Delhi Public School Society v. DPS World Foundation

1. The plaintiff has instituted this suit to restrain the defendants from using the name “Delhi Public School”, “DPS” and the following two logos / crests: 2018:DHC:2198

2. Vide interim order dated 18th April, 2016, the defendants have been restrained from using the trade mark / name “DPS”.

3. In an appeal being FAO(OS)(COMM) No.21/2016 preferred by the defendants to the Division Bench, it was inter alia held in the judgment dated 10th April, 2017 as under: “38. We, therefore, do not find any justifiable reason to interfere with the finding of the learned Single Judge that the name of defendant No.1 „DPS World Foundation‟ and its logo which included the plaintiff‟s registered trade mark „DPS‟ resulted in infringement under Section 29 of the Trade Marks Act, 1999.

39. However, it may be added that for the trade mark / name „Delhi Public School‟, no registration has been granted to the plaintiff till date. Moreover, as rightly contended by the appellants, it contains separate words „Delhi‟ „Public‟ „School‟ in respect of which the plaintiff cannot seek exclusive rights for passing off purposes.

40. It is also relevant to note that though there was a specific prayer in the application to grant injunction in respect of the trade mark / name „Delhi Public School‟, the same has not been granted by the learned Single Judge.

41. Therefore, may be it is open to the defendant No.1 to adopt the trade name / mark including the words „Delhi‟ „Public‟ „School‟, however, the registered trade mark / name „DPS‟ of the plaintiff cannot be used in any manner whatsoever. The appeal is accordingly disposed of.”

4. In Review Petition No.148/2017 preferred by the plaintiff before the Division Bench, Mr. Salman Khurshid, appellant no.2 therein, assured the Division Bench that the defendants did not have any intention of using the words „Delhi‟ „Public‟ „School‟ sequentially and even if they used the said words, they proposed to break the sequence either by inserting a word between the words „Delhi‟ and „Public‟ or between the words „Public‟ and „School‟, apart from issuing a disclaimer that they were not connected with the plaintiff in any manner; it was further assured that the same statement would be made before this Bench as well.

5. Being of the view that the parties, which are educational institutions, should not spend their time and energy in Courts and devote the same to the betterment of the education of the children admitted to their institutions, from time to time, efforts were made for amicable resolution of the controversy. Though at one point of time, it appeared that a solution was in sight but the past acrimonious relationship between the parties did not allow the said efforts to bear fruit. Hence, issues were framed in the suit and trial commenced.

6. The counsels were heard on several pending applications and orders thereon reserved on 18th January, 2018.

7. IA No.6764/2017 and IA No.7261/2017, both under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) and both filed by the plaintiff are inter alia for adjudication.

8. Vide IA No.6764/2017, the plaintiff seeks to restrain the defendants, during the pendency of the suit, from using the registered trade mark/name „Delhi Public School‟ of the plaintiff or any other trade mark identical or deceptively similar thereto. It is pleaded in the application i) that since vide order dated 18th April, 2016, the defendants were restrained from using the plaintiff‟s trade marks / name „DPS‟ and the logo only, therefore the scope of FAO(OS)(COMM) No.21/2016 was confined to the trade mark / name „DPS‟ and logo only; ii) still the Division Bench in paras no.38 to 41 of its judgment dated 10th April, 2017 recorded as reproduced above; iii) that since the findings given by the Division Bench were contrary to the statements given by the defendants before the Single Bench, the plaintiff applied for review and in which the defendant no.2 meted out assuranceas noted above; iv) that the use by the defendants of the mark / name „Delhi Public World School‟ is deceptively similar to the mark / name „Delhi Public School‟ of the plaintiff; and, v) that the defendants are also describing „Delhi Public World School‟ as a „Dipsites Knowledge Initiative‟. The plaintiff thus seeks to restrain the defendants from infringing the registered trade mark / name „Delhi Public School‟ of the plaintiff and from using the word „Dipsites‟.

9. Vide IA No.7261/2017, the plaintiff seeks clarification that the restraint order passed by this Court vide order dated 18th April, 2016 covers the mark „DPWS‟ and further seeks to restrain the defendants from using the words / name „Delhi Public World School‟ and „Delhi Public World Foundation‟.

10. The questions which arise for consideration are, whether this Bench can, on merits, consider the interim reliefs aforesaid after the disposal vide order dated 18th April, 2016 of the application of the plaintiff under Order XXXIX Rules 1&2 of the CPC and after the disposal of the FAO(OS)(COMM) No.21/2016 preferred thereagainst and whether the plaintiff is entitled to the said reliefs in terms of the order of the Division Bench and / or in terms of the order on the Review Petition preferred by the plaintiff before the Division Bench.

11. The senior counsel for the plaintiff has argued that the plaintiff, on 26th April, 2016, has been granted registration of mark „Delhi Public School‟ in Class-42 and use by the defendants of „Delhi Public World School‟ constitutes infringement thereof. It was further contended that the test has to be applied in the background of the fact that the defendant no.2 Salman Khurshid was the public face of the plaintiff for ten years and has whereafter set up competing educational institutions and cannot be permitted to use the mark / word „Delhi Public World School‟ or „Delhi Public World Foundation‟ which are likely to convey to the public at large, owing to the past association of the defendant no.2 with the plaintiff, that the defendants are the same as the plaintiff. It is further argued that the alumni of the plaintiff‟s schools are referred to as „Dipsites‟ and the defendant no.2 is at best one of the said alumni and cannot appropriate the word „Dipsites‟, to himself, which belongs to the whole body of alumni of the plaintiff‟s schools. It was yet further contended that the said use is also intended to mislead the public.

12. Per contra, the defendant no.2 arguing in person has contended that the plaintiff, if at all entitled to any relief, has to go back to the Division Bench and cannot get any relief before this bench. It was further contended that the defendants are not stopping other alumni of the plaintiff‟s schools from using the word „Dipsites‟. It was yet further contended that a „Delhi Public Secondary School‟ also exists. It is also the contention that the plaintiff has not amended the plaint for the plaintiff to be entitled to any additional interim relief than to what the plaintiff was held entitled to in the order dated 18th April, 2016 and appeal whereagainst has also been disposed of.