Delhi Public School Society v. DPS World Foundation and Anr.

Delhi Public School Society v. DPS World Foundation and Anr.

 Delhi High Court

18.04.2016

Brief Facts:

Plaintiff society was registered in the year 1948-49 as Delhi Public School. In 1948, Plaintiff first adopted the distinctive crest which is reproduced herein below:

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:

On further investigation, Plaintiff came to know that the Defendants are also maintaining a website www.dpsworldfoundation.com wherein, the impugned trade mark of the Defendants “DPS” and crest/logo (depicted immediately above) is prominently displayed Defendant No. 2 was a life member of the Society till October 17, 2015, when he was removed from the membership.

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.

• Plaintiff has earned immense goodwill and reputation amongst the parents, students, staff and public at large. The name Delhi Public School/DPS is well known for the quality education provided by the institutions set up by the Plaintiff.

• 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.

• Plaintiff has produced lakhs of students who are occupying prominent and prestigious positions in government as well as private sector and are doing very well in life.

• As a result of unlawful adoption of the Plaintiff’s registered trademark/name and logo by the Defendants, it is sure that the potential students, staff and parents would believe that the Defendants are endorsed by and franchisee of the Plaintiff in regard to their services and the Defendants command and provide the same quality and reliability.

• Not only are the Defendants are guilty of infringement of trade mark as well as passing off but also of infringement of Copyright as the Defendant has copied the Crest devices of the Plaintiff.

Defendants’ Case:

• The goodwill that the Plaintiff is seeking to appropriate to itself is actually a goodwill generated by the DIPSITES, be it students, staff or teachers without which the Plaintiff Society has no goodwill.

• DPS World Foundation is a creation of this group of people and it is for this reason that the DPS World Foundation proudly proclaims that it is “A DIPSITES KNOWLEDGE INITIATIVE AND AN INDEPENDENT EFFORT OF DPS ALUMNI (DIPSITES). NOT A PART OF DELHI PUBLIC SCHOOL SOCIETY, NEW DELHI.’ The said Advisory is in fact a proclamation of the Foundation that it is different and takes pride in disassociating itself from the Plaintiff Society.

• Defendant No. 1 has no intent to mislead anyone nor does it want to have any association with the Plaintiff Society in any manner, which can be gathered from the Advisory.

• Defendant No. 2 is one of the most well known and prominent alumni of the Plaintiff’s School and in fact today the Delhi Public School has become synonymous with Defendant No. 2 and every Dipsite today proudly represents himself/herself as a product of Mr. Salman Khurshid’s school.

• Crest Logo with Leaf (Second Artistic Work/Crest) was an idea conceived by Defendant No. 2 in his personal capacity. The idea was shared by Defendant No. 2 in his personal capacity with the then art teacher at Delhi Public School, Vasant Kunj and Defendant No. 2, who was then the President of the Plaintiff Society requested her to draw a logo with a crest based on his idea and description for his personal use. Defendant No. 2 was the first to use the Logo on his Letter Heads, which no other members have used at any given time.

• Plaintiff’s trademark certificate over the Delhi Public School Logo as set out under Class 16 reflects that the trademark is subject to the condition and limitation that the Plaintiff Society has, “No exclusive right over the device of Torch separately and Delhi Public School”.

• 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.

• Using variations of the Shield/Leaves/Torch in a Device is common practice and these elements are common to the Registered Logos/Marks of various organizations including international bodies like the UNICEF, UNDP, UNHCR, CISF, Wayne State University, Philippine School (Bahrain) and many more.

• In India itself, several educational societies/institutions are using the registered logo and the trade name of the Plaintiff Society such as the Delhi Public School Ghaziabad, Vasundhra, Delhi Public School Pvt. Ltd., North Delhi Public School, Shalimar Bagh, Delhi, Delhi Public School, Sambalpur, Odisha which dilutes the strength of the Plaintiffs Trademark manifold.

• 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.

• ‘DPS’ is only an acronym and using acronyms is common practice, for example Indian Institute of Technology is called IIT. Such use in common parlance cannot be said to confer monopoly rights under Trademarks regime on the acronym, particularly because acronyms, by their very definition, can stand for multiple things. He states that nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris.

• The class of consumers who are likely to avail/enroll on the programmes i.e. Education of the DPS World Foundation would belong to a reasonably educated, informed and aware section of society which is an extremely relevant consideration while adjudicating an alleged claim of passing off.

• 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.

Founding Trustees of Defendant No. 1 themselves referred to “DPS” at various places, which if read in context is, a reference to the Delhi Public School. From the above, it is clear (at least at this stage) that, the mark/name “DPS” owe its origin to Delhi Public School and not to ‘Dipsites’.

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.

On a prima facie view, based on the documents, orders, this Court is of the view that, the Plaintiff has made out a case for interim relief with regard to the usage of the trademark ‘DPS’. Further, the balance of convenience is also in favour of the Plaintiff.

The trademark/name Delhi Public School has acquired a secondary meaning to transform it and give it a distinctiveness with an exclusive right with registered/prior user.

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 Advisory “A Dipsites Knowledge Initiative and an independent effort of DPS Alumin (Dipsites). Not a part of Delhi Public School Society, New Delhi” is only on the website of the Defendant No. 1. Such an Advisory has not been put in the various advertisements issued in newspapers. The advertisement reads as “A Dipsites Knowledge Initiative” which is different from the Advisory issued by the Defendant No. 1 on its website.

In one of the advertisements of Defendant No. 1, the photograph of Defendant No. 2 is shown, who, in terms of the stand of the Defendant No. 1, is one of the most well-known and prominent alumni of the Plaintiff school, and in fact, the Delhi Public School has become synonyms with Defendant No. 2.

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.

As far as second crest logo of the Plaintiff is concerned, the plaint records, that in the year 1996-97, the same was adopted by 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.

Full Text