JUDGMENT (Oral)

C. HARI SHANKAR, J.

I.A. 16738/2023 [under Order XXXIX Rules 1 and 2 of the CPC]

1. This judgment adjudicates IA 16738/2023, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).

2. The following trademarks stand registered in favour of the plaintiff under the Trade Marks Act, 1999:

Trademark Application No.Date of filing Class11809356 March 2003 16INSTITUTE OF DIRECTORS 253535522 May 2013 16INSTITUTE OF DIRECTORS 253535622 May 2013 35239416311 September 2012 41

3. Classes 16, 35 and 41, in which the above marks stand registered pertain to "printed matter namely publications, books, periodicals, magazines, brochures, pamphlets, newsletters, instructional material used for training, stationary items, advertising boards", "association services catering to management, personal development of directors, and boardroom development" and "arranging and conducting of conferences, seminars and workshops, organizing international conferences & training programs", respectively.

4. The registration of the device mark of the plaintiff in Class 41 was subject to a disclaimer, disentitling the plaintiff from claiming any exclusive right over the descriptive matter appearing on the label. No such disclaimer attached to the registration of the plaintiff's marks in Classes 16 and 35.

5. The plaintiff admittedly uses the aforesaid marks for running an institute as well as for conducting events, networking and other associated activities.

6. The plaintiff is aggrieved by the use, by the defendants, of the device mark . Defendant 1 has applied for registration of the said mark in class 41 for "education; providing of training; entertainment; sporting and cultural activities". Mr. Jotwani, learned Counsel for the plaintiff submits that his client's grievance is essentially against the textual component of the impugned mark, which reads "Directors' Institute". He submits that the use, by the defendants, of "Directors' Institute" is bound to result in confusion in the minds of the public, when seen vis-a-vis the plaintiff's mark "Institute of Directors", especially as the marks are used for providing similar and allied services. He has invited my attention to certain pages from the internet reflecting the use, by the defendants, of the appellation "Directors' Institute", both as a phrase, as well as in the form of the logos and . Mr. Jotwani has no objection to the defendants using any logo they want to, provided the logo does not contain the text "Directors' Institute" and "Director's Institute-World Council of Directors" and/or any other text which is deceptively similar to the plaintiff's mark "Institute of Directors", as is likely to create confusion in the public.

7. Mr. Jotwani has also referred to certain messages received by his client which indicate that members of the public were, in fact, being confused as a consequence of the use, by the defendants, of the appellation "Directors' Institute" to describe themselves.

8. As such, Mr. Jotwani exhorts this Court to injunct the defendants, pending disposal of the present suit, from use of the expression "Directors' Institute" as part of their mark or to refer to themselves as "Director's Institute".

9. Mr. Yashpal Singh, arguing for the defendants, submits that the prayer of the plaintiff is not sustainable as, while applying for registration of the device mark in Class 41, the plaintiff, in response to an objection raised by the Trademark Registry under Section 9 of the Trade Marks Act, specifically responded thus:

"We humbly submit that the mark IOD INSTITUTE OF DIRECTORS BUILDING TOMORROW'S BOARDS (DEVICE) of the Applicant is in the form of a device. It is pertinent to note that the words used in the mark are common English language words and are descriptive in nature and cannot belong to any one Proprietor. The Applied mark should be seen as a whole. It does not have direct reference to the characteristics like kind, quality, quantity

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