1 October 2021
The Delhi High Court recently granted temporary relief to the plaintiff in a trademark infringement case of Delhi Public School Society v. Delhi Public International School. The plaintiff filed this suit, amongst many others, to protect its trademarked property, namely ‘Delhi Public School’, ‘DPS’ and the crest device/logo(s), as depicted below.
The plaintiff adopted the left logo in 1948 which depicts a hand holding a torch, the school motto ‘Service Before Self’ and the name of the school ‘Delhi Public School’ within a shield. Around 1996-97 the plaintiff adopted the right logo, comprising of a torch on a book, the school motto written inside a shield device, surrounded by creepers with the name of the school written at the bottom, as depicted below. These logos were claimed to be original artistic works. According to the plaintiff, due to continuous usage of the school’s name and acronym over decades, the marks had become a source of the plaintiff’s goodwill and reputation.
In relation to the present case, it is important to note that the plaintiff had also filed another suit which was considered as “the fountainhead of the infringement complained of in the present suit” by the court. In an earlier civil suit titled Delhi Public School Society v. Delhi Public School Manesar & Ors., the Delhi High Court granted a permanent relief to the plaintiff in 2016to protect the trademarked properties of the plaintiff. The court restrained the defendants and their representatives from using, advertising, reproducing, or exploiting the plaintiff’s well-known intellectual property.
The plaintiff had 12 ‘core schools’ and more than 200 ‘affiliated schools’ all over India, of these 2 were in Nagpur, Maharashtra. In May 2021, the plaintiff came to know that the primary defendant was running a school named ‘Delhi Public International School’ and using the acronym ‘DPIS’ along with the logo depicted below.
Due to the unmissable similarities between the marks, the plaintiff was convinced that the defendant was intentionally deceiving and misleading the parents, students and public at large by pretending to be associated with the plaintiff. One of the representatives of the defendant also made a false claim by stating that, “Initially, DPIS was under the DPS Society but now they have separated and there are over 200 branches of DPIS all over India”, and that the curriculum “is as per the DPS Society and we strictly follow all the protocols by the society. Banners are also approved by them. Teachers are trained in Delhi under the society. Even the uniform is as per the society.” They further stated that “There are three branches of DPS in Nagpur. This is the first branch of DPIS in Nagpur.”
The plaintiff issued a cease-and-desist notice to which the defendants replied that they had obtained the right to use the marks from one Mr. Deepak Kumar Pal (who was a defendant in the 2016 suit), who claimed to be the registered owner of the impugned marks.
The defendants requested time to file a reply to the suit, but the plaintiff stressed on obtaining an urgent injunction due to the reason that the defendant school was conducting admissions and a lack of restraint may have misled and deceived parents and students.
Hence, the defendants stated that they had applied for registration of the mark ‘Delhi Public International School’ at the Trademark Registry, which was pending. They added that the combination of words is different from that of the plaintiffs. The defendants also objected to the territorial jurisdiction of the court. After thorough consideration, the court held that the defendants did not have any valid registration of the impugned marks. The permitted right to use the marks was invalid since Mr. Pal was already permanently injuncted from using the marks. The matter was decided in favour of the plaintiff for a temporary injunction since they were the prior adopter, user and owner of the marks. Court admitted that deceptive use of marks can confuse the parents, prospective students and staff to associate the defendants with the plaintiff. The final verdict is awaited as the proceedings are still on.
The interesting factor, in this case, is the repeat infringer’s defiance of the court’s order against him. The infringer deliberately trapped defendants by misrepresenting himself as the owner of the impugned marks. While we wait for the court’s final decision, brands must fact-check and verify the credibility of ‘authorized persons’ before obtaining a license to use intellectual property as many middlemen seek to benefit from the reputation and goodwill of established names.
Manisha Singh discusses the decision of the Delhi High Court in the trademark infringement case of Delhi Public School Society v. Delhi Public International School.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
