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2017 Supreme(Del) 672
IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, J.
INTERNATIONAL STUDENT IDENTITY CARD ASSOCIATION – Plaintiff
Versus
ABHISHEK TIWARI & OTHERS – Defendants
CS (COMM) No. 113 of 2016
Decided On : 27-02-2017
For the Plaintiffs : Mr. Hemant Singh, Mr. Kunal Kher and Mr. Shashi P. Ojha.
For the Defendants : Mr. Hrishikesh Baruah, Mr. Pranav Jain, Mr. Kshitij Paliwal and Mr. Shikhar Mittal.
The plaintiffs' suppression of material facts and e-mails disentitled them to any discretionary relief. The ISID Mark was not deceptively similar to the ISIC Mark, and the defendants' use of the domain name 'myisid.com' was due to unavailability of 'isid.com', directing the defendants to adopt a different pretext for the domain name.
Headnote:
Trademark Infringement - Trademark Act, 1999 - Section 11(6), (7) & (8) - Section 17 - The court vacated the ad interim order restraining the defendants from using the ISID Mark and the domain name 'www.myisid.com' after finding that the plaintiffs had suppressed material facts and wilfully suppressed relevant e-mails, disentitling them to any discretionary relief. The court also found that the ISID Mark was not deceptively similar to the ISIC Mark and that the defendants' use of the domain name 'myisid.com' was due to unavailability of 'isid.com', directing the defendants to adopt a different pretext for the domain name.
Fact of the Case:
The plaintiffs sought a permanent injunction against the defendants for trademark infringement, passing off, unfair competition, and other reliefs. The plaintiffs claimed rights over the ISIC Card and alleged that the defendants, former employees, had established a competing business using the ISID Mark and domain name 'www.myisid.com'. The defendants filed an application seeking to vacate the order restraining them from using the ISID Mark and the domain name.
Finding of the Court:
The court found that the plaintiffs had suppressed material facts and e-mails, disentitling them to any discretionary relief. It also held that the ISID Mark was not deceptively similar to the ISIC Mark and that the defendants' use of the domain name 'myisid.com' was due to unavailability of 'isid.com', directing the defendants to adopt a different pretext for the domain name.
Issues: Suppression of material facts, trademark infringement, deceptive similarity of marks, use of domain name
Ratio Decidendi: The plaintiffs' suppression of material facts and e-mails disentitled them to any discretionary relief. The ISID Mark was not deceptively similar to the ISIC Mark, and the defendants' use of the domain name 'myisid.com' was due to unavailability of 'isid.com', directing the defendants to adopt a different pretext for the domain name.
Final Decision: The ad interim order restraining the defendants from using the ISID Mark and the domain name 'www.myisid.com' was vacated. The parties were left to bear their own costs. The applications were disposed of.
VIBHU BAKHRU, J.
I.A. Nos. 2169/2016 and 3865/2016
1. The plaintiffs have filed the above captioned suit, inter-alia, seeking a decree of permanent injunction restraining infringement of their trademark, passing off, unfair competition, rendition of accounts, delivery up, etc. against the defendants.
2. The plaintiffs have filed I.A. No. 2169/2016 under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 (hereafter CPC) seeking an order restraining the defendants from using the trademarks “ISID” and “Indian Student Identity Card” or any other trademark, which is deceptively similar to the plaintiffs' trademarks. The plaintiffs have also sought an order restraining the defendants from using the domain name “www.myisid.com.” Defendant No. 1 and 3 (hereafter collectively referred to as ‘the defendants) have filed I.A. No. 3865/2016 under Order XXXIX Rule 4 CPC praying that the order dated 17.02.2016 - by virtue of which the defendants were restrained from using the mark/name/logo “ISID” the domain name "www.myisid.com" or any other mark identical/deceptively similar to the plaintiff no. 1’s mark “ISIC” - be vacated. Both the aforesaid applications were taken up and heard together.
3. Plaintiff No. 1, International Student Identity Card Association (hereafter “ISIC Association”) is a limited responsibility association formed and existing under the laws of Denmark. Plaintiff No. 2, STIC Youth Travels Private Limited (hereafter “STIC”), is an Indian company and is the exclusive licensee of ISIC Association in India. STIC is authorized to represent, promote and distribute various cards of ISIC Association in India since the year 1974-75.
4. The plaintiffs as well as the defendants are engaged in the business of multipurpose identity cards. The said cards, inter-alia, enable the students to access discounts on various products and services. The defendants issue cards, which are mostly co-branded with educational institutions for their respective students.
5. It is stated that ISIC Association holds rights over the trademarks “International Student Identity Card” (hereafter ‘ISIC Card’), “International Youth Travel Card” (hereafter ‘IYTC Card’) and “International Teacher Identity Card” (hereafter ‘ITIC Card’) along with copyright and design rights in the said names. It is stated that ISIC Card is distributed in over 130 countries through Licensed Authorities, Provisional Licensed Authorities and Appointed Offices, who issue the ISIC Cards to students through their own outlets-stores or online - and via wholesale distribution agreements with universities, financial institutions, etc.
6. It is stated in the plaint that ISIC Card was first introduced in the year 1953 “by students for students.” It is averred that the ISIC Card has been endorsed by various governments, ministries of education and tourism, student organisations, etc. and also by the United Nations Educational, Scientific and Cultural Organization (UNESCO) since the year 1968.
7. The plaintiffs have placed on record a certificate by a Chartered Accountant stating that they had issued 22,140 ISIC Cards in 2012-2013; 18,838 in 2013-2014 and 23,559 in 2014-2015. The plaintiffs state that the turnover of STIC from the sale of ISIC Cards was Rs. 48,04,391/- in the year 2012-13; Rs. 41,73,896/- in the year 2013-14 and Rs. 41,18,525/- in the year 2014-2015.
8. It is averred in the plaint that owing to 60 years of continued worldwide use, the mark/logo/name “ISIC” and “International Student Identity Card” have gained global recognition and popularity and therefore, enjoy trans-border reputation. It is also stated that the said marks being highly distinctive, are exclusively identified with the plaintiffs and further that by virtue of Section 11(6), (7) & (8) of the Trademarks Act, 1999, the said marks are to be considered as well known marks.
9. The plaintiffs in paragraph 2 of the plaint have stated that ISIC Association (plaintiff no. 1 herein) is the registered proprietor
