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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Eduspark International Private Limited – Appellant
Versus
Laxmi Publications Private Limited – Respondent
CS(COMM) 573 of 2022 & I.A. 20805 of 2022 (O-VIII R-1 CPC)
Decided On : 10-04-2023
CPC - Violation of Interim Order - Order XXXIX Rule 2A - [CS(COMM) 573/2022, I.A. 16497/2022, I.A. 13138/2022] - The court accepted the defendant's unconditional apology for delay in complying with the interim order and disposed of the application. The plaintiff was granted an interim injunction restraining the defendant from selling products with the trademark 'VIBGYOR' until final adjudication of the suit.
Fact of the Case:
The plaintiff sought relief of permanent injunction against the defendant for infringing the 'VIBGYOR' trademark. The defendant's delay in complying with the interim order led to the plaintiff filing an application for violation of the order. The plaintiff was granted an interim injunction restraining the defendant from selling products with the trademark 'VIBGYOR'.
Finding of the Court:
The court found that the plaintiff had a prima facie case and confirmed the interim injunction in favor of the plaintiff until final adjudication of the suit. The court accepted the defendant's unconditional apology for the delay in complying with the interim order and disposed of the application.
Issues: Violation of interim order, infringement of trademark, delay in compliance with court orders.
Ratio Decidendi: The court found a deceptive similarity between the defendant's use of the 'VIBGYOR' mark and the plaintiff's registered marks. The defendant's admission of similarity between the goods of the plaintiff and the defendant worked against their claim of the goods being different. The court also emphasized the plaintiff's exclusive right to use the registered mark and the defendant's failure to provide evidence of prior use of the mark.
Final Decision: The court confirmed the interim injunction in favor of the plaintiff until final adjudication of the suit and disposed of the application for violation of the interim order.
JUDGMENT
Amit Bansal, J.
I.A. 16497/2022 (O-XXXIX R-2A of the CPC)
1. The present application has been filed on behalf of the plaintiff under the provisions of Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC) against the defendant and its employees for having violated the interim order dated 23rd August, 2022 passed by this Court.
2. It has been submitted on behalf of the plaintiff that despite the interim order passed by this Court on 23rd August, 2022, the books of the defendant bearing the infringing "VIBGYOR" trademarks were still available on third-party websites such as Amazon.in, BuyBooksIndia.com and the like.
3. Counsel for the alleged contemnors submits that immediately upon passing of the interim order by this Court, on 29th August, 2022, the defendant had written emails to its various offices all over India to discontinue selling books bearing the mark "VIBGYOR".
4. I have heard the counsels for the parties.
5. It is an admitted position that as on date, there is no violation of the interim order dated 23rd August, 2022. Yet, on the basis of the material on record, it cannot be denied that there was delay on the part of the defendant in communicating to the various third-party websites where the books of the defendant were sold, to discontinue selling books under the mark "VIBGYOR". However, during the course of the hearing on 2nd March, 2023, submission of the counsel for the defendant was recorded that the defendant is willing to file an unconditional apology. Affidavits have been filed on behalf of two of the directors as well as the authorized representative of the defendant, tendering an unconditional and unqualified apology to the Court and undertaking not to indulge in any activity that may amount to breach of the orders passed by the Court.
6. In the facts and circumstances of the case, the aforesaid apology is found satisfactory and is therefore, accepted by the Court.
7. In view thereof, no orders are required to be passed on this application, which stands disposed of as such.
I.A. 13138/2022 (O-XXXIX R-1 & 2 of the CPC)
8. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the trademark of the plaintiff, passing off their goods as that of the plaintiff and other ancillary reliefs.
9. Along with the plaint, the plaintiff also filed the present application for grant of interim injunction under Order XXXIX Rules 1 and 2 of the CPC. While issuing summons in the suit on 23rd August, 2022, this Court had granted an ad interim injunction in favour of the plaintiff restraining the defendant from selling products/goods with the trademark "VIBGYOR".
CASE SET UP IN THE PLAINT
10. Briefly stated, the case set-up in the plaint is as under:
10.1. The plaintiff manages schools under the trademark "VIBGYOR". The predecessor of the plaintiff, M/s. Kare Edumin Pvt. Ltd. [hereinafter "Kare Edumin"], set up the first "VIBGYOR" School in the year 2004 in Mumbai.
10.2. Vide order dated 27th April, 2017 passed by the National Company Law Tribunal, Mumbai Bench, a scheme of amalgamation between Kare Edumin and the plaintiff was sanctioned, whereby all properties and assets, including trademarks of Kare Edumin, were transferred to the plaintiff with effect from 1st June, 2017.
10.3. As on date, the plaintiff manages 39 schools all over India under the trademark "VIBGYOR". The plaintiff publishes its own books for its students under the trademark "VIBGYOR".
10.4. The plaintiff has received various awards and accolades from time to time, which are detailed in paragraph 11 of the plaint.
10.5. The plaintiff is the registered proprietor of various trademarks under the name of "VIBGYOR" and its formative marks in classes 16 and 41, the details whereof are given in paragraph 12 of the plaint. The plaintiff has been the registered proprietor of the word mark "VIBGYOR" under class 41 with effect from 16th January, 2012. Plaintiff has file
AI
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The main legal point established in the judgment is the protection of trademarks, the likelihood of confusion or deception arising from the similarity of marks, and the prima facie case of infringeme....
Prior usage of a trademark establishes rights that outweigh later registration, particularly in the educational sector to prevent public confusion.
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.
The defendant was entitled to the benefit of defense under Section 35 of the Act as it had been using the mark 'VASUNDHARA' in a bona fide manner since 2001.
Registered trademark owners have exclusive rights, but concurrent users may claim based on prior use and non-acquiescence.
The main legal point established is that at the interlocutory stage, the plaintiff's claim for trademark infringement must be proven, and the balance of convenience is a crucial factor in granting in....
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
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