public
CS(OS) 1519/2008 Page 4 of 15
School‟ as well as the name „DPS” on its stationary and other documents, though
the word „kids‟ or „Trust‟ has been used with the word „DPS‟.
8. A perusal of Section 29 of Trade Mark Act, to the extent it is relevant for our
purpose would show that, before a registered trade mark can be said to have been
infringed under Section 29(1) of the Act:
(a) The person using the impugned mark should not be either its registered
proprietor or a permitted user;
(b) The impugned mark should be either identical with or deceptively similar to
the registered trade mark;
(c) The impugned trade mark should be used in relation to the goods or services
covered by the registered trade mark; and
(d) The impugned mark should be used in such a manner that it is likely to be
taken as if it is being used as trade mark.
The following are the pre-requisite conditions to constitute infringement
under sub Sec.2 of Sec.29 of the Act:
a. The person using the impugned mark should not be either its registered
proprietor or a permitted user
b. The impugned trade mark should be identical to the registered trade mark
and should be used in respect of goods or services which are similar to the goods or
services in respect of which the registered trade mark has been obtained/OR, the
CS(OS) 1519/2008 Page 5 of 15
impugned trade mark should be similar to the registered trade mark and should be
used in respect of goods or services which are identical or similar to the goods or
services covered by the registered trade mark/OR the impugned trade mark should
be identical to the registered trade mark and should be used in respect of goods or
services which are identical to the goods and services covered by the registered
trade mark.
c. the user should be such as is likely to cause confusion on the part of the public
or should be such that the impugned trade mark is perceived to be associated with
the registered trade mark.
9. It is also a settled proposition of law, which was reiterated by Supreme Court
in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories , PTC (Suppl) (2) 680 (SC) , that if the defendant resorts to colourable
use of a registered trade mark, such an act of the defendant would give rise to an
action for passing off as well as for infringement. In an action based upon
infringement of a registered trade mark if the mark used by the defendant is
visually, phonetically or otherwise so close to the registered trade mark of the
plaintiff that it is found to be an imitation of the registered trade mark, the statutory
right of the owner of the registered trade mark is taken as infringed. In such a case,
if it is found that the defendant has adopted the essential features of the registered
trade mark of the plaintiff, he would be liable.
CS(OS) 1519/2008 Page 6 of 15
It is thus the undisputed proposition of law that in order to constitute
infringement the impugned trademark need not necessarily be absolutely identical
to the registered trademark of the plaintiff and it would be sufficient if the plaintiff
is able to show that the mark being used by the defendant resembles his mark to
such an extent that it is likely to deceive or cause confusion and that the user of the
impugned trademark is in relation to the goods in respect of which the plaintiff has
obtained registration in his favour. It will be sufficient if the plaintiff is able to
show that the trademark adopted by the defendant resembles its trademark in a
substantial degree, on account of extensive use of the main features found in his
trademark.
10. As noted earlier, the logo being used by the plaintiff Society is registered in
various classes including class 41 in respect of education. The defendant is using a
logo which is identical to the registered logo of the plaintiff and since the defendant
is running a school, which is also the service in which the plaintiff Society is
engaged, the impugned logo is being used by the defendant for rendering identical
services. The defendant, therefore, has clearly infringed the registered logo of the
plaintiff Society by using the same for providing educational services.
11. The defendant is using not only the logo but also the word mark „DPS‟ of the
plaintiff. The defendant is running School in the name „DPS Kids‟, Delhi Public
School. By using the word „DPS‟ as part of composite name „DPS Kids‟, the
CS(OS) 1519/2008 Page 7 of 15
defendant has virtually lifted and incorporated whole of the trademark „DPS‟ of the
plaintiff as a part of its trademark/trade name. Same is the position with respect to
the name of the defendant which is „DPS Trust‟. Though the word mark „DPS‟ is
not registered in favour of the plaintiff Society in respect of educational services, it
is registered in its name in respect of goods such as printed matter, goods made
from paper and card board, stationary, adhesive for stationary instructional and
teaching material etc. as also in respect of school canteens computer programming,
scientific and industrial research. As a part of its activity of running a School, the
defendant is likely to use the word „DPS‟ in respect of teaching material to be
distributed to the students, books and exercise books/note books, school stationary,
etc. Since the plaintiff holds registration of the word mark in respect of these
goods, any such use by the defendant would cause infringement of the registered
trade mark „DPS‟ of the plaintiff.
12. A perusal of the brochure of the defendant would show that it has its office
in Delhi at C-4/77, Sector-6, Rohini. Since the defendant must be undertaking its
activities and its registered office in Delhi, it is obvious that the impugned
trademarks are being used by the defendant in Delhi as well.
13. The law relating to passing off was recently summarized as under by me in
rd
CS(OS) 258/2012 decided on 3 December, 2012:
CS(OS) 1519/2008 Page 8 of 15
“The law relating to passing off, which is an action in
Common Law is by now well settled. Every person,
whether natural or juridical, is entitled to carry and
promote his business, under such mark or trade name as
he may choose to adopt for the purpose so long as such
use does not give rise to a belief that the said business is
being carried by some other person or has some business
association or connection with that person. No one is
entitled to use a trademark or a trade name which is
likely to deceive the members of the public and divert the
business of another person to him, on account of use of
such trade mark/trade name. If a trademark/trade name
has acquired a reputation in the mark, use of an identical
or similar mark by other person for carrying his business
is likely not only to be detrimental to the business of the
person who adopted and built the mark, but is also likely
to mislead and deceive the members of the public. Such
use, besides being injuries to the owner of the trademark
is also likely to create confusion with respect to
origin/source of the goods since a person coming across
goods and/or services in respect of which the impugned
mark is used, may, on account of use of the same or
similar trademark/trade name, believe that the
goods/services being offered to him emanate from the
owner of the trademark/trade name in question and that is
why they were being sold under that trade mark/trade
name. Everyone is entitled in law to work for and build a
commercial goodwill for his business, but no one has a
right to trade upon the goodwill and reputation of another
person and exploit the same to his advantage.”
14. Since the defendant is using the word mark „DPS‟ as well as the registered
distinctive logo of the plaintiff Society and is rendering services under the name
„Delhi Public School‟, which is the name under which the plaintiff Society is
running its Schools, any person coming across the brochure/advertising material of
CS(OS) 1519/2008 Page 9 of 15
the plaintiff Company in respect of the school being run by it is likely to believe
that the said school was being run by the plaintiff Society or at least had some kind
of association such as that of a franchisee with the plaintiff Society and that is why
it was using not only the mark „DPS‟ and the distinctive logo of the plaintiff but
also the name „Delhi Public School‟. The use of the name „Delhi Public School
and/or the registered logo and the word mark „DPS‟ of the plaintiff for providing
educational services is certainly likely to create confusion in the mind of the
general public with respect to the origin of the services being provided by the
defendant. In fact, a person passing through the school of the defendant or coming
across its advertisement is likely to be deceived into believing that the said School
is being run by the plaintiff or its franchisee.
In Ruston & Hornsby Ltd vs The Zamindara Engineering Co AIR 1969
(2) SCC 727 , it was held that if there is close resemblance between the two marks
and they are deceptively similar to each other, the word „India‟ added to one mark
was of no consequence. On account of use of the name BOURJOIS as a part of
domain name, the Internet users are likely to believe that http://bourjois.co.in is yet
another website of the plaintiff-company, meant primarily for India and thus there
is every possibility of confusion being created and those seeking to access the
website of the plaintiff-company end up accessing the website of the defendants.
CS(OS) 1519/2008 Page 10 of 15
Therefore, not only the use of the registered logo of the plaintiff, even the use of
the name DPS Trust and/or DPS Kids would constitute infringement of the
registered trade mark ‘DPS’ of the plaintiff, besides constituting passing off. It
would be pertinent to note here that the defendant has not come forward to contest
the suit and tell the Court as to why it chose this trade name for providing
education related service as a part of its business name and its trade mark. The
plaintiff Society is running a number of highly reputed School, the students of
which are well-known for their excellence in various walks of life. In fact, this is
the aspiration of most of the parents that their child should get admission in a DPS
School. The quality and standard of education being imparted in the Schools of the
plaintiff Society is perceived to be very high. It is, therefore, obvious that by using
the name DPS Trust and DPS Kids and the registered logo of the plaintiff besides
the name Delhi Public School, the defendant is seeking to encash upon the
goodwill and reputation which the brand DPS enjoys in this country in the field of
school education. The use of the impugned marks and logos besides being
injurious to the reputation which the schools of the plaintiff enjoy in public, is also
likely to deceive innocent parents who may get their ward admitted in the school of
defendant under a false impression that they were getting him/her admitted in one
of the reputed schools being run by the plaintiff Society. If the quality of the
education provided in the school of the defendant is not found to be of the same
CS(OS) 1519/2008 Page 11 of 15
standard as the quality of education in the schools of the plaintiff is perceived to
be, this is likely to substantial impair the brand, equity, which the mark ‘Delhi
Public School’ and DPS enjoy in this country. In fact it is difficult to dispute the
contention of the learned counsel for the plaintiff that use of the impugned mark
and the logo by the defendant is founded in dishonesty and acuted by mala fide so
as to ride upon the goodwill which the schools of the plaintiff enjoy in the country.
Refusing to injunct the defendant from using the impugned mark and logo would
amount to ignoring such illegal and dishonest acts and encouraging practices aimed
at defrauding the innocent parents who may get their children admitted in the
School of the defendant under a false impression that it was a school being run by
the plaintiff Society.
For the reasons stated hereinabove, a decree for perpetual injunction with
costs is hereby passed restraining the defendant from using the registered logo,
registered trade mark ‘DPS’ as well as the name Delhi Public School of the
plaintiff Society for running a School or providing education related services. The
defendant is further restrained from offering, promoting or advertising any School
or education related services under the abovereferred name/trade mark or any other
name/trade mark which is identical or deceptively similar to the trade marks ‘DPS’
and ‘Delhi Public School or the logo of the plaintiff Society.
CS(OS) 1519/2008 Page 12 of 15
Besides injunction, the plaintiff has also claimed rendition of accounts and
damages amounting to Rs.20,50,000/-. The plaintiff cannot get both, the rendition
of accounts as well as a specific amount towards damages. I am, therefore,
considering only the prayer for grant of damages.
The question of granting damages in such cases came to be considered by
me in Autodesk, Inc. & Another v. Mr. Prashant Deshmukh & Others: 183(2011)
DLT 411 and the following view was taken:
“Regarding punitive damages in the case of Time
Incorporated v. Lokesh Srivastava & Anr. , 2005 (30)
PTC 3 (Del) , this Court observed that punitive damages
are founded on the philosophy of corrective justice and as
such, in appropriate cases these must be awarded to give
a signal to the wrong doers that the law does not take a
breach merely as a matter between rival parties but feels
concerned about those also who are not party to the lis
but suffer on account of the breach. In the case of Hero
Honda Motors Ltd. v. Shree Assuramji Scooters , 2006
(32) PTC 117 (Del) , this Court noticing that the
defendant had chosen to stay away from the proceedings
of the Court felt that in such case punitive damages need
to be awarded, since otherwise the defendant, who
appears in the Court and submits its account books would
be liable for damages whereas a party which chooses to
stay away from the Court proceedings would escape the
liability on account of the failure of the availability of
account books.
In Microsoft Corporation v. Deepak Raval MIPR 2007
(1) 72 , this Court observed that in our country the Courts
are becoming sensitive to the growing menace of piracy
and have started granting punitive damages even in cases
where due to absence of defendant, the exact figures of
CS(OS) 1519/2008 Page 13 of 15
sale made by them under the infringing copyright and/or
trademark, exact damages are not available. The
justification given by the Court for award of compulsory
damages was to make up for the loss suffered by the
plaintiff and deter a wrong doer and like-minded from
indulging in such unlawful activities.
In Larsen and Toubro Limited v. Chagan Bhai Patel
MIPR 2009 (1) 194 , this Court observed that it would be
encouraging the violators of intellectual property, if the
defendants notwithstanding having not contested the suit
are not burdened with punitive damages.
Also, the Court needs to take note of the fact that a lot of
energy and resources are spent in litigating against those
who infringe the trademark and copyright of others and
try to encash upon the goodwill and reputation of other
brands by passing of their goods and/or services as those
of that well known brand. If punitive damages are not
awarded in such cases, it would only encourage
unscrupulous persons who actuated by dishonest
intention, in the case of a trademark use the well-reputed
trademark of another person, so as to encash on the
goodwill and reputation which that mark enjoys in the
market, with impunity or in the case of a software use the
pirated software thereby depriving the copyright owner
of the revenue to which he is entitled by sale of licence to
use that software and then avoid payment of damages by
remaining absent from the Court, thereby depriving the
plaintiff an opportunity to establish actual profit earned
by him from use of the infringing mark/pirated software,
which, if he is using the infringing mark/pirated software
for business purposes, can be computed only on the basis
of his account books. This would, therefore, amount to
putting premium on dishonesty and give an unfair
advantage to an unscrupulous infringer over those who
have a bona fide defence to make and therefore come
forward to contest the suit and place their case before the
Court.”
CS(OS) 1519/2008 Page 14 of 15
The defendant is running a school using the highly reputed brand name of
„Delhi Public School‟. As noted earlier, use of the name „Delhi Public School‟, the
word mark „DPS‟ and the logo of the plaintiff is dishonest, actuated with greed to
encash upon the brand equity which these names enjoy amongst the parents in this
country. Delhi Public Schools being high coveted schools, the parents would leave
no stone unturned to admit their wards in these school. On account of dishonest use
of the trademark and logo of the plaintiff by the defendant, some innocent and
gullible parents may admit their wards in the schools being run by the defendants
and pay high fees and other charges which they would not pay for admission in an
obscure school, under a mistaken belief that their child is studying in one of the
schools being run by the plaintiff. It is, therefore, necessary to award adequate
punitive damages to the plaintiff so that such dishonest tendencies may be curbed
and innocent parents are not trapped into admitting their wards in schools such as
the school being run by the defendant. I, therefore, pass a decree for recovery of
Rs.10 lac as punitive damages in favour of the plaintiff and against the defendant.
Decree sheet be drawn accordingly.
The suit stands disposed of.
V.K.JAIN, J
rd/BG/sn
DECEMBER 14, 2012/
CS(OS) 1519/2008 Page 15 of 15