Delhi High Court: Sanjeev Narula, J. while addressing the matter of trademark infringement, opined that,
“Besides, considering that parties are in the field of education, deliberate adoption by the Defendants of impugned trade marks and logo that are deceptively similar and/or identical to the Plaintiff’s registered trade marks/names and logos can cause confusion in the minds of the parents, prospective students and staff desirous of securing admission or availing services, seeing the advertisements, promotional material, admission forms, boards/ hoardings, etc.”
In the present matter, plaintiff filed the accompanying suit inter-alia for infringement of copyright and registered trademark ‘Delhi Public School’ and ‘DPS’ and crest logo
The above-stated logo was adopted in the year 1948 and later in 1996-97, Plaintiff-Society conceived and adopted another crest logo comprising of a torch on a book along with the school motto written inside a shield deice surrounded by creepers and the words ‘Delhi Public School’ written at the bottom with other distinctive artistic features comprised.
It was claimed that both the crests were original artistic works and the plaintiff was the first owner of the same under the provisions of the Copyright Act.
Plaintiff society received information that Defendant 1Delhi Public International School had been running a school under the name and style – ‘Delhi Public International School’ and ‘DPIS’ using the logo.
Marks adopted by defendant 1 were deceptively similar to Plaintiff’s well known registered trademarks.
Analysis, Law and Decision
High Court in view of the facts and circumstances of the case, stated that it was evident that the defendants did not have any registration of the impugned marks. Defendant 1 was nevertheless claiming right over the mark as a “permitted user”.
Further, it was pertinent to note that Prima facie, adoption and registration of the impugned marks by Mr Pal does not appear to be bona fide and instead appears to be in violation of the decree passed against him. Be that as it may, the Plaintiff-Society has already taken steps for enforcement of the said decree against the said Defendants. The said execution is, however, against parties to the said decree. In the present suit, the Plaintiff-Society is seeking injunction against the purported “permitted users” who claim their right through Mr Pal.
Hence, Bench found a prima facie case in favour of the plaintiff, since they were a prior adopter, user and owner since 1948, and the prior registered proprietor of well-known trademarks ‘Delhi Public School’ and ‘DPS’.
Adding to the above analysis, Court added that the use of the impugned mark – ‘Delhi Public International School’/’DPS’ and the impugned logo, was deceptively similar to the mark of the plaintiff-society and was in breach/violation of the decree passed by this Court against Mr Pal.
Hence, adoption of the impugned marks was prima facie invalid.
Mr Mittal demonstrated that the defendant-school intentionally misrepresented itself to be in association with the plaintiff-society due to the prominence of ‘Delhi Public School’/ ‘DPS’ and the crest logo can be perceived by the general public as indicative of the source of ‘Delhi Public School’ being the plaintiff society.
Therefore, Court granted an interim injunction in favour of the plaintiff-society.
Lastly, the Defendants, their trustees, directors, managing committee members, office bearers, employees, delegates, representatives, assigns, associates, agents or anybody acting on their behalf, have been restrained from:
(a) adopting, using and/ or dealing in any manner with the registered trademark of the Plaintiff- ‘Delhi Public School’ and ‘DPS’ and logo or any other trademark that is identical or deceptively similar to the Plaintiff’s aforenoted trademark amounting to infringement of the Plaintiff’s said trade marks;
(b) offering for sale, adopting, using and/or dealing in any manner with the registered trade mark of the Plaintiff- ‘Delhi Public School’ and ‘DPS’ and logo of the Plaintiff or any other trade mark identical or deceptively similar to the Plaintiff’s trade mark amounting to passing off the Plaintiff’s said trademark and further restraining the Defendants from representing in any manner that they are connected with the plaintiff; and
(c) using or dealing in any manner with the impugned trademark/ names ‘Delhi Public International School’ and ‘DPIS’ and logo
Matter to be re-notified on 9-09-2021.[Delhi Public School Society v. Delhi Public International School, CS (COMM) 322 of 2021, decided on 17-08-2021]
Advocates before the Court:
For the Plaintiff: Puneet Mittal, Senior Advocate with Rupendra Pratap Singh and Vasudha Bajaj, Advocates.
For the Defendants: Rajat Malhotra and Vivek Kumar, Advocates for D-1 & D-5. Rupin Bahl and Karan Bajaj, Advocates for D-3 & D-4