.* IN THE HIGH COURT OF DELHI AT NEW DELHI. % Judgment pronounced on: 11 th May, I.A. No /2014 in CS (OS) No.

Transcription

1 .* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment pronounced on: 11 th May, I.A. No /2014 in CS (OS) No.1980/2014 SRF FOUNDATION & ANR Through... Plaintiffs Ms.Anuradha Salhotra, Adv. with Mr.Sumit Wadhwa, Adv. versus RAM EDUCATION TRUST Through... Defendant Mr.N.K.Anand, Adv. with Ms.Vaishali Mittal & Mr.Siddhant Chamola, Advs. CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J. 1. By this order, I propose to decide the application being I.A. No.12216/2014 under Order XXXIX Rule 1 and 2 CPC filed by plaintiffs seeking interim injunction against the defendant restraining it from using mark/name SHRI RAM in respect of running the schools. The plaintiffs have filed a suit for permanent injunction, passing off, account of profits under the Trade Marks Act, 1999 (hereinafter referred to as the Act ). 2. The brief facts of the case as per plaint are : i) The plaintiff No.1 is a registered non-profit society engaged in several social and community development initiatives including running of schools under the name of The Shri CS (OS) No.1980/2014 Page 1 of 62

2 ii) iii) Ram School. The plaintiffs claim that they are the prior user of the mark/name SHRI RAM in respect of the schools as far as the parties in suit are concerned. The plaintiff No.2 is engaged in setting up schools in India and abroad. The plaintiff No.1 established The SHRI RAM SCHOOL in the year 1988 in Vasant Vihar, New Delhi. It is the case of the plaintiffs that the school has been designed to provide each student a diverse education in a safe and supportive environment that promotes sound values, self-discipline, motivation and excellence in learning. From a modest beginning in five tents with sixty four eager children, the school has grown to strength in excess of seven hundred children and a hundred and eight staff. THE SHRI RAM SCHOOL Moulsari, Gurgaon is the senior school of THE SHRI RAM SCHOOL Vasant Vihar. THE SHRI RAM SCHOOL Aravali, Gurgaon was established in the year 2000 in DLF City Phase IV, Gurgaon. It is alleged by the plaintiffs that in order to fulfil its objective to meet the shortage of good schools in India, plaintiff No.2 entered into an agreement with Educomp Infrastructure and School Management (EISML), a subsidiary of Educomp Solutions to set up five schools over the next 2-3 years under the name THE SHRIRAM MILLENIUM SCHOOL which would imbibe the core ideals enshrined in the pedagogical philosophy of plaintiff No.1 s THE SHRI RAM SCHOOLS. The overall guidelines and framework of the CS (OS) No.1980/2014 Page 2 of 62

3 curriculum, courses, contents, teaching, methodology, academic policies and pedagogic strategies of these schools were to be the same as the plaintiff No.1 s schools under the name THE SHRI RAM SCHOOLS. iv) Under the Agreement with EISML, the plaintiff No.2 opened THE SHRIRAM MILLENIUM SCHOOL, Noida in April, 2010 and THE SHRIRAM MILLENIUM SCHOOL, Faridabad in April, v) In the year 2011 the plaintiff No.2 jointly with the Haryana Police Department set up THE SHRI RAM POLICE PUBLIC SCHOOL in Bhondsi, Haryana for the children of Police Personal and the General Public. The plaintiffs at present are associated with schools at six different locations. vi) It is alleged that the plaintiffs schools under the name SHRI RAM have carved out a unique space as institutions of excellence and are well known for their value based innovative caring and child-centered approach to educate young children and the institutions are popularly known as THE SHRI RAM SCHOOLS. In the year 2002, THE SHRI RAM SCHOOL, Vasant Vihar was ranked number 04 amongst all schools of Delhi by Outlook India. The said school was rated the Best Day school in the country by an independent 15 city survey carried out by Education World Magazine in the years 2008, 2009 and In 2010, THE SHRI RAM SCHOOLS in Delhi and Gurgaon were recognized as the Number One schools in Gurgaon and CS (OS) No.1980/2014 Page 3 of 62

4 Southwest Delhi by The Hindustan Times. In 2011, THE SHRI RAM SCHOOL, Aravali was ranked as the Number One school in India by the Delhi based Center for Forecasting and Research Private Limited and the Education World Magazine. Further THE SHRI RAM SCHOOL, Vasant Vihar was ranked 6 th in the list of Top Schools in India for the year 2013 in the ranking released by IndiaRanker.com. vii) The plaintiffs use of the word SHRI RAM in relation to schools since the year 1988 i.e. for almost 25 years, the same has become exclusively identified with the schools of the plaintiffs and/or the core values and educational philosophy of the plaintiffs said schools. An application for registration of the trademark THE SHRI RAM SCHOOL was filed by the plaintiffs on 6 th June, 2008 under No in Class 41 which is pending with the Registrar, Trade Marks. viii) The top rankings by independent surveys, quality education and national and international awards has garnered extensive reputation and goodwill to the plaintiffs. The plaintiffs have incurred substantial expenditure in setting up its Shri Ram Schools in the year ix) In or around June 2011, the defendant opened the SHRI RAM GLOBAL PRE SCHOOL at the address Trinity House, 4106, Ashoka Marg, Near DLF Galleria, DLF Phase IV, Gurgaon, Haryana The said school was opened right next to the plaintiff No.1 s The Shri Ram School, Aravali CS (OS) No.1980/2014 Page 4 of 62

5 at Hamilton Court Complex, DLF Phase IV, DLF City, Gurgaon Immediately on the opening of the said school and the proximity of the two schools, the principal of the plaintiff s school started getting a number of enquiries from parents including as to whether the School is a part of The Shri Ram School or admission in the SHRI RAM GLOBAL PRE-SCHOOL guaranteed an automatic admission to THE SHRI RAM SCHOOL. As the SHRI RAM GLOBAL PRE-SCHOOL had been opened by a trust founded by the brother of the plaintiff s, Mr. Arun Bharat Ram, Chairman of the Board of Governors of plaintiff No.1 wrote a letter to his brother i.e. Trustee of the defendant apprising him of the substantial reputation of The Shri Ram School run by the plaintiffs. x) Instead of giving up the use of the trademark SHRI RAM the defendant expanded its operations under the trademark SHRI RAM and opened the SHRI RAM CENTENNIAL SCHOOL, Dehradun at Knowledge Village Sherpur, Shimla Road, Dehradun , SHRI RAM CENTENNIAL SCHOOL, AGRA at Village Sikandarpur, Dayalbagh, Agra, UP , SHRI RAM CENTENNIAL SCHOOL, INDORE at 90 C, Bombay Hospital Service Road, Behind Bombay Hospital, Vasant Vihar Colony, Vijay Nagar, Indore, Madhya Pradesh The defendant is also proposing to open SHRI RAM GLOBAL PRIMARY WING in Sector 45, CS (OS) No.1980/2014 Page 5 of 62

6 Gurgaon barely 240 meters from the head office of the said SRF Limited. The plaintiffs accordingly put up notices in Indore, Gurgaon and Dehradun informing the general public that THE SHRI RAM SCHOOL had no relation or connection with these schools. xi) The plaintiff No.1 received a letter dated 17 th February, 2014 from M/s. Factum Lawyers & Co. on behalf of the defendant claiming to "hold unmatched goodwill; reputation and standing in the market through its educational institutions, schools running under the brand name of SHRI RAM GLOBAL SCHOOL/SHRI RAM CENTENNIAL SCHOOLS" even though these schools were opened nearly two decades after the establishment of THE SHRI RAM SCHOOL in 1988 and none of the schools of the defendant have been able to reach the recognition, milestone or ranking, as achieved by the schools of the plaintiff. The legal notice called upon the plaintiff No.1 to withdraw the advertisements and to tender a public apology for releasing these advertisements in two leading newspapers of the metros wherever such advertisements have been released failing which appropriate legal action would be taken. xii) On 2 nd May, 2014 the plaintiff No.1 received a copy of the order dated 28 th April, 2014 of The Competition Commission of India rejecting a complaint filed by the defendant against CS (OS) No.1980/2014 Page 6 of 62

7 the plaintiff No.1 inter alia alleging that the plaintiff No.2 had intentionally placed the hoardings. 3. Counsel for the plaintiffs submits that the plaintiffs have no objection if the said mark/name SHRI RAM is used by the defendant in relation to any other different activities or services except in relation to the services of school on the reason that as far as running of school bearing the mark SHRI RAM is concerned, they are prior user and have acquire unique goodwill, name and reputation and it would create confusion and deception if allowed to the defendant who was aware about the same on the date of adoption and it is done by the defendant in order to make misrepresentation. 4. The plaintiffs have filed large number of documents in support thereof. The details of few documents are mentioned below:- (i) Document evidencing the extensive expenditure incurred by the plaintiffs in establishing its Shri Ram School in (ii) Year 2000 School Book of THE SHRI RAM SCHOOL, Vasant Vihar showing that the first batch of students passed out in the year 2000 who joined in the year 1988 e.g. PALLLAVI SARAN, head girl joined the school in the year (iii) Print out from ranking the plaintiffs SHRI RAM SCHOOL, VASANT VIHAR as the 4 th best school in India in the year (iv) Interview of Mrs. Manju Bharatram to Times of India dated 2 nd July, 2005 giving reasons for starting of THE SHRI RAM SCHOOL. CS (OS) No.1980/2014 Page 7 of 62

8 (v) Newspaper article from Times City dated 18 th May, 2006 showing that the plaintiffs The Shri Ram Schools had a 100 percent pass result. (vi) Print out from the web-site showing the result of the 2010 HT-C FORE SURVEY of South West Delhi s top Schools in which plaintiffs SHRI RAM SCHOOL, Vasant Vihar was ranked number 1. (vii) Print out from the web-site showing the result of the 2010 HT-C FORE SURVEY of Gurgaon s top Schools in which SHRI RAM SCHOOL, Aravali was ranked number 1. (viii) Print out from the web-site showing the result of a Pan India Survey in the year 2011 conducted by the Centre for Forecasting & Research Pvt. Ltd. and Education World Magazine in which THE SHRI RAM SCHOOL, Delhi was ranked first in the country. (ix) Print out from the web-site giving the updated list as of 1 st June, 2013 of the Top Schools in Delhi. THE SHRI RAM SCHOOL, Vasant Vihar is at No. 6 and THE SHRI RAM SCHOOL, Aravali is at No. 12. (x) Newspaper cutting of Times of India showing that Shivali Malhotra and Bhavya Kulshreshta both students of The Shri Ram School, Aravali topped ICSR scoring 98.75%. (xi) Photocopy of a newspaper article from Sunday Hindustan Times, New Delhi dated 20 th May, 2012 containing percentage range of top scorers from two prominent ICSE, CS (OS) No.1980/2014 Page 8 of 62

9 ISC schools of which one was plaintiffs The Shri Ram School. (xii) Newspaper article from Times of India, New Delhi dated 18 th May, 2011 showing that the students of the plaintiffs The Shri Ram School, were toppers in all streams of Class XII and also Class X in the Gurgaon region. (xiii) Newspaper cutting of Times of India showing that Abishek Gupta, a student of The Shri Ram School, (DLF III) topped in commerce with 97.25%. (xiv) Newspaper cutting of Times of India showing that Nehal Garg, a student of The Shri Ram School, Aravali topped the District Gurgaon in commerce scoring 97.25%. (xv) Photocopy of certificate issued by Education World for India's Most Respected Schools Survey Awards, 2011 to The Shri Ram School, Aravali. 5. Counsel for the plaintiffs has stated that there is a panic amongst the public at large who are unable to recognize who is having which school. The founder of plaintiff No.1 is Arun Bharat Ram and Mr. Vivan Bharat Ram is the founder of the Trust of defendant. Both are real brothers being the sons of Dr. Bharat Ram and grandsons of Late Sir Shri Ram. 6. Arun Bharat Ram in his messages and websites has admitted that the plaintiffs are educational services provider who has a legacy of interest in education in India by his grandfather Shri Ram who has reputed educational institutions such as the Shri Ram College of Commerce in 1926 and the Lady Shri Ram College in CS (OS) No.1980/2014 Page 9 of 62

10 1956 in Delhi. He is the Chairman of Shri Ram Education Foundation and manages Shri Ram College for Women. 7. The defendant is represented by Mr. N.K. Anand, Advocate, who argued that the use of the name/mark SHRI RAM is a bonafide use. The plaintiffs cannot have the monopoly rights over the mark SHRI RAM. It is the name of the grandfather of the founding members of the plaintiffs schools and defendant s trust. The plaintiffs cannot claim the prior user in respect of the educational institution like school if the College under the mark SHRI RAM is being run prior to the use of plaintiffs. 8. It is argued by Mr. Anand that the reputation and goodwill that is enjoyed by the Shriram brand in present times was first established by the efforts and endeavours of Late Sir Shri Ram, who was renowned for his endeavours in the industrialization and modernisation of education in India. Late Sir Shri Ram s contributions towards upliftment of educational services and facilities in India are widely acknowledged and respected across India. The legacy of educational excellence as established by Late Sir Shri Ram was furthered to greater heights by the successive generations of the Shriram family. Mr.Anand, has referred the following few dates and events in order to show that the plaintiff cannot claim the proprietorship and are not entitled to claim the monopoly of the mark/word Shri Ram. The following are the details of events which is not disputed by the plaintiffs:- CS (OS) No.1980/2014 Page 10 of 62

11 S.No. Date Relevance Establishment of the Commercial High School by Sir Shri Ram Responsibility of management of the Anglo Sanskrit Victoria Jubilee Senior Secondary School undertaken by Sir Shri Ram Establishment of the Shriram Institute of Industrial Research by Sir Shri Ram The Commercial High School was renamed as the Shriram College of Commerce in recognition of the contributions of Sir Shri Ram Establishment of the Lady Shriram College for Women by Sir Shri Ram in memory of his wife. Establishment of the Mawana Sugar Works Primary School to cater to the educational needs of employees of the Mawana Sugar Works The Commercial Education Trust was renamed as the Shri Ram Education Foundation. 7. July 1, 1974 Mawana Sugar Works Primary School was renamed as the Shriram Primary School First Division in the Shri Ram Family amongst Shri Murli Dhar, Shri Charat Ram and Shri Bharat Ram (sons of Sir Shri Ram) 9. April 18, 1990 Letter addressed by Shri Bansi Dhar acknowledging the goodwill vested in the Family Name Shri Ram Appointment of Mrs. Sukanya Bharat Ram as Member in the Governing Body of the Lady Shriram College for Women. Shriram Primary School was renamed as Shri Ram Junior High School Establishment of Mangaur Impex Private Limited 12. May 1, 1998 Division in the family of Shri Bharat Ram amongst his sons conferring parallel rights to further the legacy of the Shri Ram family Shri Ram Junior High School was further renamed and given its present name, i.e. the Shriram School, Mawana CS (OS) No.1980/2014 Page 11 of 62

12 Eventual Change of Name of Mangaur Impex Private Limited to Shriram Global Enterprises Limited Establishment of Shriram Centre for Computer Education Ltd. promoted by Shriram Global Enterprises Ltd. Shriram Centre for Computer Education Ltd. renamed as Shriram Global Technologies and Education Ltd. 15. March 31, 2002 Resignation of Mr. Vivek Bharat Ram as Managing Director of SRF Limited, the holding company of the Plaintiff Shriram Global Technologies and Education Ltd. entered into a Joint Venture with New Horizons Worldwide Inc., and was renamed as New Horizons India Ltd. 17. May 6, 2004 Letter addressed by Shri Charat Ram to his son, Mr. Siddharth Shriram advising for the sharing the goodwill as vested in the Shriram brand amongst all members of the Shri Ram family. 18. January 17, 2008 Trademark Application No for the Shield Device for Shri Ram School of Business in class 41 filed by Shriram Global Enterprises Limited (associate affiliate of the Defendant) 19. June 6, 2008 Trademark Application No for the mark The Shri Ram School in class 41 filed on behalf of the Plaintiffs. 20. January 13, 2009 Examination Report issued in respect of the Plaintiff s Application No in class 41 cites the Shield Device of the Defendant s affiliate (Application No ) 21. March 29, 2010 The Shield Device (Application No ) for the Shri Ram School of Business in class 41 secures Trademark Registration vide certificate no April 23, 2010 Establishment of the Shri Ram Education Trust (the Defendant) The Joint Venture New Horizons India Limited was renamed as Shri Ram New Horizons. Establishment of the Shri Ram Global Pre-School by the Defendant in furtherance of its Family lineage in Gurgaon. 24. December 21, 2012 Letter addressed by the Principal of the Lady Shriram College for Women to Ms. Sukanya Bharat Ram, thanking her for her services and contributions in the development of the reputation of the College as Member of the Governing Council Hoardings and advertisements of a disparaging nature set up by the Plaintiffs in front of the Defendant s schools across various CS (OS) No.1980/2014 Page 12 of 62

13 cities drawing dissociation from the Defendant s schools. 26. February 17, 2014 Legal Notice addressed by the Defendant to the Plaintiffs in protest of the Hoardings and Advertisements issued by the Plaintiffs. 27. March 20, 2014 Reply to the Legal Notice addressed by the Plaintiffs to the Defendants. 28. April 28, 2014 Order of the Competition Commission of India in Case No. 15 of 2014 dismissing the complaint against the Plaintiffs filed by the Defendant. 29. July 8, 2014 Plaint along with Application under Order 39 Rules (1) and (2) filed by the Plaintiffs against the Defendant being CS (OS) 1980 of 2014 before the Hon ble High Court of Delhi. 9. It is alleged by the defendant that the subsequent division had occurred in the family of Shri. Bharat Ram, commonly known as the Bharat Ram Group in the year 1998, whereby parallel rights were conferred to his sons as the legacy of the Shri Ram Family while ensuring that values and ethics propounded by Late Sir Shri Ram and Shri. Bharat Ram were protected and furthered in the future. 10. Mr. Anand has referred many documents and relevant dates about the educational activities of family members and grandfather of active persons of both the parties. The details of which are mentioned herein below : I. A Trust for education was established in the year 1920 under the name "Commercial Education Trust", the name of which was later changed to "Shri Ram Education Foundation" in the year This trust oversaw the administration of seven educational institutions, including the Shri Ram College of Commerce as well CS (OS) No.1980/2014 Page 13 of 62

14 as the Lady Shri Ram College for Women, the relevant details of which are mentioned herein below: (i) Shri Ram College of Commerce : The institution was established in the year 1920 by Sir Shri Ram under the name "Commercial High School". It was later elevated to function as an "Intermediate College" in the year The same was further elevated as a Degree College in the year 1930 and college offering Post - Graduate studies in the year This educational institution was later renamed the "Shriram College of Commerce" in the year 1951 in recognition of the contribution made by its founder, Sir Shri Ram. (ii) Lady Shri Ram College for Women: This educational institution was established by Sir Shri Ram in memory of his wife in the year 1957, under whose Chairmanship the educational institution continued to function until his demise in the year II. In addition to establishing the Commercial Education Trust and managing the Anglo Sanskrit Victoria Jubilee Senior Secondary School, Sir Shri Ram further contributed to education and its development in India by establishing the Shriram Institute of Industrial Research in the year III. The legacy of educational excellence as established by Sir Shri Ram stood furthered by his successors as the second son of Sir Shri Ram, Shri. Bharat Ram had served as the Chairman of the Board of Governors of the esteemed Lady Shri Ram College for CS (OS) No.1980/2014 Page 14 of 62

15 Women. Shri Charat Ram, son of Sir Shri Ram had also contributed to his father's legacy of educational excellence and related services in India. He had established the Shri Ram Centre for Industrial Relations, Human Resources, Economic and Social Development in the year IV. Shri Bansi Dhar, son of Shri Murli Dhar and grandson of Sir Shri Ram. He was instrumental in the development of Shri Ram College of Commerce as he was a member of the Governing Council in addition to being the Treasurer of the said educational institution. He was also responsible for the development of other educational institutions such as the Shriram Institute of Industrial Research in the capacity of its Vice Chairman and the Lady Shri Ram College for Women. V. The Shriram Family is also credited with tremendous contribution to the field of the performing arts. It is submitted that Ms. Sheila Bharat Ram, wife of Shri. Bharat Ram had established the Shriram Centre for Performing Arts/ Indian National Theatre Trust. Ms. Sumitra Charat Ram, wife of Shri Charat Ram had established the Shriram Bhartiya Kala Kendra in the year The Shriram Bhartiya Kala Kendra imparts training in Indian classical dance styles including Kathak, Bharatanatyam, Odissi, Chhau, as well as training in Hindustani Classical music. VI. It is mentioned that SRF Limited had established the SRF Foundation, plaintiff No. 1 herein. As Managing Director of SRF Foundation, the founder and chairman of the defendant herein CS (OS) No.1980/2014 Page 15 of 62

16 was actively involved in the affairs of SRF Limited. Further, Smt. Sukanya Bharat Ram, Trustee of the defendant Trust herein had also served as a member on the Governing body of the Lady Shri Ram College for Women for a period of 20 years from 1992 to She is also a member on the Board of Trustees of the Kasturba Gandhi National Memorial Trust, which provides inter alia educational services to rural communities in North Delhi. VII. In the year 1989, through a Scheme of Arrangement, the Shri Ram Family witnessed its first division, a tripartite division amongst the sons of Sir Shri Ram i.e., Shri Murli Dhar, Shri Charat Ram and Shri Bharat Ram thereby granting parallel rights to carry forward the rich legacy of Sir Shri Ram. Subsequent division had occurred in the Family of Shri. Bharat Ram, commonly known as the Bharat Ram Group in the year 1998, whereby parallel rights were conferred to his sons as the legacy of the Shri Ram Family while ensuring that values and ethics propounded by Sir Shri Ram and late Shri. Bharat Ram were protected. Reliance is also placed upon letter dated 6 th May, 2004 addressed by Dr. Charat Ram to his son, Shri Siddharth Shriram wherein he recognized the tremendous goodwill enjoyed by the "Shriram" brand. Through this letter, Dr. Charat Ram had advised for sharing of such goodwill and for avoiding all disputes. The contents of the letter are reproduced herein below: "... "Usha" and "Shriram" are brands that enjoy tremendous goodwill and are synonymous with CS (OS) No.1980/2014 Page 16 of 62

17 Shriram group entities. There has been decades of harmony between these enterprises, and the brands have been used by many of the Shriram enterprises for their respective brands. This has benefited the enterprises and in the process also enriched the brands. All the enterprises have contributed towards the goodwill of the brands through usage on quality products and earning the trust of the customers. Any dispute can only damage the brand and in turn the reputation of Shriram enterprises built up through years of hard work". VIII. Thus, it is evident that the elders in the Shriram family including inter alia Shri. Bharat Ram of the DCM Shriram Group as well as Sh. Charat Ram of the Usha Group shared the same views as their founding father Sir Shri Ram, that the Shri Ram Family should retain all such rights to make use of their family name and must protect the family name from falling into the hands of outsiders. Thus being a Founder and Chairman of the defendant, vide his letter dated 26 th September, 2011 had reminded the Chairperson of the plaintiff No. 1 of the stellar contribution of members of the Shriram Family in upholding and further strengthening the reputation and goodwill enjoyed by the educational institutions established by the Shriram Family. There was a fear in the minds of the plaintiffs that at one time, the share holdings may divest in the hands of outsiders. The plaintiffs felt it necessary to ensure that the use of the word CS (OS) No.1980/2014 Page 17 of 62

18 "SHRI RAM" remains within the family as was the desire of the founding fathers of the said family. Therefore, it is submitted that the plaintiffs and the defendant herein have concurrent rights to make use of their family name "Shriram" in relation to their schools. 11. It is submitted that the use of the name Shri Ram by the defendant in relation to running the services of schools is in furtherance of the common family name of the plaintiffs and the defendant, which constitutes a bonafide use under the provisions of the Trade Marks Act, 1999 as the elders in the Shri Ram family had always professed a principle of Live and Let Live while advising family members to maintain peace and harmony in the family. Further, the elders in the Shri Ram family shared the common view that all members of the Shri Ram family possess concurrent rights to make use of their family name. Dr. Bansi Dhar in a letter dated 18 th April, 1990 had clearly advised that no member of the Shri Ram family must be restricted from making use of the tremendous goodwill vested in the name Shri Ram. Further, Dr. Charat Ram, son of Late Sir Shri Ram vide letter dated 6 th May, 2004 addressed to his son Mr. Siddharth Shriram had clearly stated that the collective efforts of various enterprises in the Shriram Family had enriched the brand Shri Ram over the years and that any dispute between such enterprises must be prevented. 12. It is submitted by the defendant that the names of the defendant s schools that is Shri Ram Global School, Shri Ram Centennial School and Shri Ram Global Pre-School are sufficiently CS (OS) No.1980/2014 Page 18 of 62

19 distinctive from the name of the plaintiff s Schools, i.e. The Shri Ram School and Shri Ram Millennium School. The names of the defendant s schools make use of additional elements as suffix which distinguishes clearly the schools of the defendant from those of the plaintiffs. The defendant also makes use of a particular Shield Device in relation to its schools and educational institutions, which is completely different and distinguishable from the mark of the plaintiffs. With regard to goodwill, reputation and prior user claimed by the plaintiffs that due to prior establishment of the plaintiff s Shri Ram Schools on the initiative of Mrs. Manju Bharat Ram in the year 1988, the name Shri Ram and the consequent goodwill vested in it in relation to schools is the sole property of the plaintiffs is incorrect and unacceptable. Various factions of the Shri Ram family have not only made use of the Family Name prior to the plaintiffs but have also obtained trademark registrations for the name Shri Ram. 13. It is submitted that the Shri Ram Family, in its efforts to uplift educational excellence in India had established The Shri Ram School Mawana in the year The said school running under the Chairmanship of Mr. Siddharth Shriram predates the establishment of the plaintiff s schools by over 30 years. Therefore, neither are the plaintiffs the only faction of the Shri Ram family which has been in the field of running schools in India nor are they the first amongst the Shri Ram family to do so. 14. With regard to confusion and deception, it is argued by the defendant s counsel that the plaintiffs have placed reliance upon CS (OS) No.1980/2014 Page 19 of 62

20 letters and s allegedly emanating from the general public. The same are in the nature of inquiries raised internally either by the employees of SRF Ltd., the holding company of the plaintiff or by members of the plaintiffs schools themselves. The dated 27 th March, 2014 from one Ms. Payal Gulati highlighted the difference in between the devices of the plaintiff s marks and the defendant s by stating that the other school does not have the Shri Logo. 15. However, it is not denied on behalf of defendant that the plaintiffs are the prior user of the mark/name SHRI RAM in relation to running the schools between the parties. But, it is stated that the plaintiffs are not the exclusive proprietor of the same. It is admitted that the defendant established its first school, namely the Shri Ram Global Pre-School in Gurgaon in the year Subsequently, the defendant has established its schools in various cities of the country including New Delhi, Dehradun, Indore, Rohtak, Siliguri among others. 16. It is informed by Mr. Anand that at present, the defendant runs nineteen schools under two banners namely, the Shri Ram Global Schools and the Shri Ram Centennial Schools by itself or under the contracts with third parties. The defendant is holding the registered trademark under the name SHRI RAM. 17. In a nut-shell, the case of the defendant is that the defendant's right to use the name SHRI RAM for schools emanates from the common lineage from the legacy of Late Sir Shri Ram. Thus, the plaintiffs action is not sustainable. There are other factions of the Shri Ram family using the name SHRI RAM for schools particularly CS (OS) No.1980/2014 Page 20 of 62

21 other members of the family in Mawana. There is bonafide use of the family name SHRI RAM by the defendant who is using the mark SHRI RAM in different ways along with logo and thus there is no confusion amongst the general public. It is not denied that Late Sir Shri Ram did not run any school under the name SHRI RAM. 18. It is admitted on behalf of the plaintiffs that purpose of the scheme of arrangement of 1998 was to provide a framework to arrive at the division of the family assets and meet the family liabilities. Thus the inherent right to use the name SHRI RAM vests with each member of the Shri Ram family but such right is subject to restricting oneself to its domain of business and not encroaching upon/infringing others right and the letter of Dr. Bansi Dhar only dealt with his view against any restriction to use of the name DCM and SHRI RAM by a particular group of the Shri Ram family i.e. no faction of the Shri Ram family could object to the use of the name SHRI RAM by another faction, however, the same would in effect be subject to limiting the use of the name SHRI RAM to their respective and exclusive domain of business so as to avoid competition and confusion regarding trade origin. 19. It is submitted by the plaintiffs that there is no bonafide use of the family name SHRI RAM by the defendant as many misleading statements of the defendant are malafide attempts on its part to associate itself and its SHRI RAM schools with the plaintiff's wellknown SHRI RAM schools in Delhi and Gurgaon so as to piggy bank on its reputation and goodwill and gain illicit profits out of the same. The defendant in fact is using the name/mark SHRI RAM as a trade CS (OS) No.1980/2014 Page 21 of 62

22 mark. 20. With regard to dissimilarity between the school name of the defendant and the plaintiffs, it is argued by the plaintiffs that the use of an identical name SHRI RAM for its schools by the defendant evidently makes it similar to the name of the plaintiff's well-known SHRI RAM schools. 21. The use of the words Centennial and Global by the defendant in conjunction with the name SHRI RAM for its schools do create confusion and deception as THE SHRIRAM MILLENNIUM SCHOOL and SHRI RAM CENTENNIAL SCHOOL are deceptively similar. The term Centennial used by the defendant in conjunction with the name SHRI RAM for its schools is synonymous with the term 'Millennium used by the plaintiffs in conjunction with the name SHRI RAM for its schools. Even the use of the Shield device would not make any difference as the foremost and essential feature of the defendant's school name is the word 'SHRI RAM. 22. Pertaining to the dated 27 th March, 2014 from Ms. Payal Gulati it is submitted by the plaintiffs that the same does not highlight the difference in the devices of the plaintiffs and defendant's mark. Rather, this evidences the fact that the devices used along with the name SHRI RAM are irrelevant for the purpose of creating dissimilarity between the marks and that the essential and the prominent feature of both marks is the name SHRI RAM, because otherwise Ms. Gulati on seeing the Shield Device of the defendants would have understood that the defendant's SHRI RAM schools do not originate from the plaintiffs and thus, would have not written the CS (OS) No.1980/2014 Page 22 of 62

23 aforesaid It is argued that the confusion has further occurred by defendant's franchisee's own admission in the defamation suit that the general public refrained from seeking admission in the defendant's SHRI RAM school in Indore pursuant to being made aware of the non-connection between the plaintiffs SHRI RAM schools and the defendant's SHRI RAM schools. This in effect means that before being made aware of the non-connection, the general public believed the defendant's SHRI RAM schools to be connected/associated with the plaintiffs SHRI RAM schools. 24. It is stated by the plaintiffs that the defendant as per Exhibit E of its Brand License and Franchisee Agreement dated 26 th September, 2012, was charging a one-time fee of Rs Crore from its franchisee for the licensed right to start SHRI RAM branded schools in a particular territory followed by an additional amount of Rs. 5 Lakhs per pre-school that is opened by the franchisee within its franchise territory after the first pre-school. 25. I have also gone through the records of the present case including the plaint, written statement and documents filed therewith. I have also considered the submissions advanced by the learned counsel for the parties at the bar. Some of the points mentioned in the written submissions filed by the parties were not part of their respective pleadings. Now, I shall proceed to discuss various aspects which fall for consideration in the present case. 26. The plaintiffs claim to be prior user of the mark SHRI RAM in respect of the schools since the year The defendant on the CS (OS) No.1980/2014 Page 23 of 62

24 contrary does not dispute the said position but raises a defence that the mark SHRI RAM is not merely proprietary interest of the plaintiffs for manifold reasons including that the defendant is real brother of the plaintiffs and belongs to Shri Ram family and is closely connected with the field of the education operating under the mark SHRI Ram. It is also the case of the defendant that there are documents suggesting that the family members can use the word SHRI RAM to promote the same and thus the defendant is entitled to use the mark SHRI RAM being a family member. I have considered the submissions advanced by the learned counsel for the parties on the aspect of the proprietorship of the mark SHRI RAM. I am of the view that there is a material available on record which indicates that the family members of the Sir Shri Ram has been using the mark SHRI RAM in respect of the diverse kind of the business and services including education in colleges. There is no material on record which prima facie suggests that a faction of the family members as per family settlement has been specially allowed to run the school or the groups emanating from Shri Ram family which limits their rights to use the mark SHRI RAM in respect of the particular field of the business. It is though altogether different matter that there may be a line in the business which has been adopted by the Shri Ram family in good senses by not intruding in each other s business for all this period. Still, for prima facie purposes, it cannot be said that the plaintiffs have been provided with the mark SHRI RAM solely for running the schools as per any written document executed by the family members. It is now to be considered as to whether the CS (OS) No.1980/2014 Page 24 of 62

25 plaintiffs have any right to run the school exclusively under the name SHRI RAM. It has come to record that prior to plaintiffs schools who have acquired unique goodwill and reputation, none of the family member of Late Bharat Ram had started school under the said name but no doubt family members were actively involved in the educational institutions apart from other activities. It has also brought to my knowledge that one of other faction of family relation has been running school prior to the plaintiffs. But, the objection was raised by the plaintiffs counsel that the said plea is not taken in written statement and it was pointed out by the counsel that prior to the plaintiffs use, the said school under the name SHRI RAM was opened for the education of employees children of Sugar Mill only which has no goodwill and name who is running the said school outside Delhi in remote area in a small way. 27. It is necessary to refer the sample scanned copy of their representation in order to understand in which manner the parties are using the name/mark SHRI RAM as well as respective logos : Plaintiffs Mark CS (OS) No.1980/2014 Page 25 of 62

26 Defendant s Mark It is apparent from the above mark, the name/mark SHRI RAM is being used by both the parties is common and the same is also an essential part of their services, though the logos are different. 28. First question before this Court is as to whether the use of the mark/name SHRI RAM in the manner depicted are deceptively similar or not. The said issue has been discussed by the Division Bench of this Court in the case of The Himalaya Drug Company vs. M/s. S.B.L. Limited, 2013 (53) PTC 1 which reads as under : 20. It is settled law that where the defendant's mark contains the essential feature of the plaintiff's mark combined with other matter, the correct approach for the court is to identify an essential feature depending particularly "on the court's own judgment and burden of the evidence that is placed before the Court". In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public CS (OS) No.1980/2014 Page 26 of 62

27 and not by merely comparing the dissimilarities in the two marks. 21. The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole". In the decision reported as (1951) 68 RPC 103, 105, De Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words "Vick's VapoRub" as the essential feature, registered in Jamaica, and the defendants used a similar label with the words "Karsote Vapour Rub" as the essential feature, and it was shown that the expression "VapoRub" had become distinctive of the plaintiff's goods in Jamaica, an action for infringement was successful. (See De Cordova v. Vick Chemical Co. (supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June Perfect Ld., AIR 1972 SC 1359, 1362, M/s. National Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited and AIR 1991 Bom 76, M/s. National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and Another). From the principles laid down in the cases referred in the judgment above, it is clear that the mark SHRI RAM is being used as essential feature in their logos and the same are deceptively similar. CS (OS) No.1980/2014 Page 27 of 62

28 29. The next submission of Mr. Anand is that there are few admissions made by the plaintiff No.2 in the Trade Marks Registry in its reply to the examiner report in the application filed for registration of a trademark SHRI RAM in order to waive the objection under Section 9 of the Act. Mr. Anand admits that the said plea was not taken in the written statement and reply to the injunction application. In order to satisfy my conscious, I allowed him to take this objection. He referred the said reply filed by the plaintiff No.2 to the examination report. The same is read as under : We respectfully submit that Shri Ram is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark Shri Ram. As evident from the search report attached with the examination report, several Shri Ram formulative marks are peacefully coexisting on the Registrar of Trade Marks. The subject matter is a fancy justaposition of the words Shri Ram and Educare. Re the remaining cited marks i.e. SHRIRAM (Registration Nos and ), SHRI RAM SCHOOL OF BUSINESS WITH LABEL (Registration No ), SHRI RAM CHANDRA MISSION (Registration Nos and , we wish to invite the learned Registrar s attention to the well established judicial principle of entirety. According to the said judicial principle, conflicting marks should not be broken into separate components and read for the sake of comparison; they should be dealt with as a whole. Accordingly, we aver that Shri Ram is one of the popular figures and deities in Hinduism. As such, no one proprietor can claim exclusive rights on the mark Shri Ram. We submit that Shri Ram is common to the trade. It is the combining elements that make the conflicting marks distinguishable from each another. The marks taken as whole are different each other such that there is no likelihood CS (OS) No.1980/2014 Page 28 of 62

29 of confusion and deception between them by their coexistence. Mr. Anand submits that in view of the said admission, the plaintiffs are not entitled for interim relief as prayed for. 30. The counsel for the plaintiffs has informed to the Court that the plaintiffs have withdrawn their application number by letter dated 15 th April, 2014 prior to the filing of this suit on 8 th July, It is submitted that the plaintiffs have derived no advantage in application number from the argument put forth in the letter dated 8 th June, 2012 as the same was subsequently withdrawn. The said letter dated 8 th June, 2012 was not written in any adversarial proceeding and was withdrawn prior to the filing of this suit without affecting any third party right or the rights of the plaintiffs. It was written due to oversight. In fact, the mark SHRI RAM was registrable if the same was distinctive on the date of application. Counsel submits that the defendant itself has filed the application for registration which is now registered trade mark, hence the objection of the defendant is without any force and both the marks are deceptively similar otherwise, the trade marks office ought not to have raised the objection about the conflicting of two marks of the parties. In view of aforesaid, now it is to be examined as to whether on merit the mark was distinctive on the date of filing of the suit or it was a registerable mark or not. 31. Admittedly, the plaintiffs have been using the said mark/name since 1988 for running the schools who are providing services. The CS (OS) No.1980/2014 Page 29 of 62

30 definition of the mark includes the name under Section 2(m) of the Act which reads as under : 2(m) mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; 32. The names and surnames have been protected by this Court and various other High Courts as well as by Supreme Court in the following cases: i) In the case of Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. [2002 (2) SCC 147], the Supreme Court observed that It is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities. ii) The following observations of this Court in Dr. Reddy s Laboratories Ltd. versus Reddy Pharmaceuticals Limited, 2004 (29) PTC 435 (Del.), which was also affirmed by the Division Bench are very relevant in this regard: 15. The plea raised by the defendant that it has a bona fide statutory right to use the trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected for the reason that the trade mark "Dr. Reddy" in spite of not bring registered has acquired considerable trade reputation and goodwill CS (OS) No.1980/2014 Page 30 of 62

31 in the community dealing with drugs and pharmaceutical not only in India but abroad also. This trade mark is now distinctively associated with the plaintiff's company. Its long and continuous user by the plaintiff is prima facie established. The use of trade name/mark "Reddy" by the defendant is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other "Reddy" has a right to start a rival business by using the same trade name on the plea that it is his surname. This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to associate in their business ventures persons having similar surnames wind ants was held to be an act of passing off the goods and it was observed that the use of such family name as a trade mark was not permissible. The plea of the defendants that the surname of the partners of its firm could be used to carry on trade in their own name was rejected. It was held that prima facie the defendants were intentionally and dishonestly trying to pass off their goods by use of name "Bajaj" and as such the plaintiff had made out a case for grant of injunction. 19. Section 35 of the TMM Act is also of ho help to the defendant as the use of name "Reddy" on pharmaceutical preparations by the defendant is not shown to be bona fide. The drugs and pharmaceutical preparations being manufactured by the plaintiff may be having different names but that does not disentitle the plaintiff to claim protection in regard to its trade mark "Dr. Reddy" which has earned substantial trade reputation and goodwill. This trade mark has acquired a distinctive reputation. Use of an identical or deceptively similar trade mark may mislead the customers on account of similarity. "Dr. Reddy" and "Reddy" are similar trademarks phonetically and are capable of creating confusion. CS (OS) No.1980/2014 Page 31 of 62

32 There is identity of goods, identity of trade mark and identity of consumers. The defendant is not at all an honest and concurrent user of the trade mark "Reddy" and it is apparent on record that it has started using the trade mark "Reddy" on its pharmaceutical preparations in bad faith knowing fully well that the plaintiff company has enormous trade reputation and goodwill in the trade mark " Dr. Reddy" which is completely associated with plaintiff and has acquired a secondary meaning in business circles. 33. It is a question of fact, to be decided on the evidence, whether a name or mark has acquired a secondary meaning so that it denotes or has come to mean goods made by a particular person and not goods made by any other person, even though such other person may have the same name. If it is proved on behalf of a claimant that a name or mark has acquired such a secondary meaning, then it is a question for the Court whether a defendant, whatever may be his intention, is so describing his goods that there is a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the claimant. 33. The effect of said so called letter written by the plaintiff No.2 to the trade mark office is to be examined by this Court. It is settled law that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights. This has been explained by the Division Bench of this Court in the case of Century Traders vs Roshan Lal Duggar & Co, AIR 1978 Del 250 wherein it was observed: First is the question of use of the trade mark. Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection CS (OS) No.1980/2014 Page 32 of 62