DELHI PUBLIC SCHOOL SOCIETY vs. DPS TRUST & ORS.

.* IN THE HIGH COURT OF DELHI AT NEW DELHI

th
% Order delivered on: 29 October, 2014
+ CS (OS) No. 1518/2008

DELHI PUBLIC SCHOOL SOCIETY .....Plaintiff
Through Mr.Puneet Mittal, Adv. with
Mr.Nitain Sharma, Adv.

versus

DPS TRUST & ORS. …..Defendants
Through Defendants are ex-parte

CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiff has filed the present suit for permanent injunction
restraining passing off, infringement, rendition of accounts and
damages against the defendants in respect of 'DPS' and 'Delhi
Public School'.
2. It has been stated in the plaint that the plaintiff is a registered
society registered under the provisions of Societies Registration
Act, 1860. It was initially registered as Delhi Public School. In the
year 1962 the name of the society was changed to Delhi Public
School Society. The plaintiff society was formed with an object to
establish progressive schools or other educational institutions in
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Delhi or outside Delhi, open to all, without any distinction of caste
and creed.
3. After establishing the society by the name of “Delhi Public
School”, the then members of the society in order to achieve the
aims and objectives of the plaintiff decided to establish their first
school in the year 1949. It is averred that the name Delhi Public
School and the logo has become a mark which is identified with the
name of the plaintiff society.
4. The plaintiff society came into existence in the year 1949 and
since then it is using the word DELHI PUBLIC SCHOOL & DPS.
The plaintiff is using the aforesaid logo, crest before the enactment
of the Emblems and Names (Prevention of Improper Use) Act,
1950.
5. The schools established by the plaintiff society are known as
Delhi Public School and are more popularly identified with the
branch names e.g. if the school is established in Rohini, then it is
known as Delhi Public School, Rohini and the public at large and
students, staff etc. refer the same as “DPS” as well.
6. The plaintiff-society has got registered variety of trademarks
in class 16, 35, 36, 41 and 42. Details of registered trademarks are
as under:

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7. The plaintiff has also obtained registration of its Logo under
rd
the Copyright Act vide Application No. 219 dated 23 September,
2010, which was granted by the Trade Mark Registry. Copy of
certificates issued by Trade Mark Registry under Trade Mark Act
are exhibited as EX. PW-1/D (colly)(OSR). Copy of certificates
issued by Trade Mark Registry under Copyright Act is exhibited as
EX. PW-1/E (colly)(OSR).
8. The details of the schools run by the society are available on
the website of the plaintiff society and all the schools run or
established under the aegis of plaintiff society are using the same
name i.e. Delhi Public School/ DPS and the crest/Logo as adopted
by the plaintiff.
9. It is stated that the plaintiff society is running / managing the
following schools:
CORE SCHOOLS :
a) Delhi Public School, Mathura Road.
b) Delhi Public School, R. K. Puram.
c) Delhi Public School, Noida.
d) Delhi Public School, Vasant Kunj
e) Delhi Public School, Faridabad
f) Delhi Public School, Greater Noida
g) Delhi Public School, Bulandshahr
h) Delhi Public School, Rohini
i) Delhi Public School, Dwarka
j) Delhi Public School, Saket
k) Delhi Public School, Navi Mumbai
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Schools functional (within India) as on 22.07.2008
S.No. Name of school
1. DPS Agra
2. DPS Ahmedabad
3. DPS Ahmedabad, East
4. DPS Aligarh
5. DPS Allahabad
6. DPS Ambala
7. DPS Amritsar
8. DPS Anantnag
9. DPS Bahadurgarh
10. DPS Bangalore (East)
11. DPS Bangalore (North)
12. DPS Bangalore (South)
13. DPS Bareilly
14. DPS Bathinda
15. DPS Bhagalpur
16. DPS Bhilai
17. DPS Bhiwani
18. DPS Bhopal
19. DPS Bhubaneshwar
(Kalinga)
20. DPS Bilaspur
21. DPS Bokaro
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22. DPS Budgam
23. DPS Chandigarh
24. DPS Damanjodi
25. DPS Dehradun
26. DPS Dhaligaon
27. DPS Dhanbad
28. DPS Digboi
29. DPS Dimapur
30. DPS Duliajan
31. DPS Durg
32. DPS Eldeco (Lucknow)
33. DPS Farakka
34. DPS Gandhidham
35. DPS Gandhinagar
36. DPS Ghaziabad
(Indirapuram)
37. DPS Gurgaon
38. DPS Guwahati
39. DPS Gwalior
40. DPS Hapur
41. DPS Harni, Vadodara
42. DPS Hisar
43. DPS Hyderabad
44. DPS Indore
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45. DPS Itanagar
46. DPS Jaipur
47. DPS Jammu
48. DPS Jamshedpur
49. DPS Jhakri
50. DPS Jodhpur
51. DPS Kamptee Road,
Nagpur
52. DPS Kanpur
53. DPS Kanpur (Mainawati Mg)
54. DPS Karnal
55. DPS Kashi (Varanasi)
56. DPS Katra
57. DPS Kolkata (Mega City)
58. DPS Kolkata (New Town)
59. DPS Kolkata (Ruby Park)
60. DPS Korba
61. DPS Leh
62. DPS Lucknow (Indira
Nagar)
63. DPS Ludhiana
64. DPS Manali
65. DPS Maruti Kunj
66. DPS Mathura Refinery
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67. DPS Meerut
68. DPS Moradabad
69. DPS Nagpur Road, Jabalpur
70. DPS Nalco Nagar
71. DPS Nazira
72. DPS Nigahi
73. DPS Numaligarh
74. DPS Palwal
75. DPS Panipat City
76. DPS Panipat Refinery
77. DPS Patna
78. DPS Pinjore
79. DPS Pune
80. DPS Raipur
81. DPS Rajkot
82. DPS Rajouri
83. DPS Ranchi
84. DPS Ranipur
85. DPS Rewari
86. DPS Rohtak
87. DPS Rourkela
88. DPS Sainikpuri
(Secundrabad)
89. DPS Sanskardhani
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90. DPS Secundrabad
(Mahendra Hills)

91. DPS Silliguri

92. DPS Sonepat

93. DPS Srinagar

94. DPS Surat

95. DPS Sushant Lok


96. DPS Udaipur

97. DPS Udhampur

98. DPS Vadodara
99. DPS Varanasi

100. DPS Vidyut Nagar

101. DPS Vijaipur

102. DPS Vijaywada

103. DPS Vindhyanagar

104. DPS Visakhapatnam

105. DPS YamunaNagar,
Jagadhari

LIST: of Schools functional ( ABROAD) as on 22.07.2008
106(1) DPS Kuwait
107(2) DPS Dharan (Nepal)
108(3) TDIS Indonesia
109(4) DPS Dubai
110(5) DPS Birgunj
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111(6) NMS Bahrain

112(7) DPS I Singapore

113(8) DPS Riyadh

114(9) DPS Kampala

115(10) DPS Jeddah

116(11) DPS Sharjah

117(12) MIS Doha

118(13) DPS Biratnagar,
Nepal

9. It is averred that the use of the mark ‘DPS’ and the words
‘Delhi Public School’ are so extensive that the said mark and the
words have always been perceived by the general public as
indicative of the source of the plaintiff and the aforesaid words are,
therefore, associated by the general public with plaintiff and nobody
else.
10. For the last more than 50 years of service in the field of
imparting education, the plaintiff society has produced lacs of
students who are occupying prominent and prestigious positions in
both Government as well as Private Service and are doing very
well in life. The staff members of the school have also attained
distinction in the field of education and have been awarded with the
prestigious awards by the Government.
11. Defendant No.1 is stated to be a non-profit organization
registered under the Trusts Act which works in many spheres
promoting education, health, self-employment and vivid other
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activities. It is averred that the trust traces its foundation in April
2003 and the prime objective behind establishment was utilization
of immense academic experience of Delhi Public School. Printouts
from the website of defendants i.e. www.dpstrust.com is exhibited
as EX. PW-1/F.
12. The said trust also purported to have created specialized play
home for kids in the form of DPS Kids as also the DPS Competitive
th th
Wing for curriculum guidance for 11 and 12 apart from giving
them sharp competitive edge through its competitive tutorial.
Prospectus issued by the defendants for DPS Alwar, printouts of
website and syllabus are exhibited as EX. PW-1/G (colly).
13. It is stated in the plaint that among the Board Members of
defendant No.1, the following are claimed to be the Board
members:
1) Shri S.N.Sharma, NRI (Chairman)
2) Shri V.P.Sinha (Vice Chairman)
3) Dr. Rita Parasar (President)
4) Shri R.N.Sharma (Vice President)
5) Shri R.S.Parasar (Secretary)
6) Shri Rajeev Ranjan Singh (Asstt. Secretary)
7) Prof. (Dr.) K.K.Jha (Member Higher Education)
8) Shri P.N.Singh (Member Engineer)
9) Shri V. Kumar (Hony. Treasurer)
10) Smt.B.Singh (Trustee)
11) Km.Pallawi Priya (Trustee)
12) Km.Kajali Priya (Trustee)
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13) Shri Ravi Shanker (Trustee)
14) Shri S.K.Singh (Adv. High Court) (Legal Advisor)
15) Shri R.K.Singh (Adv) (Asst.Legal Advisor)
Nominee of the Director of Education
16) Proff.M.M.Alam (Retd. Proff. M.I.T.)
17) Dr.(Mrs.) R. Wats
14. Defendants No.2 to 17 are the office bearers of the defendant
No.1-Trust and thus managing the day to day affairs of the
defendant no. 1.
15. It is averred in the plaint that defendant No.1 is having its
office at Hirak Road, Rahul Chowk, Katras Bazar, Dhanbad
(Jharkhand). However, they are apparently carrying on their illegal
business throughout the country and offering franchises. However,
the exact situation of defendants could only be discovered after
discovering the present action. It is further stated that the
defendants have themselves admitted the fact that they are using
impugned logo/crest mark of the plaintiff society which shows that
the defendants are wilfully misusing the crest/logo/mark of the
plaintiff and are illegitimately cashing in upon the goodwill acquired
by the plaintiff. It is averred that the defendants are not only using
the name and logo of the plaintiff society but deliberately and
malafidely cheating innocent public at large and on many
occasions represented itself as a part of the plaintiff society. As
also that the defendants have acquired a distinct identity for
themselves of fly by night operator with no permanent place of
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business and no responsible persons claiming to at the helm of its
affairs.
Somewhere in 2007, the plaintiff-Society, at their registered
office at F Block, East of Kailash, New Delhi, found that the trust
under the name and style of Delhi Public School (DPS) has nothing
to do with the plaintiff’s school for carrying out in clandestine
manner identical name, logo and crest mark of plaintiff and further
issued advertisement in a manner that it has direct connection with
the plaintiff.
16. On discovery, it is alleged by the plaintiff that it immediately
took steps in order to find the details about the misuse of its name,
reputation, goodwill and mark ‘DPS’ and the words “Delhi Public
School’ and it was found that the defendant no. 1 was running the
impugned institution with branches under the name of “DPS” and
inviting franchisee enquiry under the name “DPS Kids”. The
defendants have not disclosed the cities in which they are
operating, not even the basics of the particulars of the defendants
are reliable. In fact the list of trustees etc. on the board of the trust,
have all been proceeded ex-parte as they could not be traced and
they despite knowledge have also chosen not to contest the
present suit.
17. However, the plaintiff was able to find that the defendants
were using the mark DPS and the words Delhi Public School,
which were deceptively similar and the said act was done
deliberately by the defendants so as to ride the goodwill of the
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plaintiffs and create absolute confusion in the minds of general
public about the source and affiliation of the defendant’s institution.
The advertisement of the defendant no. 1 along with other
documents indicating the illegal acts done by the defendants have
been filed along in the list of documents.
18. From the material placed on record, it is evident that the
defendants with a dishonest, ulterior and malafide intention to ride
upon the goodwill and reputation of the plaintiff which has been
built over years of hard work, dedication and honesty and with an
intention to earn illegal profits have adopted and are using the mark
‘DPS’ and the words ‘Delhi Public School’ which is visually,
phonetically identical to the plaintiff’s mark ‘DPS’ and words ‘Delhi
Public School’. The general public would definitely be confused by
the said acts of the defendants and in ordinary circumstances
would attribute the defendants’ illegal institution as that emanating
from the plaintiff. The said acts of the defendants are nothing but a
fraud and cheating upon the plaintiff as the defendants have
deliberately and consciously plagiarized the plaintiff’s mark and the
word ‘Delhi Public School’.
19. The confusion and deception amongst the common people
and parents is the basic intent and ulterior motive of the defendants
and such consequence is inevitable on account of the illegal
adoption of the marks of the plaintiff by the defendants. The
defendants malafide intention of causing confusion and deception
in the minds of general public is evident from the fact that the
defendants are pretending to be the Delhi Public School Society
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which is the plaintiff and their basic intention further is to hit the
business of the plaintiff hard, cut into their clients, to deceive the
general public at large and to ride on the coat tails of the plaintiff’s
reputation and goodwill that the plaintiff has built up through
extreme hard work and dedication for a consideration period of
time.
20. The adoption by the defendants of the plaintiff’s mark is a
clever exercise of deceit and amounts to copying of the plaintiff’s
mark ‘DPS’ and words ‘Delhi Public School’. It further amounts and
undeniably leads to the defendant’s passing off their inferior and
substandard service as compared to the superior and unparalleled
quality of the education being provided by the plaintiff. The
intentional adoption of the name and crest of the plaintiff by the
defendants cannot be termed as innocent and bonafide since the
defendants are well aware of the mark “DPS” and the word “Delhi
Public School” along with its crest/logo which belongs and owned
by the plaintiff. It is stated that defendants in order to avoid any
communication and to mislead public and authorities have always
manipulated their addresses and the same can be ascertained
from the record of present case itself.
21. The defendants are consciously copying the mark ‘DPS’,
words and the crest belonging to the plaintiff with a malafide intent
to ride upon their goodwill and their conduct is neither bonafide nor
an innocent adoption as the defendants are well aware that the
mark DPS and the words ‘Delhi Public School’ along with the crest
belongs to, and are owned by the plaintiff. The defendants have no
CS (OS) No.1518/2008 Page 16 of 32


justification whatsoever, for the illegal adoption and use of
deceptively similar words in respect of the service and products
offered by them. The aforesaid acts of the defendants would cause
huge loss and damage to the plaintiffs if the said name is allowed
to be used by the defendants.
22. An ad-interim injunction order was passed against the
th
defendants on 28 August, 2008. Upon service, defendant Nos. 1
and 6 have put their appearance before Court, which was duly
th th
marked vide order dated 9 January, 2009 and 14 January, 2009
passed by this Court and defendant Nos. 2 to 5 and 7 to 18 have
th
been set down ex-parte vide order dated 29 July, 2010.
23. Defendants despite of having knowledge are using the said
name. The plaintiff filed a contempt petition No. 15259/2011 under
Order 39 Rule 2A CPC along with documents. Printout from the
web site of defendant no. 1 i.e. www.dpstrust.org is exhibited as
EX. 1/ H (5 pages). The defendant Nos. 1 and 6 filed an apology.
The plaintiff thereafter filed the reply of apology along with
documents which shows the disobedience of the defendants. The
plaintiff also filed the reply of additional affidavit filed by the
th
defendant Nos.1 and 6 in terms of order dated 18 October, 2012
passed by this Court. The printouts filed on record along with the
reply are exhibited as EX-PW-1/K (colly). The plaintiff also filed
th
some documents on 20 February, 2013 to show the malice
intention of the defendants. The documents are exhibited as
EX.PW-1/L. The plaintiff also filed an affidavit along with letter no.
st
5521/recognition/----/2012-13 dated 21 March, 2013 along with its
CS (OS) No.1518/2008 Page 17 of 32


th
annexures and envelop in compliance of order dated 10 July,
2013 passed by this Court. The letter No. 5521/recognition/----
st
/2012-13 dated 21 March, 2013 along with its annexures and
envelop are exhibited as EX.PW-1/M (colly). The Court vide order
th
dated 13 September, 2012 held the defendant No. 1 and 6 guilty
th
of contempt of court. The Court vide order dated 19 September,
2013 issued the Bailable Warrants against the defendant no. 6 and
at present he is absconding from the court.
24. The agreement of DPS Bharatpur is marked as “Mark A” and
prospectus of Mathura, Ghaziabad and Firozabad are exhibited as
EX. PW-1/I. The printout taken from the website of the defendant is
exhibited as EX. PW-1/J. Copy of agreement between DPS Trust
and Radha Govind Public Welfare Society, Ramgarh Cantt.
Jharkhand is marked as “Mark-B”.
25. All the defendants in the matter were earlier proceeded ex-
th
parte vide order dated 29 July, 2010, however, later on
defendants No. 1 to 6 came forward to contest the suit, presence
th
on whose behalf was recorded in order dated 24 May, 2011.
Various opportunities were thereafter granted to the said
defendants to file the written statement. However the written
statement was filed only by the end of year 2011. Since no one had
been appearing on behalf of defendant Nos. 1 to 6 for a long time
in the matter, all the defendants were proceeded ex-parte vide
th
order dated 20 August, 2014. Thereafter, after recording, the
th
evidence of the plaintiff was closed vide order dated 17 October,
2014.
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INFRINGEMENT
26. At this juncture, it is imperative to discuss Section 29 of the
Trade Marks Act, 1999 (hereinafter referred to as "the Act") that
envisages the law relating to infringement of a registered trademark
and Section 28 of the Act that provides for exclusive rights granted
by virtue of registration. The said provisions read as under:-
“29. Infringement of Registered Trademark
(1) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a
mark which is identical with, or deceptively similar to,
the trade mark in relation to goods or services respect
of which the trade mark is registered and in such
manner as to render the use of the mark likely to be
taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a
mark which because of-
(a) its identity with the registered trade mark and
the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and
the identity or similarity of the goods or
services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and
the identity of the goods or services covered
by such registered trade mark, is likely to
cause confusion on the part of the public, or
which is likely to have an association with the
registered trade mark.
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(3) In any case falling under clause (c) of sub-section (2),
the court shall presume that it is likely to cause
confusion on the part of the public.
(4) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a
mark which-
(a) is identical with or similar to the registered
trade mark; and
(b) is used in relation to goods or services which
are not similar to those for which the trade
mark is registered; and
(c) the registered trade mark has a reputation in
India and the use of the mark without due
cause takes unfair advantage of or is
detrimental to, the distinctive character or
repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or
part of his trade name, or name of his business
concern or part of the name, of his business concern
dealing in goods or services in respect of which the
trade mark is registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them
on the market, or stocks them for those
purposes under the registered trade mark, or
offers or supplies services under the
registered trade mark;
(c) imports or exports goods under the mark; or
CS (OS) No.1518/2008 Page 20 of 32


(d) uses the registered trademark on business
papers or in advertising.
(7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material
intended to be used for labelling or packaging goods,
as a business paper, or for advertising goods or
services, provided such person, when he applied the
mark, knew or had reason to believe that the
application of the mark was not duly authorised by the
proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising
of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to
honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade
mark consist of or include words, the trade mark may
be infringed by the spoken use of those words as well
as by their visual representation and reference in this
section to the use of a mark shall be construed
accordingly.”
“28. Rights conferred by registration –

(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to the
registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is
registered and to obtain relief in respect of
infringement of the trade mark in the manner provided
by this Act.

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(2) The exclusive right to the use of a trade mark given
under sub-section (1) shall be subject to any
conditions and limitations to which the registration is
subject.

(3) Where two or more persons are registered proprietors
of trade marks, which are identical with or nearly
resemble each other, the exclusive right to the use of
any of those trade marks shall not (except so far as
their respective rights are subject to any conditions or
limitations entered on the register) be deemed to have
been acquired by any one of those person as against
any other of those persons merely by registration of
the trade marks but each of those persons has
otherwise the same rights as against other persons
(not being registered users using by way of permitted
use) as he would have if he were the sole registered
proprietor.”
27. By reading of these provisions, it is apparent that a registered
trademark is infringed by a person who not being a registered
proprietor, uses in the course of trade a mark which is identical or
deceptively similar in relation to the goods or services which are
identical or similar to that in respect of which the trademark is
registered without the permission of the trademark owner.
28. Section 29(2) of the Act is a new provision introduced in the
Act whereby the scope of infringement enlarged than under the
earlier enactment. The words used in Section 29(2)(b) are
“similarity” of trademarks as opposed to use of the word
“deceptively similarity” used in Section 29(1). The threshold for
considering similarity of trademarks under this section is therefore
apparently different from the consideration related to “deceptive
CS (OS) No.1518/2008 Page 22 of 32


similarity” of trade mark.
In order to come under this provision, it is sufficient that the
similarity of the marks is such as is likely to cause confusion or
deception or to cause any association with the registered
trademark.
29. In order to understand what is a mark, one has to read the
definition of the "mark" and the "trademark" under
Sections 2(1)(m) and 2(zb) of the Act together. In Section 2(1)(m),
the meaning of the "mark" includes the name and word and/or any
combination thereof. Similarly, as per Section 2(zb), "trademark"
means, if the same is used in relation to goods or services for the
purposes of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may
be, and some person having the right as proprietor to use the mark.
In the present matter, this Court is also dealing with the case of
infringement of trademark. The plaintiffs are admittedly the
registered proprietors of the trademark.
30. In order to establish infringement, the main ingredients of
Section 29 of the Act are that the plaintiff's mark must be registered
under the Act; the defendant's mark is identical with or deceptively
similar to the registered trademark; and the defendant's use of the
mark is in the course of trade in respect of the goods covered by
the registered trademark. The rival marks are to be compared as a
whole. Where two rival marks are identical, it is not necessary for
the plaintiff to prove further that the use of defendant's trademark is
likely to deceive and cause confusion as the registration shows the
CS (OS) No.1518/2008 Page 23 of 32


title of the registered proprietor and the things speak for
themselves. In an infringement action, once a mark is used as
indicating commercial origin by the defendant, no amount of added
matter intended to show the true origin of the goods can effect the
question. If Court finds that the defendant's mark is closely, visually
and phonetically similar, even then no further proof is necessary.
31. In the case o f Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories AIR1965 SC 980 – at
989-990 page wherein it was held that :
“The action for infringement is a statutory remedy conferred
on the registered proprietor of a registered trade mark for
the vindication of the exclusive right to the use of the trade
mark in relation to those goods.”
“if the essential features of the trade mark of the plaintiff
have been adopted by the defendant, the fact that the get-
up, packing and other writing or marks on the goods or on
the packets in which he offers his goods for sale show
marked differences, or indicate clearly a trade origin
different from that of the registered proprietor of the make
would be immaterial.”
Similarity in Trade Name/Corporate Name
32. The Division Bench of this Court in the case of Montari
Overseas Ltd. vs. Montari Industries Ltd., reported in 1996 PTC
(16) 142, in relevant paras observed as under:-
“(9) We have considered the submission of learned
counsel but we have not been persuaded to accept the
same. Section 20 of the Companies Act, 1956 provides
that no company will be registered by a name which is
similar or identical or too nearly resembles the name by
which a company in existence has been previously
registered. In case where a company has been
CS (OS) No.1518/2008 Page 24 of 32


incorporated with a name which is identical or too nearly
resembles the name of a company which has been
previously incorporated, Section 22 makes a provision for
getting the names of the former altered. No doubt,
Section 22 makes provision for rectification of the name of
a company which has been registered with undesirable
name but that does not mean that the common law remedy
available to and aggrieved party stands superseded. The
plaintiff will have two independent rights of action against
the defendant who may be using the corporate name of a
previously incorporated company, one under Section 22 of
the Companies Act and the other for injunction restraining
the defendant from using the corporate name of the plaintiff
or from using a name bearing close resemblance which
may cause or which is likely to cause confusion in the
minds of the customers or general public in view of the
similarity of names. Both the remedies, one under
Section 22 and the other under the common law operate in
different fields. Under section 22 of the companies Act, the
Central Government has no jurisdiction to grant any
injunction against the use of an undesirable name by a
company whereas in a suit for permanent injunction the
court can pass an order injucting the defendant from using
the name which is being passed off by the defendant as
that of the plaintiff. In M/s. K.G. Khosla Compressors Ltd.
vs. Khosla Extraktions Ltd. and others, AIR 1986 Delhi
184(2), the plaintiff filed a suit against the defendant or
permanent injunction restraining the latter from using,
trading or carrying on business under the name and style
of Khosla Extraktions Ltd. on the ground that the plaintiff
was incorporated as K.G. Khosla Compressors Ltd. prior to
the incorporation of the defendant and it cannot be allowed
to imitate or copy the trade name of the appellant. Along
with the suit, the plaintiff had filed an application under
Order 39, Rules 1 and 2 for temporary injunction
restraining the defendant from using trading and carrying
on business and from entering capital market and making
public issue under the name M/s. Khosla Extraktion Ltd. In
CS (OS) No.1518/2008 Page 25 of 32

plaintiff has made out a strong case for infringement of trademark.
PASSING OFF
34. The test of confusion and deception in order to prove the
case of passing off has been very well discussed in the case of
Laxmikant V. Patel vs. Chetanbhat Shah and Another , reported
in (2002) 3 SCC 65, wherein the Supreme Court while considering
a plea of passing off and grant of ad interim injunction held in no
uncertain terms that a person may sell his goods or deliver his
services under a trading name or style which, with the passage of
time, may acquire a reputation or goodwill and may become a
property to be protected by the Courts. It was held that a
CS (OS) No.1518/2008 Page 26 of 32


competitor initiating sale of goods or services in the same name or
by imitating that name causes injury to the business of one who
has the property in that name. It was held that honesty and fair play
are and ought to be the basic policy in the world of business and
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 the propensity of diverting the
customers and clients of someone else to himself and thereby
resulting in injury.
35. It was held in Laxmikant V. Patel (supra) that the principles
which apply to trademark are applicable to trade name also. Para
10 of the aforesaid judgment reads as under:-
“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 his 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 customers
and clients of someone else to himself and thereby
resulting in injury.”
In this case, the Supreme Court further observed that:
“Where there is probability of confusion in business, an
injunction will be granted even though the defendants
adopted the name innocently.”
CS (OS) No.1518/2008 Page 27 of 32


36. The fundamental difference that passing off is an action
which essentially protects goodwill and not the unregistered
trademark has been explained in the case of Star Industrial Co.
Ltd. v. Yap Kwee Kor [1976] Fleet Street Patent Law Reports
256 decided by Privy Council comprising Lord Diplock in his
speech wherein it has been observed that passing off is an action
which is to preserve the goodwill of a person and not aimed at to
protect an unregistered trademark. In the words of Lord Diplock, it
has been observed as under:-
“Whatever doubts there may have previously been as to
the legal nature of the rights which were entitled to
protection by an action for “passing off” in courts of law or
equity, these were laid to rest more than 60 years ago by
the speech of Lord Parker of the Waddington in A.G.
Spalding & Bros. v. A.W. Gamage Ltd. (1915) 32 R.P.C.
273 (“the Gamage Case”) with which the other members of
the House of Lords agreed. A passing off action is a
remedy for the invasion of a right of property not in the
mark, name or get up improperly used, but in the business
or goodwill likely to be injured by the misrepresentation
made by passing-off one person’s goods as the goods of
another. Goodwill, as the subject of proprietary rights, is
incapable of subsisting by itself. It has no independent
existence apart from the business to which it is attached. It
is local in character and divisible; if the business is carried
on in several countries a separate goodwill attaches to it in
each. So when the business is carried abandoned in one
country in which it is acquired a goodwill the goodwill in
that country perishes with it although the business may
continue to be carried on in other countries. Once the Hong
Kong Company had abandoned that part of its former
business that consisted in manufacturing toothbrushes for
export to and sale in Singapore it ceased to have any
proprietary rights in Singapore which was entitled to
CS (OS) No.1518/2008 Page 28 of 32

37. In B.K. Engineering Company Vs. Ubhi Enterprises, AIR
1985 DEL 210 , this Court held, while deciding the question of
passing-off between plaintiffs Trade Mark B.K. against Defendants
Trade Mark B.K.81 for similar products namely cycle bells.
Competition must remain free. This is the life blood of free
enterprise system yet, it is essential that trading must not only be
honest but must not even unintentionally be unfair. Therefore, the
court has gone to the extent that even an unintentional act of
trespassing on somebody’s Intellectual Property asset cannot
allow.
The Court further held in B.K. Engineering’s case (supra)
that the test of misappropriation of Intellectual Property/goodwill/
reputation is the impression likely to be produced on the casual and
unwary customer. In the same judgment in para 16, the Court held
that the central question in each case is whether the name or
description given by the defendant to his goods is such so as to
create a likelihood that a substantial section of the purchasing
public will be misled into believing that his goods are the goods of
the plaintiff’s.
The Court further held that it must be remembered that we
are concerned with the case where both firms are engaged in a
common field of activity. The question arises whether the
defendants are misleading the public into buying their goods in the
belief that they emanated from the plaintiffs. The Court further said
CS (OS) No.1518/2008 Page 29 of 32


that most defendants in these cases start their business fully aware
of the fame of the plaintiffs name and mark. They want to cash in
on the popularity of the plaintiffs product. Whether the goods are
inferior or superior, every infringement is, in the way tribute to the
excellence of the plaintiffs wares. It is a measure of the popularity
of plaintiff’s goods. The Court, also emphasized in para 54 that the
fundamental question is whether there is a likelihood of deception
of the public by the use of a particular name. If there is likelihood,
the complainant can bring an action against the deceiver, the
maker of the representation.
38. In view of the aforesaid reasons, it is evident that the plaintiffs
have established a classic case of passing off thereby entitling
them for permanent injunction.
39. The suit of the plaintiff is accordingly decreed in terms of
Para (a) and (b) of the prayer clause of the plaint.
40. As far as the relief of damages is concerned, this Court has
previously granted both exemplary and punitive damages against
the defendants in matters of similar nature in various industries
ranging from software to automotives, chocolates to
pharmaceuticals, stationary to luxury brands, etc. Some of the
decisions are as under:
(i) In Time Incorporated Vs. Lokesh Srivastava & Anr.,
2005 (30) PTC 3 (Del.) while awarding punitive damages of
Rs. 5 lakhs in addition to compensatory damages also of
Rs. 5 lakhs, Justice R.C. Chopra observed that “time has
come when the Courts dealing in actions for infringement
of trademarks, copyrights, patents etc., should not only
grant compensatory damages but also award punitive
CS (OS) No.1518/2008 Page 30 of 32


damages with a view to discourage and dishearten law
breakers who indulge in violation with impunity out of lust
for money, so that they realise that in case they are caught,
they would be liable not only to reimburse the aggrieved
party but would be liable to pay punitive damages also,
which may spell financial disaster for them.”

(ii) In Microsoft Corporation Vs. Rajendra Pawar & Anr.,
2008 (36) PTC 697 (Del.) decided on 27th July, 2007, this
Court held that “Perhaps it has now become a trend of
sorts, especially in matters pertaining to passing off, for the
defending party to evade court proceedings in a systematic
attempt to jettison the relief sought by the plaintiff. Such
flagrancy of the Defendant’s conduct is strictly deprecatory,
and those who recklessly indulge in such shenanigans
must do so at their peril, for it is now an inherited wisdom
that evasion of court proceedings does not de facto
tantamount to escape from liability. Judicial process has its
own way of bringing to tasks such erring parties whilst at
the same time ensuring that the aggrieved party who has
knocked the doors of the court in anticipation of justice is
afforded with adequate relief, both in law and in equity. It is
here that the concept of awarding punitive damages comes
into perspective.”

41. In a similar case filed by the plaintiff against D.P.S Trust
earlier before this Court in CS (OS) 1519/2008, titled as Delhi
Public School Vs. D.P.S. Trust , this Court vide Judgment dated
th
14 December, 2012 while protecting the trademark of the plaintiff,
also passed a decree for recovery of Rs.10 lac as punitive
damages in favour of the plaintiff and against the defendant. The
relevant portion of the same is reproduced as under:
CS (OS) No.1518/2008 Page 31 of 32


“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.”

42. In view of the above as well as facts of the present case, this
Court is of the opinion that in present case Rs.5 lac as punitive
damages be granted in favour of the plaintiff and against the
defendants. Plaintiff is also entitled for costs.
43. Decreed accordingly.
I.A. No. 15259/2011
44. Since the suit has been decreed, the I.A is disposed of with a
liberty to the plaintiff to take appropriate action under Order 21 Rule
32 CPC in case of violation.
(MANMOHAN SINGH)
JUDGE
OCTOBER 29, 2014
CS (OS) No.1518/2008 Page 32 of 32