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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Social Work And Research Centre – Appellant
Versus
Barefoot College International – Respondent
CS(COMM) 827 of 2022 & I.A. 114 of 2023, I.A. 115 of 2023
Decided On : 01-03-2023
BAREFOOT COLLEGE - TRADE MARK - INFRINGEMENT - SUIT FOR INJUNCTION - PERMISSIVE USER - ACQUIESCENCE - DOMAIN NAME - OWNERSHIP - INFRINGEMENT - INJUNCTION - RESTRAINT AGAINST THE DEFENDANT - ORDER VII RULE 11 OF THE CPC - APPLICATION FOR REJECTION OF THE PLAINT - MAINTAINABILITY OF THE SUIT - HELD, THE PLAINTIFF HAS, TO ITS CREDIT, PRIORITY BOTH OF USE AND OF REGISTRATION. THE DEFENDANT HAS, IN ITS WRITTEN STATEMENT, CLEARLY ACKNOWLEDGED THAT IT WAS USING THE BAREFOOT COLLEGE MARK ONLY WITH THE PERMISSION OF THE PLAINTIFF. THE DAY THE PERMISSION WAS WITHDRAWN, THE USER OF THE MARK BECAME INFRINGING. CONTINUED INFRINGING USER CAN HARDLY BE EXPLAINED AWAY BY PLEADING ACQUIESCENCE. THE COMMUNICATIONS BETWEEN THE PARTIES DO NOT INDICATE ANY ACQUIESCENCE, BY THE PLAINTIFF, TO THE CONTINUED USER, BY THE DEFENDANT, OF THE BAREFOOT COLLEGE WORD MARK OF THE TWO FEET LOGO DEVICE MARK. IN VIEW OF THE AFORESAID, A CLEAR PRIMA FACIE CASE OF INFRINGEMENT, BY THE DEFENDANT, OF THE REGISTERED BAREFOOT COLLEGE WORD MARK AND THE TWO FEET LOGO OF THE PLAINTIFF IS MADE OUT. WHERE A CASE OF INFRINGEMENT IS THUS FOUND TO EXIST, INJUNCTION HAS NECESSARILY TO FOLLOW.
Fact of the Case:
The plaintiff and the defendant are engaged in the service industry and are providing community services involving skill development, empowerment of women and the like. The plaintiff is a society rendered under the Societies Registration Act, 1860. It claims to have commenced operations in 1972. The defendant was admittedly incorporated as a Section 8 private limited company in 2015, with Bunker Roy, the founder of the plaintiff and Bhagwat Nandan as its two directors. The plaintiff was granted registration, by the Registrar of Trade Marks, of (i) the word mark "BAREFOOT COLLEGE" on 13th March 2019 w.e.f. 12th July 2018, claiming user since 1973 and (ii) the device mark [IMG] (hereinafter "the two feet logo") on 11th January 2019, w.e.f. 12th July 2018. Registration of both these marks was granted under Class 45, for "personal and social services rendered by others to meet the needs of individuals". The claim of user, by the plaintiff, in both these marks was of 1973. The registration of the plaintiff in both these marks has remained unchallenged. They subsist till date. The defendant was using the BAREFOOT COLLEGE mark either by itself or as a part of its mark "BAREFOOT COLLEGE INTERNATIONAL", and also continued to use the two feet logo encased, however, by a circle, thus: [IMG] (modified two feet logo).
Finding of the Court:
The Court found that the plaintiff has, to its credit, priority both of use and of registration. The defendant has, in its written statement, clearly acknowledged that it was using the BAREFOOT COLLEGE mark only with the permission of the plaintiff. The day the permission was withdrawn, the user of the mark became infringing. Continued infringing user can hardly be explained away by pleading acquiescence. The communications between the parties do not indicate any acquiescence, by the plaintiff, to the continued user, by the defendant, of the BAREFOOT COLLEGE word mark of the two feet logo device mark. In view of the aforesaid, a clear prima facie case of infringement, by the defendant, of the registered BAREFOOT COLLEGE word mark and the two feet logo of the plaintiff is made out. Where a case of infringement is thus found to exist, injunction has necessarily to follow.
Issues: Whether the plaintiff has a valid claim for infringement of its registered trademarks by the defendant?
Ratio Decidendi: The Court held that the plaintiff has a valid claim for infringement of its registered trademarks by the defendant. The Court found that the plaintiff has, to its credit, priority both of use and of registration. The defendant has, in its written statement, clearly acknowledged that it was using the BAREFOOT COLLEGE mark only with the permission of the plaintiff. The day the permission was withdrawn, the user of the mark became infringing. Continued infringing user can hardly be explained away by pleading acquiescence. The communications between the parties do not indicate any acquiescence, by the plaintiff, to the continued user, by the defendant, of the BAREFOOT COLLEGE word mark of the two feet logo device mark. In view of the aforesaid, a clear prima facie case of infringement, by the defendant, of the registered BAREFOOT COLLEGE word mark and the two feet logo of the plaintiff is made out. Where a case of infringement is thus found to exist, injunction has necessarily to follow.
Final Decision: The Court granted an injunction restraining the defendant from using the impugned BAREFOOT COLLEGE INTERNATIONAL and [IMG] marks in any manner, including user as the name of the Defendant 1- company, pending disposal of the suit.
JUDGMENT (Oral)
I.A. 114/2023 (Order XXXIX Rules 1 and 2 of the CPC)
1. The rival trademarks forming subject matter of controversy in the present proceedings are the following:
| Plaintiff's Trademarks | Defendant's Trademarks | |
| BAREFOOT COLLEGE | BAREFOOT COLLEGE INTERNATIONAL [IMG] | [IMG] |
2. The plaintiff and the defendant are engaged in the service industry and are providing community services involving skill development, empowerment of women and the like.
3. The plaintiff is a society rendered under the Societies Registration Act, 1860. It claims to have commenced operations in 1972. In order to substantiate this claim, Mr. Aditya Gupta, learned Counsel for the plaintiff has invited my attention to the following documents:
(i) a news article in the India Today edition dated 1-15 November 1976 which contains, inter alia, reference to a medical program submitted by the plaintiff in 1973,
(ii) the ESCAP Human Resources Development Award for 1995 conferred on the plaintiff by the United Nations Economic and Social Commission for Asia and the Pacific, which refers to the plaintiff as the "BAREFOOT COLLEGE", and contains the following recitals:
"The Social Work and Research Centre, Tilonia, Rajasthan, India, popularly known as the Barefoot College, is a non governmental organization headed by Mr Sanjit (Bunker) Roy. The College was established in 1972."
(iii) the Indira Gandhi Paryavaran Puraskar 1998 awarded to "The Barefoot College of Social Work Research Centre" by the Ministry of Environment and Forests, Government of India for outstanding contribution of environmental-education, conservation, management and research programs and
(iv) a message dated 22nd October 2011 from the then Hon'ble Prime Minister expressing happiness at the award of Blue Planet Prize, for environment, by the Japan Government, on the plaintiff.
4. Mr. Gupta points out, further, that the defendant has also admitted, on its website - which, according to him, is actually the website of the plaintiff usurped by the defendant - as under:
"In the small activity centre in Tilonia, students are hard at work. In one room, six women are busy making cotton sanitary napkins. In another, some women are carefully soldering integrated circuit boards for solar panels. Outside, older women are learning how to stitch handicrafts that are to go on sale. We are at Barefoot College, an institution that teaches rural men and women, semi- literate to illiterate, how to become solar engineers, paramedics and doctors. Conceptualised by Sanjit Bunker Roy in 1972, the school that started out with the goal of eliminating water scarcity in rural India has been empowering village by making them sustainable."
5. This material, apart from other material on which reliance has been placed in the plaint, submits Mr. Gupta, clearly indicate that the plaintiff was engaged in social welfare activities, under the "BAREFOOT COLLEGE" moniker, since 1972.
6. One may now advert to the relevant trademark registrations held by the plaintiff. The plaintiff was granted registration, by the Registrar of Trade Marks, of (i) the word mark "BAREFOOT COLLEGE" on 13th March 2019 w.e.f. 12th July 2018, claiming user since 1973 and (ii) the device mark [IMG] (hereinafter "the two feet logo") on 11th January 2019, w.e.f. 12th July 2018. Registration of both these marks was granted under Class 45, for "personal and social services rendered by others to meet the needs of individuals". The claim of user, by the plaintiff, in both these marks was of 1973. The registration of the plaintiff in both these marks has remained unchallenged. They subsist till date.
7. The status of the trademark registrations held by the plaintiff and the defendant stand tabulated thus by the defendant itself in para 20 of the rejoinder filed in IA 115/2023:
Plaintiff's Registrations:
| S.No. | Mark/Device | Status |
| 1. | BAREFOOT COLLEGE (Word)-Class 45 | Registered (Application No.3885535) |
| 2. | Device-Class 45 [IMG] | Registered (Application No.3885538) |
| 3. | BAREFOOT COLL |
The central legal point established in the judgment is the significance of prior use and the principles of honest adoption, delay, and acquiescence in trademark disputes.
Prior usage of a trademark establishes rights that outweigh later registration, particularly in the educational sector to prevent public confusion.
Section 34 of the Trademarks Act does not disentitle the plaintiff to an injunction against the defendant if the user of the infringing mark by the defendant is not prior in point of time both to the....
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
Court upheld the priority of the Plaintiff's registered trademarks, finding a prima facie case for infringement due to deceptive similarity, justifying an interim injunction against the Defendants.
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 infringem....
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