VALMIKI J.MEHTA, J.

1. The dispute in this appeal centres around the use of theexpression “Goenka” as a trademark and/or trade name. The

respondents claim exclusive ownership/right to use the word “Goenka”, whether per se or with other words or initials, as their

trademark /trade name with respect to their educational institutions and which is disputed by the appellant. The learned

Single Judge agreed with the respondents/plaintiffs and allowed their injunction application. Hence, this appeal filed by the

defendants/appellant. Reference to trade mark hereinafter, in the facts of the present case, will include reference to trade name

also wherever the circumstances so require.

2. The appellant claims the right to use the word “Goenka” onthe basis of three basic contentions:-

(i) From the year 2000 they have been using “Goenka” for their school “Goenka Public School” and hence are owners being prior

users of the trade mark. In fact the appellant is running since the year 1995 “Mohini Devi Goenka Mahila Mahavidyala” and,

therefore, “Goenka” is very much a prominent part of the name of this Mahavidyala. Though the respondents have registered “Goenka”

as a trade mark in the year 2005 (w.e.f 2003 the year of the application), yet the respondents have never per se used “Goenka”

i.e “Goenka” itself and have used the same only as part of “G D Goenka Public School” and therefore mere registration without

actual use does not confer ownership of a trade mark.

(ii) The appellant had formed vide a trust deed in 1990 a trust in the name of “Shree Lal Goenka Charitable Trust” by the trustees

Sh. Shyam Sunder Goenka & Sh. Ashutosh Goenka and which trust is also running various institutions including the institutions

stated in (i) above. The adoption and user of the trademark is therefore claimed to be honest.

(iii) The word “Goenka” being a common surname is per se not distinctive and to acquire distinctiveness in such a common

surname is not possible. It is further contended that even if distinctiveness can be achieved for such a common surname, it is

contended that the respondents have not achieved suchdistinctiveness.

(iv) A further limb of the above argument is that the word “Goenka” is publici juris or at least in prior common use by other

persons/institutions i.e. such other persons/institutions have used the word “Goenka” in the field of education even prior to the

use thereof by the respondents from 1995. It is, therefore, contended that the respondents cannot be said to be exclusive

owners and entitled to exclusively use the trademark “Goenka” and they cannot prevent the appellant from using the same.

3. On the other hand, the stand of the respondents/plaintiffs is based upon three main counts:

.(i) The respondents since the year 1994 have been running a school in the name of “G.D.Goenka Public School” and the word

“Goenka” forms a prominent and distinctive part of the trademark “G.D.Goenka Public School” and, therefore, the respondents are

prior users/owners of the trademark inasmuch as the appellant had set up “Mohini Devi Goenka Mahila Mahavidhyala” for the first time

only later in the year 1995 and “Goenka Public School” much later in the year 2000.

.(ii) The respondents are the owners of the word “Goenka” inasmuch as they have got the word “Goenka” registered in 2005 w.e.f 2003

in different classes under the Trademark Act, 1999.

(iii) The adoption of “Goenka” by the appellant was not honest inasmuch as the appellant adopted the word “Goenka” after one

employee Mrs. S. C. Arora left the respondents and joined theappellant.

4. The learned Single Judge by the impugned order dated 24.2.2009 has restrained the appellant from using “Goenka Public

School” and “Goenka College of Pharmacy” by granting four months’ time to dis-continue the use of the said names. The learned

Single Judge has held that on account of the use by the appellant of the word “Goenka” in the aforesaid two institutions the same

leads to infringement of the registered trademark of the

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