Full Judgment Text
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on 20.07.2016
+ CS(OS) 1566/2011 & IA Nos.10095/2011 & 12980/2011
KAILASH BABU GUPTA ..... Plaintiff
Through: Mr R.K. Aggarwal and Mr Parul
Singh, Advocates.
versus
LOKESH KUMAR SRIVASTAVA & ORS .....Defendants
Through None.
CORAM:
HON'BLE MR. JUSTICE VIBHU BAKHRU
VIBHU BAKHRU, J
1. The present suit has been filed by the plaintiff, inter alia, praying as
under:-
“(i) For permanent injunction restraining the defendant
by himself, his servants, agents, representatives,
etc./ and all other persons on his behalf from
passing off his services by using the trading style
IITP Edutrain Pvt. Ltd., website
www.indianiitp.com and other publicity material
which may have significant alphabets IITP of the
Plaintiff‟s trading style, in any manner and/or any
other trading style/website consisting of the
alphabets IITP which is identical with and/or
deceptively similar to the plaintiff trading style
CS(OS) 1566/2011 Page 1 of 8
“IITP Resource Development Pvt. Ltd.” and
website www.indianiitp.com .
(ii) For permanent injunction restraining the defendant
by himself, his servants, agents, representatives,
etc. an all other persons on his behalf from passing
off, his services as those of the plaintiff herein by
using similar/identical trading style/website and
publicity material etc., which are identical with
and/or deceptively similar to the plaintiff‟s trading
style/website etc.
(iii) For delivery upon Affidavit by the Defendant to
the Plaintiff all the offending/counterfeit, labels,
brochures, hand bills and other incriminating
material bearing the offending trading
style/website etc. of which “IITP forms principal
part and are in possession and/or control of the
defendant for destruction.
(iv) A decree for damages of Rs.20,01,000 (Rupees
Twenty Lakhs and one thousand only) be passed in
favour of the plaintiff and against the defendant.”
2. The plaintiff is a Director of a Private company, namely, IITP
Resource Development Pvt. Ltd. (hereinafter the „Company‟). The plaintiff
is, inter alia, engaged in the business of placement, staffing, training in
engineering and automation, learning resources, and corporate services.
3. The plaintiff states that he has by application No.1996467, applied
CS(OS) 1566/2011 Page 2 of 8
for registration of the mark „IITP‟ in Class 41 in relation to education,
training and placement services as also for registration of logo under the
Indian Copyright Act, 1957.
4. It is stated that defendant no.1 was also a Director of the Company.
However, he resigned from the Company on 04.04.2011. The plaintiff has
further asserted that alongwith his resignation letter, defendant no.1 also
executed a declaration-cum-undertaking, inter alia, undertaking not to use
the name and style of the Company or its Logo and particularly, the word
'IITP'. He further undertook to desist from carrying on identical or similar
business in direct competition with the Company within the vicinity of 1 km.
5. The plaintiff states that he came to know about the adoption and use
of the mark 'IITP' by defendant no.1 on 30.05.2011, when some of the
students of plaintiff‟s institute contacted the plaintiff and informed that the
said defendant had opened his own institute under the name and style 'IITP
Edutrain Pvt. Ltd.', offering the same services in the field of education and
placement services as were being offered by the Company. On further
investigation, the plaintiff found out that the visiting cards and prospectus of
defendant no.1‟s institute as well as the website adopted by defendant no.1
were also similar to that of the Company. The visiting card of defendant
CS(OS) 1566/2011 Page 3 of 8
no.1‟s institute and the prospectus mentions the Company's address as the
registered office address. Further, the plaintiff states that he requested
defendant no.1 to discontinue using the name 'IITP' for his Institute as the
same amounts to passing off, however, defendant no.1 has not ceased to do
so.
6. The plaintiff asserts that the use of the name 'IITP' by defendant no.1
in the name of his institute, visiting cards, prospectus and website is bound
to create confusion in the minds of general public and specifically among
the students, leading to serious damage to the business of the plaintiff.
7. By an order dated 22.06.2011, summons were issued in this suit and
an ex parte ad interim injunction was granted restraining defendant no.1
from using the trading style 'IITP Edutrain Pvt. Ltd.', website
www.indianiitp.com or any other publicity material or the mark 'IITP' in any
manner whatsoever as a trademark or part of the trading style.
8. By an order dated 17.08.2011, the matter was directed to be listed
before the Joint Registrar for admission/denial of the documents. The order
dated 07.02.2012 records that defendant no.1 conducted the
admission/denial in-person and admitted eight documents which were
CS(OS) 1566/2011 Page 4 of 8
marked as Ex.P-1 to Ex.P-8.
9. During the course of the proceedings, the plaintiff filed an application
being IA No.12980/2011, inter alia, alleging that despite an order of
injunction ,defendant no.1 was still running the institute under the name and
style of 'IITP Edutrain Pvt. Ltd.' and offering the same services in the field
of education and placement as were being offered by the institute being run
by the Company. Notice was issued on the said application but defendant
no.1 did not appear. Consequently, by an order dated 15.05.2012, bailable
warrants were directed to be issued to ensure the presence of defendant no.1.
Defendant no.1 appeared before the Court on 06.07.2012 pursuant to the
warrants and stated that he had resigned from M/s IITP Edutrain Pvt. Ltd. on
04.07.2011 and was not connected with the said Company and its day to day
functioning.
10. In the light of the aforesaid statement made by defendant no.1, the
plaintiff filed an amended plaint which was duly taken on record on
01.11.2012 and defendant nos.2 to 5 were also arrayed as parties to the
present suit.
11. On 30.07.2013, this Court directed that the interim order dated
CS(OS) 1566/2011 Page 5 of 8
22.06.2011 be also applicable on all the defendants as it was alleged that the
other defendants were also related to defendant no.1 and were continuing to
carry on the business under the trade name of 'IITP Edutrain Pvt. Ltd.' and
were thus, violating the directions issued by this Court. This Court also
noted that the defendants had not been appearing since several dates and,
therefore, directed that they be proceeded ex parte .
12. Thereafter, the plaintiff has led his evidence ex parte .
13. Defendant no.1 has filed a Written Statement. In his Written
Statement, defendant no.1 has taken a stand that defendant no.1 had
acquired the business of industrial automation which was being run by one
Mr Dinesh Kaul under the name and style of 'ITTP- Placement' which was a
Division of Indian Institute of Trained Professionals. It is further claimed by
defendant no.1 that after the acquisition of the said business, defendant no.1
registered several domain names such as www.iitpplacement.com and
www.iitpinfo.com . According to the defendant No.1 , the above-mentioned
business was being run by him. He leased the premises belonging to the
plaintiff on 23.05.2008 for the purposes of the said business. Subsequently,
the Company was incorporated to carry on the business but defendant no.1
did not transfer any assets or the trade/domain names in favour of the
CS(OS) 1566/2011 Page 6 of 8
Company.
14. Defendant further admitted his resignation from the Company and
also the execution of the 'declaration-cum-undertaking' dated 04.04.2011.
However, defendant no.1 contends that execution of the undertaking was not
of his free will and he had been coerced into signing the said declaration.
15. As stated earlier, defendant no.1 stopped appearing in the present suit
and the defendants were also proceeded ex parte . In the circumstances,
there is no dispute that the declaration-cum-undertaking dated 04.04.2011
had been executed. It was for defendant no.1 to establish that the said
declaration-cum-undertaking was invalid or that the plaintiff and/or his son
had exerted undue influence upon the defendant. Defendant No.1 has failed
to do so. In the circumstances, it is apparent that defendant no.1 would not
have any right to use the trade name/trademark 'IITP' or any other name
incorporating the aforesaid name. The other defendants also cannot claim
any right to use the trademark/trade name 'IITP'.
16. Although, the plaintiff has claimed that he has suffered losses. The
same have not been established. The plaintiff has not produced any evidence
as to the extent of damage or loss suffered and, therefore, although, the
CS(OS) 1566/2011 Page 7 of 8
plaintiff is entitled to a decree of permanent injunction restraining the
defendants from using the trade name/trademark 'IITP' and or domain names
incorporating the word 'IITP', the plaintiff is not entitled for a decree of
damages as prayed for.
17. Accordingly, the present suit is decreed in terms of prayer nos.(i), (ii)
& (iii) as quoted above. The pending applications stand disposed of.
18. The decree sheet be drawn up.
VIBHU BAKHRU, J
JULY 20, 2016
MK
CS(OS) 1566/2011 Page 8 of 8