Social Work and Research Centre v. Barefoot College International

2. Device-Class 45 Registered (Application No.3885538)

3. BAREFOOT COLLEGE (Word) Class-41 Objected by the Defendant and currently pending adjudication before Trademarks Registry (Application NO. 4925029) Defendant’s Registrations: S.No. Mark/Device Status

1. Device-Class 30 Registered (Application No. 3841985)

2. B. Barefoot (Word)-Class 30 Registered (Application No. 3767384)

3. BAREFOOT COLLEGE (Word) Classes-36, 41 & 45 Registered in United Kingdom Trade Mark No. UK00003599424

4. Device-Class 41 Applied for and currently pending adjudication before Trademarks Registry (Application No. 4802184)

8. The defendant was admittedly incorporated as a Section 8 private limited company in 2015, with Bunker Roy, the founder of the plaintiff and Bhagwat Nandan as its two directors. The averments to this effect, as contained in para 13 of the plaint, read thus:

9. In the corresponding para in written statement, the defendant has accepted the averments contained in para 13 of the plaint as being “a matter of record”. Rival Submissions Submissions of Mr Aditya Gupta for the plaintiff

10. Consequent to the incorporation of the defendant in 2015, an Agreement dated 1st August 2015 was executed between the plaintiff and the defendant. As per the said agreement, the defendant was to function as an implementing agency for supply of solar system as mandated by the plaintiff and provide training at a transaction value to be arrived at between the plaintiff and the defendant. Mr. Aditya Gupta has referred me to the opening recitals in the said Agreement dated 1st August 2015, which read thus: “This agreement is made on this 1st day of August, 2015 at Tilonia by and between (1) Social Work & Research Centre, Tilonia, a Society registered under the Societies Registration Act. 1860. 'acting through its Administrative Incharge Sh. Bhanwar Singh (hereinafter called the SWRC) and; (2) Barefoot College International, Tilonia, a Company registered under the Companies Act 2013, acting through its Director Shri Bhagwat Nandan (hereinafter called the BCI) Whereas the SVRC, widely known as Barefoot College, is a voluntary organization, working in the field of electrification through solar power, training rural persons and empowering them to be solar engineers, women empowerment, education, skill development, health, drinking water, health etc. and: Whereas the BCI a newly setup non-profit making company established to meet the growing magnitude and evolution of technology and enterprise activity arising through the global and domestic design, fabrication, supply and maintenance of renewable energy technology to communities and to our own educational models. BCI activities also include a range of women's enterprise activities building on the Training Curriculum delivered as part of BCI's technology activities. BCI Implements the Barefoot Women's Solar initiative in India and Abroad.”

11. Mr. Gupta has also referred me to a subsequent Agreement of Work dated 23rd September 2019, which was intended to be an annexure to a pre-executed MOU between the plaintiff and the defendant, in which it was acknowledged that Barefoot College International (“BCI”, hereinafter) is an extension and development of the initial work pioneered by the Social Work and Research Centre. Thus, submits Mr. Aditya Gupta, the defendant as much has acknowledged that it was incorporated as an extension of the plaintiff to carry forward the pioneering work which the plaintiff had been undertaking since 1972.

12. To establish the fact that the plaintiff was using its registered trademarks, including the two feet logo even before the defendant was incorporated in 2015, Mr. Aditya Gupta has referred me to

(i) posts dated 6th October 2009, 29th October 2012 and 1st November 2012 on the Facebook page of “Barefoot College”, which reflect the two feet logo,

(ii) a screenshot dated 6th December 2014 on the Facebook page of the plaintiff, which contains the following pictures:

13. These posts, submits Mr. Gupta, were prior in point of time to the incorporation of the defendant in 2015. The defendant has, however, usurped the said pages and has replaced the two feet logo of the plaintiff with modified two feet logo of the defendant.

14. Mr. Gupta‟s submission is that, from 2015 till 2021, the plaintiff and the defendant were working in tandem and, therefore, the plaintiff permitted the defendant to use the registered “BAREFOOT COLLEGE” word mark as well as two feet registered logo of the plaintiff. This was done because the activities of the defendant were, as the defendant itself acknowledged on its website, in extension of the activities which the plaintiff had already been undertaking since long.

15. During this period, in 2015, Bunker Roy resigned from the directorship of the defendant and in 2021 he surrendered his shareholding in the defendant‟s company.

16. As matter soured between the plaintiff and the defendant, they parted ways on 1st April 2021. By way of information of this schism, the plaintiff inserted the following announcement on its Instagram page: “This is to inform that Barefoot College, Tilonia/Social Work and Research Centre (SWRC) and Barefoot College International (BCI) will be working as separate entities with effect from 1 April, 2021, and will hereafter continue their work, independent of each other. We look forward to your support as we continue our mission, and uphold the values on which Bunker Roy founded the Barefoot College, Tilonia/Social Work and Research Centre (SWRC) 49 years ago, in 1972. More details about the focus and substance of our ongoing work is available on our website”

17. On 3rd April 2021, the plaintiff addressed the following email to the defendant: “Dear, As you know, SWRC and Barefoot College International have parted ways and despite numerous attempts of arriving at a mutually amicable resolution to our outstanding issues, we have not been able to close the various issues between the parties. We are now writing to inform you that we are withdrawing, with immediate effect, any permission given to Barefoot College International, whether impliedly or explicitly, whether orally or in writing, to use the trademark "BAREFOOT"/ "BAREFOOT COLLEGE" and any other intellectual property including the logos owned and developed by SWRC. Barefoot College International is not entitled to use the trademark "BAREFOOT" "BAREFOOT COLLEGE" in any manner and the logos owned and developed by SWRC for any business whatsoever. Yours sincerely, Ramkaran, Development Coordinator, SWRC Barefoot College, Tilonia.”

18. Mr. Gupta submits that there was no response to the aforesaid email, though the defendant admits having received it.

19. Despite the plaintiff having thus specifically withdrawn the permission granted by it, to the defendant, to use the plaintiff‟s registered “BAREFOOT COLLEGE” word mark and the two feet logo, the defendant, it is, admittedly, continued to use the “BAREFOOT COLLEGE” mark either by itself or as a part of its mark “BAREFOOT COLLEGE INTERNATIONAL”, and also continued to use the two feet logo encased, however, by a circle, thus: One may refer to this logo as the “modified two feet logo”.

20. In this context, the plaintiff avers thus, in para 12 of the written submissions tendered by it on 21st January 2023:

21. Mr. Gupta submits that the aforesaid continued usage, by the defendant, of the BAREFOOT COLLEGE mark as well as the modified two feet logo was in clear transgression of the direction by the plaintiff in its email dated 3rd April 2021, withdrawing the permission to use the said marks. The right of the defendant to use the said marks as a permissive user thereof, he submits, ceased with the said communication dated 3rd April 2021. Mr. Gupta has also referred me to certain e-mails received from his clients which, according to him, indicate that there was considerable confusion being created in the public as a result of the continued usage, by the defendant, of “BAREFOOT COLLEGE” as part of its mark and of the two feet logo.

22. Mr. Gupta alleges that the defendant has not only continued to use the aforesaid mark but has taken over the website of the plaintiff as well as its social media handles. The plaintiff had initially permitted the defendant to operate the said plaintiff‟s website www.barefootcollege.org and social media accounts as the plaintiff and the defendant were working in collaboration. Mr. Gupta submits that a comparison of the screenshot from the www.barefootcollege.org website as well as various social media accounts, which were being operated by the plaintiff prior to 2021, vis-à-vis their position as it stands today, reflects that the words BAREFOOT COLLEGE has been replaced with BAREFOOT COLLEGE INTERNATIONAL and the earlier two feet logo has been replaced by the defendant‟s imitative modified two feet logo. Mr. Gupta has, for this purpose, referred to a screenshot of the plaintiff‟s website www.barefootcollege.org as taken on 15th December 2020 and as taken on 11th January 2021, which provided in para 21 of the plaint, thus:

23. Mr. Gupta points out that comparison of the two screenshots reveals that the name and logo has been replaced by. This position, he submits, continues even after withdrawal, by the plaintiff, of the permission granted to the defendant to use either the BAREFOOT COLLEGE word mark or the two feet logo. Mr. Gupta submits that the intent of the defendant to continue to represent itself as working under the authorization of the plaintiff is apparent from the fact that, on the social media handles of the plaintiff which are now being operated by the defendant, the institution has been represented as BAREFOOT COLLEGE, rather than BAREFOOT COLLEGE INTERNATIONAL. He has, for this purpose, referred me to the Facebook page of Barefoot College as on 27th September 2021, bearing, at its head, the title “Barefoot College-Home/Facebook”, as well as the posts entered by the defendant on the said Facebook page, of which he has, inter alia, referred to the following posts:

24. Mr. Gupta has also referred me to the Instagram page presently being operated by the defendant which contains, at the head, the recitals Barefoot College International (@barefootcollege) • Instagram photos and videos, followed by the following depiction thereunder:

25. Mr. Gupta has also drawn my attention to the following email dated 13th October 2021 between the defendant and one of its customers, in connection with the “Reliance Foundation WGDP India Womenconnect Challenge”: “Barefoot College International is a globally recognised Section-8 social enterprise, which has been working with last mile rural communities in 17 states in India and 93 countries globally. The organization has been working with women in the developing world to foster localised self-sufficiency and sustainability. We host innovative programs in Access to Renewable Energy, Education, Women's Economic and Digital Participation, Enterprise, Women's Wellness and Water Management; by and through rural women. Barefoot Solutions produce results for 14 of the 17 UN Sustainable Development Goals. Barefoot College International has replicated and scaled its work through the establishment of campuses in Sierra Leone, Liberia, Burkina Faso, Tanzania/Zanzibar. Madagascar and is currently working with the Government of Fiji for the construction of the Barefoot Women‟s Vocational Training Centre for the Pacific Islands. In 2019, Barefoot College International was for the 6th year recognized within the Top 20 of the Global Journal's Top 500 NGO list. The global work of Barefoot College and Barefoot College International are recognized by the Skoll Foundation for Social Entrepreneurship, the Schwab Foundation for Social Entrepreneurship. The Catalyst 2030 network, UN women, UN Small Grants program, Qatar Foundation, among many others.”

26. Mr. Gupta submits that the aforesaid recital is clearly misleading, as BCI was never recognized by any Foundation. He submits, therefore, that the defendant is clearly seeking to ride upon the goodwill which has been earned by the plaintiff through years of social service. From the same page, Mr. Gupta has also invited my attention to the recital that “Barefoot College was built by and exclusively for the poor”. While this recital is correct, insofar as Barefoot College, established by the plaintiff in 1972 is concerned, Mr. Gupta submits that the defendant was seeking to portray itself as having established Barefoot College exclusively for the poor which was again misleading.

27. Mr. Gupta has also invited my attention to para 21 of the written statement filed by the defendant, in which it was asserted that “the concerned social media handles logo on Facebook, Twitter etc. were in fact created and operated by the defendant”. This assertion, submits Mr. Gupta, is again an example of how the defendant is seeking to mislead the public, as posts on the Facebook and Twitter social media handles of the plaintiff – now being operated by the defendant after it has illegally taken them over – date back to 2009- 2012, whereas admittedly the defendant was incorporated only on 20th July 2015. Equally false, submits Mr. Gupta, is the further recital, in para 23 of the written statement, to the effect that “after plaintiff unilaterally parted ways, the defendant has not used any content pertaining to the plaintiff on its website”. Mr. Gupta points out that even after parting of ways between the plaintiff and the defendant in April 2021 and the specific communication by the plaintiff to the defendant on 3rd April 2021, proscribing further use, by the defendant, of the BAREFOOT COLLEGE mark or of the two feet logo, these registered marks of the plaintiff continued to be used by the defendant.

28. The aforesaid facts, submits Mr. Gupta, make out a clear case of infringement, by the defendant, of the registered “BAREFOOT COLLEGE” word mark and the two feet logo of the plaintiff. While, prior to 3rd April 2021, the use of the said marks may not have amounted to infringement, as the defendant was using them as a permissive user while it was working in collaboration with the plaintiff, continued usage of the said marks after 3rd April 2021 cannot enjoy the immunity which permissive user confers and has, therefore, to be regarded as infringing in nature. Inasmuch as the defendant is continuing to use the said marks on the website, Mr. Gupta submits that the defendant has also sought to pass off their services as services which are being provided by the plaintiff or with its authorization.

29. In these circumstances, Mr. Gupta submits that a clear case for grant of injunction is made out. Submissions of Mr Jayant Mehta for the defendant

30. Responding to the submissions of Mr. Gupta, Mr. Jayant Mehta, learned Senior Counsel for the defendant pleads acquiescence, by the plaintiff, to the use of the plaintiff‟s registered trademarks by the defendant.

31. Mr. Mehta commenced his arguments by submitting that, while the plaintiff had sought to set up a case of having extended a licence to the defendant to use the plaintiff‟s registered “BAREFOOT COLLEGE” word mark and the two feet logo mark, no such licence was on record. In that view of the matter, Mr. Mehta submits that the entire case that the plaintiff has sought to set up, of grant of a licence to the defendant to use the aforesaid “BAREFOOT COLLEGE” word mark and the two feet logo mark and of withdrawal of the licence on 3rd April 2021, is unsupported by any corroborative material forthcoming on the record. In fact, submits Mr. Mehta, the defendant was continuously using the said marks with the knowledge of, and without any objection whatsoever from, the plaintiff.

32. Mr. Mehta has invited my attention to a Business Development and Consulting Agreement (BDA) dated 25th July 2015, which commences with the following recital: “BUSINESS DEVELOPMENT AND CONSULTING AGREEMENT This Contract of Engagement dated and effective this 25th day of July 2015 by and between Barefoot College (SWRC/Barefoot College International/Hateheli Sansthan), (hereinafter referred to as The Client), and Step Up & MFC Consulting Ltd. (hereinafter referred to as The Consultant).” The aforesaid recital in the BDA, submits Mr. Mehta, reveals that BAREFOOT COLLEGE was actually a commodious appellation used to designate the three entities SWRC, i.e. the plaintiff, BCI, i.e. the defendant and Hateheli Sansthan jointly. As such, he submits that the plaintiff‟s contention that the plaintiff was entitled to exclusivity of use of the BAREFOOT COLLEGE mark is devoid of substance.

33. Mr. Mehta‟s contention is, therefore, that the use, by the defendant, of the words BAREFOOT COLLEGE, on the pages from the social media websites to which Mr. Gupta had drawn reference, does not reflect any breach of any exclusive right to which the plaintiff is, in law, entitled.

34. Mr. Mehta has further invited my attention to various communications, by the defendant, to auditors, as well as the Board Resolution and the auditors‟ report of BCI, all of which are signed jointly by Bunker Roy and Bhagwat Nandan, the two directors of BCI. He, therefore, submits that Bunker Roy was never acting individually, but was always acting as one of the two directors of BCI.

35. The defendant, submits Mr. Mehta, was using BAREFOOT COLLEGE since 2015, as part of its corporate name, which was “BAREFOOT COLLEGE INTERNATIONAL”. BCI, a Section 8 company, he submits, was not the creation of the plaintiff. The plaintiff could neither have either granted nor revoked the permission to the defendant to use the “BAREFOOT COLLEGE” mark, once granted. As part of its corporate name, the defendant BCI, it is asserted by Mr. Mehta, was well within its authority in using the said name, of which “BAREFOOT COLLEGE” was merely an inalienable part. The plaintiff could not, within its authority, direct the defendant not to use either “BAREFOOT COLLEGE” or the two feet logo.

36. Mr. Mehta has also sought to contest the emphasis placed by Mr. Gupta on the fact that the plaintiff had, in its favour, registrations in respect of the “BAREFOOT COLLEGE” word mark as well as the two feet logo. He draws my attention, in this context, to the following e-mail trail: “Meagan Fallone <mfc.barefoot@gmail.com> Wed. Jan 30. 2019 at 4:21 PM To: Sanjit Roy <bunker.roy1@gmail.com> Cc "meagan" <meagan@barefootcollege.org>. Harsh Tiwari <harsh@barefootcollege.org>. Sue Stevenson BC <sue.stevenson@barefootcollege.org>. “Lara (Lauren)” <lauren@barefootcollege.org>. Lawrence Miglialo <lawrence@barefootcollege.org> Why on earth would we register a trade mark for Barefoot College to SWRC? Why would we not register the Words Barefoot College and the symbol to BCI so it made sense from a compliance standpoint? Who headed this initititive? Was anyone informed of what was being planned? Meagan Fallone CEO Barefoot College International ***** Lawrence Miglialo <lawrence@barefootcollege.org> Fri, Feb 1, 2019 at 3:31AM To: Meagan Fallone <mfc.barefoot@gmail.com> Cc: Sanjit Roy <bunker.roy1@gmail.com>, "Meagan <meagan@barefootcollege.org>. Harsh Tiwari <harsh@Darefootcollege.org>, Sue Stevenson BC <sue.stevenson@barefooicollege.org>, "Lara (Lauren) <lauren@barefootcollege.org> That is super weird. I never authorized any such thing. Am emailing Phoenix about this.”

37. Predicated on the aforesaid e-mails, Mr. Mehta contends that the entire registration, which was obtained in respect of the two feet logo and the “BAREFOOT COLLEGE” word mark were obtained surreptitiously, behind the back of the defendant. In fact, the defendant was expressing surprise as to how such a mark could be registered without its consent. He has also referred me, in the same context, to the following e-mail: “Sanjit Roy <bunker.roy1@gmail.com> Fri, Aug 14, 2020 at 9:33 AM To: Lawrence Miglialo <lawrence@barefootcollege.org> Cc: Ravi Narayanan <ravinarayanan1@gmail.com>, Leadership Team <leadershipteam@barefootcollege.org>, Srini Swaminathan <srini@barefootcollege.org>, Gurjit Singh <ambgurjitsingh@gmaii.com>, Patrick Sherrington <ppsherrington@gmail.com>, Shefali Roy <shefali@mac.com>, Meagan Fallone <mfc.barefoot@gmail.com>, Atalanti Moquette <atalantimoquette@gmail.com>, "meagan." <meagan@barefootcollege.org> Lawrence Thank you for your rather opinionated reply. I have appointed Srini as Manager leading these Communication initiatives. Since he has been appointed you don‟t need to know who are members of his Communication/website team unless he wishes to share their names with you. In any case you don‟t know any of them. The world will still know Barefoot College as one brand with BCI and SWRC as two sides of the same coin-Barefoot College. BCI will be given a link on the SWRC/Barefoot College website. By designing and planning our own website we will have avoided duplication and excessive expenditures. We have a VAST collection of videos photos and stories going back 48 years that will feature in the SWRC/Barefoot College/Tilonia website. We really do not need your expertise since there is enough available in India (what you call locally) at absurdly less cost. We will gladly work together-but on our terms now. Thank you Bunker”

38. In all these emails, submits Mr. Mehta, there is no assertion by the plaintiff, to the effect that the defendant could not use either of the subject marks, namely, the word mark “BAREFOOT COLLEGE” or the two feet logo. Even after, Bunker Roy had resigned from the directorship of the defendant, the same position continued, for which purpose Mr. Mehta has referred me to the following email: “Shefali Roy <shefali@mac.com> Wed, Jun 17, 2020 at 5:59 PM To: Ravi Narayanan <ravinarayanan1@gmail.com>, Gurjit Singh <ambgurjitsingh@gmail.com>, Patrick Sherrington <ppsherrington@gmail.com>, Atalanti Moquette <atalanti.moquette@gmail.com>. Harsh Tiwari Ji <harsh@barefootcollege.org> Hi Patrick, Harsh and Atalanti, Here is the latest version of the MOU where we've added our thoughts and amendments. Patrick, I think Ravi has already had a chat with you about the topics we don't agree to - this MOU reflects those conversations with the provisions in italics and for us to base our future conversations. To discuss this - perhaps we can do this next week so that it gives you all time to review and discuss internally? I know we said we can have a chat tomorrow, but perhaps next week is better. The date Ravi, Gurjit and I can do is 24th June. Thanks,”

39. Mr. Mehta has also taken me to the draft MOU, which is attached to the aforesaid email dated 17th June 2020 from Shefali Roy, particularly to the following recitals to be found thereunder: “AGREEMENT This Agreement is made on this ________(Date of Agreement). PARTIES  The Barefoot College, Social Work and Research Centre (SWRC Tlionia), a society registered under the Societies Registration Act 1860 in 1972 and having its registered office at 278, SFS Hauz Khas Apartment, New Delhi and administrative office at Village Tilonia, District Kishangarh, Rajasthan, India, represented by its Founder Director Mr. Sanjit Roy; And  Barefoot College International (BCI), a Section 8 not for profit, social benefit company registered under the Companies Act 2013 in 2015 and having its registered and administrative office in the "old campus" in Tilonia, represented by BCI's Chief Executive Office (BCI CEO), Ms. Meagan Fallone.

CONTEXT At a time of intense challenge both to the communities SWRC/Barefoot College International serve and to the organisations themselves given an extremely constricted financial and funding landscape going forward coupled with a high level of uncertainty surrounding operations, it has become essential to propose a restructuring which will: • Create a sound roadmap for the strategic approach for the next 5 years for the entities that make up The Barefoot College - SWRC Tilonia, BCI Tilonia, and BCI.”

40. Even in the afore-noted draft MOU, which was exchanged between the parties, submits Mr. Mehta, there was no restraint on the defendant continuing to use either the word mark “BAREFOOT COLLEGE” or the two feet logo.

41. Mr. Mehta has also taken me through the e-mails which followed the afore-extracted email dated 17th June 2020. Among these are the following emails dated 2nd March 2021 and 15th March 2021, from Shefali Roy: “Shefali Roy <shefali@mac.com> To: Harsh Tlwarl <harsh@barefootcollege,org> Tue, Mar 2, 2021 at 4:09 PM HI Harsh – I've sent the MOU draft and the updated communication wording to Jay and Atalanti. So we're waiting on their thoughts. Can you let me know when your Board / subset of Board is ok to have the next meeting to finalise the doc? We can do: Thursday 4 March 2pm 1ST Friday 5 March 2pm 1ST Monday 8 March 4pm 1ST Also how are things on the ground? Is there anything I can help with? Please let me know, ***** Shefali Roy <shefali@mac.com> Mon, Mar 15, 2021 at 5:49 AM To: Harsh Tiwari <harsh@barefootcollege.org> Cc: Gurjit Singh <ambassadorgurjitsingh@gmail.com>, Patrick Sherrington <ppsherrington@gmail.com>, Atalanti Moquette <atalantimoquette@gmail.com>, Naoko Felder <naoko@nfkconsulting.com>, Meagan Fallone <mjfallone@gmail.com>, Neeru Singh <neerugsingh@gmail.com>. Jay Goenka <j.goenka@dynamixgroup.co.in>, Abhimanyu Singh <abhsingh.education@gmail.com>, Susan Abraham <susan.abraham@forrad.org> Hello all. Draft MOD attached v[5]. Terms agreed: Terms that don't have tracked changes. Terms that require discussion: Term 10: reinstated term. Documents on ITEC and MNRE - SWRC believe that not all documents have been shared between BCI and SWRC so could this be sent through on a pen/usb drive so that we know all documents are accounted for. We also believe all physical files must be left on the SWRC campus. Term 11: reinstated term. While we agree that each entity owns their own assets as per projects and programs, we'd like this reinstated so that is clear and incontestable in the future. Term 14: we've reinstated this so that it is accounted for. Term 17: we've deleted the addition made by BCI - we don't believe this is necessary or needed. Term 20: we've deleted the addition made by BCI - we don't believe this is necessary or needed. Term 22: reinstated term. Content and ownership of the BCI website: Happy to discuss this in more detail in terms of content and how this will appear for your website -1 don't think we addressed this topic on prior calls. Things to discuss:  ownership of barefootcollege.org.  we need to agree content on how you reference Barefoot College / SWRC / Bunker Roy on your website - we would like removed: o any mention or usage of Bunker's name anywhere on your website o any of SWRC/Bunker's achievements including awards, public grants, international recognition on the BCI website, o anything that BCI explicitly hasn't had a hand in achieving or accomplishing prior to its formation, i.e. anything prior to 2015 o Removal of Ramkaran's name in your Staff section, and references to rainwater harvesting, water sanitation in your Solutions> Water section. We would also like for any of you to not reference Bunker Roy or Barefoot College Tilonia in any of your professional or personal bios on social media or professional websites.”

42. Mr. Mehta submits that in none of these mails was there any assertion by the plaintiff that the defendant could not continue to use either of the registered trademarks of the plaintiff which form subject matter of controversy in the present case.

43. In fact, submits Mr. Mehta, if one were to peruse the various documents and communications to which the plaintiff was a signatory even after registration of the aforesaid marks in its favour, it would be apparent that the plaintiff was not using the said marks. He has referred me, in this context, to an Agreement dated 1st August 2015 between the plaintiff and the defendant, Agreement dated 1st August 2018 between the plaintiff and the defendant and Agreement of Work- Reserved Fund Project dated 1st April 2018, apart from the balancesheet of the plaintiff for the financial year 2005-2006 and various other balance-sheets of the plaintiff and communication dated 25th August 2021 from the plaintiff to the defendant, in all of which the plaintiff was using the logo.

44. Thus, submits Mr. Mehta, the plaintiff was never asserting or using its registered two feet logo mark and was, on the other hand, tacitly acquiescing to the said logo and mark by the defendant even after April 2021.

45. Mr. Mehta has next addressed the plaintiff‟s assertion of its domain name www.barefootcollege.org. He submits that the plaintiff is asserting ownership of the said domain name solely on the basis of the WHOIS details relating to the domain name www.barefootcollege.org available on the internet. The plaintiff‟s contention that, as the domain name was registered on 23rd August 1999, before the defendant was incorporated in 2015, the plaintiff could claim ownership over the domain name was misguided. He submits that admittedly, in 2015, the plaintiff had asked the defendant to manage the aforesaid domain name. The defendant had, in fact, paid the requisite charges and annual fees to the Registrar for continued usage of the said domain name. He has referred me, in this context, to an e-mail dated 28th June 2020, in which it was clarified that the defendant was making all payments for continued use of the aforesaid domain name. Mr. Mehta submits that, as the plaintiff was not of the owner of the domain name www.barefoot.org, it could not seek to injunct the defendant from use of the said domain name.

46. Mr. Mehta has next referred me to a draft agreement which was exchanged between the parties and which contained the terms on which the defendants could continue to use the marks which the defendant seeks to assert in the present suit. The draft agreement, he submits, did not contain any proscription against the defendant using the said marks. He submits that the agreement had almost reached the stage of finalisation with consensus ad idem regarding its terms, and that the matter was only pending clearance from the plaintiff. As there had been meeting of minds between the parties with respect to the covenants of the said agreement, he submits, that though the agreement was not finally signed, the plaintiff could not seek to resile from its terms. In view of the said agreement, Mr. Mehta submits that the plaintiff could not continue to seek to assert the word mark “BAREFOOT COLLEGE” or the two feet logo.

47. Mr. Mehta concludes his submissions by contending that, as the law stands, mere registration of a trademark does not ipso facto entitle the plaintiff to injunction against a defendant who is using the said mark. Acquiescence to the use, by the defendant, of the mark, submits Mr. Mehta, constitutes an absolute defence and, in the face of such acquiescence, no injunction could be granted in favour of the plaintiff. He has placed reliance, in this context, on the decisions in Shree Ram Education Trust v. SRF Foundation[1], Mittal Electronic v. Sujata Home Appliances (P) Ltd.[2] and Kent RO System Ltd. v. Gattubhai[3]. Submissions in rejoinder by Mr. Aditya Gupta

48. Mr. Gupta, arguing in rejoinder has submitted that there was no contest, by the defendant, to the plaintiff‟s assertion of goodwill, reputation or prior use. Apropos the submission of Mr Mehta that no licence agreement, whereby the plaintiff had allowed Defendant 1 to use the BAREFOOT COLLEGE mark and the three feet logo had been produced by the plaintiff, Mr Gupta submits that Mr Mehta‟s submission, if accepted, would further weaken his case as, then, 2016 SCC OnLine Del 472 Judgement dated 9th September 2020 in CS(COMM) 60/2020 (2022) 90 PTC 257 Defendant 1 would have been using the said marks, registered in the plaintiff‟s favour, without any permission from the plaintiff and would not, therefore, even be entitled to the benefit of permissive user. In this context, Mr Gupta has drawn attention to para 13 of the plaint, in which it is specifically averred, inter alia, thus: “The Defendant was incorporated as Barefoot College International and was permitted to operate under the said name since this would aid the Defendant‟s efforts to generate funds for pursuing common goals of the parties. The Plaintiff‟s founder and another senior staff member were also on the board of directors of the Defendant and this arrangement was made to ensure alignment of goals of the parties and to avoid disrepute being brought to the trademark BAREFOOT/BAREFOOT COLLEGE.” These averments were admitted, in the corresponding paragraph of the written statement, to be “matters of record”. Further, in para 16 of the written statement, Defendant 1 averred thus: “Rather, the Plaintiff, as well as Mr Sanjit Roy by their conduct, encouraged/consented to the use by Defendant of the mark „BAREFOOT COLLEGE INTERNATIONAL‟. Basis such encouragement/consent/no objection of Plaintiff, as well as of Mr Sanjit Roy, the Defendant spent significant monies/amounts in respect of the said mark.” Mr Gupta submits that, in view of these admissions, the presence, or absence, of any written arrangement whereby Defendant 1 was permitted to use the BAREFOOT COLLEGE word mark and the two feet mark registered in the plaintiff‟s favour, would make no difference. That permission, he reiterates, stood revoked on 3rd April

2021.

49. Responding to Mr Mehta‟s plea of acquiescence, Mr Gupta submits that from 20th July 2015 till 2020, the plaintiff and Defendant 1 were collaborating in further the plaintiff‟s cause and Defendant 1 was, therefore, using the plaintiff‟s marks with its consent. From 2020 till 31st March 2021, he submits that the Plaintiff and Defendant 1 attempted to work out their differences and, when that did not happen, the permission granted by the plaintiff to Defendant 1 was revoked on 1st April 2021. There could, therefore, be no question of acquiescence, on the part of the plaintiff, to use, by Defendant 1, of the trade marks which stood registered in favour of the plaintiff.

50. The draft Agreement on which Mr Mehta relied is, according to Mr Gupta, of no consequence whatsoever. There was no consensus ad idem regarding its terms, which was why it was never finalized. In fact, submits Mr Gupta, Clause 10 of the Draft Agreement read thus:

53. The e-mails dated 30th January 2019 and 1st February 2019, relied upon by Mr Mehta and reproduced in para 36 supra, Mr Gupta submits, are also of no consequence as the plaintiff did not require any permission from the defendants to have the BAREFOOT COLLEGE and the two feet logo registered in its favour.

54. Mr Gupta further submits that the reliance, by Mr Mehta, on the Agreement dated 25th July 2015, to contend that “BAREFOOT COLLEGE” was a compendious name to designate the conglomerate of the plaintiff, Defendant 1 and Hatheli Sansthan, is totally misplaced. The said Agreement, in any event, did not create any trade mark rights in favour of Defendant 1. Analysis

55. I have heard learned Counsel for the parties and have applied my mind to the rival contentions advanced at the bar and perused the documents on record.

56. Mr. Mehta has taken me through a wide swath of (2016) 65 PTC 452 (Del) (2013) 55 PTC 469: (2013) 203 DLT 398 communications and documents between the parties which, in his submission, disclose, firstly, (i) that the defendant was using the word mark “BAREFOOT COLLEGE” and the two feet logo, registered in the plaintiff‟s favour, with the plaintiff‟s consent and (ii) that the plaintiff had, thereby acquest to the use of the said marks, which itself operated to disentitle the plaintiff to an injunction against the defendant. He has also sought to point out that the plaintiff was itself not using the said mark but was, rather, using the mark. Essentially, the burden of Mr. Mehta‟s song has been that there was complete lack of assertion on the part of the plaintiff, of the marks which it seeks to assert today and that the usage of the marks, by the defendant, was with the consent and acquiescence of the plaintiff and with its knowledge at all points of time.

57. At this point of time, if the defendant is to be injuncted from use of its mark, Mr. Mehta would submit that serious prejudice would result to the defendant, who has, over time, accumulated considerable goodwill in the said marks. Both the plaintiff and the defendant being involved in social activities, rather than commercial gain, Mr. Mehta‟s contention is that some of via media could be worked out, rather than injuncting the defendant from further use of the word mark BAREFOOT COLLEGE and the two feet logo.

58. Mr. Aditya Gupta, per contra, submits that this is a clear case of unauthorised user of the plaintiff‟s mark and that, as rampant confusion is resulting as a consequence of such user by the defendant, there is no possibility of amicable resolution of the dispute at least at this stage.

59. There is, clearly, no dispute about the fact that

(i) the mark BAREFOOT COLLEGE has been used by the plaintiff since 1972, whereas the defendant was incorporated only in 2015,

(ii) the BAREFOOT COLLEGE word mark and the two feet logo device mark stand registered in favour of the plaintiff, and the registrations continue to remain valid and subsisting till date,

(iii) the defendant, per contra, has no registration in its favour of either of the said marks,

(iv) the plaintiff has, therefore, priority both of user and registration vis-a-vis the defendant in respect of the said marks,

(v) the defendant was using the aforesaid marks till 3rd April

2021 as a permissive user, consequent on permission having been granted by the plaintiff, as is admitted by Defendant 1 itself in its pleadings (even if there is no licence granting such permission forthcoming on the record),

(vi) on 3rd April 2021, the plaintiff categorically wrote to the defendant, requiring the defendant to cease use of both of the “BAREFOOT COLLEGE” word mark as well as the two feet device mark, thereby withdrawing the said permission, and

(vii) despite such categorical communication, the defendant has continued to use the said marks.

60. Mr. Mehta‟s contention that there is no license available on the record, whereunder the plaintiff had permitted the defendant to use the “BAREFOOT COLLEGE” word mark and the two feet logo, in fact, would work against the defendant‟s interest rather than in its favour. If the defendant was not licensed or permitted by the plaintiff to use the said marks, the user of the marks by the defendant would be infringing ab initio, as Defendant 1 would, then, not have, to its advantage, even the plea of permissive user.

61. This Court, however, does not deem it necessary to enter into that arena as the defendant does not dispute receipt of the e-mail dated 3rd April 2021, whereby the plaintiff specifically directed the defendant to discontinue usage of the BAREFOOT COLLEGE word mark and the two feet logo. In view thereof, the submission, of Mr. Mehta, that there has been acquiescence on the part of the plaintiff in allowing usage of the mark by the defendant is clearly devoid of substance. If the defendant has continued to use the said mark after 3rd April 2021, it is completely without authority and is at the defendant‟s own risk and peril.

62. Mr. Gupta has pointed out that, till 3rd April 2021, the plaintiff and the defendant were mutually cohabiting and that, therefore, as the defendant was furthering the activities and purpose of the plaintiff, the plaintiff had itself consciously permitted usage, by the defendant, of the BAREFOOT COLLEGE word mark and the two feet logo. That permission was brought to an end on 3rd April 2021. The defence of permissive user which was available to the defendant till 3rd April 2021, therefore, was no longer available to it thereafter. After 3rd April 2021, therefore, the position that results is that the BAREFOOT COLLEGE word mark and the two feet logo were, in fact, registered in favour of the plaintiff and, without any authority whatsoever, the defendant was infringing the said marks. The BAREFOOT COLLEGE INTERNATIONAL mark of the defendant clearly infringes the BAREFOOT COLLEGE word mark of the plaintiff. Similarly, the logo of the defendant clearly infringes the logo of the plaintiff. Though the registration granted to the plaintiff in respect of the two foot logo registers the mark in monochrome, section 10(2)8 of the Trademarks Act specifically clarifies that, where the mark is registered without limitation of colour, it shall be deemed to be registered for all colours. The case, therefore, is one of plain and simple infringement in which, prior to 3rd April 2021, a defence of permissive user was available to the defendant which after that date, has ceased to become available.

63. The plea of acquiescence, as advanced by Mr Mehta is unacceptable. Acquiescence, as an inhibitor to an infringement action, is statutorily confined to Section 339 of the Trade Marks Act. Where the principle is thus statutorily confined, it cannot exist, or be invoked, outside those confines. Acquiescence and waiver are but two sides of one coin. He who acquiesces, also waives. For acquiescence to apply against the plaintiff, therefore, it must be positively shown, by the defendant pleading acquiescence, that

(i) there is positive acquiescence (Section 33 does not envisaged any “deemed acquiescence”),

(ii) the acquiescence must be for a continuous period of five years, and

10. Limitation as to colour. – ***** (2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

33. Effect of acquiescence. – (1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark – (a) to apply for a declaration that the registration of the later trade mark is invalid, or (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith. (2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.

(iii) the acquiescence must be to use of the trade mark by the defendant.

As to what would constitute “aquiescence”, as would justify invocation of Section 33, the Trade Marks Act is silent. Nor is “acquiescence” defined therein. On acquiescence and waiver, however, the Supreme Court has, in State of Punjab v. Davinder Pal Singh Bhullar10, ruled thus: “39. In Power Control Appliances v. Sumeet Machines (P) Ltd.11 this Court held as under: “26. Acquiescence is sitting by, when another is invading the rights…. It is a course of conduct inconsistent with the claim…. It implies positive acts; not merely silence or inaction such as involved in laches. … The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant….”

40. Inaction in every case does not lead to an inference of implied consent or acquiescence as has been held by this Court in P. John Chandy & Co. (P) Ltd. v. John P. Thomas12 ]. Thus, the Court has to examine the facts and circumstances in an individual case.

41. Waiver is an intentional relinquishment of a right. It involves conscious abandonment of an existing legal right, advantage, benefit, claim or privilege, which except for such a waiver, a party could have enjoyed. In fact, it is an agreement not to assert a right. There can be no waiver unless the person who is said to have waived, is fully informed as to his rights and with full knowledge about the same, he intentionally abandons them. (Vide Dawsons Bank Ltd. v. Nippon Menkwa Kabushiki Kaisha13, Basheshar Nath v. C.I.T.14, Mademsetty Satyanarayana v. G. Yelloji Rao15, Associated Hotels of India Ltd. v. S.B. Sardar Ranjit Singh16, Jaswantsingh Mathurasingh v. Ahmedabad Municipal Corpn.17, Sikkim Subba Associates v. State of Sikkim18 and Krishna Bahadur v. Purna Theatre19.)

(2004) 8 SCC 229: 2004 SCC (L&S) 1086: AIR 2004 SC 4282

42. This Court in Municipal Corpn. of Greater Bombay v. Dr Hakimwadi Tenants' Assn.20 considered the issue of waiver/acquiescence by the non-parties to the proceedings and held:

43. Thus, from the above, it is apparent that the issue of bias should be raised by the party at the earliest, if it is aware of it and knows its right to raise the issue at the earliest, otherwise it would be deemed to have been waived. However, it is to be kept in mind that acquiescence, being a principle of equity must be made applicable where a party knowing all the facts of bias, etc. surrenders to the authority of the Court/Tribunal without raising any objection. Acquiescence, in fact, is sitting by, when another is invading the rights. The acquiescence must be such as to lead to the inference of a licence sufficient to create rights in other party. Needless to say that the question of waiver/acquiescence would arise in a case provided the person apprehending the bias/prejudice is a party to the case. The question of waiver would not arise against a person who is not a party to the case as such person has no opportunity to raise the issue of bias.” (Italics and underscoring supplied) Thus, for acquiescence or waiver to apply against a plaintiff,

(i) the plaintiff must be shown to have been sitting by, when the defendant was invading his rights,

(ii) the course of conduct of the plaintiff must be inconsistent with the claim,

(iii) the act of acquiescence has to be positive, and not mere inaction or silence,

(iv) the acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant,

(v) there must be conscious abandonment of an existing legal right, advantage, claim or privilege, as would amount to an agreement not to assert the right, and

(vi) voluntary and intentional relinquishment of the plaintiff‟s right must be shown to have taken place. These principles, unquestionably, overlap. They cannot, however, be overstressed. The law does not lightly presume abandonment, by the persons whom it governs and to whom it confers valuable rights and privileges, of those rights and privileges. Intentional abandonment, therefore, is the sine qua non, such as would result in conferment of an implicit licence to the defendant to continue to act as it is acting, and a positive agreement, by the plaintiff, not to assert the right that the law grants him.

64. The law does not, therefore, recognize “implied acquiescence”, though, in certain circumstances, acquiescence, or waiver, may be deemed to have occurred. The distinction is subtle, but sure. Acquiescence, or waiver, requires a positive course of action. Mere inaction does not, ipso facto, result in abandonment. Intention, however, is a state of mind and, like all states of mind, the law may deem that state of mind to exist, if the requisite corroborative positive factors converge, or co-exist. Where, therefore, the course of action adopted by the plaintiff is such that it satisfies all the aforeenumerated indicia of acquiescence or waiver, acquiescence or waiver is deemed to have occurred, not as a matter of legal presumption, but because the necessary psychological animus is found to actually exist.

65. The bar is high, not to be scaled easily. Most importantly, a right which is positively asserted at any point of time is, ordinarily, not to be deemed to have been abandoned later, except where such abandonment is express, and in the same manner in which the assertion, earlier, took place.

66. Seen thus, the factors emphasized by Mr Mehta, even cumulatively, cannot be said to make out a case of acquiescence, by the plaintiff, to use of the BAREFOOT COLLEGE word mark and the two feet logo device mark, after 1st April 2021. We are concerned, in the present case, with usage of the said marks, by Defendant 1, after 1st April 2021, not prior thereto. There is no revocation, by the plaintiff, if its directive to Defendant 1 on 1st April 2021 to discontinue use of the BAREFOOT COLLEGE word mark and the two feet logo device mark. As Mr Gupta correctly pointed out, a permissive user of the mark of another has to remain conscious of the fact that the permission may, at any time, be withdrawn. Permissive user of the registered trade mark of another does not, with passage of time, result in a right to claim adverse possession of the right to use the mark. It remains, at all times, permissive. So long as the permission subsists, there is no infringement. User after the permission has ceased is ex facie infringing in nature.

67. Section 28(1) of the Trade Marks Act confers exclusivity, on the holder of a registered trade mark, to its ownership and use, and to protection against its infringement. That exclusive right is not dependent on continued assertion of the mark. The plea of nonassertion, by the plaintiff, of the BAREFOOT COLLEGE word mark or the two feet logo device mark is, therefore, of no consequence. Even otherwise, the present proceedings were instituted in the IPAB, by the plaintiff, on 12th October 2021, just a little over 6 months after it had, on 1st April 2021, revoked the permission to use its registered trade marks. Continued non-assertion of the marks can hardly be pleaded in such a case.

68. The above position applies, mutatis mutandis, in respect of the domain name www.barefootcollege.org. Though Mr. Mehta has sought to cast a cloud over the ownership of the said domain name, prima facie, the submissions of Mr. Gupta in that regard merit acceptance. There is no dispute about the fact that the domain name was in fact created on 23rd August 1999, as is apparent from the WHOIS details available on the internet. It is also not in dispute in 1999, the Defendant 1-company was not even in existence. Clearly, therefore, the domain name was in usage by the plaintiff for 16 years even before the defendant was incorporated. In such circumstances, the plaintiff is, prima facie, entitled to assert the user and ownership of the domain name.

69. Without prejudice, even were it to be presume that the defendant had any right of ownership over the domain name www.barefootcollege.org, that domain name would still infringe the BAREFOOT COLLEGE word mark which stands registered in favour of the plaintiff. Even on that ground, therefore, a case for injuncting the defendant from continued use of the domain name www.barefootcollege.org exists.

70. I see no reason to enter into all other arguments advanced by Mr Mehta. There is no prima facie merit in the argument of acquiescence. The plaintiff has, to its credit, priority both of use and of registration. The defendant has, in its written statement, clearly acknowledged that it was using the BAREFOOT COLLEGE mark only with the permission of the plaintiff. The day the permission was withdrawn, the user of the mark became infringing. Continued infringing user can hardly be explained away by pleading acquiescence. The communications between the parties do not indicate any acquiescence, by the plaintiff, to the continued user, by the defendant, of the BAREFOOT COLLEGE word mark of the two feet logo device mark.

71. In view of the aforesaid, I am of the opinion that a clear prima facie case of infringement, by the defendant, of the registered BAREFOOT COLLEGE word mark and the two feet logo of the plaintiff is made out. Where a case of infringement is thus found to exist, the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah21 and Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia22, holds that injunction has necessarily to follow.

72. In that view of the matter, pending further orders, there shall be a restraint against the defendant using the BAREFOOT COLLEGE word mark and the two feet logo of the plaintiff for any purpose whatsoever. The defendant is, therefore, injuncted from using the impugned BAREFOOT COLLEGE INTERNATIONAL and marks in any manner, including user as the name of the Defendant 1company, pending disposal of the suit.

73. I.A. 114/2023 stands allowed accordingly.

74. List for hearing and disposal on 16th March 2023.

C.HARI SHANKAR, J MARCH 1, 2023