Turning Point Institute Private Limited v. M/s Turning Point

14. The plaintiff submits that its institute - under the trademark "TP Turning Point", has gained reputation among students all over India regarding the plaintiff’s preparatory classes concerning medical and I.A. No. 16232/2015 in CS (OS) No. 2368/2015 engineering entrances since 1994, which is evident from the annual turnover and advertisement and promotional expenses for the last 5 years: Annual Turnover for the last 5 years: YEARS Annual Turnover (in Rupees) 2010-11 5991057.00 2011-12 6112635.00 2012-13 6430931.00 2013-14 6816307.00 2014-15 6935275.00 Expenditure in Advertisement and Brand promotional activities for the last 5 years: YEARS Expenditure in Advertisement and Brand promotion (in Rupees) 2010-11 346587.00 2011-12 441058.00 2012-13 459223.00 2013-14 672244.00 2014-15 907924.00

15. The case of the plaintiff is that on 19th April 2015, the plaintiff Institute’s Managing Director came across defendant No.1’s advertisement I.A. No. 16232/2015 in CS (OS) No. 2368/2015 with the identical mark as that of the plaintiff i.e. “TP Turning Point” for identical services as that of the plaintiff i.e. preparatory classes for medical and engineering entrance, and then realized that the defendants are engaged in rampant use of the identical mark as that of the plaintiff. The plaintiff realised that the defendant was passing off its services with the trademark “TP Turning Point”, as that of the plaintiff. Consequently, the plaintiff preferred this suit.

16. Ld. Counsel for the plaintiff submits that defendants have misrepresented the plaintiff’s mark as their own and passed off their services as those of the plaintiff. The defendants have copied the identical mark “TP Turning Point” and are using the same for identical services as of the plaintiff’s. The comparison of the two labels used by the respective parties are produced herein below: Defendants Trademark Plaintiffs Trademark

17. Ld. counsel for the plaintiff submits that they are the prior adopters of the trademark “TP Turning Point” since the year 1994. Therefore, the plaintiff is entitled to appropriate the mark and claim the sole and exclusive right to use the same. She submits that the subsequent use or registration of the mark – be it identical or deceptively similar to the plaintiff’s mark, I.A. No. 16232/2015 in CS (OS) No. 2368/2015 would be contrary to the common law rights vesting in the plaintiff in respect of the said mark. Reference has been made to several documents placed on record in support of the plaintiff’s claim of adoption and user of the mark “TP Turning Point” since 1994. I shall refer to these documents in detail while dealing with them a little later.

18. Ld. Counsel for the plaintiff submits that defendant no. 2 has dishonestly adopted and mala fide obtained trademark registration of the mark ‘TP Turning Point’, in the year 2004, under Class 41, vide application no. 1324835, claiming user from 07.07.1998. The application for registration, as well the user claimed therein is subsequent to the adoption of mark by the plaintiff. Ld. counsel for the plaintiff relies upon defendant’s documents to state there is nothing brought on record by the defendants to show user from 1998, as claimed by them. The plaintiff further submits that the impugned registered mark of the defendants has not been renewed since 09.12.2014, and has, therefore, expired.

19. Ld. Counsel submits that the plaintiff’s mark, ever since its adoption, has been used for providing services in the field of education and training, continuously and uninterruptedly, and has gained substantial reputation and goodwill among the relevant sections of public. The plaintiff’s mark is, thus, enjoying the status of a well known trademark. The defendants are ridding piggy back on this reputation which the plaintiff has garnered over the years, in its trademark “T.P Turning Point”, and are deliberately and in a mala fide manner passing off their services as that of the plaintiffs. She points out that the trademark registration applied for by the defendants, in the year 2004, i.e. after a decade of adoption and continuous use of the plaintiff’s mark, I.A. No. 16232/2015 in CS (OS) No. 2368/2015 further evidences the fact that the defendants intended to ride on the reputation the plaintiff’s institute.

20. Ld. Counsel for the plaintiff submits that because of the illegal adoption and use by the defendants of the plaintiff’s trade mark, the consumers and members of the trade are being misled into falsely believing that the defendants’ services are either being offered by the plaintiff, or endorsed by the plaintiff, or the two have some nexus or affiliation. She submits that there has been actual confusion amongst the consumer – students who are young and ignorant, and relies on the numerous inquiries received by the plaintiff in the months April-June 2015 regarding the branch offices opened by the defendants in New Delhi. She submits that the plaintiff's customers and acquaintances in trade were misled by the defendants’ advertisement into believing that the said services were being offered by the plaintiff institute.

21. Ld. Counsel further submits that as a result of this misrepresentation and encashment on the goodwill of the plaintiff, defendants have caused irreparable loss and damage to the plaintiff. The damages are not just monetary, but relate to the goodwill and reputation of the plaintiff’s institute as well. She submits that the young and gullible students are suffering, who are being driven to the coaching centres of the defendants, not knowing that the plaintiffs have no concern with them. Thus, their careers are at stake. By enrolling with the defendant for the purpose of training – under the misrepresentation that the institutes of the defendants are being services by the plaintiff, the aspiring students are being denied the impeccable quality of I.A. No. 16232/2015 in CS (OS) No. 2368/2015 preparatory courses offered by the plaintiff. They are being imparted substandard educational services by the defendant. Defendant’s submission

22. The submissions of the defendants in their respective ad interim injunction application, I.A. No. 22081/2015, and their reply to I.A. NO. 16232/2015 of the plaintiffs, are taken note of together. The defendant no. 1 in its ad-interim injunction application submits that it recently came to know of the plaintiff’s existence in August 2015, when the plaintiff filed its suit CS (OS) No. 2368/2015 in this Court against the defendants.

23. Defendants submit that defendant no. 1 is a sole proprietorship concern of defendant no. 2, Mr. Keshav Agarwal situated at Malviya Nagar, New Delhi engaged in providing educational, coaching and training services to students in schools and colleges since the year 1998. Defendants further submit that these services are being provided under the mark “Turning Point” - coined by the defendants. The defendants have various centres in Delhi situated at Malviya Nagar, Kalkaji, Dwarka and Rajouri Garden, all functioning under the mark “Turning Point”. These services are also being provided in association with another sole proprietorship firm run by the wife of defendant no. 2 under the mark “PYRAMID CLASSES”.

24. Defendants submit that the said mark has been got registered on 15.11.2005 in Class 41 for “Educational Services, Providing of Training, Entertainment, Sporting & Cultural Activities”, claiming user since 1998. The defendants submit that the registration is valid and subsisting. Defendants refute the plaintiff’s contention that the registration of the said I.A. No. 16232/2015 in CS (OS) No. 2368/2015 mark has lapsed. Reliance is placed on Form TM 12 dated 11.08.14 filed before the Registrar of Trade Marks for renewal of the mark, and the status page from the website of the Trade Marks Registry, which displays the status of the trademark as “registered”.

25. Defendants submit that they are primarily engaged in imparting coaching and training of subjects such as commerce, science, arts, etc. to students of Class VIII to XII of various schools in Delhi and around it. Defendants submit that they also provide coaching and training to students for various competitive entrance exams such as BBA, BBS, LAW, IIT, AIEEE, MEDICAL, CA, HM, CPT, etc. The defendants are maintaining a website with the IP address www.theturningpointonline.com containing all the information about its activities. Defendants also conducts online test on this website, and uploads various demo lectures on websites like www.YouTube.com, which can be accessed all across the world.

26. Defendants submit that they have taught thousands of students since the year 1998. The defendants have printed various brochures highlighting the success of its students and their achievements in the educational field. The defendants have extensively advertised their services with its mark “Turning Point” through brochures and advertisements in newspapers. The defendants are associated with various schools in Delhi, and outside, to provide education, training, and coaching services to students.

27. Defendants submit that they have achieved significant turnover since

1998. From revenues of Rs 2,90,000 for the year 1999-2000, the same has gone up to Rs 1,53,23,748 for the year 2014-2015. They further submit that I.A. No. 16232/2015 in CS (OS) No. 2368/2015 they have also incurred substantial expense in advertising and promotion of their mark “Turning Point”. Invoices of expenditure incurred towards advertising have been filed with the pleadings. The defendants, therefore, claim to have built up enormous goodwill, reputation and name in the market amongst the relevant sections of the public for its quality driven and effective coaching and training to its students. The defendants claim that by virtue of their goodwill and reputation, their mark “Turning Point” has become a distinctive and well-known trademark under Section 2(z)(g) of the Trade Marks Act, 1999 (hereinafter the Act). To substantiate the same, defendants place reliance on a judgment of this Court in Keshav Kumar Aggarwal vs. NIIT 2013 (54) PTC 178 wherein, their registered trademark “Turning Point” was declared as a “well known trademark” under Section 2(z)(g) of the Act.

28. Learned counsel for the defendants submits that the defendants are the first in trade to coin the mark “TURNING POINT” and are prior users of the said mark ‘TURNING POINT’. It is the plaintiff who has subsequently copied the defendants mark by adopting a similar trade mark/trade name in the year 2001. He submits that plaintiff’s claim of existence since 1994 is not supported by any cogent and documentary evidence, and aims to defeat the prior adoption and use of the mark by defendants’ since 1998. He submits that the plaintiff has filed false and fabricated documents of dubious nature to defeat the valuable rights acquired due to prior user of the mark by the defendants herein. He states that the rent receipt relied upon by the plaintiff does not feature their alleged mark, and the gas service receipt dated 03.09.1996 relied upon by the plaintiff - bearing the corporate name “M/s Turning Point”, is hand written and cannot be relied upon. He submits that the plaintiff should have taken due care and conducted diligence before adopting an identical mark as that of the defendants for its educational services.

29. Learned counsel further submits that the present suit is barred by delay, latches & acquiescence, and places reliance upon Section 33 of the Act. The defendants have been engaged in providing educational services, including coaching and training to students since the year 1998, which is nearly 18 years prior to the filing of the present suit. He submits that the plaintiff must have, at all material times, been aware of the defendant institute’s existence in the market, as both the defendants and the plaintiff are providing identical services in Delhi and other parts of the country. He submits that Keshav Kumar (supra) further probablises the fact that the plaintiff must have had specific knowledge about the defendants’ prior business and existence. He relies upon Power Control Appliances & Odrs.

V. Sumeet Machines 1995 PTC 165 in this regard.

30. Ld. Counsel submits that since the defendants have built their business with tremendous turnover and a huge customer base, an injunction, if granted against them, will cause major inconvenience and difficulty to the third parties i.e. the students of the defendants’ institute, whose interest the court must protect. Reliance is placed on Ansul Industries Vs. Shiva Tobacco Company 2007 (34) PTC 392 (Del) in this regard.

31. Furthermore, he submits that the defendants, in any event, are honest and concurrent users of the same mark, and relies on Alkem Laboratories I.A. No. 16232/2015 in CS (OS) No. 2368/2015 Ltd. Vs. Mega International (P) Ltd, 2009(41) PTC 302 (Del.) (DB) in this regard.

32. Defendants submit that the unauthorized use of the mark in question by the plaintiff is volatile of the statutory as well as common law rights vesting in the defendants. Such unwarranted adoption and unlicensed use has caused irreparable loss and damage to their well-established trade and reputation. Defendants submit that this has further led to confusion and deception in the minds of the service availing public, and in the trade. The defendants submit that the plaintiff is guilty of infringement of the defendants registered trade mark and of passing off its services as that of the defendants. Submissions in Rejoinder

33. Ld. Counsel for the plaintiff submits that the defendants’ have falsely obtained a trademark registration of the impugned label which consists of Plaintiff’s word mark ‘TP TURNING POINT’ for identical services under Class 41 under trademark registration number 1324835 claiming user from 07.07.1998, which is much after the user date of the Plaintiff i.e. from March 1994.

34. Learned counsel further submits that the defendants falsely claim to have used the mark in question since 1998 and have produced no documents on record to even prima facie establish the same. She submits that the defendants are falsely and in a malafide manner trying to project that they have been using the impugned mark since 1998. In this regard, she submits the following: I.A. No. 16232/2015 in CS (OS) No. 2368/2015 i) Photographs filed by the defendants at pages 9-16 of the documents file (volume 2) of classes held by them in the year 1999 fail to show the date or the year in which the classes were held and also the use of the mark TP TURNING POINT; ii) Photographs of Ryan International School at page 12 of the documents file (volume 2) have been falsely represented as of 2001 as the defendants’ documents (volume 2) at page 333 show them as of 2003; iii) Copies of the fee receipts filed by the defendants at pages 17-52 of the documents file (volume 2) date back only to 2004, and not 1998; iv) Copies of advertisements filed by the defendants at pages 53 to 165 of the documents file (volume 2) date back to 2004, except for one advertisement dating back to 1999 at page 56, which fails to reflect the use of the impugned mark and is, anyway, much later to the Plaintiff’s usage of TP TURNING POINT; v) Copies of advertisement receipts of the year 1997 filed by the defendants at pages 94 to 97 of the documents file (volume 2) are with respect to PYRAMID CLASSES and not TP TURNING POINT which is in fact the original tradename of the defendants; vi) Copies of advertisements published in the year 2009 filed by the defendants at pages 156 to 164 of the documents file (volume 2), I.A. No. 16232/2015 in CS (OS) No. 2368/2015 reflect the name PYRAMID CLASSES prominently and not TP TURNING POINT; vii) Copy of service tax registration filed by the defendants at page 194 of the documents file (volume 2) is dated 2003 and not 1998; viii) Copies of the income tax returns filed by the defendants at pages 195 to 297 of the documents file (volume 2) is only from the year 2000 and not 1998 and in the name of defendant no. 2, Mr. Keshave Kumar Aggarwal and some other proprietary concern called KIRAN SPORTS & STATIONERS rather than the defendant no. 1 herein; ix) Copies of DVB/BSES Bills filed by the defendants at pages 335- 373 of the documents file (volume 2) date back to 2001 and are in the name of defendant no. 2, Mr. Keshav Kumar Aggarwal rather than the defendant no. 1 institute; x) Copies of the Airtel bills filed by the defendants at pages 374 to 382 of the documents file (volume 2) are of the year 2013 and issued in the name of defendant no. 2 rather than in the name of defendant no. 1; xi) Copies of MTNL bills filed by the defendants at pages 384 to 432 of the documents file (volume 3) are between years 2007-2013 and issued to defendant no. 2 in his individual capacity rather than in the name of defendant no. 1; I.A. No. 16232/2015 in CS (OS) No. 2368/2015 xii) Copies of Vodafone bills filed by the defendants at pages 433 to 448 of the documents file (volume 3) are from the year 2015 and issued in the name of defendant no. 2 and not the defendant no. 1; xiii) Copy of the correspondence between defendant no. 1 and HDFC Bank filed by the defendants at page 493 of the documents file (volume 3) is from the year 2010; xiv) Copies of various bank statements filed by the defendants at pages 494 to 572, 693 to 772 and 773 to 806 of the documents file (volume 3) are from 2005 onwards and not in the name of defendant no. 1; xv) Copies of bank statements filed by the defendants at pages 574 to 692 of the documents file (volume 3) are not in the name of defendant no. 1, M/s Turning Point but issued in the name of defendant no. 2, Mr. Keshav Kumar Aggarwal.

35. Learned counsel of the plaintiff submits that the impugned registration is of the device mark “TP TURNING POINT” which includes the initials “TP”. She submits that the defendants have given no explanation for using the initials “TP” before the mark “Turning Point”. This unexplained conduct of the defendants establishes the conscious and intentional dishonest adoption of the impugned mark by the defendants. She submits that the suit by the defendants is just a counterblast to the suit filed by the plaintiff. She submits that the plaintiff has also initiated rectification proceedings against the impugned mark of the defendants before the concerned authorities.

36. Learned counsel submits that the defendants got registered a company with the name Turning Point Education Testing Services Pvt. Ltd. in the year 2002. The plaintiff has placed on record the Company Master Details of “Turning Point Education Testing Services Pvt. Ltd.”, which show that the address of the said company was given as B-1/130, Malviya Nagar, New Delhi – which is the address of the defendants. Moreover, the date of incorporation is 07.10.2002 and the names of the Directors include Keshav Kumar Agarwal i.e. defendant no.2. While registering the said company in the year 2002 under the Companies Act, 1956, which has now been has been struck off from the companies register, the defendants would have inevitably come across the name of the plaintiff company which was registered in

2001. The defendants kept quiet despite learning of the plaintiff – which shows their malafide intentions. Had the defendants genuinely believed that they were the prior users, they would have taken legal recourse to seek an injunction against the plaintiffs in the year 2002, and not filed their suit after the plaintiff has filed its suit. Counsel submits that the defendants’ suit is barred by limitation, since they clearly acquired knowledge of the plaintiff’s services at least from the year - 2002.

37. Ld. Counsel submits that the original trade name of the defendants is indeed “PYRAMID CLASSES” as reflected in the advertisements placed on record, pertaining to the year 2009. She submits that registration of the mark “PYRAMID CLASSES” is in the name of the wife of the defendant no. 2 and has the defendants address as the ‘proprietors address’. She further submits that defendants are in the habit of making fraudulent company registrations in the name of famous coaching institutes like that of the I.A. No. 16232/2015 in CS (OS) No. 2368/2015 plaintiff herein. The defendants have advertised “TP Turning Point” alongside PYRAMID CLASSES and MATRIX INSTITUTE FOR COMPETITIVE EXAMS. They have company registration in the name of Turning Point Education Services Pvt. Ltd.; Smart Gurukul Classes Pvt. Ltd.; Matrix Learning Resources Pvt. Ltd. and Matrix Institute For Competitive Exams, all of which are fraudulent, since, these trade names belong to other established entities running coaching classes, which are not even remotely associated with the defendants.

38. Counsel submits that the judgment in Keshav Kumar (supra) reaffirms the fact that the use of the impugned trademark by the defendants is much after that of the plaintiff. Even according to the defendants claim, it is since 1998. She submits that the said order is an interim order, and not a final judgment post trial. The same does not bind the plaintiff, since the same has been obtained behind the plaintiffs back. She submits that defendants were successful at the interim stage primarily because the usage of mark TURNING POINT by NIIT dated back only to 2013, while the defendants herein claimed usage, albeit falsely, from 1998. Furthermore, the said judgment has been obtained fraudulently and is a nullity as per recent decision of the Supreme Court in Union of India v. Ramesh Gandhi, (2012)1 SCC 476, wherein it was held that “If a judgment obtained by playing fraud on the court is a nullity and is to it be treated as non est by every Court superior or inferior…”.

39. She submits that a prior user can injunct a registered proprietor and relies on N.R. Dongre and Ors. vs. Whirlpool Corpn. andAnr.,1996 PTC (16) 583 (SC), in this regard.

40. As regards delay, learned counsel submits that the plaintiff has initiated action as soon as it discovered about the activities of the defendants. However, to combat delay she relied upon Hindustan Pencils Ltd. Vs. India Stationary Products Company & Anr., (1989) PTC 61, to submit that if the Court comes to the conclusion that prejudice is likely to be caused to the general public who, in this case are innocent students, then an injunction must be issued. Submissions in Sur-Rejoinder

41. The defendants in their sur-rejoinder have submitted that they did not have knowledge of the plaintiff’s business and alleged trademark usage. Learned counsel for the defendants submitted that delay on their part to file the suit for infringement and passing off is not fatal to the case. Reliance is placed on Midas Hygiene Industries P. Ltd.&Anr Vs. Sudhir Bhatia &Ors, 2004(28)PTC 121 (SC). He submits that because the defendants have a registration for the trademark in question, an injunction must follow, notwithstanding the plea of delay. He places reliance on Power Control Appliances vs. Sumeet Machines, 1994 SCC (2) 448, in this regard. Discussion & Decision:

42. The plaintiff's case is of passing off since, evidently, they have not secured, much less applied for, registration of their trademark "TP Turning Point". To adjudicate cases of passing off, the courts in our country apply the 'classical trinity' test as laid down by Lord Oliver in Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR 491: (1990) 1 All ER 873 I.A. No. 16232/2015 in CS (OS) No. 2368/2015 (HL) and explained in S. Syed Mohideen v. P Sulochana Bai, (2016) 2 SCC 683, the trinity comprising of - misrepresentation, goodwill and damage.

43. Before I proceed with examining these elements vis-a-vis the facts at hand, it seems appropriate to first deal with the much disputed aspect of prior user. It is also imperative to consider the effect of prior user in a case of passing off. [See Satyam Infoway Ltd.v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145]. While the plaintiff submits that it was in the year of 1994 that the mark “TP TURNING POINT” came to be adopted by the founder of the plaintiff institute, Mr. Tej Narain Chowdhary, the same is disputed by the defendant on the ground of lack of cogent evidence. The defendant, on the other hand, submits that it was first in point of time in adopting the impugned mark “TURNING POINT” in the year of 1998 and is, therefore, the prior user.

44. The plaintiff has placed on record several documents to support its claim of use of the mark in question i.e. TP Turning Point since 1994-95 onwards. Firstly, the plaintiff has filed the affidavit of one Bindu Saini, wife of Mukesh Saini. She claims that she is the creator of the word mark “TP Turning Point”. The background in which she created the said word mark for the plaintiff’s institution has been set out in this affidavit. She stated that she created the said word mark when Mr. Tej Narain Chowdhary was giving his services as physics teacher at her home to her nephew Praveen Saini, during June 1992. Mr. Tej Narain Chowdhary continued to provide his services till the Board Examination for the 12th standard were held in March 1994. In the month of March 1994, one evening Mr. T.N. Chowdhary was taking tea at the deponent’s house in the presence of her husband and nephew i.e. I.A. No. 16232/2015 in CS (OS) No. 2368/2015 Praveen Saini with her, and it was then that he disclosed his plan to soon start his coaching institute for engineering and medical entrance examination. He stated that he was looking for a name for his coaching institute. She claims that she then suggested to him the name “Turning Point”, which was drawn from a TV programme of the same name on the National Channel – in respect of a science based programme to remove illusions of jadu-tona from the minds of the people. Mr. Chowdhary was convinced to use Turning Point for his proposed business of offering services. He also added the abbreviation ‘TP’ as a prefix to the name ‘Turning Point’, drawing the letter ‘T’ from his name, and drawing the letter ‘P’ from the nick name of his trusted friend and maths teacher, whose nickname was ‘Prakash’. That is how “TP Turning Point” came into existence in March 1994, to offer coaching services by Mr. Chowdhary, and the institute was formally launched on 11.04.1994.

45. The plaintiff has also placed on record the affidavit of Sh. Ram Prakash Gupta (Prakash), son of late Sh. B.P. Gupta, who states that he has been a teacher at Turning Point Institute Pvt. Ltd. (previously known as Turning Point; an Educational Institute) during April 1994 to July 1995. He, inter alia, states that Turning Point has been imparting educational services regarding preparation for engineering/ pre-medical entrance examinations, along with preparatory programme for classes XI, XII Boards (science stream only) and foundation classes of IX and X since 1994. He states that he took maths classes during April 1994 to February 1995 at Turning Point at GH-14/386 Paschim Vihar, New Delhi-110087. Thereafter, the plaintiff institute shifted to Shop No.4, 3rd Floor Ram House, Jwala Heri Market, 2017:DHC:4419 I.A. No. 16232/2015 in CS (OS) No. 2368/2015 Paschim Vihar, New Delhi – 110063 in April 1995 and he took classes from April 1995 to July 1995 at that address.

46. The plaintiff has also filed the affidavit of one Rajender Chauhan, son of late Sh. Khem Chand Chauhan, who claims to be a painter by profession. He states that he had painted the sign board of “Turning Point” showing the address as GH-14/386 Paschim Vihar, New Delhi and, thereafter, once the institute shifted, as Shop No.4, 3rd Floor Ram House, Jwala Heri Market, Paschim Vihar, New Delhi–110063 in April 1995.

47. The plaintiff has filed the affidavit of Ashu Sharma, wife of Rajkumar Sharma, who claims that she was a teacher at the plaintiff institute during November 1994 to February 1997. She states that she took chemistry classes during November 1994 to February 1995 at Turning Point GH- 14/386 Paschim Vihar, New Delhi-110087 and thereafter, when the plaintiff institute shifted to Shop No.4, 3rd Floor Ram House, Jwala Heri Market, Paschim Vihar, New Delhi – 110063 in April 1995, she took classes from April 1995 to July 1995, and from September 1996 to February 1997 at the said address.

48. Another affidavit filed is of one Akash Yadav, son of Shiv Taj Singh, who states that he was the caretaker of premises at Shop No.1, 2, 3 in addition to Shop No.4 located at 3rd Floor Ram House, Jwala Heri Market, Paschim Vihar, New Delhi, where Turning Point Institute Pvt. Ltd. (previously known as Turning Point; an Educational Institute) was located. He states that earlier, one Chander Prakash was the caretaker between 1995 till 2003, from whom he took over. This affidavit appears to be of no I.A. No. 16232/2015 in CS (OS) No. 2368/2015 significance, since the same is hearsay. It does not throw any light on the basis of firsthand knowledge of the deponent Akash Yadav during the crucial period 1995 to 1999 - when the plaintiff claims to have used the mark in question TP Turning Point, and to have run its business, firstly, at GH-14/386 Paschim Vihar, New Delhi-110087 and, thereafter, at Shop No.4, 3rd Floor Ram House, Jwala Heri Market, Paschim Vihar, New Delhi –

110063. This deponent, as per his affirmation, joined only in 2003.

49. The plaintiff has filed several affidavits of students who are claimed to have studied and taken coaching at the plaintiff institute. Along with these affidavits, the plaintiff has placed on record the mark statements issued by the Central Board of Secondary Education in the names of the respective students. In the tabulation herein below, the gist of these affidavits is being captured:

┌─────────────────────────────────────────────────────────────────────────────────────────────────────────────────┐
│ Sl.      Name & Father’s                  Period to                        Remarks                              │
│         name of the Student               which the                                                             │
│ No                                        Affidavit                                                             │
│                                           pertains                                                              │
├─────────────────────────────────────────────────────────────────────────────────────────────────────────────────┤
│ 1.     Praveen Saini s/o June 1992 to Deposes that the plaintiff institution has been                           │
│        Late Shri Ramesh March 1994    imparting educational services under the name                             │
│        Kumar Saini                    and style “TP TURNING POINT” since 1994.                                  │
│                                                       Deposes that he was a part of the havan                   │
│                                                       ceremony of the plaintiff institution at GH-              │
│                                                       14/386 Paschim Vihar, New Delhi in 1994, and              │
│                                                       thereafter the plaintiff institution shifted to Shop      │
│                                                       No. 4, 3rd Floor Ram House, Jwala Heri Market,            │
│                                                       Paschim Vihar, New Delhi in April 1995.                   │
│                                                       Deposes that the plaintiff institution’s managing         │
│                                                       director has been critical in him passing Class           │
│                                                       XII Board exams.                                          │
│       I.A. No. 16232/2015 in CS (OS) No. 2368/2015                                              Page 26 of 63   │
│                                                                                              2017:DHC:4419      │
└─────────────────────────────────────────────────────────────────────────────────────────────────────────────────┘

74. The Supreme Court has extensively referred to Kerly’s law of Trade Marks and Trade Names in this decision. The Supreme Court observes: “32.1. The same author also recognises the principle that the Trade Marks Act affords no bar to the passing off action. This has been explained by the learned author as under: “15-034. Subject to possibly one qualification, nothing in the Trade Marks Act, 1994 affects a trader's right against another in an action for passing off. It is, therefore, no bar to an action for passing off that the trade name, get up or any other of the badges identified with the claimant's business, which are alleged to have been copies or imitated by the defendant, might have been, but are not registered as, trade marks, even though the evidence is wholly addressed to what may be a I.A. No. 16232/2015 in CS (OS) No. 2368/2015 mark capable of registration. Again, it is no defence to passing off that the defendant's mark is registered. The Act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing off that the false representation relied upon is an imitation of a trade mark that is incapable of registration. A passing off action can even lie against a registered proprietor of the mark sued upon. The fact that a claimant is using a mark registered by another party (or even the defendant) does not of itself prevent goodwill being generated by the use of the mark, or prevent such a claimant from relying on such goodwill in an action against the registered proprietor. Such unregistered marks are frequently referred to as ‘common law trade marks’.” (emphasis supplied)

75. Learned counsel for the defendants raised the plea of “Honest and Concurrent User” of the mark by the defendants. This submission may now be considered. As aforesaid, the plaintiff is the prior user of the mark in question. It is not the submission of the defendants that “TP TURNING POINT” was being simultaneously used by any third party when the plaintiff adopted the mark i.e. in 1994-1995. Defendant no. 2 claims to have himself coined the mark in the year 1998. Defendants’ use of the words “TURNING POINT” within a label, which has the letters ‘TP’ confined in it, is similar to the mark of the plaintiff, which also has the mark “TURNING POINT” with the letters ‘TP’ encircled. This use is, prima facie subsequent to that of the plaintiff, and in respect to the same services as that of the plaintiff. The defendants’ claim of honest and concurrent user has to be viewed in the light of the fact that the defendants have failed to furnish I.A. No. 16232/2015 in CS (OS) No. 2368/2015 any explanation for adopting even the initials “TP” before the words “Turning Point”. Defendant no. 2 claims to be running, with his wife, other coaching centres in the name of PYRAMID CLASSES, MATRIX CLASSES etc. It would be quite a coincidence that the defendant no. 2 innocently and bona fide adopted not only the mark ‘TURNING POINT’ – exclusively for students seeking coaching for engineering and medicine entrances, but even the abbreviation ‘TP’. This statement of the defendant cannot be accepted on its face value. The defendants have not explained the background which they adopted either “TURNING POINT”, or the abbreviation “TP”. Secondly, if the defendants had adopted the said mark honestly, they would have claimed protection in respect of “TP” as well, and not just “Turning Point”. As opposed to this, the plaintiff has explained the origin of the mark “TP TURNING POINT”, as noticed hereinabove.

76. The lack of bonafides on the part of the defendants is also apparent from the fact that the defendants did not take any action against the plaintiff, even though they most certainly would have learnt of the existence of the plaintiffs company, when they got Turning Point Education Testing Services Pvt. Ltd. incorporated in the year 2002. The defendants have not explained their said inaction. Pertinently, the plaintiff in its written statement filed in the suit of the defendant (C.S.(O.S.) No.3159/2015) under the heading “Preliminary Objections” has, inter alia, stated in para-9 that “Plaintiffs have company registrations in the name of Turning Point Educational Testing Services Pvt. Ltd. (date of incorporation 07.10.2002); … …” (see para 9.1.). In para 9.2, the plaintiff has stated: “9.[2] In fact, while registering TURNING POINT EDUCATIONAL TESTING SERVICES PRIVATE LIMITED (date of incorporation 07.10.2002), as per Companies Act and Rules, the plaintiff would have inevitably come across the name of the Defendant Company registered in 2001 and thus, they chose to keep a similar name in order to enable passing off as the Defendant”.

77. Similarly, in para 18, under the heading “Parawise Reply on Merits”, the plaintiff in its written statement stated:

78. The defendant filed its replication to the said written statement. Neither in response to para 9 of the preliminary objections, nor in response to para 18 of the replication on merits, the defendant traversed the specific averment of the plaintiff, to the effect, that the defendant would have learnt of the incorporation of the plaintiff company when the defendant got the company Turning Point Educational Testing Services Pvt. Ltd. incorporated on 07.10.2002. In fact, the response of the defendant is clearly evasive inasmuch, as, the defendant has sought to reply to the said averments by bunching the same with the defendants response to several other paragraphs in the written statement of the plaintiff. Thus, I have no hesitation in, prima facie, finding that the I.A. No. 16232/2015 in CS (OS) No. 2368/2015 adoption of the mark TP Turning Point by the defendant was dishonest, and not bonafide. It, prima facie, appears that the defendants were aware about the plaintiff’s business and trademark, and dishonestly adopted the same for their coaching institute.

79. Even if this court were to presume that the use of the impugned mark by the defendants is honest and concurrent, the same would be of no avail to the defendants. Honest and concurrent user may be a defence in cases where the goods are not identical, or the marks are not identical, i.e., in cases in which there is no scope of confusion as to the source of the goods or services of the two parties being the same. But it cannot be a defence where, as in the present case, the marks are identical and the services for which they are used are also identical. (See Kanshiram Surinder Kumar v. M/s. Thakurdas Deomal Rohira, (1977) 79 Bom LR 61)

80. Learned counsel of the defendants has argued that plaintiff’s case must fail because of acquiescence and inordinate delay on their part in filing the suit. The defendant no. 2 claims to have started its coaching centre under the impugned mark in 1998, and the suit has been filed by the plaintiff in

2015. Thus, it is claimed that there is delay for about 17 years.

81. Acquiescence, as observed by the Supreme Court in Sumeet Machines (supra) is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc and implies positive act, and not mere silence or inaction, as is involved in laches. If the plaintiff stood by knowingly and let the defendants build up substantial trade until it I.A. No. 16232/2015 in CS (OS) No. 2368/2015 became necessary to crush it, the plaintiff would be denied an injunction by their acquiescence. Question is, has there been a “positive act/conduct” committed by the plaintiff to have encouraged the defendant to continue and grow its business under the impugned mark? Acquiescence, obviously, implies knowledge to the plaintiff of the defendants’ adoption and use of the mark in question. In the case in hand, the defendants - on whom lay the onus, have produced no material on record to establish knowledge with the plaintiff of the defendants existence; its business, and; its user of the impugned mark. In fact, it is the defendants case that they were not aware of the plaintiffs existence – thought the plaintiffs existence pre-dates their own, till the filing of the suit by the plaintiff and issuance of summons to defendants. If that be the case, the same would hold good for the plaintiff as well, since no other specific material has been placed on record by the defendants to show the knowledge with the plaintiff of the defendants existence. The defendants have claimed that when the decision in Keshav Kumar (supra) was passed in March 2013, the plaintiff would have acquired knowledge of the defendants existence. The rendering of the decision in Keshav Kumar (supra) does not imply knowledge on part of the plaintiff, as the said order was not communicated to the plaintiff. It cannot be presumed to have come into the notice of the plaintiff.

82. Reliance placed on Keshav Kumar Aggarwal (supra) by the defendant is of no avail. The plaintiff was not a party to the said decision. Thus, the claim of the plaintiff being the prior user of the mark in question did not fall for consideration by the Court. The Court proceeded on the premise that the defendant was the prior user, vis-à-vis. I.A. No. 16232/2015 in CS (OS) No. 2368/2015 NIIT Limited. Therefore, the decision in Keshav Kumar Aggarwal (supra) does not bind the plaintiff, and would not adversely affect the rights of the plaintiff in any way.

83. Moreover, the plea of acquiescence fails also, as it prima facie appears that the impugned mark has been dishonestly adopted. The Supreme Court in Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia, (2004) 3 SCC 90, held that “The law on the subject is well settled. In cases of infringement either of Trade Mark or Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”. The defendants therein had failed to provide an explanation as to why their cartons had the mark “LAXMAN REKHA”, which was similar to the plaintiffs mark and contained colors of red, white and blue to look almost identical to that of the plaintiffs. This act, the Court held, prima facie, indicated the dishonest intention to pass off his goods as that of the appellants. (emphasis supplied)

84. In Ansul Industries (supra), this Court while dealing with Hindustan Pencils Ltd.(supra), observed:

31. … … A person who had deliberately infringed upon another's mark, it was held, cannot complain and hide behind defence of delay, laches or acquiescence, as the infringement at the very initial stage itself was fraudulent. Delay and laches by itself would not bestow, fraud with character of legality. Reference was also made to Mc CARTHY on Trade Marks wherein it was observed that the Court must also take into consideration necessity to protect third party interest i.e. the I.A. No. 16232/2015 in CS (OS) No. 2368/2015 general public or the buyer of the goods. It was the right of the public not to be deceived and confused. After examining various aspects this Court held as under:

86. Thus, acquiescence or delay can be invoked as a defence, where the defendants’ adoption and use of the mark appears to be honest and bonafide. I have already taken a prima facie view that the defendants do not appear to be honest adopters of the impugned mark. Their use of the same is also likely to cause prejudice among the relevant sections of the public as well, who are young students looking to make their career, and they could be misled into opting for the defendants’ institute, thinking it to be associated with the plaintiffs. In such circumstances, the plea of acquiescence or delay does not stand.

87. No doubt, that the plaintiff’s inaction has led to the growth of defendants’ business and goodwill under the impugned mark, to an extent, where the defendants’ sales have exceeded the plaintiff’s. Also there is possibility of reverse confusion as well i.e. the defendants’ business may have got diverted to the plaintiff. But where the defendant has attained such goodwill and growth under a mark which it has, prima facie, dishonestly and fraudulently adopted, injunction must follow. In such cases, the Courts may, at best, deny or reduces the damages to the plaintiff at the final stage of determination, but not the relief of injunction.

88. The defendants have also placed reliance on Section 33 of the Trade Marks Act, 1999. Section 33 of the Act provides:

89. Section 33 of the Act is available to a registered proprietor who has been continuously using the registered trademark for more than 5 years. It prohibits a proprietor of an earlier trademark, from either: (i) applying for a declaration that the registration of the later registered trademark is invalid, or; (ii) opposing the use of the later registered trademark in relation to the goods or services for which the earlier trademark is used.

90. Section 33, in terms, does not support the defendants. Firstly, Section 33 stipulates that the proprietor of the earlier trade mark should be I.A. No. 16232/2015 in CS (OS) No. 2368/2015 aware of the use of the later registered trade mark. In the present case, there is nothing to show that. Secondly, this section also brings in the aspect of honest, bonafide and good faith adoption and use by the later mark registrant. Thus, if the later registrant of the mark did not apply in good faith, the bar against the proprietor of the earlier trademark created by this section shall not apply. Since the adoption and use of the mark in question by the defendant does not appear to be in good faith, the bar under Section 33 would not apply against the plaintiff. I have already found, prima facie, that the adoption and use of the mark in question by the defendant is not in good faith. Thus, this argument fails.

91. I now come to the submissions raised by the defendants in their cross suit in CS (OS) No. 3159/2015. The defendants’ case is of infringement of their registered label mark “TP-TURNING POINT” and passing off. Section 28 of the Act provides the rights conferred by registration. Clause (1) of the said section reads- “(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.” (emphasis supplied)

92. The statute protects the rights of a prior user. Section 34 of the Act reads:

93. This is precisely the position that has been dealt with by the Supreme Court in S. Syed Mohideen (supra). The Court observed: “30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in this Act shall entitle the registered proprietor or registered user to interfere with the rights of prior user. Conjoint reading of Sections 34, 27 and 28 would show that the rights of registration are subject to Section 34 which can be seen from the opening words of Section 28 of the Act which states “Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor….” and also the opening words of Section 34 which states “Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere….” Thus, the scheme of the Act is such where rights of prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of prior user.”(emphasis supplied)

94. Learned counsel for the defendants has placed reliance on the following decisions in support of his submissions: I.A. No. 16232/2015 in CS (OS) No. 2368/2015 i) ACL Education Centre Pvt. Ltd. & Anr. v. American’s Centre for Languages & Anr., 2008 (36), PTC 113 (Del); ii) Alkem Laboratories (supra) iii) Pearl Retail Solutions Pvt. Ltd. v. Pearl Education Society, 2014 (58) PTC 26 (Del).

95. In my view, neither of these decisions are of any relevance and they do not advance the case of the defendants. ACL Education Centre Pvt. Ltd. (supra) was a case where the plaintiff was running its centre for imparting teaching and training in various languages under the trading style “American Centre for Languages”. Defendant no.2 established its businesses under the name M/s. American Centre for Languages, carrying on the same business activity as the plaintiff within the same area of operation. Defendant no.2, prior to start of the business of the defendants, was associated with the plaintiffs as a Director and teacher and after leaving the plaintiffs, he started the business. The defendant - while opposing grant of interim injunction, inter alia, contended that the word/mark ‘American’ was generic. There were several other educational institutes in existence using the word ‘American’. The learned Single Judge held the adoption of the mark by the defendant to be dishonest, since the defendant had no explanation as to why he had adopted the same name i.e. “American Centre for Languages”. The Court held that even though the word “American” is generic, and there are many other institutes being run wherein the word “American” is used in the house mark/ trading style, however, the word “American” along with the words “Centre for Languages” had been adopted by the plaintiff for a I.A. No. 16232/2015 in CS (OS) No. 2368/2015 number of years, and had come to be associated with the plaintiff. The use of the word “American” per se with some other prefix or suffix may not be objectionable, however, when the defendant adopts the identical name, which is the trade name/ house mark of the plaintiff, that becomes objectionable - particularly when the same has been dishonestly adopted by the defendant. Consequently, the learned Single Judge confirmed the exparte injunction granted in favour of the plaintiff. The aforesaid decision, in my view, supports the case of the plaintiff in the facts and circumstances discussed herein above, rather than that of the defendants.

96. Alkem Laboratories Ltd. (supra) was a case concerning the trade mark “GEMCAL” in respect of medicinal and pharmaceutical preparations. The learned Single Judge while dismissing the suit, inter alia, returned the finding that both the parties were honest and concurrent users of the said mark. The learned Single Judge also returned a finding that the defendant was the prior adopter of the mark. Neither party had obtained registration of the mark. Consequently, the learned Single Judge had dismissed the suit of the plaintiff/ appellant. The Division Bench dismissed the Regular First Appeal of the plaintiff/ appellant. In this decision, the Division Bench, inter alia, held that in an action for passing off, the date of the prior use - and not the date of registration, is the relevant test. The Division Bench also relied upon Century Traders v. Roshan Lal Duggar & Co. & Ors., AIR 1978 Del 250, in this regard.

97. I have found that the plaintiff is the prior user of the mark in question. Consequently, the decision in Alkem Laboratories Ltd. (supra) supports the case of the plaintiff, rather than that of the defendant. The defendants have I.A. No. 16232/2015 in CS (OS) No. 2368/2015 sought to rely on this decision in support of their plea of honest and concurrent user. However, as already discussed, prima facie, the adoption of the mark in question by the defendants does not appear to be honest. Thus, this decision does not come to the aid of the defendant.

98. In Pearl Retail Solutions Pvt. Ltd. (supra), the learned Single Judge confirmed the ad-interim injunction in favour of the plaintiff. The plaintiff was running its business under the mark “Pearl Academy of Fashions”. The defendant claimed that “PEARL” was a generic word. In this regard, the defendant placed reliance on Skyline Education Institute (Pvt.) Ltd. v. S.L. Vaswani & Anr., AIR 2010 SC 3221, wherein the Supreme Court held that the word “SKYLINE” was being used by 117 companies including computer and software companies and institutions and, thus, “SKYLINE” was held to be a generic word. The defendant also claimed that the plaintiff did not have the exclusive right to use the words “Academy of Fashion” in respect of educational institutions. The plaintiff had disclaimed the said words in the registrations obtained by the plaintiff. The learned Single Judge rejected the submission of the defendant that the word “PEARL” was a generic word in respect of education and training institutions. The learned Single Judge observed:

99. Reliance placed by the defendant on Skyline Education Institute Pvt. Ltd. (supra) was rejected, as the admitted position was that a number of other institutes were using the “SKYLINE” mark. The learned Single Judge held:

100. The decision in Pearl Retail Solutions Pvt. Ltd. (supra), therefore, is of no relevance to the defence of the defendants.

101. In the light of the law stated above, the case of infringement made out by the defendants in their suit may not survive, since the rights conferred upon them by the registration of the said mark, are subject to rights of a prior user which, prima facie, the plaintiff is.

102. The defendants’ case on passing off also appears to lack merit on account of the plaintiff appearing to be the prior user. The Supreme Court in Satyam Infoway (supra) while dealing with a case on passing off held that “The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first?” (emphasis supplied).

103. Though the term “TURNING POINT” exists in the English language to signify a point in time when a decisive change occurs in a person’s life particularly to bring beneficial/positive results, but use of the same for coaching classes by the plaintiff can be considered as distinctive qua such services. Moreover use of the abbreviation ‘TP’ with the words ‘TURNING POINT’ was also the brain child of the plaintiff. This use of the said I.A. No. 16232/2015 in CS (OS) No. 2368/2015 distinctive mark by the plaintiff deserves to be protected on account of it being prior in point of time.

104. An application for injunction is decided upon examination of three aspects, viz.: (i) prima facie case, (ii) balance of convenience, and (iii) irreparable loss and injury. I have no hesitation in holding, on the basis of the observations made hereinabove, that a prima facie case of passing off has been made out in favour of the plaintiff. As regards balance of convenience, this Court in Ansul Industries (supra) observed that

105. Here, the dishonest adoption of the mark by the defendants; public interest involved in stemming confusion amongst the innocent and gullible public – particularly young students looking to get trained for competitive examinations, and; the rights of the prior user tilt the balance of convenience in favour of the plaintiff. Even though the defendants appear to have encashed the mark in question more than the plaintiff, the comparison of the yearly turnover of the parties does not show that the plaintiff’s turnover is miniscule, or insignificant, compared to that of the defendants. The plaintiff, I.A. No. 16232/2015 in CS (OS) No. 2368/2015 prima facie, is suffering damage in its business due to the use of the impugned mark by the defendants. If injunction is not granted, the plaintiff would suffer irreparable loss and injury. The defendants are running their business also under different names, including, under the mark “PYRAMID CLASSE”. Thus, the defendants are not likely to be very seriously prejudiced by the grant of injunction in favour of the plaintiff forthwith.

106. In view of the aforesaid findings the I.A. No. 16232/2015 is allowed and I.A. No. 22081/2015 is dismissed. The defendants stand injuncted from using the mark “TP Turning Point”, or any part thereof either as a word mark, or the label mark got registered by the defendants in respect of their services of providing coaching/ training classes to students or as a part of their corporate name. The plaintiff shall also be entitled to costs in these applications, which are quantified at Rs.50,000/-. The costs be paid within four weeks.

107. It is clarified that the observations made in this order are based on a prima facie view taken by this Court, and the same shall have no bearing on the final decision in the suits, to be decided by the court after a trial on the basis of the evidence adduced.

JUDGE AUGUST 11, 2017