Prior usage of a trademark establishes rights that outweigh later registration, particularly in the educational sector to prevent public confusion.

JUDGMENT

Yogesh Khanna, J. IA No.15651/2021 is moved by the defendant under Order 39 Rule 4 CPC for vacation of the ad-interim order dated 03.09.2021.

2. With the consent of learned counsels for parties, arguments on this application have been heard without seeking its response from the plaintiff.

3. On 03.09.2021, this Court interalia directed as under:

9. Keeping in view the user of the plaintiff of the mark since 1963 and the reputation of the plaintiff, plaintiff has made out a prima facie case. The defendant is restrained by an ex parte injunction from using or asserting any right on the trademark `THE BRITISH INTERNATIONAL SCHOOL' or any other trademark similar to the plaintiff's trademark THE BRITISH SCHOOL/. The defendant will take steps within three months from the date of receipt of the injunction order.

4. The learned senior counsel for the defendant submit the mark of the defendant British International School of Chennai was registered on 16.07.2007 and whereas the mark of the plaintiff was registered only on 23.04.2013 and that there has been concealment of facts in the plaint. He refers to a documents filed by the defendant at page No.19 of documents vz. a copy of the Trademarks Journal 1852 dated 04.06.2018 class 99 which says The British School was registered on 23.04.2013 with a condition Registration of this trademark shall give no right to the exclusive use of the British School. The page No.20 of the documents of the defendant is the devise mark but with same condition, hence, it is argued the mark The British School is not exclusive to anyone, including the plaintiff herein. The learned senior counsel for the defendant then referred to the trademark registration of the defendant i.e. The British International School, Chennai dated 12.05.2016 without any condition.

5. Secondly, it was argued para No.30 of the plaint shows the plaintiff came to know about defendant's mark in September 2020 is wholly incorrect as there were similar marks available even at the time of registration of plaintiff's mark and he referred to the examination report dated 02.05.2014, pursuant to which, the application of the plaintiff for registration of the trademark The British School was accepted. In its reply to objections under Section 11 of the Trademarks Act, the plaintiff had rather submitted when the subject mark is compared with any of the cited marks, in its entirety, the same without a doubt, visually phonetically and structurally different from the cited marks and that there therefore, arises no likelihood of confusion being caused between the cited marks and the subject marks. The only common element between the subject mark and the aforesaid cited marks is the word British which is a common dictionary word. Thus it is argued it was rather admitted by the plaintiff, British School is a common word and thus it does not infringe the plaintiff's right and that the plaintiff has no exclusive right to it.

6. Thus the learned senior counsel for the defendant argued a) the documents viz. the registration certificates comprising condition were never filed by the plaintiff; and b) the reply of the plaintiff to the objections per examination report itself reveals the word The British School is a common word. It is argued though such condition have been stated in para No.9 of plaint, but since the documents viz. the registration certificates were not filed, hence there is concealment of facts from the Court. It is alleged the impugned order is illegal on the face of it as the documents above were never shown to the Court at the time of passing of an ad interim order and secondly, the defendant being in the midst of an academic year, any injunction would go against the interest of the students and their parents and that the defendant is well within its right to use the word The British International School, Chennai.

7. In support of above arguments, reference is made to Columbia Sportswear Company vs. Harish Footwear &