Words of common English usage cannot be monopolized and are not entitled to trademark protection.

CS(COMM) 611/2023

Page 1 of 15

$~43

*

IN THE HIGH COURT OF DELHI AT NEW DELHI

+

CS (COMM) 611/2023, I.A. 16738/2023 & I.A. 16739/2023

INSTITUTE OF DIRECTORS

..... Plaintiff

Through:

Mr.

Dinesh

Jotwani,

Ms.

Harpreet Oberoi, Mr. Sourabhpreet Singh

and Ms. Shivalika Midha, Advs.

versus

WORLDDEVCORP TECHNOLOGY AND BUSINESS

SOLUTIONS PVT LTD & ORS.

..... Defendants

Through:

Mr.

Yashpal

Singh,

Mr.

Saurabh Kansal, Mr. Manish Kumar and Mr.

Raghav Vig, Advs. for D-1 to 4

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

JUDGMENT (ORAL)

%

11.12.2023

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

Class

1180935 6 March 2003

16 Digitally Signed

By:HARIOM

Signing Date:12.12.2023

22:34:07

Signature Not Verified

CS(COMM) 611/2023

Page 2 of 15

INSTITUTE

OF

DIRECTORS

2535355 22 May 2013

16 INSTITUTE

OF

DIRECTORS

2535356 22 May 2013

35

2394163 11 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.

Digitally Signed

By:HARIOM

Signing Date:12.12.2023

22:34:07

Signature Not Verified

CS(COMM) 611/2023

Page 3 of 15

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-à-visthe 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