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HIGH COURT OF JAMMU & KASHMIR AND LADAKH
MR. JUSTICE SANJAY DHAR, J
EMERGE CLASSES PRIVATE LIMITED – Appellant
Versus
KASHMIR INSTITUTE OF EXCELLENCE (KIE) AND ORS. – Respondent
FAO
The court affirmed that prior user rights in unregistered trademarks can support a passing off action, emphasizing the importance of goodwill and likelihood of confusion in trademark disputes.
Headnote:(A) Trade Marks Act, 1999 - Section 27(2) - Passing off action - The trial court granted an interim injunction restraining the defendant from using the plaintiffs' trademark, finding that the plaintiffs had established prior use and goodwill in their trademark ‘EMERGE - KIE HOPE MISSIONe - Infinity and Beyond’ - The defendant's use of a deceptively similar mark was likely to cause confusion among consumers. (Paras 1, 14, 31)
(B) Passing off - Elements - The court reiterated that for a passing off action, the plaintiff must show goodwill, misrepresentation, and likelihood of confusion, which were satisfied in this case. (Paras 17, 19, 30)
(C) Injunction - Standard for grant - The court emphasized that the trial court's discretion in granting injunctions is limited and should not be interfered with unless arbitrary or contrary to law. (Paras 32, 33)
Facts of the case:
The plaintiffs, a group of coaching service providers, amalgamated under the brand ‘EMERGE - KIE HOPE MISSIONe’ and sought an injunction against the defendant using a similar trademark, claiming it caused confusion and misled consumers. (Paras 3, 5, 8)
Findings of Court:
The trial court found that the plaintiffs had a prima facie case of passing off due to prior use and goodwill in their trademark, leading to the grant of an interim injunction against the defendant. (Paras 14, 31)
Issues: The main issues included whether the plaintiffs had established prior use and goodwill in their trademark and whether the defendant's mark was deceptively similar. (Paras 16, 25)
Ratio Decidendi: The court held that the plaintiffs had shown sufficient evidence of prior use and goodwill, and the defendant's mark was likely to mislead consumers, justifying the injunction. (Paras 19, 31)
Result: Appeal dismissed.
1) The appellant, who happens to be the defendant before the trial court, has challenged order dated 16.05.2024 passed by learned 2nd Additional District Judge, Srinagar (hereinafter ‘the trial court’ for short) whereby, the trial court, while disposing of an application under Order 39 Rules 1 & 2 filed by the respondents/plaintiffs, temporarily restrained the appellant/defendant from using trade mark (device and logo) of the respondents/plaintiffs.
2) It appears that the respondents/plaintiffs filed a suit before the trial court against the appellant/defendant seeking certain reliefs which are reproduced as under:-
- P a g e | 2 a) For permanent injunction restraining the defendant by itself or through its individual proprietors, promoters, directors, officers, agents, servants, representatives, assigns, heirs, successors and all others acting for and on its behalf from using, adopting, advertising, displaying etc. the trade marks “EMERGE – Infinity and Beyond” and “KIE” or any mark identical with or deceptively similar to the plaintiffs “EMERGE – KIE HOPE MISSIONe- Infinity and Beyond’ mark in any manner whatsoever including as a part of the name and from doing other thing as may constitute infringement of plaintiff’s registered trademark and passing off of the plaintiffs right in the plaintiffs said trade mark/trade name and acts of unfair competition.
- b) Directing the defendant to deliver all the products, material and stationery and data details of social media pages of the defendant bearing impugned trade mark or any mark deceptively similar to the mark “EMERGE – KIE HOPE MISSIONe – Infinity and Beyond” including the advertising materials, display boards, sign board, trade literatures and goods etc. for the purpose of destruction/ erasure.
- c) For grant of damages in sum of Rs.50,00,000 (rupees fifty lakhs only) from the defendant to the plaintiffs.
3) In the plaint, it was pleaded by the plaintiffs/ respondents that plaintiffs No.1 to 3 are reputed and renowned service providers in the field of education and imparting coaching to students of Class 8th to 12th and aspirants of Competitive Exams like NEET, JEE and its P a g e | 3 allied services. According to the plaintiffs, plaintiff No.1 is the rightful owner/proprietor of trademark ‘KIE’ (device and logo) which is duly registered with the Registrar of Trade Marks, Government of India, Mumbai, and the said trademark is registered under Class 41 dealing in “Coaching Services”. It has been pleaded that petitioner No.1 has a chain of coaching centres across Kashmir Valley running and operating under the brand name and trademark ‘KIE’ (Kashmir Institute of Excellence). It is also pleaded that plaintiff No.2 provides similar services under the brand name ‘MissionE coaching classes’ and is rightful owner of brand name ‘MissionE’ whereas plaintiff No.3 provides its services under the brand name ‘HOPE Classes’ and is rightful owner of the brand name known as ‘HOPE Classes’.
Regarding plaintiff No.4, it has been submitted that it is a company which provides services under the brand name “EMERGE KIE HOPE MISSIONE PVT. LIMITED” since January, 2024 and, as such, is rightful owner of the said brand and that it has applied for registration of the trade mark ‘EMERGE’.
4) According to the plaintiffs, the aforesaid trademarks and brands are strong brands depicting the professional reputation of the plaintiffs in the field of providing coaching P a g e | 4 to the students and these brands have gained much recognition and have acquired distinctive goodwill with the passage of time.
5) It has been pleaded that in November, 2023, the plaintiffs decided to amalgamate under one name for providing coaching services and the name to such amalgam was given as ‘EMERGE - KIE HOPE MISSIONe’. According to the plaintiffs, the brand ‘EMERGE’ was launched on 6th January, 2024 in a huge gathering of students, tutors and the persons from the coaching industry and a memorandum of association was signed by th
