The court emphasized the importance of disclosing material facts while filing a suit and applied the test of an unwary purchaser to determine trademark similarity, highlighting the need for bona fide use of trademarks under Section 35 of the Trade Marks Act.

Jayant Nath, J.

IA Nos. 3491/2018 & 4583/2018

1. This suit has been filed by the plaintiffs seeking permanent injunction to restrain the defendants from infringing the plaintiffs’ right in the registered trademarks ‘GOENKA’, ‘G.D.GOENKA’ and ‘GD GOENKA SCHOOL’, etc. and also form doing acts of passing off and seeking rendition of accounts.

2. IA No. 3491/2018 is filed under Order 39 Rules 1 & 2 CPC seeking an ex parte interim injunction against the defendants.

3. This court on 13.03.2018 when the matter came up for hearing, restrained the defendants from using the trademark ‘GOENKA INTERNATIONAL SCHOOL’ or any other mark which is deceptively similar to the registered trademark of the plaintiffs.

4. IA No.4583/2018 has been filed by the defendants under Order 39 Rule 4 CPC seeking vacation of the said interim order dated 13.03.2018. On 17.04.2018, this court had partly modified the stay order on the plea of the learned counsel for the defendants who had submitted that without prejudice to the defendants’ rights and contentions, the defendants would apply for change of name with CBSE. However, until CBSE takes action on the request of the defendants, it was pleaded that the defendants may be permitted to continue to take admission in their school in the old name. The defendants had submitted that they would not advertise the old name of their school other than in the city of Durgapur. The said plea of the defendant was accepted and the interim order was partly modified to that extent.

5. In the plaint the case of the plaintiff is that in 1994 G.D. Goenka Group under the leadership of plaintiff No. 1-Mr.Anjani Kumar Goenka set up its first flagship school ‘G.D. Goenka Public School’ in Vasant Kunj, New Delhi, which currently boasts 2250 students. It is pleaded that with 24 years of excellence in the field of education, the school has more than 50 branches in India and is recognized by the public at large for the quality of education offered. Plaintiff No. 2 Company is said to be engaged in the field of imparting education and uses the brand name ‘G.D. GOENKA’ and other GOENKA marks with combination of words such as INTERNATIONAL, GLOBAL, WORLD, LA PETITE, etc. It is pleaded that G.D. Goenka Schools are synonymous with excellent standards of education and amenities. The plaintiffs have been using the mark GOENKA and G.D. GOENKA since 1994 in the field of education continuously and uninterruptedly for over two decades. It is also stated that the plaintiffs’ prior adoption, extensive use and promotion of the said trade mark ‘G.D. GOENKA’, ‘GOENKA’ ‘GOENKA SCHOOL’ and other GONEKA marks used in combination of words INTERNATIONAL, GLOBAL, WORLD, LA PETITE, have led to a secondary meaning being attached to the marks GD GOENKA and GOENKA which is solely associated with the plaintiffs. Para 9 of the plaint gives a list of trademarks registered under the Trade Marks Act, 1999 under Classes 16, 35, 41,42, 43 and 44. It is pleaded that the schools of G.D.GOENKA have spread over 64 different locations in the country including in Bengal. The advertisement expenditure for the last five years are also stated in para 14 of the plaint. In 2016-17 a sum of Rs.1,49,19,025/- was spent on education. Revenue generated in the year 2016-17 is said to be Rs. 27.79 crores.

6. Defendant No. 1-Om Education Trust started operating a school by the name of GOENKA INTERNATIONAL SCHOOL in Durgapur, West Bengal. In January 2018, it is stated that the plaintiffs received information that the defendant is operating a school called GOENKA INTERNATIONAL SCHOOL and had advertised the same on an in-flight magazine of Indigo Airlines. It is pleaded that the defendant’s advertisement uses the infringing mark GOENKA INTERNATIONAL SCHOOL which is identical/deceptively similar to the registered mark of the plaintiffs GOENKA, GD GOENKA, GOENKA SCHOOL and other Goenka marks. It is also stated that the defendants are carrying on services which are identical to the services