The case involves a trademark dispute between two educational institutions in Tamil Nadu regarding the use of the name “Abacus Montessori.” The petitioner, Abacus Montessori School, based in Chennai, filed a petition seeking to expunge the trademark registration of the respondent, Abacus International Montessori School, Tiruppur, on the grounds of prior use, deceptive similarity, and the likelihood of confusion among the public. The central issue before the court was whether the respondent’s trademark, despite including the word “International,” constituted an infringement of the petitioner’s established mark and whether it amounted to passing off.
The petitioner, Abacus Montessori School, was founded in June 1987 and has since been dedicated to propagating the Montessori method of teaching. Initially catering to pre-primary students, the institution gradually expanded its curriculum to include primary and higher secondary education. Over the years, the school has invested heavily in advertising and promotional activities to establish itself as a premier Montessori institution. The petitioner filed an application for the registration of the trademark “Abacus Montessori School (label)” under Class 41 (Educational Services) in 2012, which remains pending before the Trade Marks Registry.
The dispute began when the petitioner discovered that the respondent, Abacus International Montessori School, was using an identical trademark for its school, located in Tiruppur, Tamil Nadu. In 2003, the petitioner issued a cease-and-desist notice to the respondent, requesting that they stop using the “Abacus” mark. The respondent, however, continued operations, arguing that they were merely a primary school with a limited geographical presence. The petitioner did not pursue the matter further at that time.
Years later, in 2015, the petitioner learned that the respondent had registered the mark “Abacus International Montessori School” under Class 41. This prompted the petitioner to file the present rectification petition before the Intellectual Property Appellate Board (IPAB), which was later transferred to the High Court of Madras following the dissolution of the IPAB. The petitioner contended that the respondent’s registration was an infringement of its prior rights and that the addition of the word “International” did not sufficiently distinguish the two marks.
The respondent defended the petition on multiple grounds. Firstly, they argued that the terms “Abacus” and “Montessori” were generic and widely used in the field of education, particularly in schools following the Montessori method. The respondent contended that neither term could be monopolised by any one institution. Secondly, they asserted that their school was geographically distinct, operating solely in Tiruppur, whereas the petitioner’s school was based in Chennai. Since there was no direct overlap in their areas of operation, the respondent argued that there was no likelihood of confusion. Lastly, they claimed that the petitioner had acquiesced to their use of the mark, given that they had been in operation since 2003, and the petitioner had taken no legal action for over a decade.
The court examined three key issues: (i) whether the respondent’s use of the mark constituted trademark infringement and passing off; (ii) whether the geographical separation of the two institutions negated the claim of confusion; and (iii) whether the petitioner could claim exclusive rights over the name “Abacus”.
On the issue of trademark infringement and passing off, the court ruled in favour of the petitioner. It held that the marks used by both parties were nearly identical, with the only distinction being the inclusion of the word “International” in the respondent’s name. The court found that this minor modification was insufficient to eliminate the likelihood of confusion among the public. Given that both institutions provided similar educational services under the Montessori method, the potential for deception was significant.
The court further noted that the respondent’s decision to adopt the name “Abacus Montessori School” in 2003, followed by the later addition of “International”, suggested an intent to capitalise on the petitioner’s established goodwill and reputation. The fact that the respondent had initially advertised itself under the exact same name as the petitioner reinforced the inference of bad faith. The court observed that when two businesses operate in the same sector and use identical or deceptively similar names, it is likely that members of the public – especially parents seeking Montessori education for their children – might mistakenly associate one institution with the other.
On the issue of geographical separation, the court dismissed the respondent’s argument that their operations in Tiruppur prevented any confusion. The court emphasised that in the education sector, institutions frequently expand to multiple locations, and students often seek admission to institutions outside their immediate locality. Additionally, given the widespread availability of information online, the risk of confusion was not confined to a specific geographic area. The court referenced similar cases, including Satyam Infoway Ltd vs Siffynet Solutions (P) Ltd and Syed Mohideen vs P. Sulochana Bai, where the principle of likelihood of confusion was upheld despite geographical distinctions between the competing entities.
Regarding the generic nature of the terms “Abacus” and “Montessori”, the court acknowledged that these words were commonly used in the education industry. However, it clarified that the petitioner was not seeking exclusive rights over the term “Montessori” or even “Abacus” in isolation but rather over the combined label “Abacus Montessori School”, which had acquired distinctiveness through years of continuous use. The court rejected the respondent’s argument that the petitioner had acquiesced to their use of the mark, noting that mere inaction for a period of time does not automatically constitute legal acquiescence, particularly when no explicit consent was given.
The court also took into account the financial and reputational investments made by the petitioner over the years. The petitioner had provided extensive evidence of marketing expenditures and media coverage dating back to the early 2000s, demonstrating its efforts to establish brand recognition. The court found that the respondent’s actions constituted an attempt to pass off its institution as being affiliated with or endorsed by the petitioner, thereby unlawfully benefiting from the goodwill associated with the name “Abacus Montessori School”.
In its final ruling, the court held that the respondent’s trademark registration (No. 1586733 under Class 41) was wrongly entered into the Trade Marks Register and was liable to be expunged. It directed the Registrar of Trade Marks to remove the impugned registration and ruled that the respondent could not continue using the mark “Abacus International Montessori School” in a manner that created an association with the petitioner’s school. The court, however, did not impose any financial penalties, as the petitioner had primarily sought injunctive relief and rectification of the register rather than damages.
