The court established that identical trademarks causing public confusion constitute infringement and passing off, regardless of geographical separation.

ORDER :

Anita Sumanth, J.

The petitioner is a Montessori School. It was formed in June, 1987 and propagates the Montessori method of teaching. It was originally commenced for the pre-primary group of students between the ages of two and half to six years. In time, the primary class was expanded to permit older children to form a class of their own.

2. According to the petitioner, the school boasts of world class facilities which are holistic in nature encompassing subjects, both academic and contemporary among others. The petitioner had adopted the use of the word ‘ABACUS’ in the name of the school, as early as in 1987. The term ‘ABACUS’ connotes a mathematical tool comprising a frame holding parallel rods strung with movable beads. Each rod designates a particular denomination in the decimal system and each bead represents a digit or a specific number of digits.

3. The trademark for which the petitioner had applied is ‘ABACUS MONTESSORI SCHOOL (label)’ (in short, ‘mark’) bearing number 2384509 in Clause 41 being Educational Services. The mark is pending registration before the Trade Marks Registry. The petitioner would submit that considerable expenditure has been incurred in advertising and marketing the mark through various media. The expenditures incurred over the years have been tabulated and supplied to the Court.

4. While so, the petitioner noted that the first respondent (R1) had issued an advertisement for its school using the identical trademark ‘ABACUS’ in respect of the same genre of services i.e., educational services, as engaged in by the petitioner.

5. The school of R1 was advertised as ‘ABACUS INTERNATIONAL MONTESSORI SCHOOL’. The petitioner issued a notice as early as on 28.08.2003 to R1 bringing to its notice the use of the same mark by it, and asking R1 to cease and desist from using its trademark.

6. The defence of R1 was that they are only a primary school functioning exclusively in the area of Tiruppur. An alternative defence, wider in scope, was that ‘ABACUS MONTESSORI SCHOOL’, as a phrase, had universal application and hence cannot be claimed as an exclusive right by any one entity. Admittedly, the petitioner did not proceed further with the matter and allowed R1 to continue functioning as it were.

7. Later, and closer to the time of institution of the present application before the Trademark Registry in May, 2015, the petitioner had come to know that R1 had initiated steps to protect the trademark ‘ABACUS MONTESSORI SCHOOL’, the only difference being, the insertion of the term ‘International’ in the mark. According to the petitioner, this constitutes a rank infringement of its own mark and the term ‘International’ would make no difference to the sum and substance thereof.

8. The petitioner would also draw note to the statement of the authorized representative of R1 in the pleadings, to the effect that its services are extensive and are distributed throughout the world, including in India. That apart, the petitioner is also aggrieved by the proximate location of R1 school, as Tiruppur is only 500 kms from Chennai where the petitioner school is located. The petitioner is hence aggrieved by the infringement of their valuable right, in use since 1987, as prior user.

9. They also allege that the apparent intention of R1 is that its activities, and subsequent expansion thereof, would encroach on the petitioner’s goodwill and reputation. The petitioner has established longstanding, uninterrupted and well-recognised rights, including substantial goodwill for, in excess of 35 years, and thus sought to restrict unwarranted erosion of those rights by R1, constituting passing off of it’s goodwill and reputation in the market.

10. The prayer of the petitioner before R2, the Registrar of Trademarks, was for a direction that the registration of R1 bearing No. 1586733, also under Clause 41, be expunged from the Trade Marks register, with costs.

11. R1 defended the proceedings vehemently. According to R1, there could be no exclusi