2020 Supreme(Chh) 360

IN THE HIGH COURT OF CHHATTISGARH AT BILASPUR
Manindra Mohan Shrivastava, Vimla Singh Kapoor, JJ.
Brilliant Public School Society Seepat Road & Ors. - Appellant
Versus
Brilliant Public School Sitamarhi - Respondent
MA No. 79 of 2019
Decided On : 23-03-2020

Headnote:

TRADEMARK - INFRINGEMENT - PASSING OFF - TEMPORARY INJUNCTION - SUIT FOR - REGISTRATION OF TRADEMARK - EFFECT OF - PRIMA FACIE CASE - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - GENERIC WORD - USE OF - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - ACQUIESCENCE - DELAY - SCOPE OF INTERFERENCE IN APPEAL.

Fact of the Case:

The appellant-plaintiff, Brilliant Public School Society, is a Society registered under the M.P. Society Registration Act, 1973, and runs a school/plaintiff No.2 at Bilaspur, Chhattisgarh. The defendant also runs a school under a Trust namely B.D. Sah Foundation Trust which is situated at Sitamarhi, Bihar. The plaintiffs and defendant both are engaged in the field of education by establishing a school, imparting teaching, and carrying out various other extracurricular activities normally carried out by an educational institution. Both the institutions are imparting school education, though, at two different places. While the plaintiff has three schools at Bilaspur and one school at Korba, all situated in Chhattisgarh, the defendant has one educational institution at Sitamarhi, Bihar. The plaintiff-society is running the aforesaid four schools under the name and style as '' BRILLIANT PUBLIC SCHOOL ''. The plaintiff filed a suit seeking an injunction against the defendant, based on infringement of its registered trademark '' BRILLIANT PUBLIC SCHOOL '' as also passing off action on the pleading, inter alia, that the plaintiff in the trade name ''BRILLIANT PUBLIC SCHOOL'' opened the first school in the year 2000 and thereafter opened three schools and since then, it has been using the aforesaid mark ''BRILLIANT PUBLIC SCHOOL'' in relation to educational services which have been provided by it in the area where the schools are situated. According to the plaintiff, three schools situated at ''Mission Hospital Road'', ''Bahatarai'', and ''Vyapar Vihar'' in the city of Bilaspur were started in the year 2000, 2006-07, and 2015 respectively. Its school at Bahatarai, Bilaspur, is recognized and affiliated to the Central Board of Secondary Education (CBSE), Delhi. Further, the case of the plaintiff was that ''BRILLIANT PUBLIC SCHOOL'' name and formative labels/logos were duly registered in the name of the plaintiff No.1 under the Trade Marks Act, 1999 in Class-41 in the year 2015. The plaintiff has established and is running a school since 2000 and acquired prestige, name, and fame in the field of education and has earned appreciation, award both at national and international levels and carries an enviable reputation. The defendant has adopted the aforesaid trademark '' BRILLIANT PUBLIC SCHOOL'' in relation to its educational services and also on all goods and paraphernalia related thereto including its stationery, uniforms, literature, etc. The said act of the defendant, as pleaded by the plaintiff, has infringed the plaintiff''s registered trademark as also passing off its goods and business by unfair and unethical trade practice. According to the plaintiff, the trade name which is being used by the defendant is identical and in any case deceptively similar to that of the plaintiff''s trademark which is causing deception and confusion in the market and trade, amongst parents, students, public, as they are being deceived into believing that the defendant''s impugned school to be that of the plaintiff or of plaintiff source or affiliation or association which is adversely affecting the goodwill of the plaintiff- school which is being diluted and tarnished According to the plaintiff, due to the defendant''s activity of using the same trademark as that of the plaintiff, which has been duly registered in the name of the plaintiff, the plaintiff''s trademark registration is being nullified and the plaintiff is suffering huge losses both in its school services as well as reputation and goodwill and which are all incapable of being assessed in monetary terms. The defendant in its written statement and reply to the injunction application came out with the plea that their school styled and marked as ''Brilliant Public School, Sitamarhi'' is not situated in the State of Chhattisgarh but in the State of Bihar and is running that school for a long time since 1995, firstly in the name of ''Brilliant Coaching Institute'' and then as ''Brilliant Public School Sitamarhi'' till now. Their institution is not only an established institution since more than a decade but it has also its own established goodwill and reputation over a long time. It is duly affiliated in the name of ''Brilliant Public School, Rajopatti, Dumra Road, Sitamarhi, Bihar'' from CBSE Delhi in the year 2012. It entered the internet domain as ''www.brilliantpublicschool.com'' in the year 2011 prior to the plaintiff''s entry into the Internet domain and they have also applied for registration of their trademark in the name as ''Brilliant Public School, Dumra Road, Rajopatti, Nahar Chowk, Sitamarhi, Bihar'' under the Trade Marks Act which is still pending consideration. According to the defendant, the similarity as claimed by the plaintiff is based only on the use of words of '' BRILLIANT PUBLIC SCHOOL '', whereas in order to make out a prima facie case of infringement, the plaintiff is required to make out a strong case that the trademark used by the defendant is either identical or deceptively similar. The trademark of the plaintiff and the defendant cannot be said to be either identical or even deceptively similar once both the trademarks are compared along with the setting of words ''Brilliant Public School Logo'' and the shape of the appearance of the two trademarks. According to the defendant, if the defendant is restrained from the operation of the school from using the words '' BRILLIANT PUBLIC SCHOOL '', they will suffer irreparable injury and the balance of convenience does not lie in favor of the plaintiff.

Finding of the Court:

The Court found that the plaintiff had made out a strong prima facie case of infringement of its registered trademark and passing off. The Court also found that the balance of convenience and irreparable injury lay in favor of the plaintiff. Accordingly, the Court allowed the plaintiff's application for a temporary injunction, restraining the defendant from using the plaintiff's trademark 'BRILLIANT PUBLIC SCHOOL' in the matter of running and operating their educational institution, till the final disposal of the suit.

Issues: 1. Whether the plaintiff had made out a strong prima facie case of infringement of its registered trademark and passing off? 2. Whether the balance of convenience and irreparable injury lay in favor of the plaintiff?

Ratio Decidendi: 1. In order to make out a prima facie case of infringement, it is necessary for the plaintiff to make out a prima facie case that two trademarks are absolutely identical in every aspect, though in such a case, on the face of it, infringement would be made out. The other important circumstance which may prima facie make out a case of infringement is ''deceptive similarity''. Further more, where such use of mark is likely to be taken as being used as a trademark, it only reinforce allegation of infringement of trademark. 2. In the present case, attempt has been made by the respondent- defendant to dislodge plaintiff claim of it being a strong prima facie case of infringement of trademark, by putting forth that though, word ''BRILLIANT PUBLIC SCHOOL'' is common in both the cases, logos used by them, if kept side by side, are not identical but give a different pictorial impression. Such contention, on prima facie consideration, does not hold water.

Final Decision: The appeal was allowed. The order passed by the learned Court below was set aside and the plaintiff's application for grant of temporary injunction against the defendant was allowed. The defendant was restrained from using the plaintiff's trademark 'BRILLIANT PUBLIC SCHOOL' in the matter of running and operating their educational institution, till the final disposal of the suit.