A passing off action is maintainable for unregistered marks, requiring evidence to establish prior use and distinctiveness.

ORDER :

K.S. Hemalekha, J.

These two matters arise out of the rival claims over the use of the name ‘Vidyanjali’ in respect of the educational institutions run by the parties.

2. The petitioner in Civil Revision petition is the defendant, whereas the appellant in miscellaneous first appeal is the plaintiff in O.S. No.3672/2021 and O.S. No.1361/2022.

3. Both petitions called in question two separate interlocutory orders passed by the XVIII Additional City Civil and Sessions Judge (CCH-10) Bengaluru (‘Trial Court’ for short).

Brief facts:

4. The respondent-Trust claims to have adopted the name ‘Vidyanjali’ in the year 1992 for its educational institution and asserts that it has continuously used the said name since then, thereby acquiring goodwill, reputation and distinctiveness. It further claims that CBSE affiliation, ISO and NABT accreditation, and eventual registration of the trademark on 08.01.2022 pursuant to an application dated 10.07.2019.

5. The petitioner in the CRP and the respondent in the MFA run an institution named as ‘Vidyanjali Primary and High School’, claiming use of name since 20.01.2003 through Pavitra Cultural and Educational Society, with permission from the Education Department, recognized by the SSLC Board. It asserts long-standing independent reputation and denies any dishonest adoption. It also asserts that the institution has been functioning openly for more than two decades.

6. In O.S. No.3672/2021, the trust filed a suit for passing off. The petitioner in CRP herein filed an application under Order VII Rule 11 (d) CPC seeking rejection of the plaint, which came to be dismissed on 07.11.2022. This order is the subject matter of the CRP.

7. In O.S. No.1361/2022 the trust filed a suit for infringement of its registered trademark and sought temporary injunction under Order XXXIX Rules 1 and 2 CPC. The Trial Court rejected the injunction on 07.12.2022. This order is under challenge in the MFA.

8. Learned counsel for the petitioner/defendant and the respondent in MFA contends that the suit for passing off is not maintainable, as running an educational institution does not amount to a ‘trade’ or ‘commercial service’ under the Trade Marks Act, 1999 (‘Act’ for short). Further, it is contended that the plaint discloses no cause of action and hence, it is liable to be rejected under Order VII Rule 11 (d) CPC. It is further contended that the plaintiff is not a registered proprietor at the time of filing the suit and cannot prevent the defendant's long-standing use since 2003. It is contended that there is no dishonest adoption or confusion created by the defendant.

9. Further, it is contended that the defendant has been using the name Vidyanjali since 2001-2003 with Government recognition. The plaintiff applied for the trademark only in 2019, long after defendant's adoption of the name and contends that there is no material to show that defendant adopted the name with the knowledge of the plaintiff's existence. It is contended that there is no reduction in plaintiff's admission, nor is any irreparable loss or injury being caused and the Trial Court, having found that both the institutions have independent reputation, rightly dismissed the application filed by the plaintiff under Order XXXIX Rules 1 and 2.

10. Per contra, learned counsel appearing for the respondent-plaintiff in CRP and appellant-plaintiff in MFA contends that Section 27 (2) of the Act preserves the remedy of passing off even for unregistered marks and the plaintiff is a prior user since 1992, having acquired substantial goodwill and reputation. It is submitted that the