Parents would never have dreamt that their sad lot would feature in an IP post 😉 As if spending sleepless nights mulling over school admissions for their children was not enough, parents now have the added woe of trying to identify which school is the original and reputed one! With alleged copycats floating around – making parents’ lives more miserable!
Would you be deceived into thinking that ShreeRam World School is in some way associated with Shri Ram School? Well, prima facie the Delhi HC sure thought so (in Educare Ltd. v S.K. Sachdev, CS(OS) 1151/2014).
Added to this chaos, god seems to have entered the fray, with the defendant invoking god’s name as a shield of protection!
On the point of religion and IP, Sumathi has written insightful posts here and here and so has Mathews here.
Background
This is a trademark dispute that concerns the famous ShriRam School (plaintiff), originally founded in Delhi in 1988. It is the case of the plaintiff that it has been using the trademark ‘Shri Ram School’, in relation to educational institutions, since the year 1988. The plaintiff claims to have used this mark for 25 years and claims that it has established tremendous goodwill and reputation. Though the first school was set up in Vasant Vihar, Delhi, the plaintiff has now opened schools in Gurgaon, Nodia, Faridabad etc. under names such as THE Shriram Millennium School , The Shriram Police School etc. The plaintiff has filed a trademark registration for ShriRam School in 2008 (No.1696277 in Class 41) which is still pending.
The plaintiff recently came to know that the defendant has started using the mark ShreeRam World School in relation to its educational institution and has also adopted the domain name www.shreeram.in. The Chairman of the defendant’s school is also the Chairman of Sachdeva Public School, Pitam Pura, Delhi established in the year 1986.
Plaintiff’s arguments:
Phonetic and conceptual similarity: The plaintiff submitted that the defendant’s mark ‘ShreeRam’ is phonetically and conceptually similar to the plaintiff’s mark ‘ShriRam’ and has been adopted with the intention to benefit from the immense reputation attached to the plaintiff’s mark.
Not a concurrent user: The defendant adopted this mark only in the year 2011, whereas, the plaintiff’s mark has been in use since 1988.
Dishonest adoption: The defendant is not a new entrant to the world of education (the defendant has been around since 1986) and is well aware of the reputation of the plaintiff’s schools. In order to cash in on the plaintiffs reputation, the defendant dishonestly adopted the same name. Also, dishonesty is evident from the fact that the defendant’s website (www.shreeram.in) is silent on the particulars of the management of the school in comparison to its other websites where such details are prominently displayed. Further, the defendant has given no explanation for the adoption of the impugned mark, making such adoption prima facie dishonest.
Defendant’s arguments
Concealment of material facts: The defendant argued that the plaintiffs should not be granted an equitable relief i.e. their pray for an injunction since they have concealed material facts. The plaintiffs concealed an examiner’s report in relation to their trademark application which stated that trademarks comprising the expression SHRI RAM are already registered or pending in the name of various other parties. Moreover, the plaintiffs also concealed a letter dated 8.6.2012 where they admitted that the expression SHRI RAM stands for a famous Hindu Deity and is common to the trade and hence the same cannot be monopolized by one person.
Mark not distinctive: The defendants argued that SHRI RAM is common to the field of schools and education. This is evidenced by the fact that a school by the name Shri Ram Ashram was established as early as 1923 and still exists today. More schools bearing the name SHRI RAM or SHREE RAM were established in 1932, 1951, 1960, 1968, 1972, 1977, 1978, 1986 and about 100 such schools existed on the date of filing of the suit. Due to the presence of a number of schools bearing the name Shri Ram, the defendant submitted that the distinctiveness of the plaintiff’s trademark has been blurred.
Moreover, since the mark is a name of a Hindu Deity, known for learning and teaching and generally used by Hindus as part of their business ventures, widespread use makes the mark publici juris.
Honest adoption: The reason why the defendant adopted this mark was because it was his mother’s desire that a school be established after the name of Lord Shri Ram.
No likelihood of confusion: The defendant also contended that its school was a CBSE school and the plaintiff’s school was an ICSE school. Also, they argued that both school operated in different geographical areas. Given these facts and give the fact that parents are a very discerning lot there was no likelihood of confusion. However, they agreed to introduce a disclaimer ““Mata Phoolan Wanti Educational Society” alongside the name of their school.
Court
After hearing the plaintiff’s counter to the defendant’s arguments, the court held that ShriRam School and ShreeRam World School are phonetically and structurally identical and that the plaintiff’s use of the mark is from 1988 whereas the defendant’s adoption is from 2011 and use is from 2014.
On the point of concealment of material facts the court observed that the application the defendant was referring to dealt with the trademark SHRI RAM EDUCARE and Shri Ram School was not in issue. Moreover, the plaintiff had clarified that the letter dated 8.6.2012 was withdrawn on 15.4.2014 prior to the filing of the suit on 25.5.2014. Therefore, it was held that there was no material concealment or misrepresentation made by the plaintiffs.
The court held that since the defendants themselves have filed an application for registration of the trademark ShreeRam World School in 2011, they cannot be allowed to argue that ShreeRam is publici juris.
Further, it was clear, through achievements of the school, its students, teachers and support staff, the plaintiff’s mark had acquired immense reputation and goodwill making it distinctive. The court categorically held that in case of a school, the financial statements would take a back seat in assessing reputation and goodwill.
Facts such as – the defendants being in the education sector since 1986; non disclosure of date on which the defendant’s mother made her wish; the absence of the details of management on the defendant’s website, all pointed, prima facie, to dishonest adoption by the defendants.
Therefore, the court allowed the injunction against the defendants to continue.
A similar case has arisen in the past in Goenka Institute of Education and Research v. Anjani Kumar Goenka and Anr (2009, Del)., where both the plaintiff and defendant used Goenka as a prominent part of their trademarks: the competing marks were “Goenka Public School” and “G.D. Goenka Public School”. In this case, however, honest and concurrent use was established and both parties were allowed to continue using their trademarks – with the defendant having to include a disclaimer. Usually, if concurrence of use (i.e. both parties start using their trademarks around the same time) is established, it is easier to prove honesty of adoption as well – which is one of the reasons why the Goenka case is different from the present case.
Thank you to Sumith Wadhwa for sending us the case.
Since the plaintiff’s trademark application is pending registration, has the court provided the injunction against passing off?