The said crest was registered under different classes under the Trade
Marks Rules, 2002 including Class 41, relating to education in 2007.
Plaintiff established its first school in the year 1949 under the name and
style of ‘Delhi Public School’. The acronym of the same is ‘DPS’. In the
year 1962 the name of the Society was changed to Delhi Public School
Society. In 1996-1997, Plaintiff adopted another Crest for the school.
The same is reproduced herein below:
During, 1994-2004, Defendant No. 2 was president of Plaintiff. In July,
2015, Plaintiff came to know that Defendant No. 1, whose chairperson
was spouse of Defendant No. 2 is functioning under the trade name
“DPS World Foundation” by adopting identical trademark/name “DPS”
and a deceptively similar logo/crest mark. The same is reproduced
herein below:
Plaintiff served a show cause notice dated July 24, 2015 to the
Defendant No. 2 asking him as to why an action should not be taken
against him, inter alia, amongst others for having his clandestine
association in the creation of Defendant No. 1 and adoption of impugned
infringing trade marks, for setting up schools across India and giving
franchisee of such schools to other people, which was in contradiction to
the position then held by him as a life member of the Plaintiff.
Defendant No. 2 vide its reply dated August 21, 2015 admitted that he is
associated with Defendant No. 1.
As the Defendants were not refraining from using the mark ‘DPS’ and
the crest logo, the Plaintiff filed a suit for permanent injunction against
the Defendants seeking to restraing them from infringement of trade
mark, copyrights, passing off as well as other incidental and ancillary
reliefs. Along with the suit, the Plaintiff also filed an application for
interim relief. The present judgment is arrived after adjudicating on the
said application.
Plaintiff’s Case:
The first and second artistic Crest device was first created and
designed by an employee of the Plaintiff under a contract of service,
and which Crest is an original artistic work and the Plaintiff is the
first owner of the same under the provisions of the Copyright Act,
1957.
Use of the marks ‘DPS’ and ‘Delhi Public School’ is so extensive that
the said marks 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.
Defendants’ Case:
Similarly, the Delhi Public School Logo as set out under Class 35 &
36 reflects that the trademark is subject to the condition and
limitation that, “No right for Delhi Public School”.
Also, the Plaintiff’s trademark certificate over the Delhi Public School
Logo as set out under Class 41 i.e. Education, clearly and
categorically records that it is subject to the condition and limitation
of, “No right to Delhi Public School separately”. He states that this
assumes significance and leaves no manner of doubt that the
Plaintiff Society has no exclusive right to Delhi Public School
separately.
The Defendant No. 1’s name uses the word ‘DPS World School’ in
which the alphabet D stands for ‘Dipsites’. Plaintiff cannot by virtue
of registration of word DPS, an acronym for Delhi Public School
prevent any other organization or school from using such acronym.
For Example Doon Public School would be known as DPS too,
similarly there are several other schools whose acronym can stand
as DPS.
The last time, the Plaintiff has used the second crest logo was only
in the year 2008 and not thereafter.
Court’s Observations:
It is not disputed that the Plaintiff society has the registration of the
trademark “Delhi Public School” in several classes 16, 35, 36, 42 and
similarly in trademark/name “DPS” in several classes but not in class 41
and the registration of the crest logo of the school.
There is no dispute that the suit has been filed by the Plaintiff for
infringement of the trademark/name ‘DPS’. It is also not in dispute that
the Plaintiff has registration of trademark/name ‘DPS’ in class 16 for
paper, cardboard, photographs, stationary etc, Class 35 advertising,
business management, business administration, office functions, Class
36 insurance, financial affairs, monetary affairs, real estate affairs and in
Class 42 for food and drink, medical, industrial research and computer
programming and the trademark/name ‘Delhi Public School’ in Classes
16, 35 and 36. In order to constitute Infringement under the provisions
of Section 29 of the Trademarks Act, it would be necessary to show that
the impugned trademark is identical or deceptively similar to the
registered trademark and once the Plaintiff is able to establish that the
impugned mark is identical or deceptively similar to the registered mark,
then, it is irrelevant whether the Defendant No. 1 is using the impugned
mark in respect of the goods and services which are not similar in
nature. In the case in hand, even if the registration of the trademark
‘DPS’ is not in Class 41, the Plaintiff having registration in other classes
would be entitled to protection. It is registered in respect of goods such
as printed matter, goods made from paper and card board, stationery,
adhesives for stationery instructional and teaching material etc. as also
in respect of food, drink, computer programming, scientific and industrial
research. The mark/name of the Defendant No. 1 ‘DPS World
Foundation’ or ‘DPS World School’, would surely, cause infringement of
the registered trademark ‘DPS’ of the Plaintiff.
The spouse of the Defendant No. 2, was herself not a ‘Dipsite’. That
apart, the Institutional membership of the Defendant No. 1 is also open
to a Trust/Society intending to set up a DPS World School in
India/abroad, with no earlier connection with Delhi Public School. So, to
connect Defendant No. 1 with Dipsites Association is not appealing. The
aims and objectives of the Association includes, to aid and assist the
Managing Committees of the schools in all matters, which are the
schools under the Plaintiff. The aims and objective nowhere stipulates,
establishment of schools.
That apart, there are several orders of this Court, wherein, this Court
had held “DPS” enjoyed goodwill and reputation in the field of school
education, is a relevant factor for determining the prima facie case in
favour of the Plaintiff.
The submission that the Plaintiff has given up the exclusive right on the
mark Delhi Public School and its device Torch (Mashaal), is concerned, it
is the case of the Plaintiff that the trademark certificate over the logo in
first crest, as set out in class 16 reflects that the trademark is subject to
the condition and limitation that the Plaintiff’s society has “no exclusive
right over the device of Torch separately and Delhi Public School”. It is
the stand of the Plaintiff that the Plaintiff has not agreed to give up
exclusive rights. Similar is the case with respect to the logo set out
under class 35 and 36 and insofar as the logo set out under class 41 i.e.
the education which records that it is subject to the condition and
limitation of “no right to Delhi Public School separately”, the said
condition is with respect to the first crest and not in respect to word
mark ‘Delhi Public School’.
There is no dispute that the Plaintiff has registration in the first crest
logo. It is the case of the Plaintiff that the crest logo of Defendants
infringes the first crest logo and also the Plaintiff’s copyright with regard
to identical second crest logo.
Apparently, the first crest logo and Defendant’s logo do not appear to be
identical or deceptively similar for the Plaintiff to contend infringement of
its registered crest logo. The only common feature, is the Torch
(Mashaal). The crest logo of the Defendants is not identical or
deceptively similar so as to infringe the registered crest logo of the
Plaintiff.
The Defendant No. 1, in its reply, has taken a stand that the Plaintiff has
not named the person, who has designed the same. It is stated, no case
can be made out from infringement or passing off unless the name of
the person is disclosed or ascertained in the pleadings. It is also stated
that the idea and preliminary drawings were conceived by the Defendant
No. 2 and the crest logo was drawn by an Art Teacher from Delhi Public
School, Vasant Kunj, in her private capacity.
In rejoinder, Plaintiff stated that Defendant No. 2 has never used the
second crest logo in his personal capacity, but used the same in official
capacity as an office bearer of the Plaintiff.
Noting the averments made by the parties herein, the issues i.e. in what
capacity, the Defendant No. 2 gave instructions to the Art teacher; what
is the consequence of an employee designing a work in which copyright
exists; the usage of the logo by the Defendant No. 2 as President of the
Plaintiff; the usage of the logo by the Plaintiff after the defendant No. 2
ceased to be the President of the Plaintiff etc. are required to be
ascertained, which is possible by way of evidence to be adduced during
the trial.
The plea of Defendants that the last time, the Plaintiff has used the
second crest logo was only in the year 2008 and not thereafter merits
consideration. Even though, as per the Plaintiff’s document, there is a
letter dated June 8, 2015 of the Delhi Private School in Dubai, to
contend that the crest logo is still being used, suffice to state, the school
concerned, was Delhi Private School in Dubai. There is no explanation,
nor any document has been shown by the Plaintiff to show that, even
after 2008 till recently, the crest logo has been in continuous use in
India. In the absence of any evidence this Court, is of the view that, the
discretion cannot be exercised in favour of the Plaintiff on the aspect of
crest logo while considering the present application.
The Defendants were restrained from using the mark ‘DPS’ till the
pendency of the suit.
Note: The order is only on the application for interim relief during the
pendency of the suit. The order is currently under challenge before the
Division Bench of the Hon’ble High Court of Delhi.