‘Lost all rights on expiry of Franchise Agreement’, Delhi HC restrains former franchise holder, Sripati Bhushan Srichandan from using mark ‘BACHPAN’ in relation to play school services

Delhi High Court: Plaintiff, SK Educations (P) Ltd. alleged infringement, by defendants, of plaintiff’s registered trade marks as well as passing off, by defendants, of the services provided by it as the services of plaintiff. C. Hari Shankar, J., restrained defendants, as well as all others acting on their behalf from using the mark ‘BACHPAN’ either as a word mark or as a logo which was identical or deceptively similar to any of the device marks registered in favour of plaintiff, in the context of play school services or any other services which might be allied or cognate therewith.

Background

Plaintiff had, since 2004, been providing play school services through a chain of approximately 1,000 play schools located in almost all states of India under the mark . Registration for the word mark ’BACHPAN’ was first obtained by plaintiff in Class 16 in 2003 and in Class 41 in 2008. Apart from the registration of the word mark BACHPAN, plaintiff was also the holder of the device mark registrations ’BACHPAN’, , , , . These marks by continuous use had garnered renown and repute and had become source identifiers for plaintiff.

Plaintiff had entered into a Franchise Agreement with Defendant 1, Sripati Bhushan Srichandan whereby defendants were permitted to run play schools using the aforesaid mark of plaintiff. The franchise was, however, subject to payment of license fees. The Franchise Agreement expired on 31-01-2021 by efflux of time and, as there was default on the part of Defendant 1 in paying the license fees, the Franchise Agreement was not renewed. Defendants, thereby, lost all right to use plaintiff’s registered trade marks. Plaintiff’s grievance was that, even after expiry of the Franchise Agreement, defendants continued to use plaintiff’s registered trade marks and, thereby, to pass themselves off as franchisees off plaintiff.

Thus, plaintiff instituted the present suit against defendants, seeking a decree of permanent injunction, restraining defendants and all others acting on their behalf, from using the marks registered in favour of plaintiff or any other deceptively similar mark for running play schools or providing any other allied or cognate service.

Analysis, Law, and Decision

The Court opined that the present case makes out a prima facie case both of infringement, by defendants, of the registered trade marks of plaintiff as well as an attempt to pass off the services provided by defendants as those of plaintiff despite defendants having lost all right to do so consequent on the expiry of the Franchise Agreement between plaintiff and Defendant 1 on 31-01-2021 and its non-renewal thereafter.

The Court also opined that by use, by defendants, of plaintiff’s mark, for running play schools, holding itself out to be a franchisee of plaintiff, clearly resulted in likelihood of confusion and association, as envisaged by Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999. The Court relied on Laxmikant V. Patel v. Chetanbhai Shah, 2002 3 SCC 65 and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, wherein the Supreme Court obligated the Court to ensure that continued infringement and passing off was discontinued by passing injunctive orders.

Thus, the Court restrained defendants, as well as all others acting on their behalf from using the mark ‘BACHPAN’ either as a word mark or as a logo which was identical or deceptively similar to any of the device marks registered in favour of plaintiff, in the context of play school services or any other services which might be allied or cognate therewith. The Court directed defendants to ensure that reference to the mark ‘BACHPAN’, either as a word mark or as a device mark, was removed, forthwith, from all physical and virtual sites on which the mark might be reflected in association with defendants.

[SK Educations (P) Ltd. v. Sripati Bhushan Srichandan, 2023 SCC OnLine Del 7471, Order dated 17-11-2023]

Advocates who appeared in this case :

For the Plaintiff: Rajshekhar Rao, Senior Advocate; Aarzoo Aneja, Udian Sharma, Vanshita Gupta, Meherunissa Jaitley, Dushyant Kaul, Advocates

Buy Trade Marks Act, 1999   HERE