The judgment establishes the principle that in cases of passing off, the prior use and goodwill of a mark, likelihood of confusion, and damage to goodwill are crucial factors in determining infringement.

JUDGMENT

Prathiba M. Singh, J. - Background

1. The present suit has been filed by the Plaintiff- The British School Society for permanent injunction against infringement of trade mark, passing off, unfair competition, rendition of accounts, damages and delivery up etc. The Plaintiff is an international, not-for-profit society located in New Delhi, India. The Plaintiff runs 'The British School' which is located at the Chanakyapuri, New Delhi. Defendant No. 1 is a registered society with its principal place of business in Chandigarh. Defendant No.2 is stated to be a resident of Panchkula, Haryana.

2. The case of the Plaintiff is that it is aggrieved on account of Defendants' unauthorised adoption and use of the mark 'The British School', which is identical to Plaintiff's prior, distinctive and well-known mark. The mark 'The British School' is stated to have been adopted by the Defendants in relation to identical services, i.e., educational services, for their four schools in Punjab & Haryana.

3. In the year 1963, a group of British parents, supported by the British High Commissioner to India, started 'The British School' in Defence Colony, New Delhi with the aim of serving the diplomatic and expatriate community. 'The British School' operates under the aegis of the Plaintiff society with the British High Commissioner to India as its President. The word mark 'The British School' is registered in favour of the Plaintiff under trade mark number 2518107 claiming user since 1963 in respect of services related to education, schools, colleges, etc. However, a condition to the effect that the registration of the said mark shall give no right to the exclusive use of The British School' is attached to the trade mark registration.

4. Sometime in June, 2020, the Plaintiff came across Defendants' unauthorised use of the mark The British School'. It also came to the knowledge of the Plaintiff that a website- www.thebritishschool.org was being run by the Defendants. Further enquiries revealed that on 29th May, 2015, an application bearing no. 2973716 for the registration of the following device mark had been filed by Defendant No.2 claiming user since 1st January, 2005-

5. The application of the Defendant No.2 has been objected under Sections 9(1)(a) and 11(1) of the Trade Marks Act, 1999 (hereinafter 'Act'). Another application bearing no. 4423768, dated 29th January, 2020 has been filed by Defendant No.1 for the registration of the following device mark, which has been opposed by the Plaintiff-

6. A cease-and-desist notice dated 19th June, 2020 was addressed by the Plaintiff to the Defendants. Vide the said notice, the Plaintiff asked the Defendants to give up all use of the mark 'the British School' and transfer the domain name www.thebritishschool.org in favour of the Plaintiff. A followup letter was sent by the Plaintiff to the Defendants dated 10th July, 2020 eliciting no reply from the Defendants. This led to filing of the present suit.

7. Vide order dated 12th October, 2021, an ex parte ad interim injunction was granted against the Defendants from using the mark The British School ' or any other mark deceptively similar to Plaintiff's mark, till further orders. Thereafter, an application for the modification of the order dated 12th October, 2021 was filed by the Defendants. Vide order dated 22nd December, 2021, concession was given to the Defendants to comply with the injunction order till the end of the academic session of 2021-22 on the condition that Defendants shall not advertise the admission for the next session under the name The British School'.

Submissions

8. Mr. Ashish Upadhyay, ld. Counsel appearing for the Defendants submits that the order dated 12th October, 2021 injuncting the Defendants from using the mark 'The British School' is liable to be vacated. The submission of the ld. Counsel is three-fold. The first and foremost objection of the Defendants is that the prayer for interim relief is hopelessly barred by delay. Ld. counsel s