5 October, 2016
In today’s competitive world, it not enough to merely secure registration of a trade mark, but it is an indispensable responsibility of a trade mark owner to be vigilant against the misuse, infringement or passing off of the trade mark. The duty falls upon the proprietor to invoke legal machinery either under statutory remedies or under Common law, as the case may be.
In Delhi Public School Society v. DPS World Foundation and Anr.,[1] the Delhi Public School Society (referred as ‘the Plaintiff’), took one such step to prohibit the usage of its IP by DPS World Foundation (referred as ‘the Defendant’). The Plaintiff is a Society, registered in the year 1948-1949, which first adopted the crest device featuring a torch held by a hand and consisted of the slogan “SERVICE BEFORE SELF” on the top and wordings “DELHI PUBLIC SCHOOL” at the bottom. The schools established by the Applicant under the name “Delhi Public School”, are known by the acronym of ‘DPS’. The Plaintiff is also the registered proprietor of the trademark “Delhi Public School” in several classes 16, 35, 36, 42 as well as of the trademark “DPS” in several classes but not in class 41 and the registration of the aforesaid crest logo of the school. Later, the Society changed its name to ‘Delhi Public School Society’, in the year 1962. During the period of 1996-1997, Plaintiff adopted another Crest device featuring a torch appearing against an open book, having a vine of leaves by each of its sides, and consisted of the slogan “SERVICE BEFORE SELF” on the top and wordings “DELHI PUBLIC SCHOOL” at the bottom.
For a period between 1994-2004, the Defendant No. 2 served as the President of Plaintiff. In July, 2015, Plaintiff learned that Defendant No. 1, whose chairperson was spouse of Defendant No. 2 is the founding member of the organisation “DPS World Foundation”. The Defendant had adopted “DPS” as a part of their trade name and the crest device featuring a torch appearing against an open book, having a vine of leaves by each of its sides, and consisted of the slogan “STRIVING TOWARDS PERFECTION” on the top and wordings “DPS WORLD FOUNDATION”, “A DIPSITES KNOWLEDGE OUNDATION” at the bottom.
Aggrieved by the use of said trade marks, the Plaintiff brought about an action for permanent injunction against the Defendants on account of infringement of trade mark, copyrights, passing off as well as other incidental and ancillary reliefs in addition to the application for interim relief.
Issues
Whether substantial goodwill and exclusive rights of the Plaintiff subsist in ‘DPS’ and ‘Delhi Public School’ and that the said marks have always been associated with the Plaintiff and none other, by the General Public, or ‘DPS’ is a mere acronym over which no monopolistic rights can be granted to one party as its definition may vary as per usage, as justification of Defendants for using “DPS” as an acronym for ‘Dipsites’.
Whether, the Defendant’s contention that “Delhi Public School” is neither a derived word nor an invented word and is generic name, correct.
Whether the usage of the crest device by the defendant constitutes as infringement of Plaintiff’s right in their distinctive crest devices. Whether the Plaintiffs are entitled to relief under the actions of passing off and infringement of Copyright against the Defendant’s use of Crest devices.
Important observations of the Court
The Court recognised, the Plaintiff’s exclusive rights in “DPS” by virtue of registration in various classes, holding that the mark/name “DPS” owes its origin to Delhi Public School and not to ‘Dipsites’. Further, in a case of infringement under the provisions of Section 29 of the Trademarks Act, once the Plaintiff has proved that the impugned mark is identical or deceptively similar to the registered mark, then degree of similarity of goods and/or services becomes irrelevant.
Therefore, the use of “DPS” by the Defendants was found to be an infringement of Plaintiff’s exclusive rights in their registered trade mark “DPS” and temporary injunction was granted in this regard, till the pendency of the suit. With regard to the question of whether “Delhi Public School” is a generic name, the Court held that it sufficed that the mark “Delhi Public School”, is registered as a trademark in different classes since in the year 2007, in addition to the fact that the mark/name “Delhi Public School” was coined 65 years back.
Regarding the infringement of first crest logo of the Plaintiff, the Court observed that there is no similarity between the registered crest logo of the Plaintiff and the crest logo used by the Defendants. Secondly, another crest logo with which the identity of Defendants’ crest logo was claimed, since the Plaintiff failed to adduce evidence of use of the said mark beyond the year 2008 in India, the Court could not exercise its discretion in the favour of Plaintiff.
Conclusion
The Court in this case extended the scope of infringement action by holding that, even if a trademark is not registered in a certain class but has secured registration in other classes and has gained substantial goodwill through use, the Defendant’s action will be considered as infringement even in respect of class for which the Plaintiff’s mark is not registered.
[1] 18 April, 2016, IA 2920/2016
For further information, please contact:
Ritika Agarwal, LexOrbis
mail@lexorbis.com
