CS(COMM)/322/2021 of DELHI PUBLIC SCHOOL SOCIETY Vs DELHI PUBLIC INTERNATIONAL SCHOOL

*IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of decision: 27[th]July, 2022

+CS(COMM) 322/2021 & I.As. 462/2022, 5410/2022DELHI PUBLIC SCHOOL SOCIETY

..... Plaintiff

Through:Mr. Puneet Mittal, Sr. Advocate withMr.MohitChandras,Advocates.(M:981104400)

versus

DELHI PUBLIC INTERNATIONAL SCHOOL..... Defendant

Through:Mr. Rajshekhar Rao, Sr. Advocate,Mr. Rajat Malhotra, Mr. Vivek Kr.KurnandMr.AreebAmanullah,Advocate for D-5. (M:[REDACTED])

CORAM:JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh(Oral)

1.The present suit has been filed seeking permanent injunctionrestraining infringement of trademarks, copyrights, damages, etc., by thePlaintiff - Delhi Public School Society that runs the Delhi Public Schools(hereinafter as ‘DPS’) across the country. The Plaintiff is registered underthe Societies Registration Act, 1860, vide registration no. S.361 of 1948-49.It was initially registered as Delhi Public School but in the year 1962, thename was changed to Delhi Public School Society. The Plaintiff has alsoobtained registration for its logo under the Copyright Act, vide registrationnos. A-95324/2012 dated 21[st]December, 2012 and A-111554/2014 dated21[st]August, 2014.

2.The case of the Plaintiff is that it was formed with an objective to

establish progressive schools/educational institutions within Delhi andoutside. Open to all, without any distinction of race, caste or special status.The first DPS school was set up in the year 1949 and subsequently,numerous more were set up. The schools established by the Plaintiff itselfare total of 12, known as ‘Core Schools’ while also having entered intoagreements with other societies/trusts for establishing more schools that aremore than 200 in number, known as ‘Affiliated Schools.’ Further, thePlaintiff has also established 11 schools in territories outside of India,displaying its goodwill.

3.In order to ensure statutory rights in respect of the Plaintiff’strademark, it has filed several applications for registration of its logo, DPSand Delhi Public School, among others. Further, the Plaintiff claims to beextremely vigilant about its intellectual property rights due to which timeand again the Plaintiff has filed infringement and/or passing off suits againstother parties that have resulted in decrees in favour of the Plaintiff, wherein,its mark has been declared ‘a highly reputable brand name.’

4.The grievance of the Plaintiff in this suit is that school named“Delhi Pubic International School/DPIS,” i.e., Defendant No.1 was startedin Nagpur, Maharashtra and is run by Defendant No. 2 - Gaikwad- PatilGroup of Institutions, as mentioned in the plaint, whose day-to-day affairsare managed and controlled by its Chairman and President, i.e., DefendantNo. 3 - Mr. Mohan Gaikwad and Defendant No. 4 - Ms. Anjali PatilGaikwad, respectively. The Defendant No.5 is one Mr. Vijay Kumar UttamBhai Pawar with whom Defendant Nos.2 to 4 claim to have executed anagreement to obtain rights to use the mark ‘DPIS’ of the Delhi PublicInternational School.

5.The case of the Plaintiff is that the use of the word/mark DPIS isviolative of its mark DPS. Vide interim order dated 17th August, 2021aninterim injunction was granted restraining the Defendants from using themark ‘Delhi Public School’/‘DPS’ or any other mark which is identical ordeceptively similar thereto, including the ‘DPIS’ mark. The operativeportion of the said order dated 17[th]August, 2021, is set out below:

“12. The Court thus finds prima facie case in favourof the Plaintiff. They are prior adopter, user andowner since 1948, and the prior registered proprietorof well-known trademarks 'Delhi Public School' and'DPS'. The use of the impugned mark- 'Delhi PublicInternational School'/ 'DPIS' and the impugned logo, isdeceptively similar to the mark of the Plaintiff-Societyand is in breach/ violation of the decree passed by thisCourt against Mr. Pal. The adoption of the impugnedmarks is thus prima facie invalid. Besides, consideringthat parties are in the field of education, deliberateadoption by the Defendants of impugned trade marksand logo that are deceptively similar and/or identicalto the Plaintiffs registered trade marks/names andlogos can cause confusion in the minds of the parents,prospective students and staff desirous of securingadmissionoravailingservices,seeingtheadvertisements,promotionalmaterial,admissionforms, boards/ hoardings, etc. They are bound to bemisled into availing the services of the Defendant-School, under the belief that they are those of thePlaintiff-Society. Mr. Mittal has demonstrated that theDefendant-Schoolhasintentionallymisrepresenteditself to be in association with the Plaintiff-Society dueto the prominence of 'Delhi Public School'. Further,the registered trade mark of Plaintiff-Society- 'DelhiPublic School'/ 'DPS' and the crest logo can beperceived by general public as indicative of the sourceof 'Delhi Public School' being the Plaintiff-Society.

Therefore, the Court considers it necessary to grant aninterim injunction in favour of the Plaintiff-Society.

13. The Defendants reliance upon orders passed in thesuit in respect of the use of trade mark 'DPS WorldFoundation', is misplaced. Defendants have not noticedthat, in the said suit, the Supreme Court subsequentlyin challenge against the order of the Division Bench ofthis Court, granted injunction in favour of the Plaintiff-Society, restraining the Defendants therein from usingthe mark- 'Delhi Public School'/ 'DPS' or the logo. Thesaid order was only clarified later to the extent that theDefendants therein were allowed to use the logo theysought to do so after deleting certain words. Thebalance of convenience also lies in favour of thePlaintiff-Society and in case the Defendants are notrestrained by an ex-parte injunction, it is likely tocause an irreparable loss to the Plaintiff-Society.Accordingly,tillthenextdateofhearing,theDefendants,theirtrustees,directors,managingcommitteemembers,officebearers,employees,delegates, representatives, assigns, associates, agentsor anybody acting on their behalf, are restrained from:-

(a) adopting, using and/ or dealing in any manner withthe registered trademark of the Plaintiff- 'Delhi Public

School' and 'DPS' and logoor any othertrademark that is identical or deceptively similar to thePlaintiffsaforenotedtrademarkamountingtoinfringement of the Plaintiffs said trade marks;(b) offering for sale, adopting, using and/or dealing inany manner with the registered trade mark of thePlaintiff- 'Delhi Public School' and 'DPS' and logo [

] of the Plaintiff or any other trade mark

identical or deceptively similar to the Plaintiffs trademark amounting to passing off the Plaintiffs saidtrademark and further restraining the Defendants fromrepresenting in any manner that they are connectedwith the Plaintiff; and

(c) using or dealing in any manner with the impugnedtrademark/ names 'Delhi Public International School'trademark/ names 'Delhi Public International School'

and 'DPIS' and logo

6.Subsequently, vide order dated 11th January, 2022, Defendant Nos. 2to 4 agreed to suffer partial decree, wherein, permanent injunction waspassed. Simultaneously, on the said date, it was recorded that the name ofDefendant No. 2 - Gaikwad- Patil Group of Institutions was changed to‘Semana Vidya Va Van Vikas Prashikshan Mandal’ which is the actual trustwhich was running the school-Defendant no.1. It was also agreed that adecree be passed as Defendant No.1 school’s name – Delhi PublicInternational School (as mentioned in the Plaint) has been changed to`Gaikwad- Patil Group of Institutions’. Paragraphs 5 and 6 of the said orderdated 11[th]January, 2022 are set out below:

“5. On the strength of the aforenoted statement madeby the counsel for Defendants No. 2, 3 & 4, Mr. Mittalprays that partial decree to the extent of aninjunction order, as prayed for, may be passed quaDefendants No. 2, 3 & 4.

6. Mr. Rajat Malhotra, who appears on behalf of thesaid Defendants, clarifies that there is no entity by thenameof‘Gaikwad-PatilGroupofInstitutions’,arrayedasDefendantNo.2.HesubmitsthatDefendants No. 3 & 4 are in the management of asociety under the name of ‘Semana Vidya Va VanVikasPrashikshanMandal’,whichisasociety

registered under the Societies Registration Act, 1860.He submits that in fact this Society was running theschool under the name of ‘Delhi Public InternationalSchool’, in Nagpur, pursuant to an agreement withDefendant No. 5. Mr. Malhotra further clarifies that asof now, on account of operation of the injunction orderpassed by this Court, the Defendant No. 1 school hasrenameditselfas“GaikwadPatilInternationalSchool”. Mr Malhotra submits that Defendant No. 5 iscontesting the suit. He further states that DefendantNo. 1 is not legal entity and is only the name of theSchool. ”

7.Thus, the only surviving Defendant in the present suit is DefendantNo. 5 - Mr. Vijay Kumar Uttam Bhai Pawar who is resident of Gujarat.This Defendant has moved an application under Order VII Rule 10 and 11CPC dated, 28[th]August 2021, seeking rejection of the plaint on the groundof lack of territorial jurisdiction.

8.It is submitted by Mr. Rajshekhar Rao, ld. Sr. Counsel appearing forDefendant No. 5 that Defendant No.5 has filed trademark applicationclaiming an independent right in the mark ‘DPIS’ and ‘Delhi Public SchoolInternational School’. He, further, submits that in any event the school waslocated in Nagpur while Defendant No. 5 is based out of Gujarat. Thus, thisCourt has no territorial jurisdiction in the matter as per the settled legalposition, as the Plaintiff/ Delhi Public School Society maintains 3collaborative ventures, namely DPS, Kamatee Road, DPS, Mihan and DPS,Lava in Nagpur. To substantiate the legal position for territorial jurisdiction,he relies on the following three judgments:

i.Indian Performing Rights Society Ltd. vs. Sanjay Dalia &Anr., [SLP(C) No.8253/2013, decision dated 1[st]July, 2015]

ii.M/s Dhodha House vs. S.K. Maingi, AIR 2005 SC 730; and

iii.IPRS vs. Aditya Pandey, (2012) 50 PTC 460.

9.On the other hand, Mr. Puneet Mittal, ld. Senior Counsel appearingfor the Plaintiff submits that no agreement was entered into betweenDefendant No.5 and the other Defendants Nos. 2 - 4 and the same has alsonot been placed on record. There is also no trademark application withrespect to Defendant No. 5’s claim to “DPIS/Delhi Public InternationalSchool” mark placed on record.

10.In response, copy of the said application which is stated to havebeen filed by the Plaintiff itself with its rejoinder has been handed over tothe Court. The same is, however, not on record.

11.Thus, the issue now boils down to whether any cause of actionsurvives against Defendant No.5.

12.Considering the fact that Defendant No. 1, the school has alreadychanged its name and that Defendant Nos. 3 & 4 the management of the saidschool have already suffered decree before this Court the question as towhether any agreement between Defendant No. 5 and Defendant Nos. 2 to 4exists/existed, would become academic in nature.

13.InsofarasDefendantNo.5’sapplicationforDelhiPublicInternational School, vide trademark application nos. 3447965 and 3447968is concerned, the same are not the subject matter of the proceedings beforethis Court. However, the said applications that are stated to have been filedare currently pending and have been objected to by the Registrar as per thestatus shown to the Court.

14.Thus, the suit can be disposed of leaving the Plaintiff to avail itsremedies, in accordance with the law qua the said trade mark applications.

The orders passed in the present suit would however, have no bearing on theadjudication of any objections or oppositions if filed by the Plaintiff againstthe abovementioned trademark applications of Defendant no.5.

15.If Defendant No. 5 establishes or causes to establish any school withthe name ‘Delhi Public International School’/’DPIS’, the Plaintiff would befree to avail its remedies in accordance with the law.

16.In the opinion of this Court, the suit no longer survives inasmuch asthe main cause of action in this suit was qua the school being called‘DPIS’/‘Delhi Public International School’ established in Nagpur, which hassince changed its name.

17.The Court has not expressed any opinion as to the dispute betweenPlaintiff and Defendant No. 5. The orders passed by this Court in the presentsuit would not have any bearing on the merits of any dispute which mayarise between the Plaintiff and Defendant No.5. All objections andcontentions of both the Plaintiff and Defendant No.5 are left open.

18.The suit is disposed of in these terms. All pending applications aredisposed of.

JULY 27, 2022dj/sr

PRATHIBA M. SINGHJUDGE