MIPRJune Issue 20151

Journal Subscription 2015
Please start/renew my subscription for 2015 for the following Journals:
Journals No. of Issues Price
q Chartered Accountant Practice Journal (CAPJ) 12 ` 3000

q Competition Law Reports (CompLR) 11 ` 5250
q Manupatra Intellectual Property Reports (MIPR) 11 ` 5000
q Energy Law Reports (ELR) 11 ` 5250
* Delivery by Courier
All subscribers of above Journals will get Complimentary access for

viewing journals online on www.manupatralawreports.in
Contact your bookseller or mail your orders to:

Manupatra Publishing Pvt. Ltd.,
Registered Office:
E-192, New Rajender Nagar, New Delhi - 110060
Corporate Office:
B-37, Sector 1, Noida 201301, U.P.
Phone: 91-120-4014523, Toll Free No. 1-800-103-3550 or
Email: print@manupatra.com
CIN No. U22211DL2010PTC200932
Or contact the nearest regional offices:
• Ahmedabad 91-9376466309, e-mail: ahmedabad@manupatra.com • Allahabad 91-9307536256, e-mail:
allahabad@manupatra.com • Aurangabad 91-9595593226, e-mail: aurangabad@manupatra.com • Bengaluru
91-9845062022, 91-9845062022, 91-9663553008, e-mail: bangalore@manupatra.com • Chandigarh 91-9316025155,
e-mail: chandigarh@manupatra.com • Chennai 91-44-42028689, 91-9840336125, 91-814480616, e-mail:
chennai@manupatra.com • Cuttack 91-9337258725, e-mail: cuttack@manupatra.com • Guwahati 91-8822389192,
e-mail: guwahati@manupatra.com • Hyderabad 91-40-65459600, 91-9849447296, 91-7207883774, e-mail:
hyderabad@manupatra.com • Indore 91-9907138537, indore@manupatra.com • Jaipur 91-9352306316, e-mail:
rajasthan@manupatra.com • Jodhpur 91-8955050352, e-mail: jodhpur@manupatra.com • Kochi 91-9349852278,
e-mail: kerala@manupatra.com • Kolkata 91-33-32945322, 91-9748594303, 91-9883782483, e-mail:
kolkata@manupatra.com • Madurai 91-9025493226, madurai@manupatra.com • Mumbai 91-22-28316114/66954759,
91-9821299856, 91-9930514242, 91-8452046470, 91-9819897673, 91-9320732471, e-mail:
contactmumbai@manupatra.com • Nagpur 91-7304733785, e-mail: nagpur@manupatra.com • Noida 91-120-4014515,
91-120-4014524, e-mail: contact@manupatra.com • Patna 91-9304019078, e-mail: patna@manupatra.com • Pune
91-9021155514, 91-9168023000, e-mail: pune@manupatra.com • Ranchi 91-9608927444, ranchi@manupatra.com
• Vizag 91-7569050766, e-mail: vizag@manupatra.com
Order Form
SUBSCRIPTION / RENEWAL SUBSCRIPTION
Please find enclosed Cheque/Demand Draft* No.___________________

Dated ___________ drawn on__________________ for ` _____________
towards subscription/renewal subscription for the year 2015 of
_________________, to be dispatched by way of book post/courier.
My particulars are as under:
Name : ____________________________________________________
Address : ____________________________________________________
____________________________________________________
City : _________________________________ Pin:______________
Phone No.: ____________________________________________________
Email : ____________________________________________________
Date : ____________________________________________________
*Cheque/DD to be in favour of Manupatra Publishing Pvt. Ltd.

Subscription/Renewal payment can also be made online at
www.manupatra.com
Please issue the Cheques/Drafts in favour of Manupatra Publishing Pvt. Ltd.

Kindly write your name and complete address with Phone Nos. on the reverse of
Cheque/DD
www.manupatra.com
MIPR
MANUPATRA INTELLECTUAL PROPERTY REPORTS
Consulting Editors
Arun C Mohan Prathiba M Singh
Mohan Associates Senior Advocate
(Chennai)
Sunil B Krishna Nikhil Krishnamurthy

Krishna & Saurastri Krishnamurthy & Co.
(Mumbai) (Bangalore)
Associate Editors
Bitika Sharma Kavita Mundkur Nigam &
Singh and Singh Advocates Madhumita Sen
(Delhi) Krishna & Saurastri
(Mumbai)
Shwetambari Rao
Krishnamurthy & Co.
(Bangalore)
®
All rights, including trademark & copyright reserved. No part of this publication may be reproduced
or transmitted in any material form (including photocopying or storing it in any medium by electronic
means and whether or not transiently or incidentally to some other use of this publication) without
the written permission of the copyright holder, viz. Manupatra Information Solutions Pvt. Ltd.,
application for which should be addressed to it or as expressly permitted by law. Such written
permission must also be obtained before any part of this publication is stored in a retrieval system
of any nature. The doing of any unauthorized act in relation to a copyright work may result in both
a civil claim for damages and criminal prosecution.
The publisher acknowledges that judgments are in the public domain. However, the editorial notes
in the judgments along with the headnotes, references to authorities, citing references, legislations,
subsidiary legislations, notes and footnotes are the copyrighted material of the publisher. All editorial
inputs have been prefixed with an Ed.: or have been reflected by a change of font. The paragraphing
and copyediting of the judgments contained herein are unique to this publication and may not be
reflected in the original transcripts of the court. These are being done in consonance with the Manupatra
House Style. Manupatra Publishing Pvt. Ltd. has been licenced to use aforementioned Editorial
Notes and inputs.
The publisher has taken all care and effort to ensure that the information reproduced here is accurate
and up-to-date. However, the publisher, owner, editor, copyright holder or printer takes no
responsibility for any inaccuracy or omission that may have inadvertently crept in or any advice
rendered or accepted on the basis of this work. Under no circumstance shall the publisher, owner,
editor, copyright holder or printer be liable for any direct, incidental, special and consequential loss
and damage that results from the user’s reliance or non-reliance of information provided in this
publication.
The views expressed in the articles published in this Journal are those of the authors alone. Publisher,
owner, editors, copyright holder does not necessarily agree with these and these should not be taken
to reflect either the views or the policy of this Journal or those of the organisations to which they may
belong or in which they may be employed.
This journal can be exported from India only by the publisher. Violation of this condition of sale will
lead to criminal and civil prosecution.
MIPR shall be published in 11 Parts (3 Volumes).
Material published in this part is the exclusive copyright property of Manupatra Information Solutions
Pvt. Ltd.
Printed and published by Priyanka on behalf of
Manupatra Publishing Pvt. Ltd. from
174, Nilgiri Appartments, Alakhnanda, New Delhi-110019
© Manupatra Information Solutions Pvt. Ltd.
www.manupatralawreports.in
Printed at M/s R-Tech Offset Printers 1617 A/1,
Uldhanpur, Naveen Shahdara, Delhi - 110032
Editor: Priyanka
MIPR shall be published by 15th of every month. Non-receipt of part must be intimated within
30 days from the date of publication. No complaint regarding non-receipt shall be entertained after
30 days of publication.
For any queries regarding missing parts and change of address
please forward your queries to:
B-37, Sector 1, Noida 201301, U.P., Ph Nos. 91 120 4014444, 4014445
Toll Free No. 1800 180 3550 (for BSNL & MTNL Subscribers only)
Mon–Fri (9 am – 6 pm) or email to: print@manupatra.com
2015] i
Index
Section A
Judgments
• Darius Rutton Kavasmaneck v.
Gharda Chemicals Limited and Ors. 07.04.2015 ............ 0111
• Glaxo Group Ltd. and Ors. v. S.D. Garg and Ors. 12.05.2015 ............ 0186
• IACM Smart Learn Limited and Ors. v.
Global Think Computer 23.02.2015 ............ 0192
• Industria De Diseno Textile SA v.
Oriental Cuisines Pvt. Ltd. and Ors. 19.05.2015 ............ 0125
• KRBL Ltd. v. Lal Mahal Ltd. and Ors. 23.02.2015 ............ 0178
• SRF Foundation and Ors. v. Ram Education Trust 11.05.2015 ............ 0145
• VIT University v. Bagaria Education Trust and Ors. 01.06.2015 ............ 0095
Section B
Summarised Notes on Cases
• Aditya Birla Nuvo Limited v.
R.S. Sales Corporation and Ors 20.05.2015 .............. B-5
• Anil Appalam & Chips v. K.S. Raja and Ors 15.04.2015 .............. B-6
• Hypnos Limited v. Hosur Coir Foam Pvt. Ltd. and Ors. 16.04.2015 .............. B-7
Section C
Notes on International Cases
• Delfi v. Estonia ............................................................................................................. C-3
• Gaymar Industries, Inc v. Cincinnati Sub-Zero Products, Inc ........................... C-4
• Luis Adrian Cortes v. Sony Corporation of America ........................................... C-6
Manupatra Intellectual Property Reports v June 2015 5
ii Manupatra Intellectual Property Reports (MIPR) [Vol. 2
Section D
International News
• GSK agrees to license IPR and assets to Padlock Therapeutics ......................... D-3
• Ericsson files suits against Apple in Germany, UK and Netherlands ............. D-3
• INTA announces hosting the largest Annual Meeting this
year in California. ........................................................................................................D-3
• UN Agencies support extension of TRIPS LDC Waiver ......................................D-3
• Patent granted to DermTech for Method of detecting Melanoma ...................... D-4
Section E
National News
• Indian Artists Find Violation of Moral Rights ....................................................... E-3
• “IPR” to be Part of Ninth Standard School Syllabus ........................................... E-3
• BMS-Cipla Attempt to Close “Entecavir Dispute” ............................................... E-3
• Union Health Minister Discusses IP Policy at WHO ........................................... E-4
• Sugen Enters into Settlement with Opponents for its Lung Cancer Drug ....... E-4
• USTR Lists India in its Annual “Special 301 Report” ......................................... E-4
Section F
Articles
DR. MD. ZAFAR MAHFOOZ Innovativeness & Competitiveness under Trade Secret
NOMANI Laws in India at page F-25
Professor, Dept. of Law, Trade Secrets law is vortex of Intellectual Property and it is
Aligarh Muslim dexterous to figure out legal doctrine. The trade secrets are
University, Aligarh a mix creation of law of contract, law of tort, law of property,
and law of crime hence uncertainty looms large in seeking
remedies and action for infringement. The trade secrets as
DR. FAIZANUR RAHMAN Intellectual Property incentives inventions and grass root
Lecturer-in-Law, innovations. Trade secret fosters idea, concept as well as
Nehru Memorial Law commodity selling and spurning economic growth. The
PG College, legal protection to trade secret protects is a boon to small
Hanumangarh Town creators who cannot afford procedural requirements of
Patent Law, small patent model and utility model. Among
all intellectual properties, trade secret offers some
significant advantages for inventors in the pantheon of
legal protection for inventions.
6 Manupatra Intellectual Property Reports v June 2015

2015] Index iii
PRACHI GUPTA TRIPS and its Impact on India’s Health at page F-36
Advocate, currently India amended its Patents Act, 1970 to introduce TRIPS
working with the CCI compliant product patent regime in 2005. Law and policy
makers in India were confronted with two major concerns
viz. the future of the Indian pharmaceutical industry and
access to affordable medicines in India and other
developing countries. To address these concerns India and
other developing countries attempted to incorporate TRIPS
flexibilities in their domestic law. This article examines
whether these premises hold true after five years into the
implementation of the TRIPS compliant patent system in
India. In this context this article attempts to identify and
analyzes the legal, policy and institutional challenges that
India is currently facing in the implementation of TRIPS
flexibilities. Mere incorporation of TRIPS flexibilities in the
domestic legislation alone is not enough and the domestic
legislation needs to be complemented with policy and
institutional framework.

iv Manupatra Intellectual Property Reports (MIPR) [Vol. 2
Subject Index
Patents — Derivative action — Entitlement to — Section 25(1)(a) and 64(1)(b) of
Patents Act, 1970/Act — Whether relief claimed by Plaintiff to restrain Defendant
No. 2 from selling, transferring, assigning, licensing, exploiting, encumbering,
creating any third party rights or interest or otherwise dealing with patents which
Defendant No. 2 had obtained in his individual name and/or applying for grant
of any fresh patents in his individual name was sustainable — Held, In instant
case issue that arose was whether action taken by Plaintiff was a bonafide one. As
regards ownership of patents subject patents were applied by Defendant No. 2
and were registered in name of Defendant No. 2. This Court noticed that subject
patents were registered since year 2008 onwards. So far nothing was placed on
record which would fairly indicate that Defendant No. 2 was selling, transferring
or in any way creating third party interest in respect of patents registered in his
name. There has not been any assignment of patents by Defendant No. 2 in favour
of Defendant No. 1. So prima facie material and evidence on record show that
patents were registered in name of Defendant No. 2 and Plaintiff has failed to
make out a case that Defendant No. 2 was going to sell or transfer or create third
party interest in respect of subject patents or act in such a manner that would
jeopardize interest of company. Considering provisions of Act this Court found
that Plaintiff has an alternate efficacious remedy before specialized forum i.e.
Controller of Patents. Plaintiff could have initiated proceeding for pre-grant of
patents under Section 25(1)(a) of Act or could have resorted to proceeding by filing
petition/application under Section 64(1)(a)(b) of Act. Furthermore it was observed
that in case this Court expresses a prima facie view that patents have been wrongly
obtained by Defendant No. 2 that would make patents vulnerable and expose to
attack by outsiders. Hence it was concluded that Plaintiff’s case for interim relief
was based on apprehension
Darius Rutton Kavasmaneck v. Gharda Chemicals Limited and Ors.
Appeal No. 54 of 2015 in Notice of Motion No. 3567
of 2011 in Suit No. 2932 of 2011 No. 1
Decided On: 07.04.2015 at page 0111
MANU/MH/0580/2015
Trademark — Infringement of Trademark — Grant of interim injunction —

Whether suit filed for interim injunction restraining Defendant from infringing
registered Trademark of Plaintiff is sustainable — Held, This Court observed that
from material on record that First Defendant itself had applied for registration of
mark VIT, now they cannot said that mark VIT is descriptive and generic word.
Moreover by continuous usage of mark VIT since 2001, Plaintiff has built said
mark as ‘well known mark’. Moreover it was also found that Defendants 1 to 4
were also using same mark VIT for identical service as that of Plaintiff when
Plaintiff has already registered mark VIT, Defendants 1 to 4 could not use mark
VIT to refer their campus, that too particularly when name of First Defendant’s
institution has been changed from VIT University, Jaipur into Vivekananda Global
University. Also since Plaintiff is a registered owner of mark VIT, Plaintiff is entitled
for statutory protection for mark VIT. Further, by long and continuous use of mark
VIT by Plaintiff, mark VIT has become well known and associated with Plaintiff. If
Defendants 1 to 4 were allowed to use same mark for identical service, certainly it
would cause great confusion in minds of general public. Hence a prima facie case
has been made out by Plaintiff and Plaintiff is entitled for grant of interim
injunctions as sought for

2015] Subject Index v
VIT University v. Bagaria Education Trust and Ors.

Original Application Nos. 576, 577 and 640 of 2012
in C.S. No. 476 of 2012
MANU/TN/1180/2015
Trademark — Infringement of Trademark — Entitlement for permanent injunction

— Whether suit for permanent injunction seeking a restraint against Defendants
from dealing with Trademark/label ‘CHURCH GATE’ with device of ‘GATE’ or
any other mark which is deceptively similar to Trademark of Plaintiff was liable to
be granted — Held, This Court observed that there appeared to be an active
concealment on Plaintiff’s part. It has also not been disclosed by Plaintiff that two of
his applications No. 1580377 and 1436477 seeking registration of Trademark ‘INDIA
GATE’ with device of ‘GATE’ had been refused. Moreover there was inordinate
delay in approaching Court on Plaintiff’s part knowing fully well about continuous
and extensive use by Defendant of trade name/label ‘CHURCH GATE’ for sale of
basmati rice since 2005 was also unexplainable. Further documentary evidence
filed Defendants showed that he also had sale figures running into several lacs of
sale of his product i.e. basmati rice under trade name Lal Mahal since year 2005.
There was also no argument addressed by Plaintiff’s Counsel that there has been a
dip in his sale or his business has been effected by sale being carried out by Defendant.
Hence in view of aforesaid circumstances this Court was of view that it would not be
proper to restrain Defendant from using impugned Trade mark/label. Irreparable
loss and injury would in fact be suffered by Defendant in case he was not permitted
to use Trade mark/label ‘CHURCH GATE’ which even as per admitted evidence
was being used by him since 2005
KRBL Ltd. v. Lal Mahal Ltd. and Ors.
CS (OS) 427/2014
MANU/DE/0554/2015

— Whether suit filed for permanent injunction restraining Defendant from infringing
Trademark of Plaintiffs’ is sustainable — Held, This Court observed that one of
witness led by Plaintiffs’ has deposed that Plaintiffs’ are engaged in business of
providing Information Technology related education and training to individuals
and corporate entities, either by itself or through franchisees and has acquired a
distinct and unique reputation in said field for more than 13 years; that Plaintiffs’
have spent huge sums of money in advertising IACM mark in print media and has
been continuously doing so to popularize its name and its business. It should be
noted that Plaintiffs’ claim to have become aware about infringement of their Trade
mark when Defendant advertised in newspapers claiming IACM Trade mark to be
owned by Defendants. Hence it was concluded that Plaintiffs were entitled to relief
of permanent injunction
IACM Smart Learn Limited and Ors. v. Global Think Computer
CS (OS) 936 of 2010
MANU/DE/0693/2015
Trademark — Infringement of Trademark — Entitlement to permanent injunction

— Whether suit filed for permanent injunction restraining Defendant from
infringement of Trademarks ‘ZANTAC’ and ‘ZINETAC’ and their passing-off is
sustainable — Held, In present case, both the Plaintiffs’ medicinal product
‘ZANTAC’ and ‘ZINETAC’ and Defendants’ ‘GENTAC’ contain Ranitidine
vi Manupatra Intellectual Property Reports (MIPR) [Vol. 2
Hydrochloride, which is used in treatment of gastric ailments. Moreover it was

apparent that GENTAC is manufactured and sold in form of injection vials while
Plaintiffs’ ZANTAC and ZINETAC are sold in form of tablets they are Schedule H
drugs. This Court notes that two classes of medicinal products are Schedule ‘H’
drugs. Further this Court was unpersuaded by Defendants’ contention that since
medicinal products can be procured only through valid prescription, there wasn’t
any likelihood of confusion in mind of buyer. Also degree of caution in medicinal
and surgical products is greater so as to avoid causing any harm to unsuspecting
consumer. Phonetic similarity is vital in adjudication of a suit for infringement of
Trademark apropos medicinal products. Furthermore it is established that
ZANTAC and ZINETAC are registered Trademarks of Plaintiffs. Hence this Court
was of view that Plaintiffs have made out a case of infringement and passing off
by Defendants
Glaxo Group Ltd. and Ors. v. S.D. Garg and Ors.
CS (OS) 12/2006
MANU/DE/1488/2015
Trademark — Infringement of Trademark — Grant of ad-interim injunction —

Whether suit filed for ad-interim injunction restraining Defendant from infringement
of Plaintiff’s Trade mark/trade name Zara is sustainable — Held, This Court
observed that Defendants’ adoption of mark ZARA TAPAS BAR and ZARA,
Restaurant and Bar has been found to be adopted dishonestly and fraudulently.
Moreover explanation as to manner of adoption of name and that it has a dictionary
meaning was found to be not convincing. Further mark ZARA (word) was being
used prominently with very small words “TAPAS BAR” which indicates Defendants’
intention to ride on Plaintiff’s reputation as ZARA was a well known mark even in
year 2003 having its presence in over 44 countries and annual turnover of 3 million
Euros. Hence it was concluded that Plaintiff has a good prima facie case entitling it
to protection of mark even in relation to dissimilar goods and services. Further
balance of convenience also lay in favour of Plaintiff in view of fact that mark was
not only well known worldwide but was also registered in India in Class 25 in year
1993. Consequently Application for ad-interim injunction was allowed
Industria De Diseno Textile SA v. Oriental Cuisines Pvt. Ltd. and Ors.
CS (OS) No. 1472/2013
MANU/DE/1602/2015
Trademark — Infringement of Trademark — Grant of interim injunction —

Whether suit filed for interim injunction restraining Defendant from using mark/
name SHRI RAM in respect of running schools is sustainable — Held, This Court
observed that it was evident that if mark SHRI RAM was/is distinctive as per law
and both rival marks are similar, in case any admission made by Plaintiffs has no
consequence. However same could not operate to detriment of Plaintiff No. 2.
Moreover as far as prior user was concerned, it was not denied by Defendant that
Plaintiffs were prior user of mark SHRI RAM in relation to services of school
between Plaintiffs and Defendant. Further Plaintiffs had disclosed to Court fact
that they became aware of Defendant’s infringing activities in year 2011, which
was brought to notice of Defendant’s trustee by Plaintiffs’ chairman at a personal
level as it was then a off pre-school. But immediately on becoming aware of rampant
opening of schools by Defendant under name SHRI RAM in year 2014, Plaintiffs
initiated present suit. It also appeared from material placed on record that in
respect of running schools, no doubt Plaintiffs were prior user than Defendant,

2015] vii
another thing was also clear between family members that they would have always
an understanding between themselves that confusion or deception does not occur.
If name SHRI RAM is used for last more than 65 years for college there is no
Shriram College by any other family members. Similarly for past 58 years, no other
college under name of Lady Shriram has been established by any member of family.
It means that all parties have maintained discipline so that no actual deception
and confusion is occurred and no harm would cause to other party/relation. No
doubt that father’s of both parties and grandfather were involved in field of
education bearing mark SHRI RAM prior to schools of the Plaintiff but it is a
matter of fact that no school was run by them on commercial scale prior to date of
the Plaintiffs who have no objection if Defendant may claim legacy of grandfather
Sir Shri Ram in relation to other activities of education except for running school.
Defendant has also issued large number of licenses and appointed franchisees
and is getting license fee, despite of e-mail written by brother not to allow them,
otherwise quality of education and name of Shri Ram would be affected, but
Defendant did not care about it. Hence it is clear that Plaintiffs have been able to
prima facie established case of confusion, deception and prior user
SRF Foundation and Ors. v. Ram Education Trust
I.A. No. 12216/2014 in CS (OS) No. 1980/2014
MANU/DE/1529/2015
Ratio Decidendi
Trade mark — If a clear case against Defendant with respect to infringement of
Trade mark is not been made out then Plaintiff will not be entitled to a grant of
permanent injunction
KRBL Ltd. v. Lal Mahal Ltd. and Ors.
CS (OS) 427/2014
MANU/DE/0554/2015

Trade mark — Notice served is valid since the order impugned has been passed on
grounds of suppression of material factors
Anil Appalam & Chips v. K.S. Raja and Ors.
R.P. No. 7/2013 in OA/44/2012/TM/CH and M.P. Nos. 313 and
314/2013 and 153/2014 in R.P. No. 7/2013 in OA/44/2012/TM/CH
Decided On: 15.04.2015 at page B-6
MANU/IC/0025/2015
Trade mark — Plaintiff will be entitled to a grant of permanent injunction since the
Defendants have not been able to show any false statement or fabrication of evidence
Aditya Birla Nuvo Limited v. R.S. Sales Corporation and Ors.
CS (OS) 1235/2013
MANU/DE/1807/2015

viii Manupatra Intellectual Property Reports (MIPR) [Vol. 2
Trade mark — Registration certificate granted to applicant will be valid since the
applicant’s Trade mark is not contrary to Section 12 of Trade marks Act, 1999
Hypnos Limited v. Hosur Coir Foam Pvt. Ltd. and Ors.
ORA/126/2012/TM/CH and M.P. Nos. 396/2012 and
127/2013 in ORA/126/2012/TM/CH
MANU/IC/0024/2015

2015] 0095
095
MIPR 2015 (2) 0095*

a
IN THE HIGH COURT OF MADRAS
VIT University
v.
Bagaria Education Trust and Ors.
b
ORIGINAL APPLICATION NOS. 576, 577 AND 640 OF 2012
IN C.S. NO. 476 OF 2012
DECIDED ON: 01.06.2015
Coram
c R. Subbiah, J.
Counsel
For Appellant/Petitioner/Plaintiff: P.S. Raman, Senior Counsel for A. Saravanan
For Respondents/Defendant: M.S. Bharath & K. Premchandar for Anand & Anand
Cases referred
d B. Kishore Jain v. Navaratna Khazana Jewellers MANU/TN/7802/2007: 2007(4) MLJ
1022: 2008 (37) PTC 536 (Mad) (Mentioned) [p. 0106, para 20 a]
Blue Hill Logistics Pvt. Ltd., v. Ashok Leyland Limited MANU/TN/1329/2011: 2011
(4) CTC 417: 2011 (48) PTC 564 (Mad) (Mentioned) [p. 0104, para 12 b]
Gangotree Sweets & Snacks v. Shree Gangotree Sweets MANU/TN/2389/2005: 2005
e (31) PTC 502 (Mad) (Mentioned) [p. 0110, para 33 e]
Indian Shaving Products Ltd. and others v. Gift Pack & another MANU/DE/0209/1999:
1998 (18) PTC 698 (Del) (Mentioned) [p. 0104, para 13 b]
ITM Trust, Mr. Putcha Venkata Ramana and Mrs. Putcha Lalitha Ramana v. Educate India
Society MANU/MH/1077/2012: MIPR 2012 (3) 214: 2012 (52) PTC 276 (Bom):
2012 (5) ALLMR 734 (Mentioned) [p. 0105, para 16 b]
f Khoday Distilleries Ltd. v. Scotch Whisky Association & Ors MANU/SC/2361/2008:
2008 (37) PTC 413 (SC): AIR 2008 SC 2737: 2009 (4) ALT 30 (SC): 2008 4 AWC
(Supp) 3258 SC: 2008 BusLR 625 (SC): 2009 - 1 - LW 472: (2008) 4 MLJ 942 (SC):
2008 (56) BLJR 1979: (2008) 10 SCC 723: 2008 (9) SCALE 40: MIPR 2008 (2) 253
(Mentioned) [p. 0105, para 16 b]
g Larsen and Toubro Ltd. v. Lakshmi Industries and another MANU/DE/1822/2009
Lowenbrau AG and anr. v. Jagpin Breweries MANU/DE/0022/2009: MIPR 2009 (1)
356: 2009 BusLR 360 (Del): 2009 (39) PTC 627 (Del): 157 (2009) DLT 791
(Mentioned) [p. 0105, para 18 d]
Skyline Education Institute (I) Private Ltd. v. S.L. Vaswani and another MANU/SC/
h
0009/2010: 2010 (42) PTC 217 (SC): AIR 2010 SC 3221: 2010 1 AWC (Supp) 684
SC: JT 2010 (3) SC 136: 2010 (1) UJ 323: 2010 (1) UC 503: (2010) 2 SCC 142: 2010 (1)
SCALE 83: 2010 (2) ALLMR (SC) 427: 2010 GLH (2) 39 (Mentioned)
[p. 0105, para 17 c]
i
* MANU/TN/1180/2015

096
0096 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
Acts/Rules/Orders:
a
Trade marks Act, 1999
Section 2 [p. 0107, para 24 e]
Section 2(1)(zg) [p. 0103, para 9 b]
Section 21(2) [p. 0103, para 11 i]
Section 29(2)(c) [p. 0104, para 14 d]
Section 9(1)(b) [p. 0109, para 28 f] b
VIT University, Jaipur Act, 2012 (Act No. 11 of 2012) [p. 0101, para 8 h]
Vivekananda Global University, Jaipur Act, 2012 [p. 0107, para 24 b]
Issues and Findings
Trademark — Infringement of Trademark — Grant of interim injunction — c
Whether suit filed for interim injunction restraining Defendant from infringing
registered Trademark of Plaintiff is sustainable —
Held, This Court observed that from material on record that First Defendant itself
had applied for registration of mark VIT, now they cannot said that mark VIT is
descriptive and generic word. Moreover by continuous usage of mark VIT since
2001, Plaintiff has built said mark as ‘well known mark’. Moreover it was also d
found that Defendants 1 to 4 were also using same mark VIT for identical service as
that of Plaintiff when Plaintiff has already registered mark VIT, Defendants 1 to 4
could not use mark VIT to refer their campus, that too particularly when name of
First Defendant’s institution has been changed from VIT University, Jaipur into
Vivekananda Global University. Also since Plaintiff is a registered owner of mark
VIT, Plaintiff is entitled for statutory protection for mark VIT. Further, by long and e
continuous use of mark VIT by Plaintiff, mark VIT has become well known and
associated with Plaintiff. If Defendants 1 to 4 were allowed to use same mark for
identical service, certainly it would cause great confusion in minds of general public.
Hence a prima facie case has been made out by Plaintiff and Plaintiff is entitled for
grant of interim injunctions as sought for.
f
ORDER
R. Subbiah, J.
1. Original Application No. 640 of 2012 has been filed under Order XIV Rule 8 of
Original Side Rules r/w Order XXXIX Rules 1 & 2 of CPC, praying to grant interim
injunction restraining the Respondents/Defendants 1 & 4, by themselves, their g
trust, associates, sister concerns, or any of them claiming under them, from issuing
any advertisements in newspapers, periodicals or any other mode or hosting
deceptive websites such as VIT Jaipur, VIT J etc. of the Applicant/Plaintiff’s
registered service/Trade mark ‘VIT’ by use of the Trade mark ‘VIT university’ or by
use of any deceptively similar service/Trade mark or in any other manner whatsoever,
pending disposal of the suit. h
injunction restraining the Respondents 1 to 4/Defendants 1 to 4, by themselves,
their trust, associates, sister concerns, or any of them claiming under them, from
starting, establishing, assigning, creating, running education institutions, colleges,
i
universities, study centres, training centres, entertainment, websites, sporting and
cultural activities or any similar or identical activities, in any manner infringing the

2015] VIT University v. Bagaria Education Trust and Ors. 0097
097
(R. Subbiah, J.)
Applicant/Plaintiff’s registered service/Trade mark ‘VIT’ by use of the Trade mark

a ‘VIT university’ or ‘VIT Campus’ or ‘VIT’ or ‘VIT EAST’ or by hosting deceptively
websites such as VIT Jaipur, VIT J etc., or by use of any deceptively similar
service/Trade mark or in any other manner, whatsoever, pending disposal of the suit.
b injunction restraining the Respondents 1 to 4/Defendants 1 to 4, by themselves,
their trust, associates, sister concerns, or any of them, from in any manner passing
off or enabling passing off of the name of the Respondents 1 to 4 under the Trade
mark VIT university or VIT Campus or ‘VIT’ or ‘VIT EAST’ or by hosting deceptive
websites such as VIT Jaipur, VIT J etc., as and for that of the Applicant VIT university
or by use of any deceptively similar service/Trade mark for starting, establishing,
c assigning, creating, running education institutions, colleges, universities, study
centres, training centres, entertainment, websites sporting and cultural activities or
any similar or identical activities or in any other manner whatsoever, pending
disposal of the suit.
4. The Applicant herein is the Plaintiff and the Respondents herein are the Defendants
in the suit. For the sake of convenience, the parties are referred to as per their rankings
d in the suit.
5. The brief facts of the case of the Plaintiff’s are as follows:-
5(1) The Trust namely ‘North Arcot Educational and Charitable Trust’ was
established by one Dr. G. Viswanathan, by the Trust Deed dated, 7th May, 1984,
with an object to spread knowledge and education by publishing books, classics
e and other literature and/or by establishment of specific endowments and
memorials for public charitable purposes, to hold and promote education and
learning including primary, higher and college education, etc.,
5(2) The Department of Education, Government of Tamil Nadu, by G.O. Ms.
No. 1279, dated, 27th September, 1984, permitted the above Trust to start a
private Engineering College in the name and style of Vellore Engineering
f College at Vellore, North Arcot District with effect from 1984-85. As the
institution was to attain Deemed Universities status, the Trust Deed was
amended on 9th April, 2001 and the name of the Trust was changed as ‘Vellore
Institute of Technology”. By the said amended trust deed, further objects,
powers, functions, interpretation of objects, objects etc., which are included in
the Trust deed dated, 7th May, 1984 and due to the hard work and continuous
g
efforts of the Founder, the Engineering College has grown as a Deemed
University. The Department of Secondary and Higher Education, the Ministry
of Human Resource Development issued a Notification No. F.9-2/99-U.3 dated,
19th June, 2001 declaring the Vellore Institute of Technology, Vellore [formerly
known as Vellore Engineering College, Vellore], Tamil Nadu as Deemed to be
h University for the purpose of the aforesaid Act with immediate effect.
The University Grants Commission, New Delhi, issued a Notification
No. F.6-3/2001 (CPP-I), dated, 25th September, 2001 and declared the Vellore
Institute of Technology, Vellore [formerly known as Vellore Engineering College,
Vellore] Tamil Nadu as Deemed to be a University for the purpose of the
aforesaid Act with effect from 19th June, 2001. By virtue of University Grants
i Commission’s communication and consequent Board Resolution dated, 10th
October 2006, Vellore Institute of Technology was renamed as ‘VIT
UNIVERSITY’.
098
5(3) The reputation and quality of the Education imparted by the Plaintiff-institution
is equal to that of the Indian Institute of Technology, Indian Institute of a
Management. The said institutes are called shortly as IIT, IIM, likewise, the
Plaintiff-Institution is also called as VIT. The general public and the students
and others identify the Plaintiff-institution as VIT university and the Plaintiff
is having the popular slogan VIT - A place to learn; a chance to grow.
5(4) The Plaintiff-University is having two campuses, the main campus at b
Vellore and another at Chennai and their Administrative Office is at Anna
Nagar, Chennai. The object of the Plaintiff-University is to create a dynamic
environment that facilitates interaction and dialogue. The Vellore campus is
housed in 355 acres, eco-friendly campus, with 50.8 lacs sq. ft. built up area and
eco-friendly campus at Chennai is housed in 160 acres. The teaching-learning
process at Plaintiff-university is structured around its 9 schools of excellence. c
The student is registered in one of the schools, depending on the degree or
programme, he/she is interested in pursuing. Research Centres, part of each
school, encourage interdisciplinary collaboration and provide opportunities
to students to participate in exciting projects. The university offers 18 under
graduate and 35 post graduate programmes. The 9 schools of excellence are as
follows: d
S.No. Names of schools

1 School of Information Technology and Engineering (SITE)
2 School of Mechanical and Building Sciences (SMBS)
3 School of Bio Sciences and Technology (SBST)
4 School of Electronics Engineering (SENSE) e
5 School of Computing Sciences and Engineering (SCSE)
6 School of Electrical Engineering (SELECT)
7 School of Electrical Engineering (SAS)
8 VIT Business School (VIT BS)
9 School of Social Sciences and Languages (SSL)
f
The Plaintiff is following a transparent mechanism for admission and
The Plaintiff is following a transparent mechanism for admission and having
their own Entrance Examination called ‘VITEEE’ (VIT Engineering Entrance
Examination) conducted at 243 Examination Centres in 105 cities across India
in particular 20 centres including 6 cities in the State of Rajasthan, in which g
State the Defendants are running their educational institutions, and also in
Dubai, Riyadh and Singapore for admission to B-Tech Programmes and also
conducting VITMEE (VIT Master Entrance Examination) for MCA and M-Tech
Programmes. In the Plaintiff University about 20,000 students from 48 countries
and from all the States in India are studying and nearly one third of them are
women. The Plaintiff University is having over 1100 faculty members of whom h
412 are Ph.d., degree holders with 1350 supporting Administrative staff.
Foreign nationals and NRI students had joined the University because of
interaction/cross border reputation.
5(5) The Plaintiff has made a mark in global arena of education through
strong integration linkage by developing innovative programmes, promoting
i
faculty and students exchanges and admitting the students from all over the
world. With the vision of providing education of international quality, the

099
(R. Subbiah, J.)
Plaintiff had developed academic partnerships with reputed universities

a around the world. The Plaintiff singed more than 120 Memorandum of
Understandings with Universities abroad for Masters and Doctoral studies
at partner Universities, students and faculties exchange, faculty development,
collaborative research and joint/twinning degree programmes. The said
Memorandum of Understandings were all entered in the name ‘VIT
UNIVERSITY’. People from abroad as well as from India identify the Plaintiff
b
University with the above name only. Further, the Plaintiff University is the
first University in India to get accreditation from various International
Agencies like ABET (USA), IET, Energy Institute (U.K.). This again shows the
cross border reputation of the Plaintiff. The accreditation and the certificates
were issued to the Plaintiff-University in the name of ‘VIT University’. Thus,
c the name, that is the mark, has become a well known mark because of
enormous reputation it had acquired in India as well as overseas all these
years.
5(6) The 5th Defendant, the University Grants Commission identifies the
Plaintiff-University as ‘VIT University’. Further, they send their
communications to the Plaintiff as ‘VIT University’. The national Assessment
d and Accreditation Council, which is an autonomous Institution of University
Grants Commission granted accreditation to the Plaintiff-University in the
name of VIT University with ‘A’ Grade. In the same manner All India Council
for Technical Education and National Board of Accreditation had also
granted accreditation to the Plaintiff-University in the name of ‘VIT
University’. Further, the Ministry of Human Resource Development also
e addresses that Plaintiff-University as ‘VIT University’.
5(7) The Plaintiff is motivating the talents by giving scholarship worth over
Rs. 3 crores by way of Merit scholarship to class toppers. Free education is
provided to rural students who secure ranks at District Level. The said scheme
is called STARS Scheme (Support the advancement of Rural Students) which
offers 100% free education, hostel accommodation and mess facilities to one
f boy and one girl who secure the highest marks among students of Government
Schools in rural areas of each District in Tamil Nadu. As of now 234 of such
students (115 boys + 119 girls) are pursuing their higher studies. Financial
assistance is provided to students who wish to do their project work as partner
with Universities and Institutions Abroad.
g 5(8) The reputation of the educational institute depends on the number of its
students securing jobs in the campus interviews and the Plaintiff University is
a preferred destination for campus recruitment among private institutions in
India. Their students are highly rated in private and public sector industries
and receive the excellent job offers from reputed top companies with high
packages. The Plaintiff University was entered in Limca books for Records
h twice in 2009 and 2011 for the highest number of campus placements by a
single company in a single campus. More than 130 companies visited the
Plaintiff-University for campus recruitments in 2011. The top most companies like
TCS, WIPRO INFOSYS, COGNIZANT etc., have accorded most favoured status
and are giving preference to recruit the students from the Plaintiff-University.
The Plaintiff also entered into various Memorandum of Understanding with
i top companies for placement and training centres. The Plaintiff has acquired
popularity among the students and their parents both at National and
International level for the mark referred to as VIT as could be seen from the
number of students appeared and admitted for various branches from 2001
onwards. a
5(9) Therefore, it is evident that the Plaintiff has acquired phenomenal
reputation and goodwill of a high order as also attained the status of “well
known Trade mark” within the meaning of Trade marks Act, ever since 2001.
The Plaintiff had applied for registration of their name ‘VIT’ vide Trade mark
Application No. 1130066, dated, 30th August, 2002, in class 16 in respect of b
paper and paper articles, cardboard and cardboard articles, printed matter,
newspapers and periodicals, books, photographs, stationery adhesive materials
(stationary), instructional and teaching materials (other than apparatus),
pamphlets, visiting cards, letter heads, bill books, invoices. Further, the Plaintiff
has also filed another Trade mark Application No. 1130065 dated, 30th August,
2002 in Class 16 for registration of marks ‘VIT - A PLACE TO LEARN, A c
CHANCE TO GROW’. So also the Plaintiff filed Trade mark Application No.
1324167, dated, 6th December, 2004, in class 41 for registration of Mark ‘VIT’ in
respect of Education, providing of training, entertainment, sporting and cultural
activities. All the above Trade marks are registered, valid and subsisting till
date.
5(10) While so, during June-2011, the Plaintiff came across through Internet d
that one Vivekananda Institute of Technology and Vivekananda Institute of
Technology (East) (Part of SKIT Groups of Colleges) are using the mark ‘VIT
CAMPUS’ on their buildings and in their other printed materials. The Plaintiff
immediately issued cease and desist notice to the said institutions not to use
the Plaintiff’s registered Trade mark VIT in any manner. Despite the receipt of
the notice, the said institutes have not withdrawn the use of the Trade mark e
VIT nor complied with the other demands. Hence, the Plaintiff issued another
legal notice through their Advocate on 4th May, 2012.
5(11) During May-2012, the Plaintiff has received queries from prospective
students and parents from North India as to whether the Plaintiff has started
any campus at Jaipur like in Chennai. The Plaintiff made a search and it has
f
come to light that one Bagaria Education Trust, Jaipur has started an University
in the name of ‘VIT University’ and on browsing they came to know that they
have also started the similar Website as www.vitjaipur.ac.in. On going through
the Website, the Plaintiff has come to know that one Sri. K.R. Bagaria a Chartered
Accountant had established Swami Keshvanand Institute of Technology
Management & Gramothan, Jaipur in the year 2000. In the year 2002, he has g
promoted another society Marudhar Education Society for establishing
Engineering College in Bikaner. In the year 2005, K.R. Bagaria started Swami
Keshvanand Institute of Pharmacy. These educational institutes were started
by Bagaria Education Trust, the 1st Defendant herein, which came into being
in the year 2002. In the year 2008, two Engineering Colleges namely
Vivekananda Institute of Technology (2nd Defendant) and Vivekananda h
Institute of Technology (East) at Jaipur (3rd Defendant) were also started with
these educational institutes.
5(12) The Defendants 1 to 4, knowing the reputation of the Plaintiff and with
the object of illegally appropriating the reputation, by abbreviating the name
and imitate the same as that of the Plaintiff, had intentionally started the
engineering colleges in the name of Vivekananda Institute of Technology only i
during 2008. Further, the Defendants 1 to 4, to show their institute as if it is the
campus of the Plaintiff, had mentioned their name boards as ‘VIT CAMPUS’,
(R. Subbiah, J.)
only to show their institute is an associate institution of the Plaintiff, who is

a highly reputed. The 1st Defendant having knowledge of all the reputation and
the demand for the admission in the Plaintiff Institution, intentionally started
the University in the name of ‘VIT’. The name of ‘VIT University’ is a slavish
imitation of the Plaintiff’s name. The adoption of the above mark VIT by the
Defendants 1 to 4, knowing the reputation and mark of the Plaintiff viz., VIT is
only to deceive the students to join with them as they are made to believe that
b
they are joining in the Plaintiff-University. Hence, the Plaintiff has filed the
present suit.
6. Pending the suit, the Plaintiff has filed the above applications for the interim
reliefs as stated supra.
7. When the above applications came up on 27th July, 2012, this Court ordered notice
c to the Defendants.
8. On appearance, the Defendants 1 to 4 have filed common counter-affidavit, denying
all the allegations made by the Plaintiff, and inter alia, contending as follows-
The 1st Defendant is a Trust, providing education services in the State of Rajasthan
by establishing various educational institutes. It is engaged in operating a number
d of educational institutions including the Defendants 2 to 4 herein viz., Vivekanand
Institute of Technology, Vivekanand Institute of Technology (East), and VIT
University, Jaipur, which was established by Rajasthan State Legislature vide Act
No. 11/2012, Notification FIL2(17) Vidhi/2/2012, dated, 2nd May, 2012. The 1st
Defendant was constituted by a group of professionals from Rajasthan, including
Mr. K.R. Bagaria (Managing Trustee of 1st Defendant), who felt that special efforts
e were needed for promoting education in the rural areas particularly amongst rural
women. On 20th June, 2008, the 1st Defendant got approval from All India Council
for Technical Education (AICTE) to establish Vivekananda Institute of Technology,
Jaipur (2nd Defendant herein), to impart education in the field of technology and
offer B.E./B.Tech Degree courses. Further, on 30th June, 2008, AICTE approved one
more college of the 1st Defendant under the name Vivekanand College of Engineering
f (VCE). In the year 2010, AICTE approved the change of name of VCE into Vivekananda
Institute of Technology (East) (3rd Defendant herein). The Defendants 2 & 3 find
their names as one of the premier institute providing quality education in the northern
part of India. The contributions of the great people, who devoted their life for the
cause of education and youth, have always inspired the 1st Defendant and therefore,
the Defendants 2 & 3 have been named after the great Swami Vivekananda. As the
g
name suggests, the institutes have been built on the eternal guidelines and thoughts
as advocated by Swami Vivekananda. Besides being approved by AICTE, the
Defendants 2 & 3 are affiliated to Rajasthan Technical University (RTU), Kota. The
1st Defendant and its institutions (Defendants 2 & 3) right from inception, have
gained intense goodwill and reputation in the market. They have earned a distinct
h place in the field of technical education and is a well known name, not only in the
State of Rajasthan, but in other parts of India as well, for offering top quality education
services, world class infrastructure and other related facilities. The distinct place of
the Defendants 1 to 3 in the market prompted them to apply for setting up a university
in the year 2010, which was duly accepted by the Government of Rajasthan and by
virtue of the VIT University, Jaipur Act, 2012 (Act No. 11 of 2012), published in the
i Gazette of Rajasthan dated, 2nd May, 2012, VIT University, Jaipur, has come into
existence. The 1st Defendant is a bona fide adopter and user of VIT University, Jaipur,
as it has become an essential feature of its trade names and is an integral to its
persona and is identified and associated with the 1st Defendant. Moreover, the 1st
Defendant does not use only ‘VIT’ per se, but in a composite form and as an acronym a
of its trade names namely, ‘Vivekanand Institute of Technology’, ‘Vivekanand
Institute of Technology (East)’, ‘VIT University, Jaipur’, is always used as a whole,
which has been assigned to it by Rajasthan State Legislature vide Act No. 11/2012,
Notification FIL2(17) Vidhi/2/2012, dated, 2nd May, 2012. The 4th Defendant has
entered into various memorandum of understanding with other institutions
b
including two foreign universities. These Memorandum of Understandings have
been entered into in the name of VIT University, Jaipur. Though the Plaintiff has
filed the suit based on the registrations of the mark VIT in Classes 41 & 16, the said
registrations are not valid in the eye of law. The 1st Defendant has already filed a
Rectification Application against the Plaintiff’s Trade mark Registration No. 1324167
in class 41 and the online status of the said application has already been updated as c
‘Rectification Filed’. Further, VIT is a three letter acronym and it lacks basic
requirements of a valid Trade mark as it is inherently not distinctive as per provisions
of Indian Trade marks Act, 1999. The Plaintiff is not the first entity to have adopted
the acronym VIT, as there were many institutions in India which had used the
acronym VIT even before the alleged usage of VIT by the Plaintiff. It is customary
and bona fide practice in the educational field that educational institutes use acronym d
of their names because their names are usually lengthily; so for the sake of
convenience, acronym forms of names are adopted. The acronym VIT is being used
by various institutions including the Defendants. There are about 26 institutes using
the acronym VIT. The 1st Defendant and its institutions have started using the
acronym VIT right from the inception of the Defendants 2 & 3 in the year 2008.
However, the Plaintiff has filed the present suit only in the year 2012. Hence, there e
is an unexplained delay of three years in filing the suit. The Plaintiff has come to this
Court with unclean hands by suppressing the fact that the Trade mark VIT in class
41 under application No. 1324167 was challenged under a rectification petition filed by
the Defendants before the Registrar of Trade marks. The acronym VIT is non-distinctive
and it is common to trade; hence, the Plaintiff cannot claim monopoly over the same.
Thus, the Defendants 1 to 4 sought for dismissal of the applications. f
9. It is the submission of the learned Senior Counsel appearing for the Plaintiff that
in the year 1984, the private Engineering College was started by the North Arcot
Educational and Charitable Trust, in the name of Vellore Engineering College at
Vellore, North Arcot District. Subsequently, the name of the College was changed as
Vellore Institute of Technology and the same was declared as a deemed university
with effect from 19th June, 2001 and approved by the University Grants Commission.
g
By virtue of University Grants Commission’s communication and consequent Board
Resolution dated, 10th October 2006, Vellore Institute of Technology was renamed
as “VIT UNIVERSITY”. The Plaintiff has acquired popularity among the students
and their parents both at National and international level for the mark ‘VIT’. The
Plaintiff has applied for registration of its name VIT vide Trade mark Application
h
No. 1130066, dated, 30th August, 2002, in Class 16 in respect of paper and paper
articles, cardboard and cardboard articles and etc. The Plaintiff has also filed
Application No. 1324167, dated, 6th December, 2004, in Class 41 for registration of
Mark “VIT” in respect of Education, providing of training, entertainment, sporting
and cultural activities. The said mark was registered on 19th November, 2005 in
favour of the Plaintiff. While so, during June-2011, the Plaintiff came across that one i
Vivekananda Institute of Technology and Vivekananda Institute of Technology (East)
(Part of SKIT Group of Colleges) are using the word ‘VIT CAMPUS’ on their buildings

(R. Subbiah, J.)
and in their other printed materials. Though the Plaintiff issued cease and desist
a notice on 27th July, 2012 to the said institutions not to use the Plaintiff’s registered
Trade mark VIT in any manner, the said institutions have not withdrawn the use of
the Trade mark ‘VIT’. The name of ‘VIT University’ is a slavish imitation of the
Applicant’s name. The Defendants, with the mala fide intention of securing the
students, who would have only joined the Applicant’s Deemed University, is
attempting to cause confusion as if they are a part of the Plaintiff university and get
b
the students admitted and thereby unjustly enriched. Further, the learned Counsel
for the Plaintiff, by inviting the attention of this Court to Section 2(1)(zg) of the Trade
mark Act, submitted that the by long and continuous usage of the mark VIT, the
Plaintiff has built the mark VIT as a “well known mark” of the Plaintiff, as defined
under Section 2(1)(zg) of the Act. The Defendants have adopted the mark only from
c the year 2012, whereas the Plaintiff has adopted the mark from the year 2001 itself.
The act of the Defendants 1 to 4 in naming their institutions as VIT University is an
act of infringement of the registered Trade mark of the Plaintiff. The Plaintiff
University is one of the India’s top University and conducting their exclusive entrance
examination all over India in the name ‘VITEE’. Further, the Plaintiff issued huge
number of advertisements and their articles, rankings were published in the
d newspapers, periodicals and other journals. Various Institutions granted
accreditations and certificates. The Plaintiff entered into more than hundreds of
Memorandum of Understandings with foreign Universities. Whereas, the 4th
Defendant is only a recent entrant and entered only in May-2012 and they cannot be
compared with that of the Plaintiff. The Plaintiff’s mark is “well know mark” by
virtue of its reputation and long usage. The learned Senior Counsel for the Plaintiff
e further submitted that the mark VIT was also registered in the Office of Registrar of
Trade marks. Hence, as on date, there is a valid registration made ‘VIT’ in favour of
the Plaintiff. Therefore, the Plaintiff is entitled for statutory protection for the mark
‘VIT’.
10. Further, the learned Senior Counsel for the Plaintiff submitted that after filing the
suit, the Board of Management of the VIT University, Jaipur, after seeking approval
f of the sponsoring body i.e., Bagaria Educational Trust has requested the State
Government to change the name of the University from VIT University, Jaipur to
Vivekananda Global University, Jaipur, so as to avoid any litigation. In fact, a Bill
has also been passed changing the name from VIT University to Vivekananda Global
University. However, the Defendants 1 to 4, during the academic year 2013-2014,
had circulated a brochure under the caption/title VIT CAMPUS, JAIPUR, and the
g name of the institution was mentioned as Vivekananda Global University, Jaipur
(Formerly VIT University, Jaipur). This once again created confusion among the
student community, leading to huge distortion in changing the name of the University
of the Defendants. The change of the name effected by the Defendants is not followed
by them and it remains only on paper.
h 11. It is further submitted by the learned Senior Counsel for the Plaintiff that
continuous use of the name VIT by the Defendants 1 to 4, despite passing an
amendment to the VIT University Jaipur Act, 2012 (Bill No. 30 of 2013 dated,
7 th June, 2013) only proves their mala fide intention to divert the Plaintiff from
proceeding with the pending litigation. The Defendants had applied for a Trade
mark registration in TM Application No. 2167415 dated, 12th August, 2013 in Class
i 41 for the mark VIT before the Trade mark Registry, Ahmedabad and the same has
been abandoned by the Registry by operation of Section 21(2) of the Trade mark Act,
1999, vide order dated, 17th April, 2014.
12. The learned Senior Counsel for the Plaintiff submitted that now the Defendants
1 to 4 have taken a defence in their counter-affidavit stating that VIT is not a distinctive a
word and it is common to trade and the same cannot be restricted to one person. In
this regard, the learned Counsel for the Plaintiff submitted that once the Defendant
has chosen to apply for the registration of a Trade mark, he cannot challenge the
same stating that the word is not distinctive and common to the trade. In support of
his contention, the learned Senior Counsel for the Plaintiff relied upon the decision
b
reported in 2011(4) CTC 417 Blue Hill Logistics Pvt. Ltd., v. Ashok Leyland Limited1.
13. Further, the learned Counsel for the Plaintiff, by relying upon the judgment
reported in 1998 PTC (18) 698 Indian Shaving Products Ltd. and others v. Gift Pack &
another2, submitted that even a descriptive mark can become distinctive and capable
of registration, if it can be established that through extensive usage and goodwill,
the descriptive word itself has become distinctive of the user. In the instant case, the c
name VIT was registered in the year 2005 in favour of the Plaintiff and by continuous
and long usage of the word VIT, it has become distinctive.
14. The learned Counsel for the Plaintiff submitted that the Plaintiff registered the
Trade mark VIT for providing educational service. The Defendants 1 to 4 are also
involved in the educational service and adopted the identical mark VIT, as that of
the Plaintiff. Hence, the act of the Defendants 1 to 4 squarely falls under
d
Section 29(2)(c) of the Trade mark Act; therefore, the Plaintiff is entitled for interim
order of injunction.
15. Per contra, the learned Counsel for the Defendants 1 to 4 submitted that the 1st
Defendant is a Trust established on 13th December 2002. The 1st Defendant got
approval from All India Council for Technical Education (AICTE) on 20th June, 2008, e
to establish ‘Vivekananda Institute of Technology, Jaipur (2nd Respondent herein).
Further, on 30th June-2008, All India Council for Technical Education (AICTE) has
approved one more college of the 1st Defendant under the name Vivekanand College
of Engineering (VCE). In the year 2010, All India Council for Technical Education
(AICTE) approved the change of name of Vivekananda College of Engineering (VCE)
into Vivekanand Institute of Technology (East) (3rd Defendant herein). After filing f
the suit, the Board of Management of the VIT University, Jaipur, after seeking approval
of the sponsoring body i.e., Bagaria Educational Trust has requested the State
Government to change the name of the University from VIT University, Jaipur to
Vivekananda Global University, so as to avoid any litigation and subsequently, a
Bill has also been passed changing the name from VIT University to Vivekananda
Global University. After changing the name as Vivekananda Global University, the g
Defendants 1 to 4 are not using the name “VIT University”. Since the Defendants 1
& 2 are using the acronym VIT, they are claiming their campus as VIT Campus, since
VIT is a short abbreviation of Vivekananda Institute of Technology and Vivekananda
Institute of Technology (East) [Defendants 2 & 3 herein]. The Plaintiff never used
VIT per se. The acronym VIT is common to trade. In fact, acronym VIT is used by
several parties in the trade including educational institutes, without any confusion h
or deception. In this regard, the learned Counsel for the Defendants 1 to 4 invited the
attention of this Court to the list of institutions, which are using the acronym VIT.
i
1 Ed.: MANU/TN/1329/2011: 2011 (48) PTC 564 (Mad)
2 Ed.: MANU/DE/0209/1999

(R. Subbiah, J.)
16. The learned Counsel for the Defendants 1 to 4 further submitted that the students,
a who are seeking higher education, who are required to make investment of a
substantial amount for their higher studies, are bound to make enquiry about the
credentials of the institutes concerned. Therefore, the use of VIT Campus by the
Defendants would no way amount to creating any confusion in the minds of the
students. In support of this contention, the learned Counsel for the Defendants 1 to
4 relied upon the judgments reported in MANU/MH/1077/2012 ITM Trust, Mr.
b
Putcha Venkata Ramana and Mrs. Putcha Lalitha Ramana v. Educate India Society3 and
2008(37) PTC 413 (SC) Khoday Distilleries Ltd. v. Scotch Whisky Association & Ors4.
17. The learned Counsel for the Defendants 1 to 4 would further submit that monopoly
of a generic word is not allowed under law and in the instant case, the acronym VIT
is only a descriptive and generic word; hence, the Plaintiff cannot claim monopoly
c over VIT. In this regard, the learned Counsel for the Defendants 1 to 4 relied upon
the judgment reported in 2010(42) PTC 217(SC) [Skyline Education Institute (I) Private
Ltd. v. S.L. Vaswani and another5].
18. The learned Counsel for the Defendants 1 to 4 further submitted that any symbol,
word or get-up commonly used by the traders in connection with their trade and in
respect of which no particular trader can claim an exclusive right to use, may be
d considered common to that particular trade or publici juris. Further, the words,
expressions or devices, which are descriptive of particular goods, are open to use by
all persons engaged in the trade. In this regard, the learned Counsel for the
Defendants 1 to 4 relied upon the decision reported in MIPR 2009(1) 356 [Lowenbrau
AG and anr. v. Jagpin Breweries6)].
e 19. It is further submission of the learned Counsel for the Defendants 1 to 4 that
since the Plaintiff has applied for registration of the mark ‘VIT’, it does not mean
that the Defendants are not entitled to use the word ‘VIT Campus’. Since name of the
2nd Defendant has been changed to Vivekananda Global University, they have
abandoned their application for registration of the Mark VIT University. Though the
application for registration of the mark VIT University was abandoned, there cannot
f be any legal bar in referring their campus as VIT campus, since the word VIT is only
a descriptive and generic word. Further, the learned Counsel for the Defendants 1 to
4 submitted that the Defendants 1 to 4 is imparting education only in the State of
Rajasthan; whereas the Plaintiff is having its university at Vellore; therefore,
absolutely, there is no likelihood of confusion. Thus, he sought for dismissal of the
application.
g
3 Ed.: MANU/MH/1077/2012: MIPR 2012 (3) 214: 2012 (52) PTC 276 (Bom): 2012 (5)
h ALLMR 734
4 Ed.: MANU/SC/2361/2008: AIR 2008 SC 2737: 2009 (4) ALT 30 (SC): 2008 4 AWC
(Supp) 3258 SC: 2008 BusLR 625 (SC): 2009 - 1 - LW 472: (2008) 4 MLJ 942 (SC): 2008 (56)
BLJR 1979: (2008) 10 SCC 723: 2008 (9) SCALE 40: MIPR 2008 (2) 253
5 Ed.: MANU/SC/0009/2010: AIR 2010 SC 3221: 2010 1 AWC (Supp) 684 SC: JT 2010 (3)
SC 136: 2010 (1) UJ 323: 2010 (1) UC 503: (2010) 2 SCC 142: 2010 (1) SCALE 83: 2010 (2)
ALLMR (SC) 427: 2010 GLH (2) 39
i
6 Ed.: MANU/DE/0022/2009: MIPR 2009 (1) 356: 2009 BusLR 360 (Del): 2009 (39) PTC
627 (Del): 157 (2009) DLT 791

20. By way of reply, the learned Senior Counsel for the Plaintiff submitted that
though several institutions are using the Plaintiff’s mark VIT, in all the cases, a
whenever the same came to the knowledge of the Plaintiff, the Plaintiff has initiated
action against them; therefore, the usage of the mark VIT by the third parties cannot
be a defence for the Defendants. In this regard, the learned Counsel for the Plaintiff
also relied upon the decision reported in 2007(4) MLJ 1022 [B. Kishore Jain v. Navaratna
Khazana Jewellers7].
b
21. Further, the learned Senior Counsel for the Plaintiff submitted that the mark VIT,
by continuous and long usage, has attained distinctiveness relating to the Plaintiff.
Therefore, the Defendants 1 to 4 cannot use the mark “VIT Campus’. In this regard,
the learned Counsel for the Plaintiff MANU/DE/1822/2009: [Larsen and Toubro
Ltd., v. Lakshmi Industries and another].
22. Heard the submissions made on either side and perused the materials available c
on record. In view of the submissions made on either side, the following question
falls for consideration-
Since the Plaintiff is the prior and registered user of the mark VIT in respect of
education, providing of training, entertainment, sporting and cultural activities,
whether the Defendants are entitled to use the same mark VIT for their University d
campus as ‘VIT Campus’?
23. Originally the Plaintiff had established a Trust by name ‘North Arcot Educational
and Charitable Trust’ in the year 1984 and during the same year, they started a
private college in the name and style of Vellore Engineering College at Vellore. Later,
the name of the Trust was changed to ‘Vellore Institute of Technology’. Subsequently,
the Department of Secondary and Higher Education, Ministry of Human Resource e
Development issued a Notification No. F. 9-2/99-U. 3 dated, 19th June, 2001 declaring
the Vellore Institute of Technology as Deemed University. The institutions of the
Plaintiff are called shortly as VIT. Thereafter, the Plaintiff had applied for registration
of the name VIT vide their Trade mark Application No. 1130066, dated,
30 th August, 2002 in Class 16 and Trade mark Application No. 1324167, dated,
6th December, 2004 in Class 41. The Plaintiff’s Trade mark VIT has attained the status f
of “well known Trade mark” within the meaning of Trade marks Act since 2001.
While so, during June-2011, the Plaintiff came to know through internet that the 1st
Defendant-Trust at Jaipur has started the institutions in the name of VIT University.
The 1st Defendant-Trust has started two engineering colleges in the name of
Vivekananda Institute of Technology and Vivekananda Institute of Technology (East)
(Defendants 2 & 3 herein) and mentioned their name boards as VIT Campus. It is the g
case of the Plaintiff that the 1st Defendant had intentionally started the University
in the name of VIT to deceive the students to join with them as they are made to
believe that they are joining the Plaintiff’s institution. Hence, the Plaintiff has filed
the suit for the reliefs as stated supra.
24. After filing the present suit, the 1st Defendant has changed the name of their h
institution from VIT University, Jaipur to Vivekananda Global University. In fact,
Her Excellency the Governor of Rajasthan promulgated the ordinance “The VIT
University, Jaipur (Change of Name) Ordinance, 2013 (Ordinance No. 8 of 2013), on
7th June, 2013, which was published in Rajasthan Gazette, Part IV(B), Extraordinary,
dated, 10th June, 2013. To replace the said ordinance, the 6th Defendant, State of
i
7 Ed.: MANU/TN/7802/2007: 2007(4) MLJ 1022: 2008 (37) PTC 536 (Mad)

(R. Subbiah, J.)
Rajasthan, introduced a Bill No. 30 of 2013 ‘The VIT University, Jaipur (Change of
a Name) Bill, 2013" in the Rajasthan Legislative Assembly and the same was discussed
and passed on 27th August, 2013. The relevant portions in the said Bill passed on
27th August, 2013 are extracted hereunder-
“Be it enacted by the Rajasthan State Legislature in the Sixty-fourth Year of the
Republic of India, as follows:-
b 1. Shot title and commencement:-
(1) This Act may be called the VIT University, Jaipur (Change of Name) Act,
2013.
(2) It shall be deemed to have come into force on and from 7th June, 2013.
2. Change of Name of the VIT University, Jaipur:-(1) The name of the VIT
University, Jaipur incorporated under the VIT University, Jaipur Act, 2012
c
(Act No. 11 of 2012), hereinafter referred to as the principal Act, shall, as from
the date of commencement of this Act, be “The Vivekananda Global University,
Jaipur”.
(2) Any reference to the VIT University, Jaipur in any law for the time being in
force or in any indenture, instrument, or other documents shall be read and
d construed as a reference to that University under its name as altered by this
Act.
(3) Nothing in this Act shall affect the continuity of the corporate status of the
said University.
3. Amendment:-(1) As from the date of commencement of this Act, the principal
Act shall stand amended to the extent and in the manner specified in the
e schedule.
(2) The provisions of sub-section(1) shall be without prejudice to the generality
of the provisions of Section 2.
4. Citation of the principal Act:-The principal Act may be cited as the
Vivekananda Global University, Jaipur Act, 2012.
f 5. Repeal and savings:-(1) The VIT University, Jaipur (Change of Name)
Ordinance, 2013 (Ordinance No. 8 of 2013) is hereby repealed.
(2) Notwithstanding such repeal, all things done, actions taken or orders made
under the principal Act as amended by the said Ordinance shall be deemed to
have been done, taken or made under the principal Act as amended by this
Act.”
g
The learned Senior Counsel for the Plaintiff has also invited the attention of this
Court to the STATEMENT OF OBJECTS AND REASONS for passing the aforesaid
Bill, which read as follows:-
STATEMENT OF OBJECTS AND REASONS
With a view to keep pace with the rapid development of the State and to provide
h higher education by allowing the private institutions engaged in higher
education having sufficient resources and experience, the VIT University, Jaipur
was established by the State Government in the year 2012.
After the establishment of the VIT University, Jaipur, a writ petition was filed
by the VIT University, Vellore (Tamilnadu) before the Hon’ble High Court of
Judicature at Chennai wherein it was requested to the Hon’ble Court to issue
i an interim injunction restraining from infringement in any form of the Trade
mark ‘VIT’. Keeping in view the aforesaid writ petition, the Board of

Management of the VIT University, Jaipur after seeking the approval of the
sponsoring body i.e., Bagaria Education Trust, Jaipur has requested the State a
Government to change the name of the University from the VIT University,
Jaipur to the Vivekananda Global University, Jaipur so as to avoid any litigation.
The State Government had considered the above request to change the name of
the VIT University, Jaipur to The Vivekananda Global University, Jaipur’.
Since the Rajasthan Legislative Assembly was not in session and circumstances b
existed which rendered it necessary for the Governor of Rajasthan to take
immediate action, she, therefore, promulgated the VIT University, Jaipur
(Change of Name) Ordinance, 2013 (Ordinance No. 8 of 2013), on 7th June,
2013, which was published in Rajasthan Gazette, Part IV (B), Extraordinary,
dated, 10th June, 2013.
This Bill seeks to replace the aforesaid Ordinance. c
Hence the Bill.
Minister Incharge.”
Now, after filing the suit, by way of the abovesaid Bill the name of the 1st Defendant
university viz., VIT University, Jaipur was changed into Vivekananda Global
University. Inspite of the change of the name, still the Defendants 1 to 4 are claiming d
their campus as ‘VIT Campus’ stating that VIT is a short abbreviation of Vivekananda
Institute of Technology, Jaipur and Vivekananda Institute of Technology (East)
(Defendants 2 & 3). Inspite of the change of name of the University, since the
Defendants 1 to 4 are claiming their campus as ‘VIT Campus’, the Plaintiff is insisting
for injunction against the Defendants.
25. But, it is the reply of the learned Counsel for the Defendants 1 to 4 that the
e
Defendants 1 to 4 are using the acronym VIT, since VIT is a short abbreviation of
‘Vivekananda Institute of Technology, Jaipur’ and ‘Vivekananda Institute of
Technology (East)’, (Defendants 2 & 3). The acronym VIT is common to trade and
infact, the acronym VIT is being used by several parties in the trade including
educational institutes. It is further submission of the learned Counsel for the
f
Defendants 1 to 4 that the students, who are seeking higher education, are making
investment of substantial amount for their higher studies and they are bound to
make enquiry about the credentials of the institutes concerned. The students being
the educated persons cannot be deceived on VIT, Jaipur as ‘Vellore Institute of
Technology’ because admission to a college is not buying products in the market to
get confused easily. In this regard, the learned Counsel for the Defendants relied g
upon the decision reported in 2008(37) PTC 413 (SC) [Khoday Distilleries Ltd., v.
Scotch Whisky Association], wherein it has been held that where the class of buyers is
quite educated and rich, the test to be applied is different from the one where the
product would be purchased by the villagers, illiterate and poor.
26. Though it is the defence of the Defendants 1 to 4 that the educated persons
cannot be confused or deceived even if the abbreviation of the names of the two h
educational institutions resembles the same and as such, there cannot be a bar for
the Defendants for using the mark VIT for this campus, I find that the Plaintiff has
registered the Trade mark VIT before the Registrar of Trade marks, for providing
educational service. The Defendants 1 to 4 are also engaged in the same profession
of providing education and they also adopted the identical mark VIT Campus.
When there is an earlier registration of the mark VIT in favour of the Plaintiff, definitely i
the Plaintiff is entitled for statutory protection. The registration of the mark VIT in

(R. Subbiah, J.)
favour of the Plaintiff is valid and subsisting as on date. The rectification application
a filed by the 1st Defendant against the Plaintiff’s registration for the mark VIT under
Registration No. 13241678 in Class 41 is pending before the Trade mark Registry.
Therefore, I am not inclined to accept the submissions made by the learned Counsel
for the Defendants 1 to 4 that since the class of customers are educated persons,
there would not be any confusion about the mark of the Defendants and the Plaintiff
and as such, they are entitled to use the Trade mark ‘VIT’.
b
27. It is another defence of the learned Counsel for the Defendants that the acronym
VIT is only a descriptive and generic word; hence, the Plaintiff cannot claim monopoly
over the acronym VIT. In support of his contention, the learned Counsel for the
Defendants 1 to 4 relied upon the judgment reported in 2010(42) PTC 217(SC)
[Skyline Education Institute (I) Private Ltd. v. S.L. Vaswani and another].
c 28. But, even assuming for a moment, the acronym VIT is a common and generic
word, the Plaintiff has been using the said word VIT right from the year 2001 and
the said mark VIT was also registered in the year 2005 in favour of the Plaintiff.
Furthermore, by long and continuous usage, the Plaintiff has built the mark VIT as
a “well know mark” as defined under Section 2(1)(zg) of the Trade marks Act. Now,
the said mark VIT has become distinctive and associated with the Plaintiff. Since the
d 1st Defendant started to use the same mark VIT for the identical service, definitely it
will create confusion in the mind of the general public. Moreover, the defence of the
learned Counsel for the Defendants that the mark VIT is a descriptive and generic
word and as such, the Plaintiff can not claim monopoly over the same, is not available
to the Defendants, since the 1st Defendant itself had filed application for registration
of the mark VIT, which was subsequently abandoned by them in view of the change
e
of the name of VIT University, Jaipur into Vivekananda Global University. In this
regard, a reference could be placed in the judgment reported in 2011 (4) CTC 417
[Blue Hill Logistics Pvt. Ltd., v. Ashok Leyland Limited8] wherein it has been held as
follows-
“37. The words ‘Luxura’ and ‘Luxuria’ are only variants of the descriptive
f term ‘Luxury’ and as a consequence, the protection available is not so strong.
But, the 1st Defendant cannot take advantage of the same. As pointed out by
the learned Single Judge, 1st Defendant himself had applied for registration of
Trade mark ‘Luxuria’ under Classes 39 and 35 despite the fact that there is a
prohibition under Section 9(1)(b) of the Act. The person claiming exclusive
right over the expression cannot challenge the same expression as generic.”
g From the dictum laid down in the abovesaid judgment, I find that when the
1st Defendant itself had applied for registration of the mark VIT, now they cannot said
that the mark VIT is descriptive and generic word. Moreover, as observed earlier, by
continuous usage of the mark VIT since 2001, the Plaintiff has built the said mark as
‘well known mark’. Hence, the defence put forth by the Defendants that since the
mark VIT is a descriptive and generic word, the Plaintiff cannot claim monopoly over
h the said mark, cannot be accepted in the factual background of the case on hand.
29. It is another contention of the learned Counsel for the Defendants 1 to 4 submitted
that since the three letter mark VIT is only an acronym of ‘Vivekananda Institute of
Technology’ and ‘Vivekananda Institute of Technology (East)’, (Defendants 2 & 3
herein), which are located in the campus of the 1st Defendant, the campus is called
i
8 Ed.: MANU/TN/1329/2011: 2011 (48) PTC 564 (Mad)

as VIT campus. Only for the sake of convenience, the acronym form of the names is
adopted. In this regard, the learned Counsel for the Defendants has also submitted a
that the more than twenty institutions are using the acronym VIT.
30. But, it is the reply of the learned Senior Counsel for the Plaintiff that whenever it
comes to the knowledge of the Plaintiff that an educational institute was using the
mark VIT and on all such occasions, the Plaintiff has been regularly taking the legal
action against them. Therefore, the use of the mark VIT by the third parties cannot be b
a defence for the Defendants. In this regard, the learned Senior Counsel for the
Plaintiff has also relied upon the judgment reported in 2007(4) MLJ 1022 [B. Kishore
Jain v. Navaratna Khazana Jewellers] wherein it has been held that the mere use of
Trade mark by third parties will not be a defence unless it is established that by such
rampant use, there is no exclusivity for the Plaintiff.
31. In the instant case, I find that the Defendants 1 to 4 are also using the same mark c
VIT for the identical service as that of the Plaintiff; when the Plaintiff has already
registered the mark VIT, the Defendants 1 to 4 cannot use the mark VIT to refer their
campus, that too particularly when the name of the 1st Defendant’s institution has
been changed from VIT University, Jaipur into Vivekananda Global University.
Since the Plaintiff is a registered owner of the mark VIT, the Plaintiff is entitled for
the statutory protection for the mark VIT.
d
32. It is yet another submission of the learned Counsel for the Defendants 1 to 4 that
the Plaintiff is having their University at Vellore; whereas the Defendants are having
their University at Jaipur; therefore, there is no likelihood for confusion.
33. But, it is the reply of the learned Senior Counsel appearing for the Plaintiff, by
relying upon the decision in the case of Gangotree Sweets & Snacks v. Shree Gangotree e
Sweets9 MANU/TN/2389/2005 that since the registration certificate did not contain
any geographical limitation, the Plaintiff is entitled to sue an infringer anywhere in
India.
34. In the instant case, since the mark VIT has been registered in favour of the
Plaintiff, the defence put forth by the learned Counsel for the Defendants that the f
Defendant University is situated at Jaipur; whereas the Plaintiff University is
situated at Vellore, has no significance. Further, by long and continuous use of the
mark VIT by the Plaintiff, the mark VIT has become well known and associated with
the Plaintiff. If the Defendants 1 to 4 are allowed to use the same mark for the
identical service, certainly it would cause great confusion in the minds of the general
public. g
For the foregoing reasons, I am of the opinion that a prima facie case has been made
out by the Plaintiff and the Plaintiff is entitled for the grant of interim injunctions as
sought for. Hence, there shall be an order of interim injunctions as prayed for in the
present applications.
i
9 Ed.: MANU/TN/2389/2005: 2005 (31) PTC 502 (Mad)

2015] 0111
a MIPR 2015 (2) 0111*

IN THE HIGH COURT OF BOMBAY
Darius Rutton Kavasmaneck

v.
b Gharda Chemicals Limited and Ors.
APPEAL NO. 54 OF 2015 IN NOTICE OF MOTION NO. 3567 OF 2011 IN SUIT NO.
2932 OF 2011 NO. 1
Coram
c
N.H. Patil and A.S. Gadkari, JJ.
Counsel
For Appellant/Petitioner/Plaintiff: Virendra Tulzapurkar, Senior Advocate, Mayur
Khandeparkar, Shriraj Dhru and Meenal Desai i/b. Dhru and Co.
d For Respondents/Defendant: Nishad Nadkarni with Vaibhav Keni for respondent
i/b. Legasis Partners for Nos.1, 4 and 5.
Authority referred
Gore-Browne in Handbook on Joint Stock Companies, 41st Edn., p. 363[p. 0116, para 11 h]
Palmer’s Company Precedents, 17th Edn., Part I, p. 553 [p. 0116, para 11 f]
e
Foreign Cases referred
1131 Forrest v. The Manchester, Sheffield and Lincolnshire Railway Company, (1861) 4
De Gex, Fisher & Jones 126 [p. 0120, para 14 e]
Charles Osenton & Co. v. Jhanaton, 1942 AC 130 [p. 0120, para 14 e]
IDA Ltd. and Ors. v. University of Southampton and Ors., [2006] EWCA Civ 145
f
[p. 0121, para 14 c]
Patchett v. Sterling Engineering Coy.Ltd., 1955 (72) R.P.C. 50 [p. 0116, para 14 h]
Transvaal Lands Company v. New Belgium (Transvaal) Land and Development Co.,
1914-2 Ch 488 [p. 0116, para 11 h]
United States of America v. Dubilier Condenser Corporation, MANU/USSC/0169/1933
g : 289 U.S. 178-224 [p. 0119, para 14 d]
Yuill v. Greymouth Point Elizabeth Railway and Coal Co. Ltd., 1904-1 Ch 32
[p. 0116, para 11 g]
Cases referred
Anand Prasad Agarwalla v. Tarkeshwar Prasad, MANU/SC/0350/2001: AIR 2001 SC
h 2367: 2002 5 AWC 4137 SC: 2001 (4) PLJR 36: (2001) 5 SCC 568: 2001 (4) SCALE
149: 2002 93 RD 675: 2002 (1) ALLMR (SC) 694 (Mentioned) [p. 0119, para 14 e]
Esha Ekta Apartments CHS Ltd. v. Municipal Corpn. Of Mumbai MANU/SC/0161/
2012: (2012) 4 SCC 689: AIR 2012 SC 1718: 2013 (1) AJR 364: 2012 (92) ALR 897:
2012 (3) SCALE 210: 2012 (2) ALLMR 954: 2012 (5) BomCR 609: 2012 (2) ALLMR
i (SC) 954 (Mentioned) [p. 0121, para 14 h]
* MANU/MH/0580/2015

Printers (Mysore) Private Ltd. v. Poothan Joseph, MANU/SC/0001/1960: AIR 1960 SC

1156 : [1960] 3 SCR 713 : (SCR 721) (Mentioned) [p. 0120, para 14 d] a
Godrej Industries Ltd. v. Colin M. Rebello, MANU/MH/1512/2012: 2013 (7) BomCR
55 (Mentioned) [p. 0118, para 11 b]
M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Co., MANU/MH/0275/1984: AIR 1984
Bom 218: 1984 (4) PTC 155 (Bom) (Mentioned) [p. 0117, para 11 b]
Narayandas v. Sangli Bank, MANU/SC/0043/1965: AIR 1966 SC 170: [1965] 35 b
CompCas 596 (SC): [1965] 3 SCR 777 (Mentioned) [p. 0116, para 11 d]
Onyx Musicabsolute.com Pvt. Ltd. v. Yash Raj Films, MANU/MH/0583/2008: 2008 (6)
BomCR 418: 2008 (5) ALLMR 26 (Mentioned) [p. 0116, para 11 c]
Parksons Cartamundi Pvt.Ltd. v. Suresh Kumar Jasraj Burad Appeal No. 57/2012
(Mentioned) [p. 0117, para 11 g] c
Sanjeev Kumar Jain v. Raghubir Saran Charitable Trust, MANU/SC/1285/2011: (2012)
1 SCC 455: 2012 (2) ALT 7 (SC): 2012 1 AWC (Supp) 408 SC: (SC Supp l) 2012 (3)
CHN 30: 2011 (4) KLT 966 (SC): 2012 - 1 - LW 49: (2012) 1 MLJ 329 (SC): 2011 (4)
RCR (Civil) 903: 2012 (90) ALR 480: 2011 (12) SCALE 278: [2011] 12 SCR 744: 2012
(1) CTC 874 (Mentioned) [p. 0118, para 11 b]
V.B. Mohammed Ibrahim v. Alfred Schafranek, MANU/KA/0061/1960: AIR 1958 Kant d
173 (Mentioned) [p. 0119, para 14 b]
Wander Limited and another v. Antox India (P) Limited, MANU/SC/0595/1990: 1990
Supp (1) SCC 727: 1990 (2) ARBLR 399 (SC): 1990 - 1 - LW 495: 1990 - 1 - LW 498:
1991 (11) PTC 1 (SC): (1990) II MLJ 2 (Mentioned) [p. 0118, para 11 a]
Act/Rules/Orders e
Indian Trust Act, 1882
Section 88 [p. 0115, para 9 c]
Section 56 [p. 0117, para 11 c]
Section 64(1)(a)(b) [p. 0123, para 24 g]
Section 64(a)(b) [p. 0123, para 24 g] f
Section 64(1)(b) [p. 0124, para 24 a]
Patents Act, 1970
Section 25(1)(a) [p. 0119, para 13 a]
Issues and Findings g

Patents — Derivative action — Entitlement to — Section 25(1)(a) and 64(1)(b) of
Patents Act, 1970/Act — Whether relief claimed by Plaintiff to restrain Defendant
No. 2 from selling, transferring, assigning, licensing, exploiting, encumbering,
creating any third party rights or interest or otherwise dealing with patents which
Defendant No. 2 had obtained in his individual name and/or applying for grant of
any fresh patents in his individual name was sustainable — h
Held, In instant case issue that arose was whether action taken by Plaintiff was a
bonafide one. As regards ownership of patents subject patents were applied by
Defendant No. 2 and were registered in name of Defendant No. 2. This Court noticed
that subject patents were registered since year 2008 onwards. So far nothing was
placed on record which would fairly indicate that Defendant No. 2 was selling,
transferring or in any way creating third party interest in respect of patents registered i
in his name. There has not been any assignment of patents by Defendant No. 2 in

2015] Darius Rutton Kavasmaneck v. Gharda Chemicals Limited and Ors. 0113
(N.H. Patil and A.S. Gadkari, JJ.)
favour of Defendant No. 1. So prima facie material and evidence on record show that
a patents were registered in name of Defendant No. 2 and Plaintiff has failed to make
out a case that Defendant No. 2 was going to sell or transfer or create third party
interest in respect of subject patents or act in such a manner that would jeopardize
interest of company. Considering provisions of Act this Court found that Plaintiff has
an alternate efficacious remedy before specialized forum i.e. Controller of Patents.
Plaintiff could have initiated proceeding for pre-grant of patents under Section 25(1)(a)
b of Act or could have resorted to proceeding by filing petition/application under Section
64(1)(a)(b) of Act. Furthermore it was observed that in case this Court expresses a
prima facie view that patents have been wrongly obtained by Defendant No. 2 that
would make patents vulnerable and expose to attack by outsiders. Hence it was
concluded that Plaintiff’s case for interim relief was based on apprehension.
c JUDGMENT
N.H. Patil, J.
1. Admit.
By consent heard finally.
d 2. The Appellant is the original Plaintiff in Suit No. 2932/2011. The suit is filed for
derivative action by the Appellant-Plaintiff as minority shareholder. The Defendant
No. 2-Mr. Keki Hormusji Gharda is the Chairman and Managing Director of
Defendant No. 1- Company i.e. Gharda Chemicals Limited. Defendant No. 3 is the
wife of Defendant No. 2 and Defendant Nos. 4 and 5 are the directors of Defendant
No. 1. Defendant No. 2 happens to be the uncle (mother’s brother) of the Plaintiff.
e The relations between uncle and nephew are strained as borne out from the pleadings
and the arguments advanced during the course of hearing.
3. The Plaintiff’s grievance, in brief, is that Defendant No. 2 had obtained several
patents in his own name whereas the patents ought to have been applied and
obtained in the name of Defendant No. 1- Company. The Plaintiff is raising claim as
minority shareholder on behalf of Defendant No. 1- Company. As the company is in
f the control of Defendant No. 2 being major shareholder, it is contended that the
Plaintiff as a minority shareholder had to file suit in the interest of the company and
to protect the patents which Defendant No. 2 allegedly got registered in his individual
name instead of registering it in the name of the company.
4. The Plaintiff filed notice of motion seeking certain interim reliefs. The relief claimed
g in the notice of motion is to restrain Defendant No. 2 from selling, transferring,
assigning, licensing, exploiting, encumbering, creating any third party rights or
interest or otherwise dealing with the patents which Defendant No. 2 had obtained
in his individual name and/or applying for grant of any fresh patents in his
individual name. The Plaintiff’s contention is that he has no personal interest or
claim in respect of subject patents. The Plaintiff’s apprehension is that Defendant
h No. 2 may transfer the patents, which he had obtained in his name, to third party or
to a company i.e. Gharda Medical and Advanced Technologies Foundation
(“GMATF” for short) which is founded by Defendant Nos. 2 and 3, which company
holds 57% shares in Defendant No. 1-Company.
5. The shareholding pattern of Defendant No. 1 is described in para-9 of the impugned
judgment delivered by the learned Single Judge of this Court. Therefore, we need not
i
reproduce the same. Suffice it to mention that the Plaintiff holds 12% shares and
deceased Jer.R.Kavasmaneck (original Plaintiff No. 1) was holding 5% shares in

Defendant No. 1-Company. The other two directors hold 13% shares. The Rebello
family holds 4% shares. Defendant No. 2 holds 10.5% and Defendant No. 3 holds a
1.5% shares whereas GMATF holds 57% shares in Defendant No. 1-Company.
6. The Plaintiff’s contention is that Defendant No. 1 has a state of the art research
department. The company spends substantial amount every year on research and
development. The Defendant No. 2 has been using the infrastructure facilities and
investment made by the company in the research and development department to b
carry out research invent. The Defendant No. 2, therefore, ought to have applied and
obtained the patents, which he had obtained since 2008 onwards, in the name of
Defendant No. 1-Company. Instead Defendant No. 2 applied, obtained and got the
patents registered in his individual name. The Plaintiff’s firm contention and case
is that all these patents belong to the company and not to Defendant No. 2. The
Defendant No. 2 had used the resources of Defendant No. 1- Company and, in this c
view of the matter, it is his fiduciary duty being Managing Director of Defendant No.
1-Company to apply the patents and get it registered in the name of the company.
7. The Plaintiff alleged that during the period from 2001 to 2010, Defendant No. 1
had spent an amount of about Rs.186 crore on research and development. Defendant
No. 2 was a full-time Managing Director and in employment of Defendant No. 1. He
has been receiving substantial remuneration and commission from Defendant No. 1
d
since last 10 years. It is alleged that so far Defendant No. 2 has received an amount
aggregating to Rs.27.54 crore out of which Rs.22.7 crore was received as commission.
The Defendant No. 2, as Managing Director, owes duty in his fiduciary capacity to
the company. The Plaintiff alleges that Defendant No. 2 may transfer the patents to
third party who are competitors of Defendant No. 1-Company which would adversely
e
affect the interest of Defendant No. 1. The Plaintiff submits that it is a settled position
that even a minority shareholder could file suit for derivative action to protect the
interest of the company, if the majority shareholders are acting against the interest
of the company. The Defendant No. 2 being in complete control of Defendant No. 1,
it is contended by the Plaintiff that he had to resort to various proceedings with the
sole objective to protect the interest of the company. The Plaintiff neither has any f
personal interest nor expects any gain in initiating proceedings in the past and the
present one.
8. From the pleadings and record placed before us we have noticed that the Plaintiff
along with other minority shareholders had filed Company Petition bearing No.
77/1990 in this Court alleging mismanagement, oppression and misappropriation
of assets of Defendant No. 1 by Defendant No. 2. The Plaintiff thereafter g
unconditionally withdrew the said company petition and the petition was continued
by other minority shareholders. By order dated, 14th November 2008, the petition
came to be dismissed by this Court and the said order has become final.
The Plaintiff thereafter had filed another Company Petition No. 132/2009 before the
Company Law Board to agitate similar issues in respect of allegations that Defendant h
No. 2 was misappropriating the property and technology and know-how of
Defendant No. 1-Company. The said petition came to be dismissed by the Company
Law Board but the interim injunction granted was continued. In appeal filed against
the said order, the injunction granted against Defendant No. 2 and others was
vacated.
9. The Defendants contend that the Plaintiff does not represent the interest of all the i
shareholders other than wrongdoers. The Plaintiff is not at all entitled to sue in his

own name, in the suit of this nature. The derivative suit is an exception to the normal
a rule. The Plaintiff lacks bona fides to institute such a suit being a minority shareholder.
The suit is filed to further his personal interest. The Defendants allege that the
Plaintiff’s suit is not in the interest of the company and all the shareholders. It is
submitted that the Plaintiff has entered into an agreement with rival business
company i.e. Godrej and, in case any interim relief is granted or prima facie
observations are made in favour of the Plaintiff, the subject patents would get
b
vulnerable and would be available for challenge by third party jeopardizing the
interest of the company itself. It is contended that Defendant No. 2 is a well known
scientist and is known as father of the agrochemical industry in India. He had made
application for grant of patents using his own resources. He is the inventor in
respect of the inventions for which he had sought patents. The patents are applied
c by him and are registered in his name. The Defendant No. 2 has not assigned the
patents in favour of Defendant No. 1. It is contended that in the capacity of Managing
Director, it was not the duty of Defendant No. 2 to invent. There was, therefore, no
fiduciary duty cast on Defendant No. 2 to register the patents in favour of Defendant
No. 1. The plaint lacks material particulars and deserves to be dismissed as such. It
is submitted that Section 88 of the Indian Trust Act, 1882 has no application to the
d present case. In view of the observations and conclusions reached by the Court in
different proceedings initiated by the Plaintiff in the High Court the present
proceeding is not maintainable. The Plaintiff has an alternate efficacious remedy of
approaching authorities under the Patents Act, 1970. The suit not being in the interest
of the company deserves to be dismissed. The Plaintiff has failed to make out a case
for grant of discretionary reliefs.
e 10. The learned Senior Counsel appearing for the Appellant submitted that the
Plaintiff is entitled to maintain suit for derivative action being a minority shareholder.
Considering the subject matter and cause of action, the Company could not initiate
such a proceeding as majority of shares are held by Defendant No. 2. The suit is filed
for the benefit of the company. The earlier proceedings initiated by the Plaintiff are
relevant for considering the issues raised herein. It is submitted that Defendant No.
f 2 is likely to transfer the patents in favour of third party and/or a company i.e.
GMATF which holds 57% shares in Defendant No. 1-Company and, in such a
situation, the interest of Defendant No. 1- company will be affected. It will cause not
only financial loss to the company but would jeopardize the interest and reputation
of Defendant No. 1-Company. It is submitted that Defendant No. 2 could not have
applied the patents in his name and got it registered. Defendant No. 2 has used the
g Research and Development department and laboratory of the company for doing
research. The invention, if at all made by Defendant No. 2, was made in the laboratory
of Defendant No. 1 and not in his mind. The Defendant No. 2 is the head of the
research department. Whatever research activities and inventions Defendant No. 2
carried out were done during the course of his employment as a Managing Director
of the company. The director is a trustee and in a fiduciary duty Defendant No. 2
h
ought to have applied the patents in the name of the company and register the same
accordingly. The Plaintiff has brought on record sufficient material for appreciating
prayer made in the notice of motion. The learned Counsel submitted that learned
Single Judge has proceeded to decide the motion as if the suit was to be decided. The
observations made by the learned Single Judge practically decide the suit when the
i Court was to pass an order on the interim application. The learned Senior Counsel
further submitted that a strong prima facie case has been made out by the Plaintiff for
grant of interim relief. The apprehension that in case interim relief is granted in

favour of the Plaintiff the patents would get vulnerable is not tenable. The Plaintiff
would not take any such step which would jeopardize the patents or would allow a
third party to initiate proceedings which would make the patents vulnerable.
Learned Senior Counsel further submitted that about 200 scientists work in 10
laboratories and crores of rupees are spent by the company on research and
development work. Being head of Research and Development department, the
Defendant No. 2 ought to have applied the patents in the name of the company. b
Learned Counsel submitted that if the intention of Defendant No. 2 is clear then no
prejudice would be caused in case interim relief is granted as prayed for by the
Plaintiff. The relief claimed by the Plaintiff is that the patents should not be transferred
in any way in whatsoever manner except in the name of Defendant No. 1- Company.
11. The learned Senior Counsel for the Appellant has placed reliance on the following
judgments: In Onyx Musicabsolute.com Pvt. Ltd. v. Yash Raj Films1, 2008 (6) Bom. C.R. c
418, this Court observed as under:
13. I see no reason to depart from the view which I have taken earlier. I therefore
hold that a suit at the instance of a minority shareholder for a wrong done to a
company is maintainable where it is shown that the wrong doers are insiders,
say directors of the company or majority of the shareholders who are unlikely d
to take any action for the wrong done to the company. I am, however, not
prepared to go thus far as to hold that even a derivative action by way of an
arbitration can be taken by initiating arbitration before an arbitral Tribunal,
for the reasons indicated a little later.
In Narayandas v. Sangli Bank2, AIR 1966 SC 170, the Supreme Court has observed
as under: e
“6. Now, a director of a company stands in a fiduciary position towards
the company and is bound to protect its interests. For long, it has been an
established rule of equity that he must not place himself in a position in
which his personal interest conflicts with his duty, and unless authorised
by the company’s articles, he must not vote as a director on any contract or
arrangement in which he is directly or indirectly interested. Standard f
articles give effect to this rule of equity. See Palmer’s Company Precedents,
17th Edn., Part I, p. 553. If he votes in such a case, his vote would not be
counted, and his presence would not count towards the quorum, that is to
say, the minimum number fixed for the transaction of business by a board
meeting, for a quorum must be a disinterested quorum, and must be
comprised of directors who are entitled to vote on the particular matter g
before the meeting. See Yuill v. Greymouth Point Elizabeth Railway and Coal
Co. Ltd., 1904-1 Ch 32. If an interested director votes and without his vote
being counted there is no quorum, the meeting is irregular, and the contract
sanctioned at the meeting is voidable by the company against the director
and any other contracting party who has notice of the irregularity, see
Transvaal Lands Company v. New Belgium (Transvaal) Land and Development
h
Co., 1914-2 Ch 488; but the company may waive the irregularity and affirm
the transaction. The matter is put succinctly by Gore-Browne in Handbook
on Joint Stock Companies, 41st Edn., p. 363 thus :
i
1 Ed.: MANU/MH/0583/2008: 2008 (5) ALLMR 26: (2010) 2 CompLJ 341 (Bom)
2 Ed.: MANU/SC/0043/1965: [1965] 35 CompCas 596 (SC): [1965] 3 SCR 777

“According to the well-established rule that an agent cannot act on

a behalf of his principal in a matter in which the agent has a
conflicting interest or duty, directors are precluded from taking
part in any resolution under which they take a benefit or which
adopts a contract that concerns them unless the Articles authorise
their doing so. It must be here noted that if interested directors take
part in any transaction there is an irregularity which renders the
b
transaction voidable by the company as against the directors and
any persons who have knowledge of the facts”.
In M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Co.3, AIR 1984 Bombay 218,
Division Bench of this Court observed as under:
“21. It was finally urged by Mr. Kale that the discretion exercised by the
c Deputy Register under Section 56 of the Act in the Respondent’s favour
should not be lightly disturbed and the Appellate Court should therefore
not disturb the judgment and order of the learned Single Judge. We ask
ourselves; Pray where at all arises the question of discretion. To start
with, the Deputy Registrar did not exercise any discretion under Section
56 in rejecting the Appellants application for rectification. It must be
d remembered that the concept of discretion is distinct from that of
adjudication. When the Deputy Registrar rejected the Appellants
application for rectification on the ground that the two marks are not
deceptively similar, she did not use any discretion but adjudicated upon
the rival contentions of the parities. It would be trite to say that exercise of
discretion can arise in favour of a party when adjudication by the Registrar
e is against that party. In the present case, the Deputy Registrar’s
adjudication was in fact in favour of the Respondents, with the result
that there was no occasion for the Deputy Registrar to exercise any
discretion. If the Deputy Registrar had held that the two marks were
deceptively similar (which she did not) but that in exercise of her
discretion she did not consider it necessary to pass an order for
f rectification, it could be said that the Deputy Registrar having exercised
the discretion in favour of the Respondents, interference with such
discretion was not called for. Nothing of the kind can be said in the
present case where in fact the Deputy Registrar has held that the two
marks are not deceptively similar. In any event, this court having come to
the conclusion that the two marks are deceptively similar, this cannot be
g a case for the exercise of discretion In favour of the Respondents as their
case is not founded on truth and also in view of the uncontroverted
evidence of actual deception perpetrated and confusion caused.”
In judgment dated, 21st March 2012 passed by Division Bench of this Court in
Appeal No. 57/2012 (Parksons Cartamundi Pvt.Ltd. v. Suresh Kumar Jasraj Burad),
h it is observed as under:
“14. It is thus clear that the concept of discretion is distinct from that of
adjudication. What the learned Single Judge has done in the instant case
is making prima facie adjudication that the Defendants”’ Trade mark is
not deceptively similar to that of the Plaintiff. Therefore, there is no
question of any discretion exercised by the learned Single Judge. We
i have already held that the Defendant has been infringing the Plaintiff’s
3 Ed.: MANU/MH/0275/1984: 1984 (4) PTC 155 (Bom)

Trade marks and has been attempting to pass off its playing cards as
those of the Plaintiff. This has happened in respect of the very Trade mark a
“MERELANE, which is registered since the year 1971 and also the label
mark on the packets containing the playing cards prominently bearing
the words “MERELANE No. 7”. Hence, there is no question of applying
the principle enunciated in the case of Wander Limited and another v.
Antox India (P) Limited4, 1991 PTC 1.”
b
Learned Counsel for the Plaintiff has also relied upon Supreme Court judgment
in the case of Sanjeev Kumar Jain v. Raghubir Saran Charitable Trust,5 (2012) 1
SCC 455 and Division Bench Judgment of this court in the case of Godrej
Industries Ltd. v. Colin M. Rebello6, 2013 (7) Bom. C.R,. 55.
12. The learned Senior Counsel appearing for Defendant No. 2 submitted that suit itself
was not maintainable. From the earlier proceedings initiated by the Plaintiff in the High c
Court and before Company Law Board and in view of observations and orders passed
therein, it is clear that identical issues were raised by the Plaintiff in those proceedings.
The Plaintiff failed to secure any interim order in his favour in those proceedings. The
Plaintiff’s intentions are not bona fide. A person without bona fide intentions cannot
maintain a suit for derivative action. The Plaintiff had entered into Memo of
Understanding (MOU) with rival competitor of Defendant No. 1 i.e. Godrej. Grant of d
interim relief in favour of the Plaintiff would jeopardize the patents and the same would
become vulnerable. Learned Senior Counsel submitted that the suit has been filed with
an ulterior motive. There is family hostility. Since last 7 years, the Plaintiff has been
dragging Defendant No. 2, who is a person of 84 years, in to litigation. In the facts, the
suit cannot be said to be on behalf of the shareholders and in the interest of the company
but it is a suit filed to protect the personal interest of the Plaintiff alone. e
13. Learned Senior Counsel submitted that subject patents are applied and registered
in the name of Defendant No. 2 since the year 2008 and do not belong to Defendant
No. 1-Company. It is submitted that Defendant No. 2 is a well known scientist and
is known as father of agrochemical industry in India. He has done work in respect
of the inventions for which he has sought patents. He has devised and created f
inventions and inventive steps are provided enabling disclosure for each of the
invention. He submitted that Defendant No. 2 made application for grant of patents
using his own resources. Only individual can be an inventor. A company or firm
does not have capacity to invent; and hence cannot be an inventor. The patents were
not assigned by Defendant No. 2 to Defendant No. 1-Company. It is further submitted
that Defendant No. 2 did not have duty to invent. The last contract clarifies that he g
is the owner of all the inventions that he had devised. The said contract has been
approved by the shareholders of the company in general meeting by a requisite
majority as well as approved by the Central Government. The learned Counsel
further submitted that in such a case derivative action cannot be maintained by the
Plaintiff for his personal interest. The patents cannot be made vulnerable at the
instance of the Plaintiff. It is submitted that Plaintiff is puppet of another company h
and cannot be permitted to represent the interest of other shareholders or interest of
Defendant No. 1-Company. Learned Counsel further submitted that the Plaintiff
4 Ed.: MANU/SC/0595/1990: 1990 Supp (1) SCC 727: 1990 (2) ARBLR 399 (SC): 1990 - 1
- LW 495: 1990 - 1 - LW 498: (1990) II MLJ 2: 1990 (Supp) SCC 727
5 Ed.: MANU/SC/1285/2011: 2012 (2) ALT 7 (SC): 2012 1 AWC (Supp) 408 SC: 2011 (4) RCR i
(Civil) 903: 2012 (90) ALR 480: 2011 (12) SCALE 278: [2011] 12 SCR 744: 2012 (1) CTC 874
6 Ed.: MANU/MH/1512/2012

has not exhausted alternate efficacious remedy available under the Patents Act,
a 1970 or pre-grant opposition under Section 25(1)(a) of the said Act. In the submission
of learned Counsel, learned Single Judge has passed a reasoned and discretionary
order. The Plaintiff has failed to make out prima facie case and balance of convenience
is not in his favour for grant of discretionary reliefs.
14. The learned Senior Counsel appearing for the Defendants has placed reliance on
b the following judgments: In V.B. Mohammed Ibrahim v. Alfred Schafranek7, AIR 1960
Mysore 173, it is observed as under:
“(4) Before going into the evidence of the point, it is necessary to consider
whether the Plaintiff, who was a financing partner, could be deemed to be one
of the inventors, or, whether the firm could be treated as an inventor such that
the name of the firm itself could be registered directly as a patentee. It is not the
c Plaintiff’s case that he contributed any part of his ingenuity or skill or technical
knowledge towards the invention in question. All that he says in that he gave
the wherewithal viz., the finances for the running of the concern that with this
help experiments were made and ultimately the invention was evolved. It is
not disputed that the persons that actually laboured and found out the process
were Defendants 1 and 2. Under these circumstances, it is very difficult to
d accept that the Plaintiff could be treated as an inventor.”
In United State of America v. Dubilier Condenser Corporation, 289 U.S. 178-224, it is
observed as under:
“Though the mental concept is embodied or realized in a mechanism or a physical
or chemical aggregate, the embodiment is not the invention and is not the subject
e of a patent. This distinction between the idea and its application in practice is
the basis of the rule that employment merely to design or to construct or to devise
methods of manufacture is not the same as employment to invent........”
In Anand Prasad Agarwalla v. Tarkeshwar Prasad8, AIR 2001 SC 2367, the Supreme
Court has observed as under:
“6. It may not be appropriate for any Court to hold mini trial at the stage of
f
grant of temporary injunction. As noticed by the Division Bench that there are
two documents which indicated that there was prima facie case to be
investigated. Unless the sale certificate is set aside or declared to be a nullity,
the same has legal validity and force. It cannot be said that no right could be
derived from such certificate. Secondly, when the contesting Respondents were
g in possession as evidenced by the record of rights, it can not be said that such
possession is by a trespasser. The claim of the contesting Respondents is in
their own right. The decisions referred to by the learned Counsel for the
Appellant are in the context of there being no dispute as to ownership of the
land and the possession was admittedly with a stranger and hence temporary
injunction is not permissible. Therefore, we are of the view that the Division
h Bench has very correctly appreciated the matter and come to the conclusion in
favour of the Respondents. In these circumstances, we dismiss these appeals.
We may notice that the time bound directions issued by the Division Bench
will have to be adhered to strictly by the parties concerned and the suits should
7 Ed.: MANU/KA/0061/1960
i 8 Ed.: MANU/SC/0350/2001: 2002 5 AWC 4137 SC: 2001 (4) PLJR 36: JT 2001 (Supp l 1)
SC 139: 2002 (48) ALR 295: (2001) 5 SCC 568: 2001 (4) SCALE 149: 2002 93 RD 675: 2001
(2) CGLJ 179: 2002 (1) ALLMR (SC) 694

be disposed of at an early date but not later than six months from the date of the
communication of this order.” a
In Wanter Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727, the Supreme Court has
observed as under:
“14. The appeals before the Division Bench were against the exercise of
discretion by the Single Judge. In such appeals, the Appellate Court will not
interfere with the exercise of discretion of the court of first instance and b
substitute its own discretion except where the discretion has been shown to
have been exercised arbitrarily, or capriciously or perversely or where the
court had ignored the settled principles of law regulating grant or refusal of
interlocutory injunctions. An appeal against exercise of discretion is said to be
an appeal on principle. Appellate Court will not reassess the material and
seek to reach a conclusion different from the one reached by the court below if c
the one reached by the court was reasonably possible on the material. The
Appellate Court would normally not be justified in interfering with the exercise
of discretion under appeal solely on the ground that if it had considered the
matter at the trial stage it would have come to a contrary conclusion. If the
discretion has been exercised by the Trial Court reasonably and in a judicial
manner the fact that the Appellate Court would have taken a different view d
may not justify interference with the Trial Court’s exercise of discretion. After
referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v.
Poothan Joseph9, AIR 1960 SC 1156 : [1960] 3 SCR 713 : (SCR 721)
... These principles are well established, but as has been observed by Viscount
Simon in Charles Osenton & Co. v. Jhanaton, 1942 AC 130 ‘.the law as to the
e
reversal by a court of appeal of an order made by a judge below in the
exercise of his discretion is well established, and any difficulty that arises is
due only to the application of well-settled principles in an individual case’.
The appellate judgment does not seem to defer to this principle.”
In 1131 Forrest v. The Manchester, Sheffield and Lincolnshire Railway
Company, (1861) 4 De Gex, Fisher & Jones 126, it is observed as under: f
“........ It has been a very wholesome doctrine of this Court that one
shareholder having in view the legitimate purposes of the company
may be permitted in this Court to maintain a suit on behalf of himself
and the other shareholders of the company, but the principle upon
which that constructive representation of the shareholder is
permitted indisputably requires that the suit shall be a bona fide g
one, faithfully, truthfully, sincerely directed to the benefit and the
interests of those shareholders whom the Plaintiff claims a right to
represent. But can I permit a man who is the puppet of another
company to represent the shareholders of the company against
whom he desires to establish the interests and benefits of a trial
scheme? That would be entirely contrary to the principle upon
h
which this constructive representation has been permitted to be
founded. When the Plaintiff sues in that capacity any personal
exception to the Plaintiff remains, and it would be in direct
contradiction of every principle of truth and justice if I permitted a
man to come here clothed in the garb of a shareholder of a company
i
9 Ed.: MANU/SC/0001/1960: [1960] 3 SCR 713 : (SCR 721)

A., but who is in reality a shareholder in company B., and has no

a sympathy whatever with, no real purpose of promoting the interests
of the other company. Such a thing would be so much at variance
with the principles of a Court of Equity that it would be impossible
for it to entertain a suit of that description which is a mere mockery,
a mere illusory proceeding.”
b In Patchett v. Sterling Engineering Coy.Ltd., 1955 (72) R.P.C. 50, it is observed by
the House of Lords as under:
“It is true enough that the rule that inventions made by an employee
belong to the employer is sometimes spoken of as an implied term of the
contract of service. In a sense no doubt it is an implied term in that it is
not written out in the contract of service, but it is a term which, given the
c conditions which are here present, namely, inventions made by the
employee in the course of his employment which it was part of his duty
to make, the law imports in to the contract.....”
In IDA Ltd. and others v. University of Southampton and others, [2006] EWCA Civ
145, it is observed as under:
“[23] In Henry Brothers v MOD [1997] RPC 693 at p 706 I said:
d
‘One must seek to identify who in substance made the combination.
Who was responsible for the inventive concept, namely the combination?’
[24]..........
[25] Later we said:
‘What one is normally looking for is ‘the heart’ of the invention.
e There may be more than one ‘heart’ but each claim is not to be
considered as a separate ‘heart’ on its own,’ 102.
[26] to [30]........
[31] The parallel with Claim 1 of Professor House’s 1994 patent is exact.
In 1994 the exposure was ‘to particles carrying an electrostatic charge’;
f in the patent in suit the exposure is ‘to a composition comprising particles
containing or consisting of at least one magnetic material’. In short:
magnetic particles for electrostatic particles. To my mind, that is the sole
key to the information in the patent in suit. That key was provided solely
by Mr. Metcalfe. Putting it another way, insofar as there is anything
inventive in the patent, it was provided only by him.
g [32] It is true that he did not know whether his idea would work and it is
true that he had not realised that if it did work it would be by adhesion to
the legs of the insects, or that because of that insects could be made to pick
up insecticide (what Laddie J called the ‘sticky poison concept’). Neither
of these matters prevents Mr. Metcalfe from being the sole devisor of the
invention. For neither of these matters involve the contribution of anything
h inventive to this idea. So far aw finding out whether or not his idea worked
that was a matter of simple and routine experimentation mere verification.”
The learned Counsel for Defendant No. 2 also placed reliance on the Supreme Court
judgment in the case of Esha Ekta Apartments CHS Ltd. v. Municipal Corpn. Of Mumbai10,
(2012) 4 SCC 689.
i
10 Ed.: MANU/SC/0161/2012: AIR 2012 SC 1718: 2013 (1) AJR 364: 2012 (92) ALR 897: 2012
(3) SCALE 210: 2012 (2) ALLMR 954: 2012 (5) BomCR 609: 2012 (2) ALLMR (SC) 954

15. We have perused the record placed before us, the impugned order passed by
learned Single Judge, and considered the submissions advanced. We have extensively a
heard the learned Counsel appearing for the respective parties. We have also perused
the orders passed in the proceedings initiated by the Plaintiff in this Court and in
Company Law Board. The Plaintiff is a minority shareholder who is related to
Defendant No. 2, the Chairman and Managing Director of Defendant No. 1 and his
relations with Defendant No. 2 seems to be strained since last several years. The
b
Plaintiff had resorted to filing of proceedings in the Court in respect of identical
subjects. The record shows that Defendant Nos. 2 and 3 are in-charge of the company.
GMATF company holds 57% of shares in Defendant No. 1-Company. The subject
patents in respect of which the Plaintiff is praying for restraining order were applied
and registered in the name of Defendant No. 2 since the year 2008 onwards. The
patents relate to different subjects which we need not deal with. The Plaintiff’s c
apprehension is that Defendant No. 2 is very likely to transfer the patents in favour
of third party or in favour of the company which holds major shares in Defendant
No. 1-Company and, if this happens, the Defendant No. 1-Company would be
affected financially and otherwise. To protect the interest of all the shareholders
and Defendant No. 1-Company, the Plaintiff prays for interim protection till the suit
is finally decided. d
16. We need not give a conclusive finding as to whether suit itself is maintainable or
not as the same is subject matter to be decided at the time of final hearing of the suit
which is still pending. The principle as to what derivative action and at whose
instance such a claim could be put forth has been, in detail, dealt with by the learned
Single Judge by quoting provisions of the Patents Act and judgments dealing with
the said issue. We need not reiterate the same here. e
th
17. Learned Single Judge has quoted para from the order dated, 14 November 2008
passed by this Court in Company Petition No. 77/1990, which reads as under:
“6. As aforesaid, the original Petitioner Nos. 1, 2, 3, 6 and 7 have withdrawn
from the present proceedings unconditionally. As per their request, they have
been deleted from the array of Petitioners. The effect of unconditional f
withdrawal from the proceedings by the said Petitioners is that they have
given up their challenge with regard to the alleged acts of oppression and
mismanagement. In that, those Petitioners have consciously acquiesced in the
acts complained of.......”
18. Learned Single Judge has referred to the observations of the Court in order dated,
14th June 2011 which demonstrates that the Plaintiff had sought reliefs concerning g
assets and properties of Defendant No. 1- Company. Learned Single Judge has also
referred to the observations made by this Court in order dated, 14th June 2011 passed
in Company Appeal No. 24 of 2010 whereby the said appeal was dismissed.
19. It is curious to note that a company named Western Chemical Private Limited
(WCPL) promoted, controlled and owned by the Plaintiff carries on a competing h
business with that of Defendant No. 1 in manufacturing of certain products. The
Plaintiff had even entered into MOU with Godrej Company. This MOU was brought
on record by Defendant No. 2 by filing affidavit on 12th December 2011. In the said
MOU the Plaintiff agreed to sell his shares in Defendant No. 1-Company to Godrej
and also agreed to exercise all his voting rights in respect of his shares as per the
directions of Godrej Company. The issue, therefore, arises as to whether the action i
taken by the Plaintiff is a bona fide one. In the cases of derivative action, bona fides of
the suitor plays a vital and significant role. The derivative action is an exception to
the rule that only company can sue on its own behalf. In exceptional circumstances
a an individual shareholder is permitted to sue on behalf of the company and the
alleged wrongdoers because the wrongdoers are themselves in control of the
company.
20. As regards the ownership of the patents, as the record reflects, the subject patents
were applied by Defendant No. 2 and are registered in the name of Defendant No. 2.
b As to how Defendant No. 2 invented and patented inventions, what resources were
utilized, how much expenditure was done, who contributed to the research activities
are issues which could be determined at the time of hearing of the suit. This is
possible by leading evidence by the contesting parties. As of now we can only see as
to whether the Plaintiff has made out prima facie case to show that the subject patents
do not belong to Defendant No. 2 but belong to Defendant No. 1-Company and even
c if the patents are registered in the name of Defendant No. 2, an order of injunction is
required to be clamped against Defendant No. 2.
21. We have noticed that the subject patents are registered since the year 2008
onwards. So far nothing is placed on record which would fairly indicate that
Defendant No. 2 is selling, transferring or in any way creating third party interest in
respect of patents registered in his name. This is apart from the question as to whom
d the patents belong to. There has not been any assignment of the patents by Defendant
No. 2 in favour of Defendant No. 1. So prima facie material and evidence on record
show that the patents are registered in the name of Defendant No. 2 and the Plaintiff
has failed to make out a case that Defendant No. 2 is going to sell or transfer or create
third party interest in respect of subject patents or act in such a manner that would
jeopardize the interest of the company.
e
22. It has come on record that Defendant No. 1- Company is controlled by Defendant
No. 2 being its major shareholder. It is alleged that Defendant No. 2 is likely to
transfer the patents in the name of company i.e. GMATF. But the fact remains that
the said company is still holding 57% shares of Defendant No. 1-Company.
23. Another aspect is in respect of as to whether the Plaintiff has shown bona fides. In
f the previous proceedings initiated by the Plaintiff similar such issues were raised
and the Plaintiff failed to secure any order from this Court or from the Company Law
Board.
24. Considering the provisions of the Patents Act, 1970, we find that the Plaintiff has
an alternate efficacious remedy before specialized forum i.e. Controller of Patents.
g The Plaintiff could have initiated proceeding for pre-grant of patents under
Section 25(1)(a) of the Patents Act or could have resorted to proceeding by filing
petition/application under Section 64(1)(a)(b) of the said Act. We may also refer to
the provisions of Section 64(a)(b) of the Patents Act, which reads as under:
“64. Revocation of patents.— (1) Subject to the provisions contained in this Act, a
patent, whether granted before or after the commencement of this Act, may, be revoked
h on a petition of any person interested or of the Central Government by the Appellate
Board or on a counter-claim in a suit for infringement of the patent by the High
Court on any of the following grounds that is to say-
(a) that the invention, so far as claimed in any claim of the complete specification,
was claimed in a valid claim of earlier priority date contained in the complete
i specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled
under the provisions of this Act to apply therefor.”
Under Section 64(1)(b) any person can oppose patent on the ground that patent has
been wrongly obtained. We find substantial force in the submission of learned a
Counsel appearing for Defendant No. 2 that it would not be in the interest of the
company to expose the invention and the patents to attack by outsiders. In case this
Court expresses a prima facie view that patents have been wrongly obtained by
Defendant No. 2 that would make the patents vulnerable and expose to attack by
outsiders. There is also substance in the submission of Defendant No. 2 that exposing
b
patents to such extent making it vulnerable would jeopardize the interest of the
company and could not be said to be a bonafied action on behalf of the company. It
is the contention of the Plaintiff that he did not intend to make the patents vulnerable.
But any observation, even of prima facie nature, concerning ownership of the patents
adverse to Defendant No. 2 at this stage would make the patents vulnerable and
available for challenge by others or third party. In the facts of the present case and c
considering in totality, the material brought on record we are not inclined to grant
such relief in favour of the Plaintiff.
25. The Plaintiff’s case for interim relief is based on apprehension. We are of the
prima facie view that whatever serious apprehension the Plaintiff may have, cannot
be a ground to grant relief in favour of the Plaintiff considering the serious
consequences of the same. In the facts of the case and considering the record and d
submissions advanced, we are not convinced to hold that the balance of convenience
lies in favour of the Appellant i.e. original Plaintiff.
26. The learned Single Judge has passed a reasoned order taking into consideration
the reliefs prayed for, the documents, the earlier orders passed by this Court and the
facts and merits of the case. We do not notice any glaring error or perversity in the
e
view adopted by the learned Single Judge. The observations made by the learned
Single Judge on the maintainability of the suit could be considered to be as prima
facie. The substantive issues raised by the parties in the suit would be decided after
leading evidence in the suit.
27. The learned Senior Counsel appearing for the Appellant/ Plaintiff submitted that
the order of awarding of costs of Rs.10 lac is harsh and unreasonable order in the facts f
of the case. We modify the said order of awarding of costs from Rs.10 lac to Rs.5 lakh.
We are not inclined to grant any interim relief as prayed for in the notice of motion by
the Plaintiff. The said prayer is rejected. Appeal is partly allowed in the above terms.
28. After pronouncement of judgment, the learned Counsel appearing for the
Appellant submits that the statement made by learned Counsel appearing for
g
Defendant Nos. 2 and 3 and recorded by learned Single Judge in order dated, 1st
December 2011, which was continued from time to time, be continued for further
eight weeks. Learned Counsel appearing for the Respondents-original Defendant
Nos. 2 and 3 submits that he is not instructed to continue the said statement which
was made earlier and recorded vide order dated, 1st December 2011. It is submitted
that notice of motion seeking interim injunction has been rejected by learned h
Single Judge. Now, since the appeal is finally heard and dismissed, there is no
reason for continuing the statement made earlier.
As we have dismissed the appeal by rejecting the prayer for grant of interim injunction
and in view of facts and circumstances, we are not inclined to continue the statement
made by learned Counsel on behalf of Defendant Nos. 2 and 3. The prayer stands
rejected. i

2015] 0125
MIPR 2015 (2) 0125*

a
IN THE HIGH COURT OF DELHI
Industria De Diseno Textile SA

v.
Oriental Cuisines Pvt. Ltd. and Ors.
b
CS (OS) NO. 1472/2013
Coram
G.P. Mittal, J.
c Counsel
For Appellant/Petitioner/Plaintiff: Akhil Sibal, Sushant Singh, P.C. Arya, Nikhil
Chawla, Tejinder Singh, Anisha Gupta and Parveen Arya, Advocates
For Respondents/Defendant: N.K. Kaul, Senior Advocate, M.S. Bharath and Prachi
Agarwal, Advocates
d
Cases referred
Alfred Dunhill Ltd. v. Kartar Singh Makkar & Ors. MANU/DE/0639/1999: 1999 II AD
(Delhi) 789: 1999 (19) PTC 294 (Del) (Mentioned) [p. 0138, para 45 b]
Allianz Aktiengesells Chaft Holding v. Allianz Capital and Management Services Limited,
MANU/DE/2049/2001: 2002 (24) PTC 177 (Del) (Mentioned) [p. 0140, para 55 a]
e Chanel Ltd. v. Sunder Chemicals Agarbati Works (Pvt.) Ltd. and Anr. MANU/DE/2077/
2002: 2003 (26) PTC 52 (Del) (Discussed) [p. 0138, para 45 b]
Eveready Industries India Ltd. v. Sanjay Chadha & Anr. MANU/DE/3507/2010: 2011
(45) PTC 22 (Del): 2011 I AD (Delhi) 428: 179 (2011) DLT 355: MIPR 2011 (1) 34
(Distinguished) [p. 0139, para 50 b]
f Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. MANU/DE/0715/2006: 2006 (32) PTC
307 (Del): 128 (2006) DLT 81 (Distinguished) [p. 0139, para 50 a]
Hearst Communications, Inc. v. Dinesh Varyani & Anr. ILR (2009) 4 Del. 799
(Discussed) [p. 0135, para 35 d]
Honda Motor Company Ltd. v. Kewal Bros. & Anr. MANU/WB/0353/1999: 2002 (25)
PTC 763 (Cal) (Discussed) [p. 0137, para 40 d]
g
Kishore Samrite v. State of U.P. and Ors. MANU/SC/0892/2012: (2013) 2 SCC 398:
2013 (1) ALT (Cri) 416: JT 2012 (10) SC 393: 2013 (1) UC 231: 2013 V AD (S.C.) 594:
2012 (10) SCALE 330: 2013 (1) ALJ 230 (Distinguished) [p. 0139, para 50 a]
M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr. AIR 1999
Delhi 19 (Discussed) [p. 0135, para 34 b]
h Midas Hygiene Industries (Pvt.) Ltd. v. Sudhir Bhatia and Ors,. MANU/SC/0186/2004:
(2004) 3 SCC 90: 2004 (28) PTC 121 (SC): 2004 (2) PLJR 141: 2004 (73) DRJ 647:
2004 (2) SCALE 231 (Discussed) [p. 0138, para 45 b]
i
* MANU/DE/1602/2015

Milmet Oftho Industries & Ors. v. Allergan Inc. MANU/SC/0512/2004: (2004) 12 SCC
624: (2005) 1 CALLT 1 (SC): [2004] 121 CompCas 486 (SC): 2004 (115) ECR 738 a
(SC): 2004 (170) ELT 260 (S.C.): [2004 (3) JCR 175 (SC)]: 2005 - 2 - LW 29: 2004 (28)
PTC 585 (SC): [2004] Supp (2) SCR 586: 2004 (75) DRJ 109: 2004 (5) SCALE 772:
2004 (5) ALLMR (SC) 722 (Discussed) [p. 0143, para 63 e]
N.R. Dongre & Ors. v. Whirlpool Corp. & Anr. MANU/DE/0700/1995: AIR 1995
Delhi 300: (1996) ILR 1 Delhi 333: 1996 (16) PTC 476 (Del): 1995 (34) DRJ 109 b
(Discussed) [p. 0138, para 44 a]
Pankaj Goel v. Dabur India Limited, MANU/DE/2271/2008: 2008 (38) PTC 49 (Del)
(Affirmed) [p. 0136, para 38 h]
Rubaljit Singh v. M/s. Kanz Overseas and Anr. (DHC), CS (OS) No. 213/2009 decided
on 20th November, 2009 (Distinguished) [p. 0139, para 50 b]
c
S.P. Chengalvaraya Naidu v. Jagannath (Dead) by LRs. and Ors. MANU/SC/0192/
1994: AIR 1994 SC 853: II (1993) BC 546 (SC): 1994 CivilCC 131: JT 1993 (6) SC 331:
1994 - 1 - LW 21: 1994 (I) OLR (SC) 201: 1994 (1) UJ 1: 1994 (1) PLJR 39: 1994 (1)
BLJR 216: [1993] Supp 3 SCR 422: (1994) 1 SCC 1: 1993 (4) SCALE 277: 1994 (1)
APLJ 66: (1995) 109 (1) PLR 293 (Distinguished) [p. 0138, para 50 g]
Sakalain Meghjee v. B.M. House (India) Ltd. MANU/DE/2050/2001: 2002 (24) PTC d
207 (Del) (Discussed) [p. 0139, para 54 g]
Satish Khosla v. M/s. Eli Lilly Ranbaxy Ltd. & Anr. MANU/DE/0763/1998: 71 (1998)
DLT 1: 1998 I AD (Delhi) 927: 1 (1998) CLT 1: 1998 (44) DRJ 109: 1998 RLR 180
(Distinguished) [p. 0139, para 50 a]
Smithkline Beecham Consumer Healthcare GMBH and Ors. v. GD Rathore and Ors. MANU/ e
DE/2063/2002: 2002 (25) PTC 243 (Del) (Distinguished) [p. 0139, para 50 a]
The Gillette Company and Ors. v. A.K. Stationery and Ors. Suit No. 2732 of 1999 decided
on 3rd August, 2001 (Distinguished) [p. 0139, para 50 b]
Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Ors. (DHC), CS (OS) No. 2490/
2009 decided on 19th March, 2010 (Distinguished) [p. 0139, para 50 b]
Warner Bros. Entertainment Inc. v. Harinder Kohli & Ors. (DHC), CS (OS) No. 1607 of f
2008 decided on 22nd September, 2008 (Distinguished) [p. 0139, para 50 a]
Act/Rules/Orders
Code of Civil Procedure, 1908
Section 151 [p. 0127, para 1 c] g
Trade Marks Act, 1999
Section 2(1)(zg) [p. 0127, para 5 i]
Issues and Findings
Trademark — Infringement of Trademark — Grant of ad-interim injunction —
Whether suit filed for ad-interim injunction restraining Defendant from h
infringement of Plaintiff’s Trade mark/trade name Zara is sustainable —
Held, This Court observed that Defendants’ adoption of mark ZARA TAPAS BAR
and ZARA, Restaurant and Bar has been found to be adopted dishonestly and
fraudulently. Moreover explanation as to manner of adoption of name and that it
has a dictionary meaning was found to be not convincing. Further mark ZARA
(word) was being used prominently with very small words “TAPAS BAR” which i
indicates Defendants’ intention to ride on Plaintiff’s reputation as ZARA was a

2015] Industria De Diseno Textile SA v. Oriental Cuisines Pvt. Ltd. and Ors. 0127
(G.P. Mittal, J.)
well known mark even in year 2003 having its presence in over 44 countries and
a annual turnover of 3 million Euros. Hence it was concluded that Plaintiff has a good
prima facie case entitling it to protection of mark even in relation to dissimilar goods
and services. Further balance of convenience also lay in favour of Plaintiff in view of
fact that mark was not only well known worldwide but was also registered in India
in Class 25 in year 1993. Consequently Application for ad-interim injunction was
allowed.
b
JUDGMENT
G.P. Mittal, J.
I.A. No. 11760/ 2013 (O. XXXIX Rules 1 and 2 CPC)
1. By virtue of this application under Order XXXIX Rules 1 and 2 read with Section
c
151 of the Code of Civil Procedure, 1908 (CPC), the Plaintiff (Applicant) seeks ad
interim injunction restraining infringement of its Trade mark/trade name ZARA,
passing off, dilution of its Trade mark/trade name and delivery up against the
Defendants.
2. The case set up by the Plaintiff is that the Plaintiff is an internationally reputed
d company engaged in the manufacture, design, sale and distribution of fashion and
related lifestyle products in various classes of International Classification of Goods
and Services. In India, the Plaintiff carries out commercial operations through its
associate company, Inditex Trent Retail India Private Limited, a joint venture between
the Plaintiff and Trent Limited of well known Tata Group Company. It is the case of
the Plaintiff that the Plaintiff coined, conceived and adopted ZARA as its Trade
e mark in 1975 and opened first ZARA shop 38 years ago in A Coruna, Spain. The
domain name zara.com was registered by the Plaintiff on 29th May, 1997 and the
same has since been in continuous use of the Plaintiff.
3. It is averred that ZARA stores are located in some of the most privileged and
prominent locations in several major cities around the world including New York’s
5th Avenue, Paris’s Champs Elysees, London’s Regent Street and Tokyo’s Shiyuba
f
Shopping Centre. The Plaintiff had 1763 ZARA stores, 171 ZARA KIDS stores and
364 ZARA HOME stores in over 86 countries. The products bearing Plaintiff’s ZARA
marks are manufactured in various countries including India, which are then
exported to the Plaintiff at various locations. In India, garments and other articles
bearing Plaintiff’s ZARA mark have been specially manufactured since 1986-87 by
g Plaintiff’s Indian manufacturers.
4. The Plaintiff has been using its Trade mark ZARA and its derivatives like ZARA
KIDS, ZARA HOME, ZARA FOR MUM, ZARA MAN, ZARA WOMAN or TEXTURES
ZARA on a global scale. The Plaintiff had turnover of over 3310 million Euros in
2003 which has risen to 10,541 million Euros in the year 2012. In India, the total
sales of ZARA products in the very first year of operation was ` 120 crores which
h rose to over ` 384 crores (annually) within two years i.e. in 2012.
5. It is averred that ZARA Trade mark is one of its most valuable assets and the same
has featured in top 50 brands among 100 most valued Trade marks in the world as
per the Interbrand rankings, with a brand value exceeding US$ 9.4 billion. The
Plaintiff’s mark has thus, become a well known mark within the meaning of
i Section 2(1)(zg) of the Trade marks Act, 1999 (the Act) and thus, the Plaintiff is
entitled to protect its mark ZARA against identical or confusingly similar marks
even in respect of goods and services which are not same or similar to the goods and

services of the Plaintiff. It is averred that the Plaintiff has been vigilant in protecting
its ZARA marks and has been enforcing its Trade mark rights against all forms of a
infringement and dilution. In a number of oppositions filed by the Plaintiff against
Trade mark applications of various parties for the mark ZARA or other deceptively
similar marks, the Applicants have abandoned their applications. It is pleaded that
owing to extensive and continuous use of the mark in India since 1986-87 and
opening of commercial outlets in the beginning of 2010, the Plaintiff’s mark ZARA
b
has acquired tremendous reputation in India.
6. It is averred that in or around April, 2005, the Plaintiff first came across Defendant
No.1’s Trade mark application No. 1195357 for ZARA TAPAS BAR in Class 16,
advertised in Trade mark Journal 1327 (Suppl.) dated, 17th January, 2005 (which
was made available to the public on 8th April, 2005). The Plaintiff filed opposition
No. MAS- 202722 against the said advertised mark which is pending before the c
Trade mark Registry, Chennai. In the end of 2012 and beginning of 2013, the Plaintiff
came across other Trade mark applications filed by Defendant No.1 for registration
of ZARA TAPAS BAR which is in violation of the Plaintiff’s right to the globally
known registered Trade mark and brand name ZARA. The Plaintiff has filed
opposition against all the Trade mark applications comprising the expression ZARA
filed by Defendant No.1 which have not been advertised till the date of filing of the d
suit. It is averred that in February, 2011, the Plaintiff’s Indian Trade mark attorneys
received a letter dated, 24th February, 2011 from Defendant No.1’s Trade mark
attorneys, proposing settlement and co-existence of the marks ZARA and ZARA
TAPAS BAR. Defendant No.1’s attorneys put forth undertakings on behalf of their
clients pertaining to the mark ZARA TAPAS BAR as under:-
“(a) Not to claim any protection and use in Class 24 and 25 pertaining to e
textile and textile goods;
(b) to confine only to restaurant services and other allied and cognate goods
and services in relation to hospitality and provision of foods and drinks falling
under Clauses 16, 30, 32, 33 and 43; and
(c) to use it always in composite form.” f
7. The terms of settlement in the form proposed by Defendant No.1 were not acceptable
to the Plaintiff, the same were consequently rejected.
8. It is averred that the Defendants are using the Plaintiff’s Trade mark and brand
ZARA for their business with the generic extensions “TAPAS BAR” which is a type
of dining concept, or “TAPAS” which is the name given to appetizers or snacks in g
Spanish cuisine. It is pleaded that the independent expression ZARA in isolation
does not inherently provoke a Spanish feel, the expression has no meaning in Spanish
language and is neither a popular nor a common name in Spain. Thus, any Spanish
association of the expression ZARA is solely attributable to the popularity and
goodwill acquired by the Plaintiff worldwide, being a company originally of Spain.
Thus, by use of the name ZARA TAPAS BAR by the Defendants, there is strong h
likelihood of unwarranted association between the Plaintiff and the Defendants in
the minds of the existing and potential consumers. It is pleaded that adoption of the
mark ZARA together with Spanish expression and concept TAPAS BAR by the
Defendants is fraudulent and is solely to ride on the reputation and goodwill of the
Plaintiff’s brand name ZARA.
9. It is stated that the Defendants’ emphasis is on the use of the mark ZARA and the i
Defendants are misrepresenting to the public at large on social media like Facebook

(G.P. Mittal, J.)
and Twitter by addressing themselves as ZARA, ZARA CHENNAI, ZARA

a CATHEDRAL, ZARA KOLAKTA, ZARA AIRPORT, etc. to induce the public to visit
their establishment situated in Chennai and Kolkata. It is pleaded that the Defendants
indiscriminating use of the mark ZARA is irreparably damaging the reputation and
goodwill of the Plaintiff by tarnishing its most valuable ZARA mark. The Plaintiff
thus, seeks the following injunctions:-
b “(a) restraining Defendants by themselves, their partners, directors, employees,
agents and others acting on their behalf from offering any type of services,
manufacturing, marketing, selling and offering for sale, products and/or
restaurant or hospitality services or any other allied and cognate products
and/or services bearing the mark “ZARA”, “ZARA TAPAS BAR” and from
using the mark ZARA as a Trade mark, trade name, corporate name, domain
c name or in any other manner whatsoever which may cause infringement of
Plaintiff’s registered well known Trade mark ZARA;
(b) restraining Defendants by themselves, their partners, directors, employees,
agents and others acting on their behalf from manufacturing, marketing, selling
and offering for sale products, offering restaurant services or any allied or
cognate products/services bearing the mark “ZARA”, “ZARA TAPAS BAR”
d and from using the mark ZARA as a Trade mark, trade name, domain name or
in any other manner whatsoever which may cause confusion and likelihood
of association amounting to passing off their goods and services as that of
Plaintiffs;
(c) restraining Defendants by themselves, their partners, directors, employees,
agents and others acting on their behalf from using the mark ZARA on the
e website more specifically on www.zaratapasbar.in or on other social media
websites which may create an impression to the public at large that the said
mark ZARA is the internationally recognized mark from Spain, which is
seriously detrimental to the interest of Plaintiff and causes passing off on the
Internet; and
f (d) restraining Defendants by themselves, their partners, directors, employees,
agents and others acting on their behalf from using the mark ZARA in relation
to eating/dining establishment or bars/pubs or in any other way which causes
dilution of Plaintiff’s registered and well known Trade mark ZARA, which is
seriously detrimental to its distinctive character and repute.”
10. The Defendants have contested the suit and the application by way of filing the
g written statement and reply to the injunction application.
11. The Defendants have taken preliminary objections that the Plaintiff has
approached this Court with unclean hands. It has misrepresented and concealed
significant information from the Court. It is averred that there are multiple parties
in India and abroad co-existing with the use of mark ZARA or ZARA formative
h marks. The presence of multiple parties can be seen from the list of registrations
granted to third parties using ZARA which came to be shown listed in the Registrar
of Companies’ search report. The Plaintiff’s mark ZARA has itself been challenged
in various jurisdictions including India and Plaintiff’s home country EU which
fact has not been disclosed by the Plaintiff. It is averred that the Plaintiff entered
into India for the first time only in 2010. The Plaintiff has not shown any use or
i reputation or goodwill of its mark ZARA prior to 2002 in India or even in any part
of the world, when the Defendants established their restaurant with the mark
ZARA TAPAS BAR.
12. It is the case of the Defendants that Defendant No.1 is not using the mark ZARA
per se but using the mark earlier adopted as ZARA TAPAS BAR and later as ZARA, a
the Tapas Bar and Restaurant.
13. The Defendants have admitted that they wanted to settle the matter amicably
with the Plaintiff by offering to confine Defendant No.1 only to their own core classes
of activity within classes 30, 32 and 43, which remain unused by the Plaintiff. The
Plaintiff, however, has a tendency to monopolise the mark which is actually used by b
multiple parties in India and abroad.
14. In para 7 of the preliminary objections, the Defendants have given the details
and origin of the word ZARA and have denied that it is a coined or a conceived
mark of the Plaintiff. It is the case of the Defendants that all the applications except
the one in classes 25, 3 and 18 had been filed on proposed to be used basis by the
Plaintiff at least two months after the date of application of the Defendants. It is c
contended that there is no evidence whatsoever of any goodwill and reputation of
the Plaintiff’s credit and Plaintiff’s registration are totally irrelevant. In para 17 of
the preliminary objections, the Defendants have given the details of the third party
registration of the mark ZARA.
15. It is further averred that there is a major delay in filing of the suit by the Plaintiff d
which amounts to acquiescence by the Plaintiff to the Defendants’ use of the mark
ZARA. The Plaintiff ought to have known the Defendants’ use of the mark since the
year 2002 as it had obtained a bar licence by this name in the year 2002. It has given
certain advertisements as well since March 2003 onwards and the Trade mark
application filed on 28 th April, 2003 was published on 17th January, 2005. The
Defendants have challenged the jurisdiction of the Court to entertain the suit as well e
and have thus, prayed for dismissal of the application as well as the suit.
16. It may be noted that by an ex-parte ad interim order dated, 29th July, 2013, the
Defendants were restrained from using the mark ZARA as a Trade mark, trade
name, corporate name, domain name or in any other manner whatsoever.
Subsequently, on an application under Order XXXIX Rule 4 CPC by the Defendants,
the injunction order was modified and the Defendants were permitted to use the f
composite Trade mark ZARA TABAS BAR only till further orders. Paras 32 to 34 of
the order dated, 25th April, 2014 are extracted hereunder:-
“32. Hence, the Ex parte order was passed keeping in view the averments made
by the Plaintiff as elaborated in paras 21 and 22 of the plaint, namely that it
was only in March 2013 that the Plaintiff received evidence which show that g
Defendant No. 1 has started using the expression ZARA per se and not as part
of ZARA TAPAS BAR i.e. in the form of composite label. Same is the thrust of
the averment in para 22 of the plaint. Factually this appears incorrect inasmuch
as in its Affidavit filed on 14th January, 2008 before the Trade mark Registry of
Mr. Antonio Abril Abadin there are categorical averments made by the Plaintiff
that the Defendants are using the mark ZARA per se. As this averment was h
made in 2008, knowledge of use of this mark could not be attributed to be in
March 2013 as averred in para 21 of the plaint.
33. In view of the incorrect facts stated in the plaint based on which Ex parte
order dated, 29th July, 2013 was passed in IA No. 11760/2013, it would be in
the fitness of things and in the interest of justice that the Ex parte interim orders
passed by this Court on 29th July, 2013 are modified and the Defendants are i
permitted to use the composite Trade mark ZARA TAPAS BAR only till further

(G.P. Mittal, J.)
orders in IA No. 11760/2013. Keeping in view the facts of this case, the
a Defendants will not use the mark ZARA per se. The Defendants will continue
to be bound by the order dated, 29th July, 2013 pertaining to the use of the mark
“ZARA’ per se.
34. It is however, clarified that the present modification of order dated, 29th
July, 2013 is being made in view of the facts as narrated above and not on the
b merits of the matter. Nothing said herein would in any way affect the
contentions of the parties on the merits of the matter while arguing IA No.
11760/2013 which application the Plaintiff is free to press and seek all orders
and relief as permissible in law.”
17. I have heard Mr. Akhil Sibal, Advocate assisted by Mr. Sushant Singh and Mr.
Nikhil Chawla, Advocates and Mr. Neeraj Kishan Kaul, Senior Advocate assisted
c by Ms. Prachi Aggarwal, Advocate.
18. In order to decide this application, the following points fall for consideration
before this Court:-
(i) Whether there is any deceptive similarity between mark ZARA of the Plaintiff
and ZARA TAPAS BAR of the Defendants;
d (ii) Whether the adoption of the mark ZARA TAPAS BAR was dishonest or
fraudulent or it is an honest adoption and Defendant No.1 is entitled to
concurrent user of the mark;
(iii) Whether the mark ZARA is used by many entities and has become publici
juris;
(iv) Whether there is a great delay in filing the suit and whether it amounts to
e acquiescence on the part of the Plaintiff;
(v) Whether there is suppression/concealment of material facts so as to
disentitle the Plaintiff to the discretionary relief of injunction; and
(vi) Whether the Plaintiff’s mark ZARA is a well known Trade mark and had
trans-border reputation or in the alternative the Defendants are entitled to use
f the mark ZARA TAPAS BAR in relation to class 25 or for that matter hospitality
restaurant business co-extensive with the Plaintiff.
Similarity deceptive or otherwise between mark ‘zara’ and ‘zara tapas bar’
19. The case of the Plaintiff is that the Defendants are using the mark ZARA per se as
also as ZARA TAPAS BAR. The way the mark ZARA is being used by the Defendants,
g there is huge prominence of the word ZARA and it is sought to be conveyed as if the
Defendants own the Trade mark ZARA and have relation with the Plaintiff.
20. On the other hand, the case of the Defendants is that they are not using the mark
ZARA per se. They are merely using the mark ZARA TAPAS BAR or ZARA, the
Tapas Bar and Restaurant in relation to goods and services different from those of
the Plaintiff and thus, there is no similarity between the two marks.
h
21. Before answering the question posed, it shall be appropriate to refer to para 22 of
the plaint and the written statement. In Para 22, the Plaintiff alleged that the
Defendants were operating a website www.zaratapasbar.in wherein Defendant
No.1 is trying to project itself as a retail outlet offering Spain-styled products and
services under the name ZARA.
i 22. Images of few screen shots from the Facebook account of Defendant No.1 were
extracted in Para 22 which are reproduced hereunder:-


(G.P. Mittal, J.)
23. In the first screenshot on the left side, only the word ZARA is readable before the
a words TAPAS BAR. Similarly at the bottom, only the word ZARA is prominent
whereas the words the TAPAS BAR AND RESTAURANT are hardly readable.
Similarly, in the second screenshot on the right top, again the word ZARA has been
highlighted. In the middle screenshot, the Defendants advertise the complimentary
cocktail in the words “Do all that and more over complimentary cocktail at ZARA,
so don’t forget to drop in.”
b
24. On the second page (Page 31 of the Plaint) of the screenshot at the top, Defendant
No.1 describes itself happening every Monday at ZARA, offering one drink free for
one. It reads as “Buy one drink & get one free. Now, every Monday at Zara” In the
second middle and the bottom screen shots, again the restaurant is described as
ZARA.
c 25. It is therefore, evident that wherever the Defendants have used TAPAS BAR
along with ZARA or TAPAS BAR AND RESTAURANT or TAPAS, the Bar and
Restaurant, the word ZARA is almost ten times bigger than the other words used in
the advertisement/screenshots. At the same time, at so many other places, the words
BAR AND RESTAURANT have not been used at all with the word ZARA and the
word ZARA per se has been used. Thus, there is no manner of doubt that there is
d deceptive similarity between the mark ZARA of the Plaintiff and the mark ZARA
TAPAS BAR, the way it is being used by the Defendants.
Adoption of the mark ‘zara Tapas Bar’
26. The Plaintiff urges that adoption of the mark ZARA TAPAS BAR is dishonest
and fraudulent whereas the same is claimed to be honest adoption of the mark by
e the Defendants which is now being used for over a decade.
27. According to the Plaintiff, the Plaintiff coined, conceived and adopted ZARA as
its Trade mark in 1975 and the first ZARA shop was opened 38 years ago in A
Coruna, Spain. The domain name zara.com was registered by the Plaintiff on 29th
May, 1997. It is not in dispute that the Plaintiff used ZARA initially in Spain and
f then it opened its stores in various countries. In the year 2003, when the Defendants
claimed to have opened ZARA TAPAS BAR, the Plaintiff had already opened its
stores in 44 countries and the Plaintiff was having annual turnover of over 3 billion
Euros by that time.
28. Defendants on the other hand, have stated that the word ZARA is an Italian,
Portuguese and Spanish variation of the English, French and German name Sarah.
g The relevant averments in this regard from para 7 of the written statement read as
under:-
“7. ...The word ZARA also has a meaning in common Hindi parlance connoting
“some or little”. In Urdu, the word means dawn, morning and is a popular
and common Muslim feminine name. From Arabic roots, its meaning is
blossoming flower; splendor; dawn. In this context, the word ZARA can be
h
used in the Arabic, English, and Hebrew languages to connote ‘zahrah’ for
blossoming flower as ‘zahr’ meaning flower. The name is derived from the
Arabic ‘zahrah’ (blossoming flower), but it has sometimes also been used as a
form of Sarah. The Moorish influence in Spain perhaps evokes an association
of Arabic terms with Spanish culture thereby making ZARA a popular Spanish
i name. Historically there is an undeniable link between Spanish culture and
North African Islamic culture which unknowingly draws an association with
a name like ZARA. A copy of the news report that appeared in Economic

Times in August 2013 has been filed in the present proceedings that states that
anyone tracing the historical links between these regions cannot also fail to a
see the connection between the Arabic, Mediterranean and the Tapas that may
after all have come about in Southern Spain during its long Moorish period.
Infact, the name ZARAGOZA is the name of a province in Northern Spain
whose capital city is also called ZARAGOZA. Additionally, it is name of a
place in Columbia, Mexico, El Salvador, Phillipines all of which are Hispanic
b
countries. “Zorro” is also Spanish for “fox” and is also a popular fictional
character which was created in 1919. The character has been featured in
numerous books, films, television series, and other media. Zorro is the secret
identity of Don Diego de la Vega, a California nobleman and master living in
the Spanish colonial era. Therefore while ZARA TAPAS BAR provokes Spanish
feel, it does not signify in any respect an association with the retail and fashion c
business of the Plaintiffs. Internet extracts indicate that the word ZARA has
various connotations in different languages and in different cultures. In Islam,
the word ZARA refers to radiance or flower and has etymological origin from
the Biblical name Sarah, the daughter of Abraham (also referred to in Islam as
Ibrahim). The Biblical character Sara is cited as having been a very strong
swarthy woman of Indian ancestry, being a patron of gypsies. Internet extracts d
of meanings of the word ZARA in different languages and cultures are being
filed in the present proceedings.”
29. It is urged that Defendant No.1 adopted and used its mark in India in 2003 and
acquired tremendous distinctiveness within a very short span of time.
30. It is urged by the learned Counsel for the Plaintiff that the explanation given by
e
the Defendants for adoption of the mark is an afterthought in as much as earlier
while replying to a letter sent by the Plaintiff, the Defendants had stated that “ZARA
is a commonly used dictionary word in various languages especially Arabic, Urdu,
Hebrew and Hindi to name a few. The word Zara denotes a blooming flower and is
a widely used name for girls in many countries including the Arab world and east
Europe”. f
31. It is contended that initially there was not even a whisper that the word ZARA is
a Spanish word or a word of Spanish origin. The learned Counsel for the Plaintiff
has also referred to the press article filed by the Defendants which says “Thanks to
Mahadevan, who came across the concept in Paris, Chennai has India’s first Tapas
bar ZARA Tapas Bar (launched in March 2003) “.
g
32. Thus, it is urged that the mark ZARA or ‘ZARA, the Tapas Bar’ is fraudulently
adopted by Defendant No.1 to infringe the Plaintiff’s registered mark and to pass on
and to make people believe that somehow the goods and services offered by the
Defendants have some connection with the Plaintiff.
33. I have gone through the pleadings of the parties. It is too much to say that the
word ZARA is a dictionary word or that the word ZARA was adopted by the Plaintiff h
from the name of the city ZARAGOZA. In the press article itself (relied upon by the
Defendants), it has been stated that Defendant No.2 came across the concept in
Paris. Admittedly, there were 40 ZARA stores in Paris by the year 2003. The word
ZARA is neither generic nor descriptive nor a dictionary word (as far as Spain is
concerned). The Defendants have not given any plausible explanation for adoption
of the mark ZARA. Thus, in all probability, the mark ZARA TAPAS BAR was adopted i
by the Defendants from the mark ZARA of the Plaintiff. Stores by this name were

(G.P. Mittal, J.)
already opened in over 44 countries by the Plaintiff. In my view, it cannot be said to

a be an honest adoption entitling Defendant No.1 to its concurrent user. If the
Defendants did not want to ride on the Plaintiff’s reputation, they would have not
used the word ZARA prominently in the words ZARA TAPAS BAR or ZARA, the
Bar and Restaurant.
34. In this connection, a reference may be made to the judgment of this Court in M/s.
b Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr., AIR 1999 Delhi
19. In the said case, the Plaintiffs were owner of registered Trade mark Nataraj. The
Defendants also used the said Trade mark and got it registered with the same spelling
of the word having identical dancing figure of Natraj. It was held that adoption of
the mark was clearly fraudulent and in spite of the long delay, injunction was
granted. Of course, in the instant case there is difference with regard to the goods
c and services offered by the Plaintiff and the Defendants, yet, as discussed earlier,
the Defendants adopted the mark just to ride on the reputation of the globally
established mark ZARA.
Mark Zara Used By Many Entities
35. It is urged by the learned Senior Counsel for the Defendants that the mark ZARA
d is used by many entities and has, therefore, become publici juris. In support of his
contention, the learned Senior Counsel for the Defendants refers to the case of Hearst
Communications, Inc. v. Dinesh Varyani & Anr., ILR (2009) 4 Del. 799. In the said case,
the Plaintiff filed a suit for injunction and passing off of their magazine Cosmopolitan
against Defendants publishing their magazine Cosmowoman. In the said case, it
was held that the word Cosmo is a dictionary word and is also publici juris. A
e common English word cannot be made the basis for passing off action to claim
monopoly rights unless right to exclusivity is established due to long and durable
association of the word with the Plaintiff.
36. The Plaintiff has filed a long list of cases where the Plaintiff’s mark ZARA was
protected in Hungary, European Union, Japan, Turkey, Czech Republic, Portugal,
Uruguay, Spain and Colombia.
f
37. The Defendants on the other hand, relied on third party registrations comprising
the word ZARA. It is very unfortunate that the words HAZARA KEWDA, ZARATOR,
LOZAR-A, etc. are sought to be claimed similar to the word ZARA by the Defendants.
The Defendants have given a list of 46 registrations alleged to be containing the
mark ZARA which is misconceived. Falsity of the Defendants’ claim can be
g demonstrated by extracting the alleged registered marks similar to ZARA from para
17 of the written statement hereunder:-
S. No. Mark Application No. Class

1. HAZARA KEWDA 1206797 3
2. ZARATOR 773771 5
h
3. LOZAR-A 1062760 5
4. ZARASA 1140628 5
5. BANZARA (DEVICE) 1314899 5
6. ZARAL (LABEL) 1169367 6
7. ZARAPKAR 304719 7
i 8. GUZARA 345498 7
9. ZARAN 204352 9

10. BANZARA 754381 9 a

11. NAZARA GAMES CLUB 1849442 9
12. ZARAFA 1776312 9
13. ZARA NACHKE DIKHA 1716814(99) 9
14. ZERA 1992391 9
15. ZOLTA ZARANG 1092887 11
16. NAZARA 253530 12 b
17. AMIZARA 1068031 14
18. TIZARA 669817 16
19. BAZAR AAZ (LABEL) 1283288 99 (16)
20. HAZARA FURNITURE HOUSE 1498889 20
21. GRAVIERA SUITING ANDAAZ ZARA
HAT KE! WITH LABEL 1455437 24
c
22. ZIAARA 266592 24
23. ZIAARA 276062 24
24. ZOHRA 411088 24
25. BANZARA 523791 25
26. BANZARA 558544 25
d
27. AZZARA (LABEL) 1043189 25
28. GRAVIERA SUJITING ANDAAZ ZARA
HAT KE! WITH LABEL 1455441 25
29. SILLOL HAZARAS 302197 29
30. ZARASA 530122 29
31. NAZARANA 519818 30 e
32. NAZARANA 522130 30
33. ZARA SI CHAI ASRA DIKHAYE (DEVICE) 1005147 30
34. ZARANA 1100347 30
35. PASTAZARA (DEVICE OF LADY) 1314745 30
36. NAZARANA 930397 30
37. ALCAZAR A20 VODKA (LABEL) 1314104 33 f
38. VEER ZARA 1365576 34
39. NAZARAT MANZAR 1692528 35
40. BAZAR AAZ (LABEL) 1283288 99(41)
41. BANZARA LABEL, DEVICE 1314038 42
42. PASTA ZARA WITH DEVICE 1314729 42
43. ZARALIAH Herbal Extracts (DEVICE) 1394532 42 g
44. NAZARA (LABEL) 1408569 42
45. ZARA HATKE (LABEL) 1577349 42
46. NAZARANI EXPRESS 1601564 42
38. In the case of Pankaj Goel v. Dabur India Limited1 (2008) 38 PTC 49 (Del.) DB, it was h
held that the Plaintiff is not expected to sue all types of infringers who may not be
affecting his business. So-called concurrent use, if any, cannot be a ground to refuse
interim injunction.
i
1 Ed.: MANU/DE/2271/2008: 2008 (38) PTC 49 (Del)

(G.P. Mittal, J.)
39. The Defendants have failed to show that the mark ZARA is used by a large
a number of persons, yet even if it is used by any other person, it will not disentitle the
Plaintiff to seek relief against the Defendants if it is otherwise entitled to the same.
Delay and Acquiescence
40. It is urged by the learned Senior Counsel for the Defendants that the Defendants
entered into Restaurant and Bar business in India several years before the Plaintiff
b even contemplated entering into the Indian market. There were various news papers,
articles, advertisements and widespread write-ups in the press from March, 2003.
The Defendants obtained a bar licence in the name of ZARA TAPAS BAR in the year
2002. Defendant No.1’s first Trade mark application under No. 1195357 was
published in Journal No. 1327 (Suppl. III) dated, 17th January, 2005. On 19th December,
2007, Defendant No.1 filed its Affidavit in support of its application and the Plaintiff
c also filed an opposition to the registration. It is thus, contended by the learned
Senior Counsel for the Defendants that the Plaintiff chose to wait for 81/2 years
from 17th January, 2005 to 29th July, 2013 to file the instant suit. On account of long
delay, there is acquiescence on the part of the Plaintiff. The Plaintiff is, therefore,
disentitled to the relief of ad interim injunction. In support of his contention, the
learned Counsel for the Defendants have referred to the reports in Honda Motor
d Company Ltd. v. Kewal Bros. & Anr. 2 , (2002), 25 PTC 763 (Cal.) and Hearst
Communications, Inc. v. Dinesh Varyani & Anr., ILR (2009) 4 Del. 799.
41. It is not in dispute that as soon as Defendant No.1’s first Trade mark application
was published by the Trade mark Journal, Chennai in the year 2007, the Plaintiff
filed an opposition to the registration. It is also borne out from the record that in the
e Affidavit dated, 14 th January, 2008 of Mr. Antonio Abril Abadin, there was an
admission of the Defendants doing restaurant business in the name of ZARA TAPAS
BAR. At the same time, simply because the Defendants obtained a bar licence in the
name of ZARA TAPAS BAR in the year 2002 or that they started their restaurant and
hospitality business in the year 2003, the Plaintiff’s knowledge cannot be attributed
to that date. Admittedly, the instant suit was filed in the year 2013. The parties were
f in correspondence for amicable resolution of the dispute with regard to use of the
name ZARA since at least February, 2011. In my view, once the Plaintiff had filed
opposition to the Defendants’ application for registration, this delay of three years
will neither amount to acquiescence nor this delay will disentitle the Plaintiff to the
relief of ad interim injunction if it is able to make out a case on merits.
42. In Honda Motor Company Ltd. v. Kewal Bros. & Anr.3 (2002) 25 PTC 763 (Cal.) relied
g
upon on behalf of the Defendants, there was a delay of 28 years in taking action and
there was no evidence on trans-border reputation in the year 1970 when the mark
was adopted. Thus, the injunction was refused on the ground of delay of 28 years as
also on the plea that the adoption of the mark by the Defendants was bona fide.
43. Similarly, in Hearst Communications, Inc. v. Dinesh Varyani & Anr., ILR (2009) 4
h Del. 799, there was not only a delay of four years in taking action by the Plaintiff, but
there was also no evidence of trans- border reputation. In the instant case, I have
already held that adoption of the mark ZARA with the words TAPAS BAR by the
Defendants was not bona fide but was fraudulent.
i
2 Ed.: MANU/WB/0353/1999
3 Ed.: MANU/WB/0353/1999: 2002 (25) PTC 763 (Cal)

44. In N.R. Dongre & Ors. v. Whirlpool Corp. & Anr.4, AIR 1995 Delhi 300 which was
upheld by the Supreme Court in (1996) 5 SCC 714, it was held that delay without a
prejudice is not a good defence. Mere delay does not amount to acquiescence. In the
absence of satisfactory explanation given by the Appellant for adopting the mark
Whirlpool (although it was registered by the Appellant in India under this name),
the order of injunction granted in favour of the Plaintiff was upheld.
45. In Midas Hygiene Industries (Pvt.) Ltd. v. Sudhir Bhatia and Ors,5. (2004) 3 SCC 90; b
M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr., AIR 1999
Del. 19; Alfred Dunhill Ltd. v. Kartar Singh Makkar & Ors.6 (1999) II AD (Del) 789 and
in Chanel Ltd. v. Sunder Chemicals Agarbati Works (Pvt.) Ltd. and Anr.7, (2003) 26 PTC
52 (Del.), it was held that mere delay which is not coupled with acquiescence is of no
consequence and injunction cannot be refused merely on the ground of delay.
46. Thus, the Plaintiff cannot be denied the relief of interim injunction if it is otherwise c
entitled to the same.
Suppression/Concealment of Material Facts
47. It is urged by the learned Senior Counsel for the Defendants that the Plaintiff’s
averment about its knowledge of Defendant No.1 carrying on business in the name
of ZARA TAPAS BAR only on the basis of the letter dated, 25th February, 2011 is d
contradictory to the averments made in the Affidavit dated, 14th January, 2008 of Mr.
Antonio Abril Abadin. It is urged that part disclosure of the proceedings without
relevant details tantamounts to material suppression and concealment disentitling
the Plaintiff to the discretionary relief of interim or permanent injunction.
48. I have already discussed this argument while dealing with the question of delay e
and acquiescence. It may be noted that a party seeking ex- parte ad interim injunction
is expected to make full disclosure but when the matter is heard on merits, both the
parties are before the Court. The mis-statement of some facts unless it is mala fide will
not disentitle the Plaintiff to the relief of injunction.
49. It is true that statement with regard to the Defendants’ activities coming to the
notice of the Plaintiff for the first time in 2011 is not correct but at the same time, there f
is a mention of an Affidavit being filed in opposition to the Defendant’s application
for registration in the year 2008.
50. I have already held above that delay of a few years in filing the suit is not very
material in the circumstances of this case. I think that the Plaintiff’s statement that it
came to know about the Defendants’ activities sometime in the year 2011 cannot be
g
said to be a statement to non-suit the Plaintiff. I have considered the judgments in
S.P. Chengalvaraya Naidu v. Jagannath (Dead) by LRs. and Ors. 8, (1994) 1 SCC 1;
4 Ed.: MANU/DE/0700/1995: (1996) ILR 1 Delhi 333: 1996 (16) PTC 476 (Del): 1995 (34)
DRJ 109 h
5 Ed.: MANU/SC/0186/2004: 2004 (28) PTC 121 (SC): 2004 (2) PLJR 141: 2004 (73) DRJ
647: 2004 (2) SCALE 231
6 Ed.: MANU/DE/0639/1999: 1999 (19) PTC 294 (Del)
7 Ed.: MANU/DE/2077/2002: 2003 (26) PTC 52 (Del)
8 Ed.: MANU/SC/0192/1994: AIR 1994 SC 853: II (1993) BC 546 (SC): 1994 CivilCC 131:
JT 1993 (6) SC 331: 1994 - 1 - LW 21: 1994 (I) OLR (SC) 201: 1994 (1) UJ 1: 1994 (1) PLJR i
39: 1994 (1) BLJR 216: [1993] Supp 3 SCR 422: (1994) 1 SCC 1: 1993 (4) SCALE 277: 1994
(1) APLJ 66: (1995) 109 (1) PLR 293: 1994 GLH (1) 81

(G.P. Mittal, J.)
Satish Khosla v. M/s. Eli Lilly Ranbaxy Ltd. & Anr.9, 71 (1998) DLT 1; Kishore Samrite v.
a State of U.P. and Ors.10, (2013) 2 SCC 398; The Gillette Company and Ors. v. A.K. Stationery
and Ors., Suit No. 2732 of 1999 decided on 3rd August, 2001; Warner Bros. Entertainment
Inc. v. Harinder Kohli & Ors. (DHC), CS (OS) No. 1607 of 2008 decided on 22nd
September, 2008; Smithkline Beecham Consumer Healthcare GMBH and Ors. v. GD Rathore
and Ors.11, (2002) 25 PTC 243 (Delhi); Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd.12
(2006) 32 PTC 307 (Del.); Rubaljit Singh v. M/s. Kanz Overseas and Anr. (DHC), CS (OS)
b
No. 213/2009 decided on 20th November, 2009; Eveready Industries India Ltd. v. Sanjay
Chadha & Anr.13, (2011) 45 PTC 22 (Del.) and Toyota Jidosha Kabushiki Kaisha v.
Deepak Mangal & Ors. (DHC), CS (OS) No. 2490/2009 decided on 19th March, 2010
relied upon by the learned Senior Counsel for the Defendants. The same are not
applicable to the facts of the instant case.
c Whether Zara Has Trans-Border Reputation
51. On the basis of the averments made in the plaint and the documents placed on
record, it is prima facie established that the mark ZARA was adopted by the Plaintiff
in the year 1975; that the domain name zara.com was registered by the Plaintiff in
the year 1997; that the Plaintiff had opened stores in over 44 countries by the year
2003 and had annual turnover of 3 billion Euros by the year 2003 when the Defendants
d claimed to have opened a Bar and Restaurant under the name of ZARA TAPAS
BAR. It is also established that by the year 2013, the Plaintiff had 1763 ZARA stores,
171 ZARA KIDS stores and 364 ZARA HOME STORES. It is also established that
the Plaintiff got registered the mark ZARA (word) on proposed to be used basis in
India in Class 25 in the year 1993.
e 52. It is urged by the learned Senior Counsel for the Defendants that since the
Defendants have prima facie established opening of Tapas Bar and Restaurant with
the name of ZARA TAPAS BAR in the year 2003, Plaintiff’s ZARA’s reputation and
goodwill on the date of filing of the suit is irrelevant and its trans-border reputation
as on the date of adoption of the name ZARA TAPAS BAR by the Defendants in the
year 2003 will be required to be proved by Plaintiff.
f 53. In Smithkline Beecham Consumer Healthcare GMBH & Ors. v. GD Rathore & Ors.14,
(2002) 25 PTC 243 (Delhi) which related to the infringement and passing off of
design of toothbrushes, it was held that in the absence of any goodwill or reputation,
it cannot be presumed that there is any cross-border reputation. It was held that
mere publication in dental journals is not efficient evidence of reputation as such
journals only provide information to a specific class of people.
g
54. Similarly, in Sakalain Meghjee v. B.M. House (India) Ltd.15, (2002) 24 PTC 207
(Delhi), it was held by the Delhi High Court that in the absence of any reliable and
credible evidence, it cannot be said that the Plaintiff has acquired any trans-border
goodwill or reputation in India.
h 9 Ed.: MANU/DE/0763/1998: 1998 I AD (Delhi) 927: 1 (1998) CLT 1: 1998 (44) DRJ 109:
1998 RLR 180
10 Ed.: MANU/SC/0892/2012: 2013 (1) ALT (Cri) 416: JT 2012 (10) SC 393: 2013 (1) UC
231: 2013 V AD (S.C.) 594: 2012 (10) SCALE 330: 2013 (1) ALJ 230
11 Ed.: MANU/DE/2063/2002
12 Ed.: MANU/DE/0715/2006: 2006 (32) PTC 307 (Del): 128 (2006) DLT 81
i 13 Ed.: MANU/DE/3507/2010: 2011 I AD (Delhi) 428: 179 (2011) DLT 355: MIPR 2011 (1) 34
14 Ed.: MANU/DE/2063/2002
15 Ed.: MANU/DE/2050/2001: 2002 (24) PTC 207 (Del)

55. Also, in Hearst Communications, Inc. v. Dinesh Varyani & Anr., ILR (2009) 4 Del.
799, the Delhi High Court held that injunction should be granted only when a
reputation is established in India or there is evidence of trans-border reputation. To
the same effect are the observations of the Delhi High Court in Allianz Aktiengesells
Chaft Holding v. Allianz Capital and Management Services Limited16, (2002) 24PTC 177
(Del.).
56. The Plaintiff has placed on record host of documents to show that ZARA was a b
well known mark and had trans-border reputation. I shall confine myself to such
documents upto the year 2003 and prior thereto as reputation and goodwill post
2003 may not be of much consequence as the Defendants are prima facie shown to
have started their ZARA TAPAS BAR AND RESTAURANT in the year 2003.
57. There is an article ‘ZARA, a Spanish Success Story’ of June 15, 2001 by CNN.com
Europe/Business. It states that ZARA is possibly the most innovative and c
devastating retailer in the world. It talks about ZARA’s least expenses on
advertisement. It talks about the shoppers’ addiction to ZARA brand being aware of
the new stocks coming up every week and the customers also having direct input
into what the shops sell as their feedback is sent back to the designers too. The
portion regarding the Plaintiff’s being free from advertisements reads as:-
d
“No advertising
The other trend-bucking aspect of the company’s business model is its
approach to advertising.
Fashion retails spend on average 3.5% of revenue on advertising their products,
while Zara’s parent company Inditex spends just 0.3%.
Have you ever seen a Zara commercial on a billboard or on TV? e
The company’s founder, Amancio Ortega, believes advertising is a pointless
distraction. Once when a famous Spanish actress asked to do a photo shoot in
one of his shops, Ortega said no and scolded the newly appointed executive
who suggested it would be good for the firm. “You haven’t got the idea yet
have you,” he said.
f
The company believes that its shop windows, the contents of which are also
decided in La Coruna, are all the advertising it needs.”
58. There is an article ‘The reign of Spain’ dated, 28th October, 2002 in The Guardian
on the site www.theguardian.com. The article says, “Zara doesn’t advertise its clothes
- it doesn’t have to. Word of mouth alone has made its Spanish owner a billionaire.”
g
59. The article highlights that although the people are not aware of the ZARA
headquarters but everyone knows that brand. It further highlighted that in the year
2002, ZARA had reached 44th country, i.e. Russia. Two of its paragraphs read as:-
“Many in the industry couldn’t tell you where Zara has its headquarters
(Arteixo-La Coruna is hardly fashion central, after all), though everyone knows
the brand. There are no press offices outside Spain, and even the h
communications department in Arteixo does anything but. The company
doesn’t lend clothing samples for editorial fashion shoots. It does no advertising
(marketing accounts for 0.4% to Zara’s total spend).
i
16 Ed.: MANU/DE/2049/2001: 2002 (24) PTC 177 (Del)

(G.P. Mittal, J.)
Yesterday, Zara HQ revealed that it had secured its first premises in Russia -
a the 44th country to get a taste of its cut-price chic. Two weeks ago, Zara’s
largest European store - a 3,000 sq m temple to consumption - opened on the
corner of Oxford Street and Bond Street, its location rather conveniently
summing up Zara’s knack for offering high-style clothes at high-street prices.
In typical Ortega fashion, until it opened on Friday morning, the building was
completely concealed beneath hoardings with no indication of who was about
b
to launch themselves into the Oxford Street melee. Rumours abounded. By the
time the store was ready, the Zara faithful had spread the word.”
60. Then, there are two articles by an Indian Devangshu Dutta by the name ‘Retail @
the Speed of Fashion’ on the site www.thirdeyesight.in in the years 2002 and 2003.
They talk about ZARA keeping up with fashion, its profit, control and production.
c Four critical information-related areas which the author concluded were given in a
chart as under:-
61. The article gave a timeline since 1975 when ZARA began its activity with the
h opening of a store in A Coruna (Spain) to 2001, when Inditex went public and was
listed on the Spanish Stock market. The article gave the timeline as under:-
“Timeline
1975
ZARA begins its activity with the opening in A Coruna (Spain) of its first
store, although the origins of the Group date back to 1963, the year in which
i Amancio Ortega Gaona, Chairman and founder, begins his business activity.

1976
a
GOASM is founded by the owner of the ZARA stores and continues with the
opening of the first stores in Spain.
1985
The creation of INDITEX as head of the corporate group.
1988
The opening of the first ZARA store outside Spain occurs in December, 1988 in b
Oporto (Portugal).
1989-1990
The United States and France are the next markets in which the Group begins
its activity with the opening of outlets in New York (1989) and Paris (1990).
1991 c
The birth of the PULL&BEAR chain and the purchase of 65 per cent of the
MASSIMO DUTTI Group.
1992-1994
INDTEX continues to open new international markets: Mexico in 1992, Greece
in 1993 and Belgium and Sweden in 1994. d
1995
INDITEX acquires the whole of the share capital of MASSIMO DUTTI. This
year also sees the opening of the first store of the Group in Malta and in the
following year in Cyprus.
1997
e
Norway and Israel join the list of countries in which INDITEX is present.
1998
The BERSHKA chain, targeting the younger female market, commences its
activity in a year which also sees the opening of stores in new countries;
Argentina, Japan, United Kingdom, Venezuela, Lebanon, United Arab Emirates,
Kuwait and Turkey. f
1999
The acquisition of STRADIVARIUS makes it the fifth chain of the Group and
stores are also opened in new countries; the Netherlands, Germany, Poland,
Saudi Arabia, Bahrain, Canada, Brazil, Chile and Uruguay.
2000 g
The opening of stores in four new countries takes place in 2000:
Austria, Denmark, Qatar and Andorra. INDITEX installs its headquarters in a
new building located in Arteixo (A Coruna, Spain).
2001
On 23rd May 2001 Inditex goes public and is listed on the Spanish Stock
Market. During this year the group begins its activity in the following markets:
h
Puerto Rico, Jordan, Ireland, Iceland, Luxemburg, Czech Republic and Italy.
Source: Company’s Website.”
62. In N.R. Dongre & Ors. v. Whirlpool Corp. & Anr.17, AIR 1995 Delhi 300, a Division
Bench of this Court held that awareness of a Trade mark in respect of goods of a
i
17 Ed.: MANU/DE/0700/1995: (1996) ILR 1 Delhi 333: 1996 (16) PTC 476 (Del): 1995 (34)
DRJ 109

(G.P. Mittal, J.)
trader is not necessarily restricted only to the people of the country where such
a goods are freely available but the knowledge and awareness reaches even shores of
those countries where the goods are not available. In para 15, the Division Bench
held as under:-
“15. The knowledge and awareness of a Trade mark in respect of the goods of
a trader is not necessarily restricted only to the people of the country where
b such goods are freely available but the knowledge. & awareness of the same
reaches even the shores of those countries where the goods have not been
marketed. When a product is launched and hits the market in one country, the
cognizance of the same is also taken by the people in other countries almost at
the same time by getting acquainted with it through advertisements in
newspapers, magazines, television, video films, cinema etc. even though there
c may not be availability of the product in those countries because of import
restrictions or other factors. In today’s world it cannot be said that a product
and the Trade mark under which it is sold abroad, does not have a reputation
or goodwill in countries where it is not available. The knowledge and awareness
of it and its critical evaluation & appraisal travels beyond the confines of the,
geographical area in which it is sold. This has been made possible by
d development of communication systems which transmit & disseminate the
information as soon as it is sent or beamed from one place to another. Satellite
Television is a major contributor of the information explosion. Dissemination
of knowledge of a Trade mark in respect of a product through advertisement in
media amounts to use of the Trade mark whether or not the advertisement is
coupled with the actual existence of the product in the market.”
e 63. In Milmet Oftho Industries & Ors. v. Allergan Inc.18, (2004) 12 SCC 624, it was held
as under:-
8. ...It must also be remembered that nowadays goods are widely advertised in
newspapers, periodicals, magazines and other media which is available in
the country. This results in a product acquiring a worldwide reputation. Thus,
f if a mark in respect of a drug is associated with the Respondents worldwide it
would lead to an anomalous situation if an identical mark in respect of a
similar drug is allowed to be sold in India. However, one note of caution must
be expressed. Multinational corporations, which have no intention of coming
to India or introducing their product in India should not be allowed to throttle
an Indian company by not permitting it to sell a product in India, if the Indian
g company has genuinely adopted the mark and developed the product and is
first in the market. Thus the ultimate test should be, who is first in the market.
9. In the present case, the marks are the same. They are in respect of
pharmaceutical products. The mere fact that the Respondents have not been
using the mark in India would be irrelevant if they were first in the world
market. The Division Bench had relied upon material which prima facie shows
h that the Respondents’ product was advertised before the Appellants entered
the field. On the basis of that material the Division Bench has concluded that
the Respondents were first to adopt the mark. If that be so, then no fault can be
found with the conclusion drawn by the Division Bench.”
18 Ed.: MANU/SC/0512/2004: (2005) 1 CALLT 1 (SC): [2004] 121 CompCas 486 (SC):
i 2004 (115) ECR 738 (SC): 2004 (170) ELT 260 (S.C.): [2004 (3) JCR 175 (SC)]: 2005 - 2 - LW
29: 2004 (28) PTC 585 (SC): [2004] Supp (2) SCR 586: 2004 (75) DRJ 109: 2004 (5) SCALE
772: 2004 (5) ALLMR (SC) 722

64. In the instant case, although there was no ZARA store in India opened prior to
2010 but the mark ZARA (word) was registered in Class 25 since 1993. The Plaintiff a
has placed on record a number of documents to show that it was getting the
fabrication done from various exporters in India. Some of the documents, particularly
at pages 219, 259, 260, 262, 263 and 266 of the Plaintiff Documents reveal that the
clothes with mark ZARA were being got fabricated in India by Inditex.
65. We are living in the 21st century. At least since the beginning of this century, b
there is widespread dissemination of information through the internet and television.
ZARA was catering to the middle class and higher middle class. Consumers in
India cannot be unaware of the Plaintiff’s company and its product.
66. To sum up, the Defendants’ adoption of the mark ZARA TAPAS BAR and ZARA,
the Restaurant and Bar has been found to be adopted dishonestly and fraudulently.
The explanation as to the manner of adoption of the name and that it has a dictionary c
meaning is found to be not convincing. The mark ZARA (word) is being used
prominently with very small words “TAPAS BAR” which indicates the Defendants’
intention to ride on the Plaintiff’s reputation as ZARA was a well known mark even
in the year 2003 having its presence in over 44 countries and annual turnover of 3
million Euros. Thus, the Plaintiff, in my considered opinion, has a good prima facie
case entitling it to protection of the mark even in relation to dissimilar goods and
d
services. The balance of convenience also lies in favour of the Plaintiff in view of the
fact that the mark was not only well known worldwide but was also registered in
India in Class 25 in the year 1993.
67. All the more, the Plaintiff filed an Affidavit in opposition to the Defendants’
application for registration immediately on publication of the application. I am e
satisfied that the Plaintiff shall suffer irreparable loss and injury in case its mark is
not protected and the Defendants are permitted to carry on their business with the
name ZARA TAPAS BAR or ZARA, the Tapas Bar and Restaurant even in relation
to the hotel and hospitality business. Accordingly, I grant ad interim injunction in
terms of prayer clauses (a) to (d) of the application for injunction, which have been
earlier extracted in para 9 of this order. f
68. The application is allowed in above terms.
CS (OS) No. 1472/ 2013
69. List before the Joint Registrar for admission/denial of documents on 6th July,
2015.
g

2015] 0145
MIPR 2015 (2) 0145*

a
SRF Foundation and Ors.

v.
Ram Education Trust
b
I.A. NO. 12216/2014 IN CS (OS) NO. 1980/2014
Coram
Manmohan Singh, J.
c Counsel
For Appellant/Petitioner/Plaintiff: Anuradha Salhotra and Sumit Wadhwa, Advs.
For Respondents/Defendant: N.K. Anand, Vaishali Mittal and Siddhant Chamola, Advs.
Authority referred
d Phipson in his Law of Evidence (1963 Edition, Para 678) [p. 0165, para 41 c]
Kerly (Law of Trade marks and Trade Names, XII Edn., para 16.49 [p. 0169, para 55 c]
Salmond & Heuston in Law of Torts (20th Edn., at p. 395) [p. 0170, para 56 a]
Christopher Wadlow in Law of Passing Off (1995 Edn., at p. 3.06) [p. 0170, para 56 e]
e American Cyanamid v. Ethican (interlocutory) 1975 RPC 513 (at 541, 542)
[p. 0175, para 72 f]
De Cordova v. Vick Chemical Co. (1951) 68 RPC 103, 105, [p. 0169, para 28 d]
Saville Perfumery Ld. v. June Perfect Ld. (1941) 58 RPC 147 [p. 0160, para 28 e]
Cases referred
f
A.C. Jose v. Sivan Pillai & Ors. MANU/SC/0341/1984: [1984] 3 SCR 74: AIR 1984 SC
921: 1984 (16) UJ 558: (1984) 2 SCC 656: (Discussed) [p. 0165, para 43 g]
Ayurveda and Sidhha & others v. Dr. K. Santhakumari MANU/SC/0331/2001: (2001)
5 SCC 60: AIR 2001 SC 2306: 2001 LabIC 2073: 2001 (4) SCALE 9: (2001) SCC (LS)
722: [2001] 3 SCR 519 (Mentioned) [p. 0166, para 44 b]
g B.K. Engineering Co. v. Ubhi Enterprises, MANU/DE/0404/1984: 1985 (5) PTC 1
(Del): AIR 1985 Delhi 210: (1985) ILR 1 Delhi 525: 1984 (4) PTC 217 (Del): 1986 (6)
PTC 291 (Del): 27 (1985) DLT 120 (Discussed) [p. 0170, para 58 e]
Bagla & Co. v. Bagla Cosmetics, MANU/DE/1625/2000: 2000 (20) PTC 355 (Del)
(Distinguished) [p. 0172, para 62 a]
h Bajaj Electricals Limited v. Metal & Allied Products and Anr. MANU/MH/0333/1988:
AIR 1988 Bom 167: 1988 (8) PTC 133 (Bom) (Mentioned) [p. 0171, para 61 g]
Century Traders v. Roshan Lal Duggar & Co. MANU/DE/0153/1977: AIR 1978 Delhi
250: (1977) ILR 2 Delhi 709: 15 (1979) DLT 269 (Discussed) [p. 0163, para 33 c]
Dalpat Kumar v. Prahlad Singh MANU/SC/0715/1991: AIR 1993 SC 276: 1993
CivilCC 507: JT 1991 (6) SC 502: (1992) 1 SCC 719: 1991 (2) SCALE 1431: 1992 RD
i 210: 1993 (1) APLJ 25: 1991 RD Supp 462 (Discussed) [p. 0175, para 73 h]
* MANU/DE/1529/2015

Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Limited, MANU/DE/0658/

2004: 2004 (29) PTC 435 (Del): [2005] 128 CompCas 42 (Delhi): 2004 (76) DRJ 616 a
(Discussed) [p. 0162, para 32 b]
Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. MANU/DE/0715/2006: 2006 (32) PTC
307 (Del): 128 (2006) DLT 81 (Distinguished) [p. 0172, para 62 b]
Goenka Institute of Education & Research v. Anjani Kumar Goenka & Ors. MANU/DE/
2229/2009: 2009 (40) PTC 393 (Del): AIR 2009 Delhi 139: (2009) ILR 6 Delhi 415 b
(Distinguished) [p. 0172, para 62 b]
Gulabchand v. Bhaiyalal, MANU/NA/0093/1929: AIR 1929 Nag 343 (Discussed)
[p. 0165, para 43 f]
Jaggi Ayurvedic Pharmacy v. Jaggi Ayurvedic Research Foundation MANU/DE/2933/
2009: 2010 (42) PTC 769 (Del.) (Distinguished) [p. 0172, para 62 a] c
Jay Engineering Works Ltd. v. Chinar Trust and Anr. MANU/CP/0001/2005: 2005 (31)
PTC 639 (Distinguished) [p. 0172, para 62 b]
Laxmikant V. Patel v. Chetanbhat Shah & Anr. MANU/SC/0763/2001: (2002) 3 SCC 65:
AIR 2002 SC 275: 2002 (1) ALD 45 (SC): [2002] 110 CompCas 518 (SC): (2002) 2 GLR
69: [2002 (1) JCR 293 (SC)]: JT 2001 (10) SC 285: 2002 (24) PTC 1 (SC): RLW 2002 (1)
SC 129: 2002 (1) UJ 379: 2001 (8) SCALE 350 (Discussed) [p. 0169, para 55 b] d
M/s. Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and Others, MANU/SC/
0472/1995: AIR 1995 SC 2372: 1995 (2) ARBLR 249 (SC): [1995] 84 CompCas 618
(SC): JT 1995 (6) SC 3: (1996) 1 MLJ 15 (SC): 1996 (16) PTC 89 (SC): 1995 (2) UJ 698:
[1995] Supp 2 SCR 514: (1995) 5 SCC 545: 1995 (4) SCALE 635: 1995 GLH (2) 594
(Discussed) [p. 0176, para 74 g] e
M/s. K.G. Khosla Compressors Ltd. and Ors. v. Khosla Extrakting Ltd. and Ors. MANU/
DE/0219/1985: 1986 (6) PTC 211 (Del): AIR 1986 Delhi 181: (1985) ILR 2 Delhi
416 (Discussed) [p. 0171, para 61 f]
M/s. National Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited
AIR 1972 SC 1359, 1362 (Mentioned) [p. 0160, para 28 e]
M/s. National Chemicals and Colour Co. and others v. Reckitt and Colman of India Limited f
and Another MANU/MH/0016/1991: AIR 1991 Bom 76: 1991 (11) PTC 217 (Bom):
1990 (3) BomCR 379 (Mentioned) [p. 0160, para 28 e]
M/s. Virendra Dresses v. M/s. Varindra Garments MANU/DE/0292/1982: AIR 1982
Delhi 482: 1982 (2) PTC 233 (Del): 21 (1982) DLT 472: 1982 RLR 538: (1982) 84 PLR
89 (Discussed) [p. 0171, para 61 h] g
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. MANU/SC/
0724/2001: (2002) 2 SCC 147: 2001 IX AD (SC) 472: AIR 2002 SC 117: [2002 (1) JCR
228 (SC)]: JT 2001 (9) SC 525: 2002 (46) ALR 228: 2001 (8) SCALE 174: 2002 (1) OLR
112: 2002 (3) BomCR 686 (Discussed) [p. 0161, para 32 h]
Precious Jewels & Anr. v. Varun Gems, MANU/SC/0656/2014: (2015) 1 SCC 160: 2014 (5)
AWC 4353 (SC): 2014 (4) CDR 906 (SC): 2014 (60) PTC 465 (SC): 2014 (3) WLN 138 h
(SC): 2014 (145) DRJ 527: 2014 (9) SCALE 146 (Distinguished) [p. 0172, para 62 a]
Ram Bharosey v. Ram Bahadur Singh, MANU/OU/0032/1947: AIR 1948 Oudh 125
(Discussed) [p. 0165, para 43 f]
Sanjeev Coke Manufacturing Co v. Bharat Coking Coal Ltd. MANU/SC/0040/1982:
(1983) 1 SCC 147: AIR 1983 SC 239: 1982 (2) SCALE 1193: [1983] 1 SCR 1000 i

2015] SRF Foundation and Ors. v. Ram Education Trust 0147
(Manmohan Singh, J.)
Sunder Parmanand Lalwani and Others v. Caltex (India) Ltd. MANU/MH/0063/1969:

a AIR 1969 Bom 24: 1968 (70) BOMLR 37 (Discussed) [p. 0163, para 34 f]
The Himalaya Drug Company v. M/s. S.B.L. Limited, MANU/DE/5479/2012: 2013
(53) PTC 1 (Del): 194 (2012) DLT 536 (Affirmed) [p. 0159, para 28 h]
Union of India And Ors. v. Mohanlal Likumal Punjabi & Ors. MANU/SC/0137/2004:
(2004) 3 SCC 628: AIR 2004 SC 1704: 2004 (1) ALD (Cri) 739: 2004 (92) ECC 129:
b 2004 (114) ECR 1 6 (SC): 2004 (166) ELT 296 (S.C.): JT 2004 (2) SC 528: 2004 (2) UJ
870: 2004 (2) SCALE 527: [2004] 3 SCR 468: 2004 (106 (2)) BOMLR 780: 2004 (3)
ACR 2588 (SC) (Discussed) [p. 0166, para 44 a]
Uptron India Ltd. v. Shammi Bhan and Anr. MANU/SC/0258/1998: (1998) 6 SCC 538:
AIR 1998 SC 1681: (1999) 2 GLR 1309: JT 1998 (3) SC 47: (1998) III MLJ 76 (SC):
1998 (1) UJ 528: [1998 (79) FLR 233]: 1998 (2) SCALE 586: (1998) SCC (LS) 1601:
c
[1998] 1 SCR 719: (1999) 1 UPLBEC 778 (Discussed) [p. 0166, para 45 f]
Wander Ltd. and Anr. v. Antox India P. Ltd. MANU/SC/0595/1990: 1990 (Supp) SCC
727: 1990 (2) ARBLR 399 (SC): 1990 - 1 - LW 495: 1990 - 1 - LW 498: 1991 (11) PTC 1
(SC): 1990 Supp (1) SCC 727: (1990) II MLJ 2 (Mentioned) [p. 0177, para 74 a]
d Acts/Rules/Orders
English Trade marks Act of 1875 [p. 0163, para 34 f]
Indian Evidence Act, 1872 [p. 0165, para 42 d]
Trade Marks Act, 1999
Section 2(m) [p. 0161, para 31 f]
Section 9 [p. 0160, para 29 g]
e
Section 17 [p. 0165, para 42 d]
Section 35 [p. 0162, para 32 f]
Section 35 [p. 0172, para 62 g]
Issues and Findings
f Trademark — Infringement of Trademark — Grant of interim injunction —
Whether suit filed for interim injunction restraining Defendant from using mark/
name SHRI RAM in respect of running schools is sustainable —
Held, This Court observed that it was evident that if mark SHRI RAM was/is
distinctive as per law and both rival marks are similar, in case any admission made
by Plaintiffs has no consequence. However same could not operate to detriment of
g Plaintiff No. 2. Moreover as far as prior user was concerned, it was not denied by
Defendant that Plaintiffs were prior user of mark SHRI RAM in relation to services
of school between Plaintiffs and Defendant. Further Plaintiffs had disclosed to Court
fact that they became aware of Defendant’s infringing activities in year 2011, which
was brought to notice of Defendant’s trustee by Plaintiffs’ chairman at a personal
level as it was then a off pre-school. But immediately on becoming aware of rampant
h opening of schools by Defendant under name SHRI RAM in year 2014, Plaintiffs
initiated present suit. It also appeared from material placed on record that in respect
of running schools, no doubt Plaintiffs were prior user than Defendant, another
thing was also clear between family members that they would have always an
understanding between themselves that confusion or deception does not occur. If
name SHRI RAM is used for last more than 65 years for college there is no Shriram
i College by any other family members. Similarly for past 58 years, no other college
under name of Lady Shriram has been established by any member of family. It

means that all parties have maintained discipline so that no actual deception and
confusion is occurred and no harm would cause to other party/relation. No doubt a
that father’s of both parties and grandfather were involved in field of education
bearing mark SHRI RAM prior to schools of the Plaintiff but it is a matter of fact that
no school was run by them on commercial scale prior to date of the Plaintiffs who
have no objection if Defendant may claim legacy of grandfather Sir Shri Ram in
relation to other activities of education except for running school. Defendant has
also issued large number of licenses and appointed franchisees and is getting license b
fee, despite of e-mail written by brother not to allow them, otherwise quality of
education and name of Shri Ram would be affected, but Defendant did not care
about it. Hence it is clear that Plaintiffs have been able to prima facie established
case of confusion, deception and prior user.
JUDGMENT c
Manmohan Singh, J.
1. By this order, I propose to decide the application being I.A. No. 12216/2014 under
Order XXXIX Rule 1 and 2 CPC filed by Plaintiffs seeking interim injunction against
the Defendant restraining it from using mark/name SHRI RAM in respect of running
the schools. The Plaintiffs have filed a suit for permanent injunction, passing off, d
account of profits under the Trade marks Act, 1999 (hereinafter referred to as the
“Act”).
2. The brief facts of the case as per plaint are:
i) The Plaintiff No. 1 is a registered non-profit society engaged in several social
and community development initiatives including running of schools under e
the name of The Shri Ram School. The Plaintiffs claim that they are the prior
user of the mark/name SHRI RAM in respect of the schools as far as the parties
in suit are concerned. The Plaintiff No. 2 is engaged in setting up schools in
India and abroad.
ii) The Plaintiff No. 1 established The SHRI RAM SCHOOL in the year 1988 in
Vasant Vihar, New Delhi. It is the case of the Plaintiffs that the school has been f
designed to provide each student a diverse education in a safe and supportive
environment that promotes sound values, self-discipline, motivation and
excellence in learning. From a modest beginning in five tents with sixty four
eager children, the school has grown to strength in excess of seven hundred
children and a hundred and eight staff. THE SHRI RAM SCHOOL - Moulsari,
Gurgaon is the senior school of THE SHRI RAM SCHOOL - Vasant Vihar. THE g
SHRI RAM SCHOOL - Aravali, Gurgaon was established in the year 2000 in
DLF City Phase IV, Gurgaon.
iii) It is alleged by the Plaintiffs that in order to fulfil its objective to meet the
shortage of good schools in India, Plaintiff No. 2 entered into an agreement
with Educomp Infrastructure and School Management (EISML), a subsidiary
h
of Educomp Solutions to set up five schools over the next 2-3 years under the
name “THE SHRIRAM MILLENIUM SCHOOL” which would imbibe the core
ideals enshrined in the pedagogical philosophy of Plaintiff No. 1’s THE SHRI
RAM SCHOOLS. The overall guidelines and framework of the curriculum,
courses, contents, teaching, methodology, academic policies and pedagogic
strategies of these schools were to be the same as the Plaintiff No. 1’s schools i
under the name “THE SHRI RAM SCHOOLS”.

iv) Under the Agreement with EISML, the Plaintiff No. 2 opened THE
a SHRIRAM MILLENIUM SCHOOL, Noida in April, 2010 and THE SHRIRAM
MILLENIUM SCHOOL, Faridabad in April, 2012.
v) In the year 2011 the Plaintiff No. 2 jointly with the Haryana Police Department
set up THE SHRI RAM POLICE PUBLIC SCHOOL in Bhondsi, Haryana for
the children of Police Personal and the General Public. The Plaintiffs at present
b are associated with schools at six different locations.
vi) It is alleged that the Plaintiffs’ schools under the name SHRI RAM have
carved out a unique space as institutions of excellence and are well known for
their value based innovative caring and child-centered approach to educate
young children and the institutions are popularly known as THE SHRI RAM
SCHOOLS. In the year 2002, THE SHRI RAM SCHOOL, Vasant Vihar was
c ranked number 04 amongst all schools of Delhi by Outlook India. The said
school was rated the ‘Best Day’ school in the country by an independent 15
city survey carried out by Education World Magazine in the years 2008, 2009
and 2011. In 2010, THE SHRI RAM SCHOOLS in Delhi and Gurgaon were
recognized as the “Number One” schools in Gurgaon and Southwest Delhi by
The Hindustan Times. In 2011, THE SHRI RAM SCHOOL, Aravali was ranked
d as the “Number One” school in India by the Delhi based Center for Forecasting
and Research Private Limited and the Education World Magazine. Further
THE SHRI RAM SCHOOL, Vasant Vihar was ranked 6th in the list of “Top
Schools in India” for the year 2013 in the ranking released by IndiaRanker.com.
vii) The Plaintiffs’ use of the word “SHRI RAM” in relation to schools since the
year 1988 i.e. for almost 25 years, the same has become exclusively identified
e with the schools of the Plaintiffs and/or the core values and educational
philosophy of the Plaintiffs said schools. An application for registration of the
Trade mark THE SHRI RAM SCHOOL was filed by the Plaintiffs on 6th June,
2008 under No. 1696277 in Class 41 which is pending with the Registrar,
Trade marks.
f viii) The top rankings by independent surveys, quality education and national
and international awards has garnered extensive reputation and goodwill to
the Plaintiffs. The Plaintiffs have incurred substantial expenditure in setting
up its Shri Ram Schools in the year 1988.
ix) In or around June 2011, the Defendant opened the SHRI RAM GLOBAL
PRE SCHOOL at the address Trinity House, 4106, Ashoka Marg, Near DLF
g Galleria, DLF Phase IV, Gurgaon, Haryana 122002. The said school was opened
right next to the Plaintiff No. 1’s The Shri Ram School, Aravali at Hamilton
Court Complex, DLF Phase IV, DLF City, Gurgaon-122002. Immediately on the
opening of the said school and the proximity of the two schools, the principal
of the Plaintiff’s school started getting a number of enquiries from parents
including as to whether the School is a part of The Shri Ram School or admission
h in the SHRI RAM GLOBAL PRE-SCHOOL guaranteed an automatic admission
to THE SHRI RAM SCHOOL. As the SHRI RAM GLOBAL PRE-SCHOOL had
been opened by a trust founded by the brother of the Plaintiff’s, Mr. Arun
Bharat Ram, Chairman of the Board of Governors of Plaintiff No. 1 wrote a
letter to his brother i.e. Trustee of the Defendant apprising him of the substantial
reputation of ‘The Shri Ram School’ run by the Plaintiffs.
i x) Instead of giving up the use of the Trade mark SHRI RAM the Defendant
expanded its operations under the Trade mark SHRI RAM and opened the

SHRI RAM CENTENNIAL SCHOOL, Dehradun at Knowledge Village Sherpur,

Shimla Road, Dehradun - 248197, SHRI RAM CENTENNIAL SCHOOL, AGRA a
at Village Sikandarpur, Dayalbagh, Agra, UP - 282005, SHRI RAM
CENTENNIAL SCHOOL, INDORE at 90C, Bombay Hospital Service Road,
Behind Bombay Hospital, Vasant Vihar Colony, Vijay Nagar, Indore, Madhya
Pradesh 452010. The Defendant is also proposing to open SHRI RAM GLOBAL
PRIMARY WING in Sector 45, Gurgaon barely 240 meters from the head office
b
of the said SRF Limited.
The Plaintiffs accordingly put up notices in Indore, Gurgaon and Dehradun
informing the general public that THE SHRI RAM SCHOOL had no relation or
connection with these schools.
xi) The Plaintiff No. 1 received a letter dated 17 th February, 2014 from
M/s. Factum Lawyers & Co. on behalf of the Defendant claiming to “hold c
unmatched goodwill; reputation and standing in the market through its
educational institutions, schools running under the brand name of SHRI RAM
GLOBAL SCHOOL/SHRI RAM CENTENNIAL SCHOOLS” even though these
schools were opened nearly two decades after the establishment of THE SHRI
RAM SCHOOL in 1988 and none of the schools of the Defendant have been
able to reach the recognition, milestone or ranking, as achieved by the schools d
of the Plaintiff. The legal notice called upon the Plaintiff No. 1 to withdraw the
advertisements and to tender a public apology for releasing these
advertisements in two leading newspapers of the metros wherever such
advertisements have been released failing which appropriate legal action would
be taken.
xii) On 2nd May, 2014 the Plaintiff No. 1 received a copy of the order dated e
28th April, 2014 of The Competition Commission of India rejecting a complaint
filed by the Defendant against the Plaintiff No. 1 inter alia alleging that the
Plaintiff No. 2 had intentionally placed the hoardings.
3. Counsel for the Plaintiffs submits that the Plaintiffs have no objection if the said
mark/name SHRI RAM is used by the Defendant in relation to any other different f
activities or services except in relation to the services of school on the reason that as
far as running of school bearing the mark SHRI RAM is concerned, they are prior
user and have acquire unique goodwill, name and reputation and it would create
confusion and deception if allowed to the Defendant who was aware about the
same on the date of adoption and it is done by the Defendant in order to make
misrepresentation. g
4. The Plaintiffs have filed large number of documents in support thereof. The details
of few documents are mentioned below:-
(i) Document evidencing the extensive expenditure incurred by the Plaintiffs
in establishing its Shri Ram School in 1988.
(ii) Year 2000 School Book of THE SHRI RAM SCHOOL, Vasant Vihar showing h
that the first batch of students passed out in the year 2000 who joined in the
year 1988 e.g. PALLAVI SARAN, head girl joined the school in the year 1988.
(iii) Print out from www.outlookindia.com ranking the Plaintiffs SHRI RAM
SCHOOL, VASANT VIHAR as the 4th best school in India in the year 2002.
(iv) Interview of Mrs. Manju Bharatram to Times of India dated 2nd July, 2005
giving reasons for starting of THE SHRI RAM SCHOOL. i

(v) Newspaper article from Times City dated 18th May, 2006 showing that the
a Plaintiffs The Shri Ram Schools had a 100 percent pass result.
(vi) Print out from the web-site www.hindustantimes.com showing the result
of the 2010 HT-C FORE SURVEY of South West Delhi’s top Schools in which
Plaintiffs SHRI RAM SCHOOL, Vasant Vihar was ranked number 1.
(vii) Print out from the web-site www.hindustantimes.com showing the result
b of the 2010 HT-C FORE SURVEY of Gurgaon’s top Schools in which SHRI
RAM SCHOOL, Aravali was ranked number 1.
(viii) Print out from the web-site www.rediff.com showing the result of a Pan
India Survey in the year 2011 conducted by the Centre for Forecasting &
Research Pvt. Ltd. and Education World Magazine in which THE SHRI RAM
SCHOOL, Delhi was ranked first in the country.
c (ix) Print out from the web-site www.indiaranker.com giving the updated list
as of 1st June, 2013 of the Top Schools in Delhi. THE SHRI RAM SCHOOL,
Vasant Vihar is at No. 6 and THE SHRI RAM SCHOOL, Aravali is at No. 12.
(x) Newspaper cutting of Times of India showing that Shivali Malhotra and
Bhavya Kulshreshta both students of The Shri Ram School, Aravali topped
d ICSR scoring 98.75 per cent .
(xi) Photocopy of a newspaper article from Sunday Hindustan Times, New
Delhi dated 20th May, 2012 containing percentage range of top scorers from
two prominent ICSE, ISC schools of which one was Plaintiffs’ The Shri Ram
School.
(xii) Newspaper article from Times of India, New Delhi dated 18th May, 2011
e showing that the students of the Plaintiffs The Shri Ram School, were toppers
in all streams of Class XII and also Class X in the Gurgaon region.
(xiii) Newspaper cutting of Times of India showing that Abishek Gupta, a
student of The Shri Ram School, (DLF III) topped in commerce with 97.25 per
cent .
(xiv) Newspaper cutting of Times of India showing that Nehal Garg, a student
f
of The Shri Ram School, Aravali topped the District Gurgaon in commerce
scoring 97.25 per cent .
(xv) Photocopy of certificate issued by Education World for “India’s Most
Respected Schools Survey Awards, 2011" to The Shri Ram School, Aravali.
5. Counsel for the Plaintiffs has stated that there is a panic amongst the public at
g large who are unable to recognize who is having which school. The founder of
Plaintiff No. 1 is Arun Bharat Ram and Mr. Vivan Bharat Ram is the founder of the
Trust of Defendant. Both are real brothers being the sons of Dr. Bharat Ram and
grandsons of Late Sir Shri Ram.
6. Arun Bharat Ram in his e-mail messages and websites has admitted that the
h Plaintiffs are educational services provider who has a legacy of interest in education
in India by his grandfather Shri Ram who has reputed educational institutions
such as the Shri Ram College of Commerce in 1926 and the Lady Shri Ram College
in 1956 in Delhi. He is the Chairman of Shri Ram Education Foundation and manages
Shri Ram College for Women.
7. The Defendant is represented by Mr. N.K. Anand, Advocate, who argued that the
i use of the name/mark SHRI RAM is a bona fide use. The Plaintiffs cannot have the
monopoly rights over the mark SHRI RAM. It is the name of the grandfather of the

founding members of the Plaintiffs’ schools and Defendant’s trust. The Plaintiffs
cannot claim the prior user in respect of the educational institution like school if the a
College under the mark SHRI RAM is being run prior to the use of Plaintiffs.
8. It is argued by Mr. Anand that the reputation and goodwill that is enjoyed by the
Shriram brand in present times was first established by the efforts and endeavours
of Late Sir Shri Ram, who was renowned for his endeavours in the industrialization
and modernisation of education in India. Late Sir Shri Ram’s contributions towards b
upliftment of educational services and facilities in India are widely acknowledged
and respected across India. The legacy of educational excellence as established by
Late Sir Shri Ram was furthered to greater heights by the successive generations of
the Shriram family.
Mr. Anand, has referred the following few dates and events in order to show that the
Plaintiff cannot claim the proprietorship and are not entitled to claim the monopoly c
of the mark/word Shri Ram. The following are the details of events which is not
disputed by the Plaintiffs:-
S.No. Date Relevance

1. 1920 Establishment of the “Commercial High School” by Sir Shri
Ram. d
2. 1939 Responsibility of management of the Anglo Sanskrit Victoria
Jubilee Senior Secondary School undertaken by Sir Shri Ram.
3. 1947 Establishment of the Shriram Institute of Industrial Research
by Sir Shri Ram.
4. 1951 The Commercial High School was renamed as the Shriram
College of Commerce in recognition of the contributions of Sir e
Shri Ram.
5. 1957 Establishment of the Lady Shriram College for Women by Sir
Shri Ram in memory of his wife.
Establishment of the Mawana Sugar Works Primary School to
cater to the educational needs of employees of the Mawana
Sugar Works.
f
6. 1964 The Commercial Education Trust was renamed as the Shri Ram
Education Foundation.
7. July 1, 1974 Mawana Sugar Works Primary School was renamed as the
Shriram Primary School.
8. 1989 First Division in the Shri Ram Family amongst Shri Murli Dhar,
Shri Charat Ram and Shri Bharat Ram (sons of Sir Shri Ram)
9. April 18, 1990 Letter addressed by Shri Bansi Dhar acknowledging the goodwill g
vested in the Family Name Shri Ram.
10. 1992 Appointment of Mrs. Sukanya Bharat Ram as Member in the
Governing Body of the Lady Shriram College for Women. Shriram
Primary School was renamed as Shri Ram Junior High School.
11. 1997 Establishment of Mangaur Impex Private Limited
12. May 1, 1998 Division in the family of Shri Bharat Ram amongst his sons h
conferring parallel rights to further the legacy of the Shri Ram
family.
13. 1999 Shri Ram Junior High School was further renamed and given its
present name, i.e. the Shriram School, Mawana
14. 2000 Eventual Change of Name of Mangaur Impex Private Limited
to Shriram Global Enterprises Limited Establishment of Shriram
Centre for Computer Education Ltd. promoted by Shriram i
Global Enterprises Ltd. Shriram Centre for Computer Education

Ltd. renamed as Shriram Global Technologies and Education
a Ltd.
15. March 31, 2002 Resignation of Mr. Vivek Bharat Ram as Managing Director of
SRF Limited, the holding company of the Plaintiff.
16. 2003 Shriram Global Technologies and Education Ltd. entered into a
Joint Venture with New Horizons Worldwide Inc., and was
renamed as New Horizons India Ltd.
b 17. May 6, 2004 Letter addressed by Shri Charat Ram to his son, Mr. Siddharth
Shriram advising for the sharing the goodwill as vested in
the”Shriram” brand amongst all members of the Shri Ram family.
18. January 17, 2008 Trademark Application No. 1642131 for the Shield Device for
“Shri Ram School of Business” in class 41 filed by Shriram
Global Enterprises Limited (associate affiliate of the Defendant)
19. June 6, 2008 Trademark Application No. 1696277 for the mark “The Shri
c Ram School” in class 41 filed on behalf of the Plaintiffs.
20. January 13, 2009 Examination Report issued in respect of the Plaintiff’s
Application No. 1696277 in class 41 cites the Shield Device of
the Defendant’s affiliate (Application No. 1642131)
21. March 29, 2010 The Shield Device (Application No. 1642131) for the “Shri Ram
School of Business” in class 41 secures Trademark Registration
d vide certificate No. 856741.
22. April 23, 2010 Establishment of the Shri Ram Education Trust (the Defendant)
23. 2011 The Joint Venture “New Horizons India Limited” was renamed
as Shri Ram New Horizons. Establishment of the “Shri Ram
Global Pre-School” by the Defendant in furtherance of its Family
lineage in Gurgaon.
24. December 21, 2012 Letter addressed by the Principal of the Lady Shriram College
e for Women to Ms. Sukanya Bharat Ram, thanking her for her
services and contributions in the development of the reputation
of the College as Member of the Governing Council.
25. 2014 Hoardings and advertisements of a disparaging nature set up
by the Plaintiffs in front of the Defendant’s schools across various
cities drawing dissociation from the Defendant’s schools.
f 26. February 17, 2014 Legal Notice addressed by the Defendant to the Plaintiffs in
protest of the Hoardings and Advertisements issued by the
Plaintiffs.
27. March 20, 2014 Reply to the Legal Notice addressed by the Plaintiffs to the
Defendants.
28. April 28, 2014 Order of the Competition Commission of India in Case No. 15
of 2014 dismissing the complaint against the Plaintiffs filed by
g the Defendant.
29. July 8, 2014 Plaint along with Application under Order 39 Rules (1) and (2)
filed by the Plaintiffs against the Defendant being CS (OS) 1980
of2014 before the Hon’ble High Court of Delhi.
9. It is alleged by the Defendant that the subsequent division had occurred in the
h family of Shri. Bharat Ram, commonly known as the Bharat Ram Group in the year
1998, whereby parallel rights were conferred to his sons as the legacy of the Shri
Ram Family while ensuring that values and ethics propounded by Late Sir Shri
Ram and Shri. Bharat Ram were protected and furthered in the future.
10. Mr. Anand has referred many documents and relevant dates about the educational
i activities of family members and grandfather of active persons of both the parties.
The details of which are mentioned herein below:

I. A Trust for education was established in the year 1920 under the name
“Commercial Education Trust”, the name of which was later changed to “Shri a
Ram Education Foundation” in the year 1964. This trust oversaw the
administration of seven educational institutions, including the Shri Ram
College of Commerce as well as the Lady Shri Ram College for Women, the
relevant details of which are mentioned herein below:
(i) Shri Ram College of Commerce: The institution was established in the b
year 1920 by Sir Shri Ram under the name “Commercial High School”. It
was later elevated to function as an “Intermediate College” in the year
1926. The same was further elevated as a Degree College in the year 1930
and college offering Post - Graduate studies in the year 1934. This
educational institution was later renamed the “Shriram College of
Commerce” in the year 1951 in recognition of the contribution made by c
its founder, Sir Shri Ram.
(ii) Lady Shri Ram College for Women: This educational institution was
established by Sir Shri Ram in memory of his wife in the year 1957, under
whose Chairmanship the educational institution continued to function
until his demise in the year 1962.
II. In addition to establishing the Commercial Education Trust and managing d
the Anglo Sanskrit Victoria Jubilee Senior Secondary School, Sir Shri Ram
further contributed to education and its development in India by establishing
the Shriram Institute of Industrial Research in the year 1947.
III. The legacy of educational excellence as established by Sir Shri Ram stood
furthered by his successors as the second son of Sir Shri Ram, Shri. Bharat
e
Ram had served as the Chairman of the Board of Governors of the esteemed
Lady Shri Ram College for Women. Shri Charat Ram, son of Sir Shri Ram had
also contributed to his father’s legacy of educational excellence and related
services in India. He had established the Shri Ram Centre for Industrial
Relations, Human Resources, Economic and Social Development in the year
1963. f
IV. Shri Bansi Dhar, son of Shri Murli Dhar and grandson of Sir Shri Ram. He
was instrumental in the development of Shri Ram College of Commerce as he
was a member of the Governing Council in addition to being the Treasurer of
the said educational institution. He was also responsible for the development
of other educational institutions such as the Shriram Institute of Industrial
Research in the capacity of its Vice Chairman and the Lady Shri Ram College g
for Women.
V. The Shriram Family is also credited with tremendous contribution to the field
of the performing arts. It is submitted that Ms. Sheila Bharat Ram, wife of Shri.
Bharat Ram had established the Shriram Centre for Performing Arts/Indian
National Theatre Trust.
Ms. Sumitra Charat Ram, wife of Shri Charat Ram had established the Shriram
h
Bhartiya Kala Kendra in the year 1952. The Shriram Bhartiya Kala Kendra
imparts training in Indian classical dance styles including Kathak,
Bharatanatyam, Odissi, Chhau, as well as training in Hindustani Classical
music.
VI. It is mentioned that SRF Limited had established the SRF Foundation, i
Plaintiff No. 1 herein. As Managing Director of SRF Foundation, the founder
and chairman of the Defendant herein was actively involved in the affairs of
SRF Limited. Further, Smt. Sukanya Bharat Ram, Trustee of the Defendant
a Trust herein had also served as a member on the Governing body of the Lady
Shri Ram College for Women for a period of 20 years from 1992 to 2012. She is
also a member on the Board of Trustees of the Kasturba Gandhi National
Memorial Trust, which provides inter alia educational services to rural
communities in North Delhi.
b VII. In the year 1989, through a Scheme of Arrangement, the Shri Ram Family
witnessed its first division, a tripartite division amongst the sons of Sir Shri
Ram i.e., Shri Murli Dhar, Shri Charat Ram and Shri Bharat Ram thereby
granting parallel rights to carry forward the rich legacy of Sir Shri Ram.
Subsequent division had occurred in the Family of Shri. Bharat Ram, commonly
known as the Bharat Ram Group in the year 1998, whereby parallel rights
c were conferred to his sons as the legacy of the Shri Ram Family while ensuring
that values and ethics propounded by Sir Shri Ram and late Shri. Bharat Ram
were protected.
Reliance is also placed upon letter dated 6th May, 2004 addressed by Dr. Charat
Ram to his son, Shri Siddharth Shriram wherein he recognized the tremendous
goodwill enjoyed by the “Shriram” brand. Through this letter, Dr. Charat Ram
d had advised for sharing of such goodwill and for avoiding all disputes. The
contents of the letter are reproduced herein below:
“... “Usha” and “Shriram” are brands that enjoy tremendous goodwill
and are synonymous with Shriram group entities. There has been decades
of harmony between these enterprises, and the brands have been used by
many of the Shriram enterprises for their respective brands. This has
e
benefited the enterprises and in the process also enriched the brands.
All the enterprises have contributed towards the goodwill of the brands
through usage on quality products and earning the trust of the customers.
Any dispute can only damage the brand and in turn the reputation of
Shriram enterprises built up through years of hard work”.
f VIII. Thus, it is evident that the elders in the Shriram family including inter alia
Shri. Bharat Ram of the DCM Shriram Group as well as Sh. Charat Ram of the
Usha Group shared the same views as their founding father Sir Shri Ram, that
the Shri Ram Family should retain all such rights to make use of their family
name and must protect the family name from falling into the hands of outsiders.
Thus being a Founder and Chairman of the Defendant, vide his letter dated
g 26th September, 2011 had reminded the Chairperson of the Plaintiff No. 1 of the
stellar contribution of members of the Shriram Family in upholding and further
strengthening the reputation and goodwill enjoyed by the educational
institutions established by the Shriram Family. There was a fear in the minds
of the Plaintiffs that at one time, the share holdings may divest in the hands of
outsiders. The Plaintiffs felt it necessary to ensure that the use of the word
h
“SHRI RAM” remains within the family as was the desire of the founding
fathers of the said family.
Therefore, it is submitted that the Plaintiffs and the Defendant herein have
concurrent rights to make use of their family name “Shriram” in relation to
their schools.
i 11. It is submitted that the use of the name “Shri Ram” by the Defendant in relation
to running the services of schools is in furtherance of the common family name of

the Plaintiffs and the Defendant, which constitutes a bona fide use under the
provisions of the Trade marks Act, 1999 as the elders in the Shri Ram family had a
always professed a principle of “Live and Let Live” while advising family members
to maintain peace and harmony in the family. Further, the elders in the Shri Ram
family shared the common view that all members of the Shri Ram family possess
concurrent rights to make use of their family name. Dr. Bansi Dhar in a letter dated
18th April, 1990 had clearly advised that no member of the Shri Ram family must be
b
restricted from making use of the tremendous goodwill vested in the name Shri Ram.
Further, Dr. Charat Ram, son of Late Sir Shri Ram vide letter dated 6th May, 2004
addressed to his son Mr. Siddharth Shriram had clearly stated that the collective
efforts of various enterprises in the Shriram Family had enriched the brand Shri
Ram over the years and that any dispute between such enterprises must be prevented.
12. It is submitted by the Defendant that the names of the Defendant’s schools that is c
“Shri Ram Global School”, “Shri Ram Centennial School” and “Shri Ram Global
Pre-School” are sufficiently distinctive from the name of the Plaintiff’s Schools,
i.e. “The Shri Ram School” and “Shri Ram Millennium School”. The names of the
Defendant’s schools make use of additional elements as suffix which distinguishes
clearly the schools of the Defendant from those of the Plaintiffs. The Defendant also
makes use of a particular Shield Device in relation to its schools and educational d
institutions, which is completely different and distinguishable from the mark of the
Plaintiffs.
With regard to goodwill, reputation and prior user claimed by the Plaintiffs that due
to prior establishment of the Plaintiff’s Shri Ram Schools on the initiative of Mrs.
Manju Bharat Ram in the year 1988, the name Shri Ram and the consequent goodwill
e
vested in it in relation to schools is the sole property of the Plaintiffs is incorrect and
unacceptable. Various factions of the Shri Ram family have not only made use of the
Family Name prior to the Plaintiffs but have also obtained Trade mark registrations
for the name “Shri Ram”.
13. It is submitted that the Shri Ram Family, in its efforts to uplift educational
excellence in India had established ‘The Shri Ram School Mawana” in the year f
1957. The said school running under the Chairmanship of Mr. Siddharth Shriram
predates the establishment of the Plaintiff’s schools by over 30 years. Therefore,
neither are the Plaintiffs the only faction of the Shri Ram family which has been in
the field of running schools in India nor are they the first amongst the Shri Ram
family to do so.
g
14. With regard to confusion and deception, it is argued by the Defendant’s Counsel
that the Plaintiffs have placed reliance upon letters and e-mails allegedly emanating
from the general public. The same are in the nature of inquiries raised internally
either by the employees of SRF Ltd., the holding company of the Plaintiff or by
members of the Plaintiffs’ schools themselves. The E-mail dated 27th March, 2014
from one Ms. Payal Gulati highlighted the difference in between the devices of the h
Plaintiff’s marks and the Defendant’s by stating that the other school “does not
have the Shri Logo”.
15. However, it is not denied on behalf of Defendant that the Plaintiffs are the prior
user of the mark/name SHRI RAM in relation to running the schools between the
parties. But, it is stated that the Plaintiffs are not the exclusive proprietor of the same.
It is admitted that the Defendant established its first school, namely the Shri Ram i
Global Pre-School in Gurgaon in the year 2011. Subsequently, the Defendant has

established its schools in various cities of the country including New Delhi,
a Dehradun, Indore, Rohtak, Siliguri among others.
16. It is informed by Mr. Anand that at present, the Defendant runs nineteen schools
under two banners namely, the Shri Ram Global Schools and the Shri Ram Centennial
Schools by itself or under the contracts with third parties. The Defendant is holding
the registered Trade mark under the name SHRI RAM.
b 17. In a nut-shell, the case of the Defendant is that the Defendant’s right to use the
name SHRI RAM for schools emanates from the common lineage from the legacy of
Late Sir Shri Ram. Thus, the Plaintiffs’ action is not sustainable. There are other
factions of the Shri Ram family using the name SHRI RAM for schools particularly
other members of the family in Mawana. There is bona fide use of the family name
SHRI RAM by the Defendant who is using the mark SHRI RAM in different ways
c along with logo and thus there is no confusion amongst the general public. It is not
denied that Late Sir Shri Ram did not run any school under the name SHRI RAM.
18. It is admitted on behalf of the Plaintiffs that purpose of the scheme of arrangement
of 1998 was to provide a framework to arrive at the division of the family assets and
meet the family liabilities. Thus the inherent right to use the name SHRI RAM vests
d with each member of the Shri Ram family but such right is subject to restricting
oneself to its domain of business and not encroaching upon/infringing others right
and the letter of Dr. Bansi Dhar only dealt with his view against any restriction to
use of the name DCM and SHRI RAM by a particular group of the Shri Ram family
i.e. no faction of the Shri Ram family could object to the use of the name SHRI RAM
by another faction, however, the same would in effect be subject to limiting the use of
e the name SHRI RAM to their respective and exclusive domain of business so as to
avoid competition and confusion regarding trade origin.
19. It is submitted by the Plaintiffs that there is no bona fide use of the family name
SHRI RAM by the Defendant as many misleading statements of the Defendant are
mala fide attempts on its part to associate itself and its SHRI RAM schools with the
Plaintiff’s well-known SHRI RAM schools in Delhi and Gurgaon so as to piggy
f bank on its reputation and goodwill and gain illicit profits out of the same. The
Defendant in fact is using the name/mark SHRI RAM as a Trade mark.
20. With regard to dissimilarity between the school name of the Defendant and the
Plaintiffs, it is argued by the Plaintiffs that the use of an identical name SHRI RAM
for its schools by the Defendant evidently makes it similar to the name of the Plaintiff’s
g well-known SHRI RAM schools.
21. The use of the words “Centennial” and “Global” by the Defendant in conjunction
with the name SHRI RAM for its schools do create confusion and deception as THE
SHRIRAM MILLENNIUM SCHOOL and SHRI RAM CENTENNIAL SCHOOL are
deceptively similar. The term “Centennial” used by the Defendant in conjunction
with the name SHRI RAM for its schools is synonymous with the term ‘Millennium”
h used by the Plaintiffs in conjunction with the name SHRI RAM for its schools. Even
the use of the Shield device would not make any difference as the foremost and
essential feature of the Defendant’s school name is the word ‘SHRI RAM”.
22. Pertaining to the email dated 27th March, 2014 from Ms. Payal Gulati it is submitted
by the Plaintiffs that the same does not highlight the difference in the devices of the
i Plaintiffs and Defendant’s mark. Rather, this email evidences the fact that the devices
used along with the name SHRI RAM are irrelevant for the purpose of creating
dissimilarity between the marks and that the essential and the prominent feature of
both marks is the name SHRI RAM, because otherwise Ms. Gulati on seeing the
Shield Device of the Defendants would have understood that the Defendant’s SHRI a
RAM schools do not originate from the Plaintiffs and thus, would have not written
the aforesaid email.
23. It is argued that the confusion has further occurred by Defendant’s franchisee’s
own admission in the defamation suit that the general public refrained from seeking
admission in the Defendant’s SHRI RAM school in Indore pursuant to being made b
aware of the non-connection between the Plaintiffs’ SHRI RAM schools and the
Defendant’s SHRI RAM schools. This in effect means that before being made aware
of the non-connection, the general public believed the Defendant’s SHRI RAM schools
to be connected/associated with the Plaintiffs’ SHRI RAM schools.
24. It is stated by the Plaintiffs that the Defendant as per Exhibit E of its Brand
License and Franchisee Agreement dated 26th September, 2012, was charging a one- c
time fee of Rs. 1.15 crore from its franchisee for the licensed right to start SHRI RAM
branded schools in a particular territory followed by an additional amount of Rs. 5
lacs per pre-school that is opened by the franchisee within its franchise territory
after the first pre-school.
25. I have also gone through the records of the present case including the plaint, d
written statement and documents filed therewith. I have also considered the
submissions advanced by the learned Counsel for the parties at the bar. Some of the
points mentioned in the written submissions filed by the parties were not part of
their respective pleadings. Now, I shall proceed to discuss various aspects which
fall for consideration in the present case.
26. The Plaintiffs claim to be prior user of the mark SHRI RAM in respect of the e
schools since the year 1988. The Defendant on the contrary does not dispute the said
position but raises a defence that the mark SHRI RAM is not merely proprietary
interest of the Plaintiffs for manifold reasons including that the Defendant is real
brother of the Plaintiffs and belongs to Shri Ram family and is closely connected
with the field of the education operating under the mark SHRI Ram. It is also the
case of the Defendant that there are documents suggesting that the family members f
can use the word SHRI RAM to promote the same and thus the Defendant is entitled
to use the mark SHRI RAM being a family member. I have considered the submissions
advanced by the learned Counsel for the parties on the aspect of the proprietorship
of the mark SHRI RAM. I am of the view that there is a material available on record
which indicates that the family members of the Sir Shri Ram has been using the
g
mark SHRI RAM in respect of the diverse kind of the business and services including
education in colleges. There is no material on record which prima facie suggests that
a faction of the family members as per family settlement has been specially allowed
to run the school or the groups emanating from Shri Ram family which limits their
rights to use the mark SHRI RAM in respect of the particular field of the business. It
is though altogether different matter that there may be a line in the business which h
has been adopted by the Shri Ram family in good senses by not intruding in each
other’s business for all this period. Still, for prima facie purposes, it cannot be said
that the Plaintiffs have been provided with the mark SHRI RAM solely for running
the schools as per any written document executed by the family members. It is now
to be considered as to whether the Plaintiffs have any right to run the school
exclusively under the name SHRI RAM. It has come to record that prior to Plaintiffs’ i
schools who have acquired unique goodwill and reputation, none of the family
member of Late Bharat Ram had started school under the said name but no doubt
family members were actively involved in the educational institutions apart from
a other activities. It has also brought to my knowledge that one of other faction of
family relation has been running school prior to the Plaintiffs. But, the objection was
raised by the Plaintiffs’ Counsel that the said plea is not taken in written statement
and it was pointed out by the Counsel that prior to the Plaintiffs use, the said school
under the name SHRI RAM was opened for the education of employees children of
Sugar Mill only which has no goodwill and name who is running the said school
b
outside Delhi in remote area in a small way.
27. It is necessary to refer the sample scanned copy of their representation in order to
understand in which manner the parties are using the name/mark SHRI RAM as
well as respective logos:
Plaintiffs’ Mark
c
g
It is apparent from the above mark, the name/mark SHRI RAM is being used by both
the parties is common and the same is also an essential part of their services, though
the logos are different.
28. First question before this Court is as to whether the use of the mark/name SHRI
RAM in the manner depicted are deceptively similar or not. The said issue has been
h discussed by the Division Bench of this Court in the case of The Himalaya Drug
Company v. M/s. S.B.L. Limited1, 2013 (53) PTC 1 which reads as under:
“20. It is settled law that where the Defendant’s mark contains the essential
feature of the Plaintiff’s mark combined with other matter, the correct approach
for the court is to identify an essential feature depending particularly “on the
i
1 Ed.: MANU/DE/5479/2012: 194 (2012) DLT 536

court’s own judgment and burden of the evidence that is placed before the
Court”. In order to come to the conclusion whether one mark is deceptively a
similar to another, the broad and essential features of the two are to be
considered. They should not be placed side by side to find out if there are
differences, rather overall similarity has to be judged. While judging the
question as to whether the Defendant has infringed the Trade mark or not, the
court has to consider the overall impression of the mark in the minds of general
b
public and not by merely comparing the dissimilarities in the two marks.
21. The ascertainment of an essential feature is not to be by ocular test alone
but if a word forming part of the mark has come in trade to be used to identify
the goods of the owner of the Trade mark, it is an infringement of the mark itself
to use that word as the mark or part of the mark of another trader for which
confusion is likely to result. The likelihood of confusion or deception in such c
cases is not disproved by placing the two marks side by side and demonstrating
how small is the chance of error in any customer who places his order for
goods with both the marks clearly before him, for orders are not placed, or are
often not placed, under such conditions. It is more useful to observe that in
most persons the eye is not an accurate recorder of visual detail and that marks
are remembered rather by general impressions or by some significant detail d
than by any photographic recollection of the whole”. In the decision reported
as (1951) 68 RPC 103, 105, De Cordova v. Vick Chemical Co., the Plaintiffs were
the proprietors of a label containing the words “Vick’s VapoRub” as the
essential feature, registered in Jamaica, and the Defendants used a similar
label with the words “Karsote Vapour Rub” as the essential feature, and it was
shown that the expression “VapoRub” had become distinctive of the Plaintiff’s e
goods in Jamaica, an action for infringement was successful. (See De Cordova
v. Vick Chemical Co. (supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June
Perfect Ld., AIR 1972 SC 1359, 1362, M/s. National Chemicals and Colour Co. and
Others v. Reckitt and Colman of India Limited and AIR 1991 Bom 76, M/s. National
Chemicals and Colour Co. and others v. Reckitt and Colman of India Limited and
Another2)”. f
From the principles laid down in the cases referred in the judgment above, it is clear
that the mark SHRI RAM is being used as essential feature in their logos and the
same are deceptively similar.
29. The next submission of Mr. Anand is that there are few admissions made by the
Plaintiff No. 2 in the Trade marks Registry in its reply to the examiner report in the g
application filed for registration of a Trade mark SHRI RAM in order to waive the
objection under Section 9 of the Act. Mr. Anand admits that the said plea was not
taken in the written statement and reply to the injunction application. In order to
satisfy my conscious, I allowed him to take this objection. He referred the said reply
filed by the Plaintiff No. 2 to the examination report. The same is read as under:
“We respectfully submit that ‘Shri Ram’ is one of the popular figures and h
deities in Hinduism. As such, no one proprietor can claim exclusive rights on
the mark ‘Shri Ram’. As evident from the search report attached with the
examination report, several ‘Shri Ram’ formulative marks are peacefully co-
existing on the Registrar of Trade marks. The subject matter is a fancy just a
position of the words ‘Shri Ram’ and ‘Educare’.”
i
2 Ed.: MANU/MH/0016/1991: 1991 (11) PTC 217 (Bom): 1990 (3) BomCR 379

“Re the remaining cited marks i.e. SHRIRAM (Registration Nos. 1238981 and
a 1515318), SHRI RAM SCHOOL OF BUSINESS WITH LABEL (Registration
No. 1642131), SHRI RAM CHANDRA MISSION (Registration Nos. 1288968
and 1288972, we wish to invite the learned Registrar’s attention to the well
established judicial principle of entirety. According to the said judicial
principle, conflicting marks should not be broken into separate components
and read for the sake of comparison; they should be dealt with as a whole.
b
Accordingly, we aver that ‘Shri Ram’ is one of the popular figures and deities
in Hinduism. As such, no one proprietor can claim exclusive rights on the
mark ‘Shri Ram’. We submit that ‘Shri Ram’ is common to the trade. It is the
combining elements that make the conflicting marks distinguishable from each
another. The marks taken as whole are different each other such that there is
c no likelihood of confusion and deception between them by their co-existence.”
Mr. Anand submits that in view of the said admission, the Plaintiffs are not entitled
for interim relief as prayed for.
30. The Counsel for the Plaintiffs has informed to the Court that the Plaintiffs have
withdrawn their application number 1696276 by letter dated 15th April, 2014 prior
to the filing of this suit on 8th July, 2014. It is submitted that the Plaintiffs have
d derived no advantage in application number 1696276 from the argument put forth
in the letter dated 8th June, 2012 as the same was subsequently withdrawn. The said
letter dated 8th June, 2012 was not written in any adversarial proceeding and was
withdrawn prior to the filing of this suit without affecting any third party right or
the rights of the Plaintiffs. It was written due to oversight. In fact, the mark SHRI
RAM was registrable if the same was distinctive on the date of application. Counsel
e
submits that the Defendant itself has filed the application for registration which is
now registered Trade mark, hence the objection of the Defendant is without any
force and both the marks are deceptively similar otherwise, the Trade marks office
ought not to have raised the objection about the conflicting of two marks of the
parties.
f In view of aforesaid, now it is to be examined as to whether on merit the mark was
distinctive on the date of filing of the suit or it was a registrable mark or not.
31. Admittedly, the Plaintiffs have been using the said mark/name since 1988 for
running the schools who are providing services. The definition of the mark includes
the name under Section 2(m) of the Act which reads as under:
g “2(m) “mark” includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colours or
any combination thereof;”
32. The names and surnames have been protected by this Court and various other
High Courts as well as by Supreme Court in the following cases:
i) In the case of Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra
h Ltd.3 [2002(2) SCC 147], the Supreme Court observed that “It is clear that the
Plaintiff has been using the word “Mahindra” and “Mahindra & Mahindra”
in its companies/business concerns for a long span of time extending over five
decades. The name has acquired a distinctiveness and a secondary meaning
i 3 Ed.: MANU/SC/0724/2001: 2001 IX AD (SC) 472: AIR 2002 SC 117: [2002 (1) JCR 228
(SC)]: JT 2001 (9) SC 525: 2002 (46) ALR 228: 2001 (8) SCALE 174: 2002 (1) OLR 112:
2002 (3) BomCR 686

in the business or trade circles. People have come to associate the name
‘Mahindra’ with a certain standard of goods and services. Any attempt by a
another person to use the name in business and trade circles is likely to and in
probability will create an impression of a connection with the Plaintiffs’ group
of companies. Such user may also effect the Plaintiff prejudicially in its business
and trading activities.”
ii) The following observations of this Court in Dr. Reddy’s Laboratories Ltd. v. b
Reddy Pharmaceuticals Limited,4 2004 (29) PTC 435 (Del.), which was also
affirmed by the Division Bench are very relevant in this regard:
“15. The plea raised by the Defendant that it has a bona fide statutory
right to use the trade name “Reddy” as its Managing Director is Mr.
Reddy is also liable to be rejected for the reason that the Trade mark “Dr.
Reddy” in spite of not bring registered has acquired considerable trade c
reputation and goodwill in the community dealing with drugs and
pharmaceutical not only in India but abroad also. This Trade mark is
now distinctively associated with the Plaintiff’s company. Its long and
continuous user by the Plaintiff is prima facie established. The use of
trade name/mark “Reddy” by the Defendant is capable of causing
confusion and deception resulting in injury to the goodwill and d
reputation of the Plaintiff company. No other “Reddy” has a right to
start a rival business by using the same trade name on the plea that it is
his surname. This would encourage deception. If such a plea is allowed,
rivals in trade would be encouraged to associate in their business ventures
persons having similar surnames wind ants was held to be an act of
passing off the goods and it was observed that the use of such family e
name as a Trade mark was not permissible. The plea of the Defendants
that the surname of the partners of its firm could be used to carry on trade
in their own name was rejected. It was held that prima facie the Defendants
were intentionally and dishonestly trying to pass off their goods by use
of name “Bajaj” and as such the Plaintiff had made out a case for grant of
injunction. f
19. Section 35 of the TMM Act is also of ho help to the Defendant as the use of
name “Reddy” on pharmaceutical preparations by the Defendant is not shown
to be bona fide. The drugs and pharmaceutical preparations being
manufactured by the Plaintiff may be having different names but that does not
disentitle the Plaintiff to claim protection in regard to its Trade mark “Dr. g
Reddy” which has earned substantial trade reputation and goodwill. This
Trade mark has acquired a distinctive reputation. Use of an identical or
deceptively similar Trade mark may mislead the customers on account of
similarity. “Dr. Reddy” and “Reddy” are similar Trade marks phonetically
and are capable of creating confusion.
There is identity of goods, identity of Trade mark and identity of consumers. h
The Defendant is not at all an honest and concurrent user of the Trade mark
“Reddy” and it is apparent on record that it has started using the Trade mark
“Reddy” on its pharmaceutical preparations in bad faith knowing fully well
that the Plaintiff company has enormous trade reputation and goodwill in the
Trade mark “ Dr. Reddy” which is completely associated with Plaintiff and
has acquired a secondary meaning in business circles.” i
4 Ed.: MANU/DE/0658/2004: [2005] 128 CompCas 42 (Delhi): 2004 (76) DRJ 616

33. It is a question of fact, to be decided on the evidence, whether a name or mark has
a acquired a secondary meaning so that it denotes or has come to mean goods made
by a particular person and not goods made by any other person, even though such
other person may have the same name. If it is proved on behalf of a claimant that a
name or mark has acquired such a secondary meaning, then it is a question for the
Court whether a Defendant, whatever may be his intention, is so describing his
goods that there is a likelihood that a substantial Section of the purchasing public
b
will be misled into believing that his goods are the goods of the claimant.
33. The effect of said so called letter written by the Plaintiff No. 2 to the Trade
mark office is to be examined by this Court. It is settled law that the registration
merely recognizes the rights which are already pre-existing in common law
and does not create any rights. This has been explained by the Division Bench
c of this Court in the case of Century Traders v. Roshan Lal Duggar & Co.5 AIR
1978 Del 250 wherein it was observed:
“First is the question of use of the Trade mark. Use plays an all important
part. A trader acquires a right of property in a distinctive mark merely by
using it upon or in connection with his goods irrespective of the length of
such user and the extent of his trade. The trader who adopts such a mark
d is entitled to protection directly the article having assumed a vendible
character is launched upon the market. Registration under the statute
does not confer any new right to the mark claimed or any greater right
than what already existed at common law and at equity without
registration. It does, however, facilitate a remedy which may be enforced
and obtained throughout “THE State and it established the record of
e facts affecting the right to the mark. Registration itself does not create
a Trade mark. The Trade mark exists independently of the registration
which merely affords further protection under the statute. Common
law rights are left wholly unaffected.”
(Emphasis Supplied)
f 34. The said view is also supported from the judgment of the Division Bench of Bombay
High Court in the case of Sunder Parmanand Lalwani and Others v. Caltex (India) Ltd.6
AIR 1969 Bombay 24, which has been held vide paras 32 and 38 as follows:
“32. A proprietary right in a mark can be obtained in a number of ways. The
mark can be originated by a person, or it can be subsequently acquired by him
from somebody else. Our Trade marks law is based on the English Trade marks
g law and the English Acts. The first Trade marks Act in England was passed in
1875. Even prior thereto, it was firmly established in England that a trader
acquired a right of property in a distinctive mark merely by using it upon or in
connection with goods irrespective of the length of such user and the extent of
his trade, and that he was entitled to protect such right of property by
appropriate proceedings by way of injunction in a Court of law. Then came the
h English Trade marks Act of 1875, which was substituted later by later Acts.
The English Acts enabled registration of a new mark not till then used with the
like consequences which a distinctive mark had prior to the passing of the
Acts. The effect of the relevant provision of the English Acts was that
registration of a Trade mark would be deemed to be equivalent to public user of
i
5 Ed.: MANU/DE/0153/1977: (1977) ILR 2 Delhi 709: 15 (1979) DLT 269
6 Ed.: MANU/MH/0063/1969: 1968 (70) BOMLR 37

such mark. Prior to the Acts, one could become a proprietor of a Trade mark
only by user, but after the passing of the Act of 1875, one could become a a
proprietor either by user or by registering the mark even prior to its user. He
could do the latter after complying with the other requirements of the Act,
including the filing of a declaration of his intention to use such mark. See
observations of Llyod Jacob J. in 1956 RPC 1. In the matter of Vitamins Ltd.’s
Application for Trade mark at p. 12, and particularly the following: “A
b
proprietary right in a mark sought to be registered can be obtained in a number
of ways. The mark can be originated by a person or can be acquired, but in all
cases it is necessary that the person putting forward the application should be
in possession of some proprietary right which, if questioned, can be
substantiated”. Law in India under our present Act is similar.”
35. The said views emanating from the courts in India clearly speak in one voice c
which is that the rights in common law can be acquired by way of use and the
registration rights were introduced later which made the rights granted under the
law equivalent to the public user of such mark. Thus, registration is merely a
recognition of the rights pre-existing in common law and in case of conflict between
the two registered proprietors, the evaluation of the better rights in common law is
essential as the common law rights would enable the court to determine whose d
rights between the two registered proprietors are better and superior in common
law which have been recognized in the form of the registration by the Act.
(Emphasis Supplied)
36. The applicability of the said principle can be seen as to which proprietor has
generated the goodwill by way of use of the mark/name in the business. The use of e
the mark/carrying on business under the name confers the rights in favor of the
person and generates goodwill in the market. Accordingly, the latter user of the
mark/name or in the business cannot misrepresent his business as that of business
of the prior right holder.
37. The prior user is considered to be superior than that of any other rights.
Consequently, the examination of rights in common law which are based on goodwill, f
misrepresentation and damage are independent to that of registered rights. The mere
fact that both prior user and subsequent user are registered proprietors are irrelevant
for the purposes of examining who generated the goodwill first in the market and
whether the latter user is causing misrepresentation in the course of trade and
damaging the goodwill and reputation of the prior right holder/former user.
g
38. It is also recognized principle in common law jurisdiction that passing off right
is broader remedy than that of infringement. This is due to the reason that the
passing off doctrine operates on the general principle that no person is entitled to
represent his or her business as that of business of other person. The said action in
deceit is maintainable for diverse reasons other than that of registered rights which
are allocated rights under the Act. h
39. The Defendant has also referred the E-mail dated 28th September, 2011 by stating
that there are admission/no objection on the part of Plaintiffs to use the name SHRI
RAM for running the schools. The extract of the said E-mail reads as under:
“I want to mention that if you ever wanted to divest or reduce your shareholding,
you would then be reduced to minority shareholding in your company. You must
i
remember that the ‘Shri Ram’ brand might then go to wrong outsiders. One would
have no control over how they would use this brand.”

40. Even otherwise, let us take the face value of the said letter written by the Plaintiff in
a Trade mark Registry making some admissions to the effect that no monopoly can be
claimed and the mark SHRI RAM applied is not similar to the mark of the Defendant’s
mark. But at the same time, if Court would find that it is a distinctive mark then the
same is protectable under the law, the said admissions are totally immaterial as per
settled law as well as with regard to Email dated 28th September, 2011.
b 41. The law of admission has its genesis from the rules of evidence wherein it is
well-settled that the admission is best evidence and no further evidence is required
once the admission is clear and unambiguous. However, the admissions are usually
made of some facts and not of pure questions of law.
As observed by Phipson in his Law of Evidence (1963 Edition, Para 678) as the
weight of an admission depends on the circumstances under which it was made,
c these circumstances may always be proved to impeach or enhance its credibility.
The effect of admission is that it shifts the onus on the person admitting the fact on
the principle that what a party himself admits to be true may reasonably be presumed
to be so, and until the presumption is rebutted, the fact admitted must be taken to be
established. An admission is the best evidence that an opposing party can rely
upon, and though not conclusive is decisive of matter, unless successfully
d withdrawn or proved erroneous.
42. The admission in the context of Indian Evidence Act, 1872 shall always be of
facts due to the definition of the admission under Section 17 of the Act and the same
is confined to statement which may suggest inference as to fact or relevant fact. A
logical corollary to this which follows is that the admissions shall always be of facts
e or relevant facts but cannot be of law.
If one examines the concept of admissions on the basis of law of pleadings as
envisaged under the Code of Civil Procedure, it is realized that the cardinal rule of
pleadings is that the pleadings should contain the facts, material facts and not the
law. There again, it is not practical or feasible to give rise to any such admission of
the law or legal position. A fortiori, it follows that the admission of the legal position
f or legal principle which may or may not be correct is no admission in law and it is
inconsequential in law.
43. In the case of Ram Bharosey v. Ram Bahadur Singh7, AIR 1948 Oudh 125, the Court
had observed that the admission by a party on pure question of law is not binding
on him. The same view was also taken by the Nagpur Bench in the case of Gulabchand
g v. Bhaiyalal8, AIR 1929 Nag 343. There cannot be an estoppel against the law or
statutory provisions. When one is concerned with the statutory right or constitutional
guarantee, there cannot be any estoppel against the same as held in the case of A.C.
Jose v. Sivan Pillai & Ors.9 (1984) 3 SCR 74.
44. Once there is no estoppel against the statute, the admissions or concessions
made by the Counsel for the parties under the wrong understanding of law cannot
h operate to the detriment of the party making such admissions and it is only on the
basis of correct legal position, the rights of the parties are to be determined.
7 Ed.: MANU/OU/0032/1947: AIR 1948 Oudh 125

i 8 Ed.: MANU/NA/0093/1929: AIR 1929 Nag 343
9 Ed.: MANU/SC/0341/1984: AIR 1984 SC 921: 1984 (16) UJ 558: (1984) 2 SCC 656: 1984
(1) SCALE 454

This proposition has been laid down in the case of Union of India And Ors. v. Mohanlal
Likumal Punjabi & Ors.10, (2004) 3 SCC 628 wherein the Supreme Court observed as a
under:
“In our view the concession, if any, is really of no consequence, because the
wrong concession made by a Counsel cannot bind the parties when statutory
provisions clearly provided otherwise. It was observed by Constitution Bench
of this court Sanjeev Coke Manufacturing Co v. Bharat Coking Coal Ltd.11 1983 (1) b
SCC 147 that courts are not to act on the basis of concession but with reference
to the applicable provisions. The view has been reiterated in (1988 (6) SCC
538) and Central Council for Research in Ayurveda and Sidhha & others v. Dr. K.
Santhakumari12 2001 (5) SCC 60. In para 12 of Central Council’s case (supra) it
as observed as follows:
“In the instant case, the selection was made by the Departmental Promotion c
Committee. The Committee must have considered all relevant facts including
the inter se merit and ability of the candidates and prepared the select list on
that basis. The Respondent, though senior in comparison to other candidates,
secured a lower place in the select list, evidently because the principle of
“merit-cum-seniority” had been applied by the Departmental Promotion
Committee. The Respondent has no grievance that there were any mala d
fides on the part of the Departmental Promotion Committee. The only
contention urged by the Respondent is that the Departmental Promotion
Committee did not follow the principle of “seniority-cum-fitness”. In the
High Court, the Appellants herein failed to point out that the promotion is in
respect of a “selection post” and the principle to be applied is “merit-cum-
seniority”. Had the Appellants pointed out the true position, the learned e
Single Judge would not have granted relief in favour of the Respondent. If
the learned Counsel has made an admission or concession inadvertently or
under a mistaken impression of law, it is not binding on his client and the
same cannot ensure to the benefit of any party.”
(Emphasis supplied)
f
13
45. Again in Uptron India Ltd. v. Shammi Bhan and Anr. 1998 (6) SCC 538, the court also
explained the said principle as one of species of the principle that there cannot be any
estoppel against the statute. It was held that a case decided on the basis of wrong
concession of a Counsel has no precedent value. That apart, the applicability of the
statute or otherwise to a given situation or the question of statutory liability of a
person/institution under any provision of law would invariably depend upon the g
scope and meaning of the provisions concerned and has got to be adjudged not on
any concession made. Any such concessions would have no acceptability or relevance
10 Ed.: MANU/SC/0137/2004: AIR 2004 SC 1704: 2004 (1) ALD (Cri) 739: 2004 (92) ECC
129: 2004 (114) ECR 1 6 (SC): 2004 (166) ELT 296 (S.C.): JT 2004 (2) SC 528: 2004 (2) UJ
870: 2004 (2) SCALE 527: [2004] 3 SCR 468: 2004 (106 (2)) BOMLR 780: 2004 (3) ACR
2588 (SC) h
11 Ed.: MANU/SC/0040/1982: (1983) 1 SCC 147: AIR 1983 SC 239: 1982 (2) SCALE 1193:
[1983] 1 SCR 1000
12 Ed.: MANU/SC/0331/2001: AIR 2001 SC 2306: 2001 (4) ALT 9 (SC): 2001 (2) KLT 775
(SC): 2001 (2) SCT 1116 (SC): JT 2001 (Supp l 1) SC 411: 2001 LabIC 2073: 2001 (4)
SCALE 9: (2001) SCC (LS) 722: [2001] 3 SCR 519
13 Ed.: MANU/SC/0258/1998: AIR 1998 SC 1681: (1999) 2 GLR 1309: JT 1998 (3) SC 47: i
(1998) III MLJ 76 (SC): 1998 (1) UJ 528: [1998 (79) FLR 233]: 1998 (2) SCALE 586: (1998)
SCC (LS) 1601: [1998] 1 SCR 719: (1999) 1 UPLBEC 778: 1998 GLH (1) 760

while determining rights and liabilities incurred or acquired in view of the axiomatic
a principle, without exception, that there can be no estoppel against statute.
46. In view of the above discussion, it is clear that the admissions made of law or
legal provisions are inconsequential, they cannot operate as an estoppel against the
person making it. The courts are not to act upon the admissions of wrong legal
principles made by the parties. Rather, the court has to adjudicate rights and
b liabilities of parties basing on the true legal position emerging from the interplay of
the provisions of the statute and not upon any such wrong admissions.
47. Therefore, it is evident that if the mark SHRI RAM was/is distinctive as per law
and both rival marks are similar, in case any admission is made by the Plaintiffs the
same has no consequence. The same cannot operate to the detriment of the Plaintiff
No. 2. The said admission whatsoever does not help the case of the Defendant who
c itself had applied for registration of the mark SHRI RAM which is registered in the
name of the Defendant. It is not understood if the said plea is taken then why the
Defendant has filed the application for registration of the said mark who made its
admission of distinctiveness of the same mark at the time of registration.
It appears from the E-mail apparently that Arun Bhagat Ram warned his brother not
d to share the name SHRI RAM with the third party otherwise the quality of the name
is likely to be tarnished. However, despite of the same, the name SHRI RAM was
allowed by the Defendant to the third party by way of licensing agreements/contract.
Even otherwise, he has not allowed the Defendant to use the name SHRI RAM in the
said E-mails. Prima facie I do not find specific admission on the part of the Plaintiffs
to share the mark SHRI RAM with the Defendant for running the schools.
e 48. The next submission of Mr. Anand is that one of the family members is operating
school in Mawana prior to the Plaintiffs, thus, the Plaintiffs cannot claim the
exclusive rights to the use of the mark SHRI RAM.
49. It is also argued by the Plaintiffs’ Counsel that the reliance on the existence of The
Shri Ram School, Mawana is untenable for the fact that this school’s presence is
f limited to a town in Uttar Pradesh, with limited access to the general public and lacks
reputation/goodwill. It is not denied that the said school was established as the
“Mawana Sugar Works Primary School” in the year 1957 and not as the Shri Ram
School, Mawana. The use of the name SHRI RAM by this school prior to the Plaintiffs
was as a primary school. This school is yet to become full-fledged as it currently caters
to students till only Class XI. The school is located within the campus of Mawana
g Sugar Limited Factory. The Plaintiffs submit that the school was established to cater to
the educational requirements of the employees of Mawana Sugar Works and not the
general public. It is submitted that no such plea was taken in the written statement.
50. It is contended by the Plaintiffs that the Defendant itself became aware of the
Mawana school much later as there is no mention of the same in the pleadings. It is
only the Plaintiffs faction of the Shri Ram family that started schools under the name
h SHRI RAM. No other faction has been in the business of running schools under the
name SHRI RAM. Therefore, the goodwill in the name SHRI RAM in the field of
schools in India is indeed a result of the efforts of Plaintiffs. Hence, the Defendant
cannot be allowed to use the identical name SHRI RAM for its schools, amounting to
the continuing detriment of the Plaintiffs who have built up a goodwill and reputation
in the name SHRI RAM for its schools after years of hard work. It is specifically argued
i
by the Plaintiffs that Mawana School has no goodwill and reputation, it was originally
established for the purpose of giving education to the children of the employees, and

is now being used for other children after the use of the name SHRI RAM by the
Plaintiffs and the said plea does not help the case of the Defendant. In view of settled a
proposition of law that in case of an action of passing off the rights of prior user are to
be considered between the parties at the interim stage.
51. It is the case of the Plaintiffs that they have created the enormous goodwill and
reputation in the mark SHRI RAM vis-a-vis schools. The Plaintiffs are not claiming
goodwill in the name SHRI RAM to all fields of education. They are limiting their b
claim of goodwill in the name SHRI RAM only to Schools and no other field of
education. The goodwill in THE SHRI RAM SCHOOL is not the result of any effort on
behalf Late Sir Shri Ram. Late Sir Shri Ram did not run any school under the name
SHRI RAM. The Defendant has not given any evidence to show that there is any other
member of the family which is running a school which has a reputation in the SHRI
RAM name except evidence is of one school in Mawana which has no reputation. c
52. In the case of Century Traders (supra) the said aspect to some extent has been
discussed in para 14. The extract of the same reads as under:
“(14) Thus, the law is pretty well-settled that in order to succeed at this stage the
Appellant had to establish user of the aforesaid mark prior in point of time than
the impugned user by the Respondents. The registration of the said mark or similar d
mark prior in point of time to user by the Appellant is irrelevant in an action
passing off and the mere presence of the mark in the register maintained by the
Trade mark registry did not prove its user by the persons in whose names the mark
was registered and was irrelevant for the purposes of deciding the application for
interim injunction unless evidence had been led or was available of user of the
registered Trade marks. In our opinion, these clear rules of law were not kept in e
view by the learned Single Judge and led him to commit an error.”
Under these circumstances, the plea raised by Mr. Anand, learned Counsel for the
Defendant about the third party user has no merit. The said school Mawana has no
commercial activities prior to the use of the Plaintiffs and it is run by the party in the
restricted area, no evidence contrary to the contention has been produced by the
Defendant. Even the said objection was not taken up in the written statement or f
reply to the interim application.
53. It is necessary that in order to succeed in an action for passing off, four main
primary requirements have to be satisfied by a party who intends to seek the relief of
injunction:
i) Prior user; g
ii) Party who is claiming right must be the proprietor of the mark.
iii) Confusion and deception; and
iv) Delay, if any
54. As far as prior user is concerned, it is not denied by the Defendant that the
Plaintiffs are the prior user of the mark SHRI RAM in relation to services of school h
between the Plaintiffs and Defendant. With regard to Mawana School operated by
third party, the plea of the Defendant has been rejected in earlier part of my order.
Thus, it is clear that the Plaintiffs are the prior user of the name/mark SHRI RAM in
relation to the services of schools.
Confusion and Deception and Passing Off
i
55. In the present case, the Defendant has many schools in the same vicinity as the school
of the Plaintiffs. The details of the school under the name SHRI RAM are given as under:

a A. The Shri Ram School, Hamilton Court Shri Ram Global Pre School
Complex, Phase-4, DLF Aravali, 4106, DLF Phase-4, Gurgaon,
Gurgaon, Haryana. Haryana
B. The Shri Ram Early Years, Vipul Shri Ram Global Pre-Primary
Greens, Sector 48, Sohna-Gurgaon Wing, 4401, DLF Phase-4,
Road, Gurgaon, Haryana. Gurgaon, Haryana.
b
Similarly, if the Plaintiffs have school in Delhi, the Defendant has also opened
school in Delhi in February, 2015 i.e. after filing the present suit.
i) In the case of Laxmikant v. Patel v. Chetanbhat Shah & Anr.14, (2002) 3 SCC 65,
the Court in paras 8 and 10 held as under:
“8. It is common in the trade and business for a trader or a businessman
c to adopt a name and/or mark under which he would carry on his trade
or business. According to Kerly (Law of Trade marks and Trade Names,
Twelfth Edition, para 16.49), the name under which a business trades
will almost always be a Trade mark (or if the business provides services,
a service mark, or both). Independently of questions of trade or service
mark, however, the name of a business (a trading business or any other)
d will normally have attached to it a goodwill that the courts will protect.
An action for passing-off will then lie wherever the Defendant company’s
name, or its intended name, is calculated to deceive, and so to divert
business from the Plaintiff, or to occasion a confusion between the two
businesses. If this is not made out there is no case. The ground is not to be
limited to the date of the proceedings; the court will have regard to the
e way in which the business may be carried on in the future, and to its not
being carried on precisely as carried on at the date of the proceedings.
Where there is probability of confusion in business, an injunction will be
granted even though the Defendants adopted the name innocently.
10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such
f
business or services associated with a person acquire a reputation or
goodwill which becomes a property which is protected by courts. A
competitor initiating sale of goods or services in the same name or by
imitating that name results in injury to the business of one who has the
property in that name. The law does not permit any one to carry on his
g business in such a way as would persuade the customers or clients in
believing that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter person does
so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair
play are, and ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name in connection
h with his business or services which already belongs to someone else it
results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury.
14 Ed.: MANU/SC/0763/2001: AIR 2002 SC 275: 2002 (1) ALD 45 (SC): [2002] 110 CompCas
i 518 (SC): (2002) 2 GLR 69: [2002 (1) JCR 293 (SC)]: JT 2001 (10) SC 285: 2002 (24) PTC 1
(SC): RLW 2002 (1) SC 129: 2002 (1) UJ 379: 2002 (1) UC 182: 2002 (3) PLJR 82: 2002 (46)
ALR 324: 2001 (8) SCALE 350: 2002 (1) ALLMR (SC) 673

56. Salmond & Heuston in Law of Torts (20th Edn., at p. 395) call this form of injury
as “injurious falsehood” and observe the same having been “awkwardly termed” a
as “passing off” says as under:
“The legal and economic basis of this tort is to provide protection for the right
of property which exists not in a particular name, mark or style but in an
established business, commercial or professional reputation or goodwill. So to
sell merchandise or carry on business under such a name, mark, description, b
or otherwise in such a manner as to mislead the public into believing that the
merchandise or business is that of another person is a wrong actionable at the
suit of that other person. This form of injury is commonly, though awkwardly,
termed that of passing off ones goods or business as the goods or business of
another and is the most important example of the wrong of injurious falsehood.
The gist of the conception of passing off is that the goods are in effect telling a c
falsehood about themselves, are saying something about themselves which is
calculated to mislead. The law on this matter is designed to protect traders
against that form of unfair competition which consists in acquiring for oneself,
by means of false or misleading devices, the benefit of the reputation already
achieved by rival traders.”
57. As per Kerly (Law on Trade marks and Names, para 16.16) passing off cases are d
often cases of deliberate and intentional misrepresentation, but it is well-settled that
fraud is not a necessary element of the right of action, and the absence of an intention to
deceive is not a defence though proof of fraudulent intention may materially assist a
Plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing
Off (1995 Edn., at p. 3.06) states that the Plaintiff does not have to prove actual damage
in order to succeed in an action for passing off. Likelihood of damage is sufficient. e
58. In the case of B.K. Engineering Co. v. Ubhi Enterprises15, 1985 (5) PTC 1, the Court
in paras 49, 51 and 52 held as under:
“49. A fair and honest trader will not give misleading name to his product to
the continuing detriment of a Plaintiff who has built up his goodwill in the
business after years of hard work for example, 13 or 14 years, as in this case. It f
is this intangible right to property which the law seeks to protect.
xxxx xxxx xxxx
51. The modernisation of the tort of passing off lies in this that what was
previously a misrepresentation of goods has now become a misappropriation
of another man’s property in the business or goodwill, or misappropriation of
g
another’s personality. You cannot make use of the Plaintiff’s expensive labour
and effort. You cannot deliberately reap where you have not sown. You cannot
filch a rival’s trade. Passing off is thus a remedy for injury to goodwill.
52........The modern character of the, tort of passing off was clearly brought out
in Cadbury (supra). At p. 218 Lord Searman said:
“THE tort is no longer anchored, as in its early nineteenth century formulation, h
to the name or trade-mark of a product or business. It is wide enough to
encompass other descriptive material, such as slogans or visual images which
radio, television or newspaper advertising campaigns can lead the market to
associate with the Plaintiff’s product, provided always such descriptive
material has become part of the goodwill of the product. And the test is whether
i
15 Ed.: MANU/DE/0404/1984: AIR 1985 Delhi 210: (1985) ILR 1 Delhi 525: 1984 (4) PTC
217 (Del): 1986 (6) PTC 291 (Del): 27 (1985) DLT 120

the product has derived from the advertising a distinctive character which the
a market recognises.”
In view of settled law, facts and circumstances of the present case, it is apparent that
chances of confusion and deception cannot be ruled out.
59. Further, it is apparent in the present case that the commencement of its use in the
year 2011 by Defendant by opening its first school in Gurgaon is in close proximity
b to the Plaintiffs’ Shri Ram School, Aravali. When the Defendant adopted the name
SHRI RAM for its schools, the Plaintiffs SHRI RAM schools were named the best
school in Gurgaon and South West Delhi as well as in India. The Defendant calls its
students “Shri Ramite” which is same to the name given to the students of the
Plaintiffs Shri Ram schools since as early as the year 2000. The Defendant claimed
that it has a School in Delhi when it does not.
c
60. It is also evident from the material placed on record that the Defendant had never
been in the field of running schools until the year 2011 when it started its first
school. The Plaintiffs are the only faction of the Shri Ram family which has been in
the field of running schools. The Defendant’s trustees have been on the board for
other educational institutions such as Lady Shri Ram College and Sri Ram College
d of Commerce. The Defendant has adopted the Trade mark SHRI RAM after 23 years
of use of the name SHRI RAM by the Plaintiffs for its schools and it has created
confusion and deception amongst the students, parents and large number of people
in India when two sets of schools are operating under the same name.
61. The learned Counsel for Defendant does not dispute the fact that the name/
surname are protectable under the law. Once the name/surname which are
e distinctive and used on commercial manner or put into commerce, the same are
protected as per the various judgments delivered by the courts including Supreme
Court. Few decisions are mentioned herein below:-
i) In the case of Mahindra and Mahindra (supra) the Defendant was restrained
from using the name/mark Mahindra which is the own name of the Defendant.
f ii) In the case of Dr. Reddy’s Laboratories Ltd. (supra) the Defendant’s surname
was Reddy, still the interim order was passed on account of mala fide user.
iii) In the case of B.K. Engineering Co. (supra) the Defendant was restrained
from using the mark BK being an abbreviation of their deceased mother’s name
Balwant Kaur.
iv) In the case of M/s. K.G. Khosla Compressors Ltd. and Ors. v. Khosla Extrakting
g Ltd. and Ors.16 1986 (6) PTC 211, the Defendants were restrained from using the
mark Khosla being surname of the Director of the Defendant company.
v) In the case of Bajaj Electricals Limited v. Metal & Allied Products and Anr.17, AIR
1988 Bom 167, the Defendants were restrained from its surname Bajaj in relation
to allied and cognate goods.
h vi) In the case of M/s. Virendra Dresses v. M/s. Varindra Garments18 AIR 1982
Delhi 482, the Defendants were restrained to use the name Varindra, which
was name of owner of the Defendant firm.
16 Ed.: MANU/DE/0219/1985: AIR 1986 Delhi 181: (1985) ILR 2 Delhi 416
i 17 Ed.: MANU/MH/0333/1988: 1988 (8) PTC 133 (Bom)
18 Ed.: MANU/DE/0292/1982: 1982 (2) PTC 233 (Del): 21 (1982) DLT 472: 1982 RLR 538:
(1982) 84 PLR 89

62. Learned Counsel for the Defendant has referred the following decisions in support
of his submissions: a
i) Bagla & Co. v. Bagla Cosmetics19, 2000 (20) PTC 355.
ii) Jaggi Ayurvedic Pharmacy v. Jaggi Ayurvedic Research Foundation20, 2010 (42)
PTC 769 (Del.)
iii) Precious Jewels & Anr. v. Varun Gems21, (2015) 1 SCC 160.
iv) Goenka Institute of Education & Research v. Anjani Kumar Goenka & Ors.22 2009 b
(40) PTC 393 (Del.)
v) Jay Engineering Works Ltd. v. Chinar Trust and Anr.23, 2005 (31) PTC 639.
vi) Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd.24, 2006 (32) PTC 307 (Del.)
a) With regard to the case of Bagla and Company (supra) the said case does
not help the Defendant as in the present case the business of running c
schools is not an offshoot of any original family business commenced by
the Patriarch Late Sir Shri Ram together with his sons under the SHRI
RAM name in relation to school. It is a fact that Late Sir Shri Ram did not
run any school under the name SHRI RAM. The Plaintiffs were the prior,
first and the only faction of the Shri Ram family to begin using the mark
SHRI RAM for schools. The Plaintiffs have no objection if the Defendant d
may use the mark/name SHRI RAM in relation to other activities except
running the services of schools.
b) The second case referred by Mr. Anand is Jaggi Ayurvedic Pharmacy
(supra); the facts of this case are different from the facts of the case at
hand. The Trade mark in question in this case i.e. JAGGI, was the family
surname whereas in the case at hand the Trade mark in question is the e
name of the grandfather of the parties i.e. SHRI RAM, and not their
surname. The use of the Trade mark JAGGI was started by the predecessor
of the parties to the suit for his ayurvedic clinic which name was
subsequently adopted by the sons and grandsons of the predecessor for
their respective ayurvedic businesses whereas in the case at hand it is a
fact that Late Sir Shri Ram did not run any school under the name SHRI f
RAM. The Plaintiffs were the first and the only faction of the Shri Ram
family to begin using the mark SHRI RAM for schools and create a
goodwill in the word SHRI RAM in relation to schools.
c) The third case referred by Mr. Anand is Precious Jewels (supra); the facts
of this case are different from the facts of the case at hand. The Trade
g
mark in question in this case i.e. RAKYAN, was the family surname
whereas in the case at hand the Trade mark in question is the name of the
grandfather of the parties i.e. SHRI RAM, and not their surname. Section
35 of the Act is therefore not applicable. That use of the Trade mark
RAKYAN was started by the predecessor of the parties to the suit for the
business of “jewellery” which name was subsequently adopted by the h
19 Ed.: MANU/DE/1625/2000
20 Ed.: MANU/DE/2933/2009
21 Ed.: MANU/SC/0656/2014: (2015) 1 SCC 160: 2014 (5) AWC 4353 (SC): 2014 (4) CDR
906 (SC): 2014 (60) PTC 465 (SC): 2014 (3) WLN 138 (SC): 2014 (9) SCALE 146
22 Ed.: MANU/DE/2229/2009: AIR 2009 Delhi 139: (2009) ILR 6 Delhi 415
i
23 Ed.: MANU/CP/0001/2005
24 Ed.: MANU/DE/0715/2006: 128 (2006) DLT 81

successors of the family for their respective jewellery businesses i.e. 15

a different jewellery businesses in total. Whereas in the case at hand it is a
fact that Late Sir Shri Ram did not run any school under the name SHRI
RAM. The Plaintiffs were the first and the only faction of the Shri Ram
family to begin using the mark SHRI RAM for schools. The Defendant at
the time of use was fully aware about the use of the Plaintiffs. Even when
the Plaintiffs come across the user, the Defendant was informed.
b
d) In the case of Goenka Institute of Education & Research (supra) the Court
observed that both the parties started using the name GOENKA as part
of its institutions i.e. Appellant had been using the name GOENKA as
part of the name of its trust since 1995 in different state i.e. Rajasthan
who claimed prior user as well as concurrent rights and the Respondent
c had been using the name GOENKA as part of its school name since the
year 1994. In the case at hand, the Defendant’s first SHRI RAM pre school
was established in the year 2011, whereas the schools under the name
SHRI RAM started in or around 2013-2014 and the Defendant trust under
the name SHRI RAM was started in the year 2010 as compared to the use
of the name SHRI RAM by the Plaintiff’s for its schools since the year
d 1988. The Defendant had started its school within the same area having
full knowledge about the well established school running by the Plaintiffs.
Therefore, the facts are materially different.
e) In the case of Jay Engineering Works Ltd. (supra) the court held that the
Applicant and both the Respondents have a common ancestor (the term
is being used in a general sense). They are legal persons who trace their
e origin to their founder Late Sir Shriram, well-known industrialist who is
also the founder of some of the premier educational institutions of Delhi.
This is reflected in the application where it is stated in Para 11 “The
Petitioner and the Respondent have been associated in business and
commonly known as Usha - Shriram Group of Companies.” It is further
stated in para 12 that both the parties have been marketing their products
f under the marks Usha and Usha Shriram and acted together and jointly
along with other group companies to restrain other parties from using
‘Usha’. The facts in the present case are dis-similar.
f) In Godrej Sara Lee Ltd. (supra) the Plaintiff had mislead the Court by
stating that it became aware of the disparaging activities of the Defendant
in September, 2005 when in actuality the advertisement had been running
g
since February, 2005. The Plaintiff was thus held to be guilty of
concealment of material facts and the interim order was vacated. The
facts in the said matter were totally different as each day delay in the
action of disposing of product of the Plaintiff on the television
advertisement is crucial. In the said matter, the Plaintiff alleged in the
h plaint that it came to know of the disparaging advertising in September,
2005. The court observed that it could not be possible as the alleged
disparaging advertisement was shown on commercial television on large
scale since February, 2005 on this account the interim order was lifted.
63. “Bona fide use” normally means the honest use by the person of his own name
without any intention to deceive anybody or without any intention to make use of the
i goodwill which has been acquired by another trader. The words “bona fide use” is the
governing words and heart and soul of the said Section. The party cannot blindly read
this Section that under the statute, he is entitled to use his own name, surname in respect
of same goods and services. No different meaning can be given to this Section, if the use
is not bona fide and the same is tainted and dishonest. Under these circumstances, this a
Section 35 of the Act would not apply in the facts of the present case.
64. Even otherwise no doubt proprietorship right claimed by the Plaintiff is to be
determined after the trial in the matter as to whether the mark SHRI RAM belongs to
the Plaintiff in respect of running the school or not or the Defendant being the family
member is entitled to claim any right to use the same. It is a matter of fact however b
prima facie this Court finds that the use of the name SHRI RAM in relation to running
of the schools particularly in the same area is not bona fide.
65. In the case at hand, the Plaintiffs have disclosed to the Court the fact that they
became aware of the Defendant’s infringing activities in the year 2011, which was
brought to the notice of the Defendant’s trustee by the Plaintiffs’ chairman at a personal
level as it was then a off pre-school. But immediately on becoming aware of the rampant c
opening of schools by the Defendant under the name SHRI RAM in the year 2014,
Plaintiffs initiated the present suit. There is a force in the argument of the Plaintiffs’
Counsel to extent that despite of communication, the Defendant has been continuing
to open the new schools by itself or through contract with the third party.
66. It also appears from the material placed on record that in respect of running the d
schools, no doubt the Plaintiffs are the prior user than the Defendant. One thing is also
clear between the family members that they would have always an understanding
between themselves that the confusion or deception does not occur. If the name SHRI
RAM is used for the last more than 65 years for college there is no Shriram College by
any other family members. Similarly for the past 58 years, no other college under the
name of Lady Shriram has been established by any member of the family. It means that e
all parties have maintained discipline so that no actual deception and confusion is
occurred and no harm would cause to other party/relation.
67. No doubt that the father’s of both the parties and grandfather were involved in
the field of education bearing the mark SHRI RAM prior to the schools of the Plaintiff
but it is a matter of fact, no school was run by them on commercial scale prior to the
date of the Plaintiffs who have no objection if the Defendant may claim legacy of f
grandfather Sir Shri Ram in relation to other activities of education except for running
the school. The Defendant has also issued large number of licenses and appointed
franchisees and is getting license fee, despite of e-mail written by the brother not to
allow them, otherwise quality of education and name of Shri Ram would be affected,
but the Defendant did not care about it.
g
68. It is pertinent to mention here that after filing the present suit, the Defendant had
entered into contract with their parties uptil March, 2015 disclosing that the
construction of twenty one more schools which are to be operated from the period of
1st September, 2015 to 1st April, 2020 under the name of Shri Ram Global Pre-School,
Shri Ram Centennial School at various parts of India despite of pendency of the suit.
The said information was provided by the Counsel for Defendant when the matter h
was put up for clarification. It is clear that the Plaintiffs have been able to prima facie
established the case of confusion, deception and prior user.
69. But at the same time there exists a unexplained delay of about 3 years in approaching
the court which prima facie indicates towards the inference as to acquiescence. This is
due to the reason that as per Plaintiffs own saying in the suit the Defendants adopted
i
the mark SHRI RAM in respect of the school in the Gurgaon region in the year 2011. If
the Plaintiffs and Defendants schools are established within the same region/area in

Gurgaon and the Plaintiffs are affected by the said misuse of the same, the Plaintiffs
a ought to have given the legal notice alarming the Defendant about the proprietary
rights over the mark SHRI RAM owned by the Plaintiffs.
70. The Plaintiffs have not adopted the said recourse but remained quiet knowing
well that the Defendant being its brother has been using the mark SHRI RAM in
respect of the schools in the year 2011 through Defendant without objecting to its
b misuse at the earnest opportunity given the fact that both the schools are located at
the proximity to each other. It is only in the year 2014, when the Defendant expanded
the schools in other areas which according to the Defendant are 19 in number, the
Plaintiffs approached this court objecting to the use of the mark SHRI RAM by the
Defendant. The caution notices issued by the Plaintiffs are also the notice to the
public not to mislead in believing that the Defendant school is belonging to Plaintiffs.
c But the Plaintiffs never objected by specifically directing the notice to the Defendant
in the year 2011 until the year 2014. The said no objection for the continuous period
of 3 years given the proximity of relation between the founding members of the
Plaintiffs and Defendant being real brothers and the admitted knowledge of the
Plaintiffs in the plaint can be good enough for the prima facie purposes as assent or
sitting by or encouragement allowing the Defendant to expand/grow its business
d without objecting to the misuse of the same all this while leading to prima facie
inference of the acquiescence. The said plea of unexplained delay leading of the
acquiescence is thus a relevant consideration for the passing off action, the grant of
the relief in which rests on the equitable considerations and is affected by the principle
of applicability of the acquiescence.
71. The grant or non grant of injunction has to be measured within the parameters of
e
three tests laid down by this court. However, the court must weigh the comparative
hardship of one party as against the another and has to decide whether the injunctory
relief is warranted or whether interim directions would suffice. Injunctions should
not result in extreme prejudice to the Defendant. The balance of convenience doctrine
is of essence in cases for consideration of the issue of grant of injunction.
f 72. In American Cyanamid v. Ethican (interlocutory) 1975 RPC 513 (at 541, 542), it was
observed that it was sufficient if a ‘triable issue’ was there. According to Lord
Diplock, the Court must also be satisfied if there is a “serious question to be tried”:
therefore it should not try to assess relative merits by looking into prima facie case in
the affidavit evidence but should instead turn at once to the balance of convenience;
if damages to be awarded at the trial can adequately compensate Plaintiff and the
g Defendant could pay them, injunction could be refused; if not, injunction could be
refused; if not, injunction could be granted; if Defendant could be compensated by
way of damages later by Plaintiff, injunction by way of damages later by Plaintiff,
injunction could be granted; where there is doubt about the adequacy of damages to
one or both; any factor which may affect balance of convenience is to be considered.
If the balance is even, the relative strength of the case is to be considered.
h
73. The principle of law relating to temporary injunction during pendency of the
suit is well recognized in the decision of the Supreme Court in the case of Dalpat
Kumar v. Prahlad Singh25 AIR 1993 SC 276. The relevant portion of the observations
of the Supreme Court in the said case states as under:-
i 25 Ed.: MANU/SC/0715/1991: 1993 CivilCC 507: JT 1991 (6) SC 502: (1992) 2 MLJ 49 (SC):
1992 (1) UJ 501: [1991] Supp 3 SCR 472: (1992) 1 SCC 719: 1991 (2) SCALE 1431: 1992 RD
210: 1993 (1) APLJ 25: 1991 RD Supp 462

“.....It is settled law that the grant of injunction is a discretionary relief. The
exercise thereof is subject to the Court satisfying that; a
(1) there is a serious disputed question to be tried in the suit and that an
act, on the facts before the court, there is probability of his being entitled
to the relief asked for by the Plaintiff/Defendant.
(2) The court’s interference is necessary to protect the party from the
species of injury. In other words, irreparable injury or damage would b
ensue before the legal right would be established at trial; and
(3) That the comparative hardship or mischief or inconvenience which is
likely to occur from withholding the injunction will be greater than that
would be likely to arise from granting it.
The Supreme Court further held:
c
“......Prima facie case is not to be confused with prima facie title which has
to be established, on evidence at the trial. Only prima facie case is a
substantial question raised, bona fide, which needs investigation and a
decision on merits. Satisfaction that there is a prima facie case by itself is
not sufficient to grant injunction. The court further has to satisfy that
non-interference by the court would result in ‘irreparable injury’ to the d
party seeking relief and that there is no other remedy available to the
party except one to grant injunction and he needs protection from the
consequence of apprehended injury or dispossession of apprehended
injury or dispossession. Irreparable injury, however, does not mean that
there must be no physical possibility of repairing the injury, but means
only that the injury must be a material one, namely on that cannot be e
adequately compensated by way of damages. The third condition also is
that ‘the balance of convenience’ must be in favour of granting injunction.
The court while granting or refusing to grant injunction should exercise
sound judicial discretion to find the amount of substantial mischief or
injury which is likely to be caused to the parties, if the injunction is
refused and compare it with that it is likely to be caused to the other side f
if the injunction is granted. If on weighing competing possibility or
probabilities of likelihood of injury and if the court considers that pending
the suit, the subject matter should be maintained in status quo, an
injunction would be issued. Thus the court has to exercise its sound
judicial discretion in granting or refusing the relief of ad interim injunction
pending the suit.” g
26
74. In M/s. Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and Others , AIR
1995 SC 2372, it was observed as under:-
“46.......The object of the interlocutory injunction is to protect the Plaintiff against
injury by violation of his right for which he could not be adequately
compensated in damages recoverable in the action if the uncertainty were h
resolved in his favour at the trial. The need for such protection has, however, to
be weighed against the corresponding need of the Defendant to be protected
against injury resulting from his having been prevented from exercising his
own legal rights for which he could not be adequately compensated. The court
26 Ed.: MANU/SC/0472/1995: 1995 (2) ARBLR 249 (SC): [1995] 84 CompCas 618 (SC): JT i
1995 (6) SC 3: (1996) 1 MLJ 15 (SC): 1996 (16) PTC 89 (SC): 1995 (2) UJ 698: [1995] Supp
2 SCR 514: (1995) 5 SCC 545: 1995 (4) SCALE 635: 1995 GLH (2) 594

must weigh one need against another and determine where the ‘balance of
a convenience’ lies. See: Wander Ltd. and Anr. v. Antox India P. Ltd.27 [1990] Supp.
SCC 727 at pp. 731-32. In order to protect the Defendant while granting an
interlocutory injunction in his favour the Court can require the Plaintiff to
furnish an under taking so that the Defendant can be adequately compensated
if the uncertainty were resolved in his favour at the trail.”
b 75. The injunction being an equitable remedy, the court has to exercise its discretion
from various facets which arise in particular set of circumstances in each matter.
There may be cases in which grant of an injunction will only meet the ends of justice
and an alternative safeguard for the preservation of rights of the challenging party
cannot at all be thought of. Thus, balance has to be strike down in the present case in
view of peculiar facts of the present case otherwise, great hardship would not only
c cause to the Defendant but also to the students and their family members who have
already paid their fees and have taken admission in the school. Their interest and
equity is involved. It would be appropriate that the Defendant be put to terms and
restricted interim orders for future purposes are passed of the Defendant instead of
issuance of injunction.
76. By disposing of interim application, the following orders are passed:
d
i) The Defendant is allowed to continue the schools under the mark SHRI
RAM as of today’s date, however the Defendant shall within the period of six
months display/use the disclaimer in their signboard and all stationary
material that they have no connection or relation with the Plaintiffs’ school.
ii) They are forthwith restrained from using the mark SHRI RAM in relation to
e running of schools which are under construction under the Contract to be opened
from the 1st September, 2015 to 1st April, 2020 as per the details provided by the
Defendant. However, it is clear that for future school which are yet to be run, the
Defendant would be entitled to give bona fide description in the nature that the
school is run by Vivan Bharat Ram under the legacy of his grandfather Shri Ram.
iii) The trial in the matter is expedited.
f iv) The order passed in the application shall have no bearing when the matter
would be finally decided after trial and the finding arrived on the issue of
delay would not be binding on other cases pending against the third parties as
the interim orders for existing schools are not passed in view of peculiar facts
and circumstances of the matter.
g 77. The application being I.A. No. 12216/2014 is disposed of accordingly.
I.A. No. 14188/2014
78. In view of detailed order passed in I.A. No. 12216/2014, the abovementioned
application for clarification of order dated 9th July, 2014 is also disposed of being
infructuous.
h CS (OS) No. 1980/2014
79. List the matter before the Joint Registrar for completion of admission/denial of
documents on 1st July, 2015.
i
27 Ed.: MANU/SC/0595/1990: 1990 (2) ARBLR 399 (SC): 1990 - 1 - LW 495: 1990 - 1 - LW
498: 1991 (11) PTC 1 (SC): 1990 Supp (1) SCC 727: (1990) II MLJ 2

MIPR 2015 (2) 0178*

a
KRBL Ltd.
v.
Lal Mahal Ltd. and Ors.
b
CS (OS) 427/2014
Coram
Indermeet Kaur, J.
Counsel c
For Appellant/Petitioner/Plaintiff: S.K. Bansal, Ajay Amitsha Suman, Pankaj Kumar,
Santosh Kumar and April Chandhal Jha, Advs.
For Respondents/Defendant: Mohan Vidhani, Rahul Vidhani and Ashish Singh,
Advs.
d
Cases referred
Kirorimal Kashiram Mktg and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill Tolly
Vill MANU/DE/2307/2010: 2010 (44) PTC 293 (Del): MIPR 2010 (3) 25
(Distinguished) [p. 0182, para 15 g]
Shri Gopal Engineering & Chemical Works v. M/s. POMX Laboratory MANU/DE/0048/
1992: AIR 1992 Delhi 302: 1992 (22) DRJ 504: 47 (1992) DLT 490 (Discussed) e
[p. 0184, para 21 c]
Wander Ltd. and Another v. Antox India (P) Ltd MANU/SC/0595/1990: 1991 (11) PTC 1
(SC): 1990 (2) ARBLR 399 (SC): 1990 - 1 - LW 495: 1990 - 1 - LW 498: 1990 Supp (1) SCC
727: (1990) II MLJ 2: 1990 (Supp) SCC 727 (Discussed) [p. 0184, para 20 a]
Warner Bros Entertainment Inc. And Another v. Harinder Kohli and Others MANU/DE/ f
1333/2008: 2008 (38) PTC 185 (Del): (2009) ILR 1 Delhi 722: 155 (2008) DLT 56:
MIPR 2009 (1) 274 (Discussed) [p. 0184, para 22 e]
Acts/Rules/Orders
Trade Marks Act, 1999 [p. 0179, para 1 d]
Copy Right Act, 1957 [p. 0179, para 1 d] g
Indian Companies Act, 1956 [p. 0179, para 2 e]
Issues and Findings
— Whether suit for permanent injunction seeking a restraint against Defendants
from dealing with Trademark/label ‘CHURCH GATE’ with device of ‘GATE’ or h
any other mark which is deceptively similar to Trademark of Plaintiff was liable
to be granted —
Held, This Court observed that there appeared to be an active concealment on
Plaintiff’s part. It has also not been disclosed by Plaintiff that two of his applications
No. 1580377 and 1436477 seeking registration of Trademark ‘INDIA GATE’ with i
* MANU/DE/0554/2015

2015] KRBL Ltd. v. Lal Mahal Ltd. and Ors. 0179
(Indermeet Kaur, J.)
device of ‘GATE’ had been refused. Moreover there was inordinate delay in
a approaching Court on Plaintiff’s part knowing fully well about continuous and
extensive use by Defendant of trade name/label ‘CHURCH GATE’ for sale of basmati
rice since 2005 was also unexplainable. Further documentary evidence filed
Defendants showed that he also had sale figures running into several lacs of sale of
his product i.e. basmati rice under trade name Lal Mahal since year 2005. There was
also no argument addressed by Plaintiff’s Counsel that there has been a dip in his
b sale or his business has been effected by sale being carried out by Defendant. Hence
in view of aforesaid circumstances this Court was of view that it would not be
proper to restrain Defendant from using impugned Trade mark/label. Irreparable
loss and injury would in fact be suffered by Defendant in case he was not permitted
to use Trade mark/label ‘CHURCH GATE’ which even as per admitted evidence
was being used by him since 2005.
c
Ratio Decidendi:
If a clear case against Defendant with respect to infringement of Trade mark is not
been made out then Plaintiff will not be entitled to a grant of permanent injunction
JUDGMENT
d
Indermeet Kaur, J.
I.A.No. 2842/2014 (under Order XXXIX Rules 1 & 2 of the CPC)
1. Present suit has been filed by the Plaintiff (M/s KRBL Limited) against the
Defendants under the Trade marks Act, 1999 and the Copy Right Act, 1957; relief of
e permanent injunction restraining infringement, passing off, rendition of accounts,
delivery etc. has been prayed for.
2. The Plaintiff is a company incorporated under the Indian Companies Act,
1956. It has a registered office at Lahori Gate, Delhi. It is engaged in the business
of processing, marketing and exporting of rice including basmati rice. In January,
2013, it had bona fidely and honestly adopted and started using the Trade mark/
f label ‘INDIA GATE’ with the device of ‘INDIA GATE’ and the said trade name
includes both the Trade mark label as also the device both individually,
collectively and as a whole. The Trade mark/label bears original artistic features
of placement, distinctive get up and make up and is protected under the Copy
Right Act as well.
g 3. The Plaintiff is carrying on its business in India as also overseas. The goods of the
Plaintiff are traded through extensive marketing and distribution channels. In 1993,
the export division of M/s. Khushi Ram Behari Lal (KRBL) adopted this Trade mark
‘INDIA GATE’ with the device of ‘INDIA GATE’ and has been exporting rice to
foreign countries since 1993. It has also built up its reputation and a valuable
goodwill over the years.
h 4. The Plaintiff has applied for registration of its Trade mark/label under the
Trade marks Act in Class 30 on 19 th March, 1999. That application is pending
adjudication. The Plaintiff has also filed another application for registration of its
Trade mark (in Class 30) on 24th July, 2002. The Trade mark of the Plaintiff has also
been widely advertized in Class 30. The global protection and recognition of the
rights of the Plaintiff and the Trade mark ‘INDIA GATE’ is thus vested with the
i Plaintiff. The copyright involved and the said Trade mark are the original artistic
work of the Plaintiff within the meaning of Indian Copyright Act. Its domestic sale

figure of sale of rice under said Trade mark/label is running into several Crores.
Its advertisement and marketing products also show that huge amounts are spent a
by the Plaintiff on this project.
5. The Defendants have allegedly adopted and have started using the Trade mark/label
‘CHURCH GATE’ with the device of ‘GATE’ in relation to its impugned goods i.e.
sale of rice which is an infringement upon the Trade mark/label of the Plaintiff. The
Trade mark/label adopted by the Defendants in relation to sale of goods which are b
identical i.e sale of rice shows that this Trade mark/label adopted by the Defendants
is phonetically, visually and structurally similar to that of the Plaintiff. The
Defendants have violated the rights of the Plaintiff.
6. The Plaintiff first learnt about the Defendants’ impugned Trade mark/label in the
first week of January, 2014 in New Delhi. In para 32 (cause of action), the Plaintiff
submits that the Plaintiff learnt about Defendant No. 2 adopting this impugned c
Trade mark in ‘CHURCH GATE’ through advertisement in a journal on
28th February, 2005 and consequently the Plaintiff has filed a notice of opposition
dated 12th August, 2005 to the application of Defendant No. 2 and the said opposition
is pending adjudication. However, the Plaintiff learnt about the impugned goods
being sold under the Trade mark/label ‘INDIA GATE’ with the device of ‘GATE’
only in the first week of January, 2014.
d
7. Suit has been filed for permanent injunction seeking a restraint against the
Defendants from dealing with the Trade mark/label ‘CHURCH GATE’ with the
device of ‘GATE’ or any other mark which is deceptively similar to the Trade mark
of the Plaintiff. Along with the suit, the present application has been filed.
8. Admittedly no ex-parte order had been passed in favour of the Plaintiff. Submission e
of the learned Counsel for the Plaintiff is that this is for the reason that the Defendants
were on caveat and as such since now the pleadings have been completed, the
matter is ripe for hearing. This Court notes that the suit was filed on 20th January, 2014.
9. The Plaintiff is admittedly not the registered owner of the Trade mark ‘INDIA
GATE’. The application seeking registration of the Trade mark ‘INDIA GATE’ is f
pending adjudication before the Competent Authority. The Plaintiff in support
of its case has placed reliance upon invoices (page 102 onwards of the documents
of the Plaintiff) dated as early as 11 th June, 1993 to substantiate its stand that
basmati rice under the brand name ‘INDIA GATE’ was being exported by the
Plaintiff to USA even at that point of time. Submission being reiterated that there
has been a continuous sale and marketing of the product of the Plaintiff under g
the brand name ‘INDIA GATE’ since 1993. However the documentary evidence
to show that the Plaintiff started business in India i.e. sale of basmati rice under
the brand name of ‘INDIA GATE’ is of the year 2000. (These documents start at
page 44 of the list of documents filed by the Plaintiff on 5th May, 2014) . These
invoices show that the Plaintiff company was selling rice to various traders in
Rajasthan, Madhya Pradesh and Delhi indicating the presence of the Plaintiff in h
this country which as per the documentary evidence filed by the Plaintiff was
from March, 2000. Learned Counsel for the Plaintiff has also drawn attention of
this Court to his advertisement campaign (w.e.f. 15 th February, 2005) to
substantiate this submission that the Plaintiff has spent lac of rupees on this
advertisement campaign and his Trade mark/label ‘INDIA GATE’ with the
device of ‘GATE’ has established goodwill and reputation qua this Trade mark/ i
label. Attention has also been drawn to certain orders which have been passed

by the Courts where the Plaintiff had come up in opposition against the use of
a mark ‘BOMBAY GATE’, ‘ROYAL GATE’ etc. and the Plaintiff had obtained
injunctions. Admittedly, these were injunctions which had been obtained
ex-parte. Learned Counsel for the Plaintiff has not been able to point out a single
instance where in a contested matter, he has been granted an injunction order.
10. The Defendants have opposed his prayer. Written statement as also reply to
b the pending application have been filed. First submission is that the Plaintiff has
not come to the Court with clean hands. He has failed to disclose that two
applications No. 1580377 and 1436477 filed by the Plaintiff seeking registration
in Class 30 of the trade name/label ‘INDIA GATE’ have both been refused by the
Registrar of Trade marks. He has concealed this fact. Second submission is that
there is a delay in coming to the Court. This suit has been filed in January, 2014
c when admittedly the Plaintiff knew about the use of Trade mark/label by the
Defendants for the sale of rice by the Defendants as way back as in the year 2005
and this is clear from the opposition proceedings which were pending before the
Trade mark Authority.
11. The fact that these proceedings were pending before the Registrar of Trade marks
is an admitted position. The proceedings before the Trade mark Authority show that
d an opposition by way of a counter statement had been filed by the Defendants
wherein the Defendants had categorically stated that he has been using the Trade
mark ‘CHURCH GATE’ continuously and exclusively since the year 1991 i.e. prior
to the user by the Plaintiff and he has in fact acquired and retained exclusive rights
to the use thereof under the common law. Thus the submission of the Defendants is
that there is a huge delay in approaching this Court and on this ground alone, the
e
Plaintiff is not entitled to an injunction. It is pointed out by the learned Counsel for
the Defendants that it was Vikram Roller Flour Mills Ltd. who had initially obtained
registration of Trade mark ‘INDIA GATE’ with the device of ‘GATE’ and a suit had
also been filed by Vikram Roller Flour Mills challenging this proposition. A consent
order dated 21st April, 2014 has been placed on record by both the parties wherein
f the Plaintiff (KRBL Ltd.) was permitted to use the Trade mark ‘INDIA GATE’ with
respect to rice and the Defendants who were also selling products under the brand
name ‘INDIA GATE’ were permitted to use Trade mark ‘INDIA GATE’ for Aata,
Maida, Rawa, Suzi and Bran. This was a consent order. The submission of the
Defendant on this count being that the use of the Trade mark/label ‘INDIA GATE’
had not been opposed by the Plaintiff in those proceedings and in fact he had
g permitted user of the same Vikram Roller Flour Mills Ltd for the sale of Aata, Maida,
Rawa, Suzi and Bran.
12. Defendant has denied that the Plaintiff is a prior user of the aforenoted Trade
mark/label. It is pointed out that no single person can have exclusive rights of the
device ‘INDIA GATE’ which is a monument and nobody can have any claim over a
monument of such a nature. It is reiterated that the Defendant is in fact the prior user
h of the aforenoted Trade mark/label and the Plaintiff is not entitled to any relief. The
Defendant in support of his stand has placed reliance on documentary evidence
which includes invoices of the year 2005 evidencing the submission of the Defendant
that he has been selling basmati rice under the Trade mark/label ‘CHURCH GATE’
with the device of ‘GATE’ and Kendriya Bhandar (a Government of India
undertaking) has also placed orders worth several lacks upon it; he is not a casual
i seller; he has also acquired a reputation and goodwill in that mark which cannot
now be disturbed by the Plaintiff.

13. The Trade mark applications filed by the Defendant before the Trade mark
Authority on 28th June, 1999 and on 25th October, 2004 both clearly state that the a
Defendant is seeking registration of the Trade mark ‘CHURCH GATE’ in respect of
rice which he is using since 1st April, 1991.
14. It is not in dispute that the Defendant was earlier a company incorporated under
the name of “Shiv Nath Rai Har Narain India Limited” which had subsequently
changed its name to “Lal Mahal Ltd.” This was vide certificate of incorporation b
dated 4th March, 2009. The invoices and bills of the Defendant ranging from April,
2004 to the year 2014 showing sales of ‘CHURCH GATE’ long grain rice in the
Indian Market in New Delhi have been placed on record. These are not stray
documents but from continuous periods of time ranging from April, 2004 up to 2008
and thereafter from 2008 up to 2014. The invoices reflect that the newly incorporated
company Lal Mahal Limited (which had been substituted for Shiv Nath Rai Har c
Narain India Limited) was marketing Lal Mahal Basmati rice in huge quantities in
the Indian market. These documents are in fact almost 160 in number showing the
sale of basmati rice by the Defendant under its brand name ‘CHURCH GATE’.
15. Submission of the Plaintiff on this count is that these documents appear to be
forged and fake as they are computer generated print outs and have not been certified
and for this purpose, he has placed reliance upon 2010 (44) PTC 293 (Del) (DB)
d
Kirorimal Kashiram Mktg and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill Tolly
Vill1. This argument is ill-founded. No doubt these documents are generated from
the computer. They are invoices but they have been certified as true copies and the
true copies have been signed by the authorized signatory of the Defendant bearing
the stamp of the Defendant company. The very fact that the documents have been
e
generated from the computer in February, 2014 clearly answers the argument of the
learned Counsel for the Plaintiff that for this reason they bore the stamp of Lal
Mahal Ltd as at this point of time (February, 2014) it was the Lal Mahal Limited
which was the new company and had substituted the earlier company Shiv Nath
Rai Har Narain India Limited and this obviously was stamped under the stamp of
Lal Mahal Ltd. These documents ranging from 2005 to 2014 (almost 160 in number) f
are not casual stray papers; they disclose the bill amounts, quantity of goods supplied
and the parties to whom they have been supplied. The orders placed by Kendriya
Bhandar (a Government of India Undertaking) from December, 2007 and
continuously thereafter and further documents showing that this delivery was also
in fact made to Kendriya Bhandar. These documents on the face of it cannot be
rejected. The ratio of Kirorimal Kashiram (supra) is inapplicable. g
16. Moreover, the Plaintiff also supplying its rice to Kendriya Bhandar and thus
also fortifies the submission of the Defendant that the Plaintiff was well within the
know-how of the rice product being marketed by the Defendant even in the year 2007.
This is also substantiated from the averments made by him before the Trade mark
Authority where in the post grant opposition proceedings, in the counter statement
filed by the Defendant to the opposition proceedings (initiated by the Plaintiff) , he h
had categorically stated that he was using ‘CHURCH GATE’ in Class 30 i.e. for the
sale of rice since the year 1991 continuously and extensively in the course of trade
and even prior to the use of the Plaintiff. These words clearly reflect the stand of the
Defendant which was that he was using the trade name ‘CHURCH GATE’ “in the
i
1 Ed.: MANU/DE/2307/2010: MIPR 2010 (3) 25

course of his trade” which was sale of rice (he had sought registration under Class
a 30) continuously and extensively since 1991. These proceedings also disclose that
the advertisement of the Defendant had appeared in Journal No. 1328, Suppl-IV,
dated 28th February, 2005. These facts were thus well known to the Plaintiff as it was
in the proceedings initiated by him that the counter statement has been filed by the
Defendant and thus the averment of the Plaintiff that he learnt about the goods of
the Defendant being marketed in India only in January, 2014 is clearly a misstatement.
b
The Plaintiff is guilty not only of delay and latches but also of misleading the Court.
17. The facts as prima facie disclosed by the respective parties show that both the
parties are not registered users of the Trade mark. The Plaintiff has applied for
registration of Trade mark/label ‘INDIA GATE’; this was in the year 1993; the
Defendant’s application seeking registration of the Trade mark ‘CHURCH GATE’
c is also pending since 28th June, 1999; in this application, he has claimed user since
the year 1991. The documentary evidence adduced by the Plaintiff shows that he
was marketing this product outside the country from 1993 i.e. he had export
consignments; in the Indian market, he had started selling his goods from the year
2000. The documentary evidence produced by the Defendant shows that in the
opposition proceedings initiated by the Plaintiff and pending before the Trade mark
d Authority even in the year 2005 had claimed user of the Trade mark ‘CHURCH
GATE’ for selling rice since under their said brand name since the year 1991. His
documentary evidence showing invoices and sale figures continuously from 2005
to 2014 in the Indian market have also been perused.
18. There also appears to be an active concealment on the part of the Plaintiff in not
informing to the Court that he did not know about the sale of the product by the
e
Defendant under the trade name/trade mark/label ‘CHURCH GATE’; this is evident
from the fact that in the opposition proceedings pending before the Trade mark
Authority, categorical assertions have been made by the Defendant that he is
continuously and extensively using this mark in the course of trade; meaning thereby
that he is selling its product and is engaged in the manufacture and sale of this
f product i.e. rice. He has always described himself as a manufacturer and merchant
of this product and this is clear from his certificate of incorporation dated
4th March, 2009 of Shri Lal Mahal Ltd. Thus the submission of the learned Counsel
for the Plaintiff that he learnt about the sale of goods under the impugned trade
name ‘CHURCH GATE’ by the Defendant only in January, 2014 is clearly a false
statement. The documentary evidence further establishes that both the parties have
g been in the market actively since the last more than 10 years. Both the parties have
enormous sale figures. The Plaintiff is selling his basmati rice under the name of
‘INDIA GATE’; the defending is selling its product under the brand name/label/
trade name ‘CHURCH GATE’. Both of them are unregistered.
19. In an action of passing off in order to succeed in getting an interim injunction,
the Plaintiff has to establish user of the mark prior in point of time than the impugned
h user by the Defendant. It is an action necessarily based on the principle of equity
and fair play. It is a discretionary relief which the Court may or may not grant
depending upon the factual matrix of the case which has been built by the parties.
Common use is paramount. The Defendant is not permitted to defeat the right of the
Plaintiff if he establishes that he has been a concurrent user or that the Defendant
has been using the mark for a considerable length of time with the knowledge of the
i Plaintiff. The Defendant has established this.

20. The Supreme Court in 1991 PTC-1 Wander Ltd. and Another v. Antox India (P) Ltd.2
while dealing with the grant of an interim injunction in medicinal products had a
noted as under:-
“Usually, the prayer for grant of an interlocutory injunction as at a stage when the
existence of the legal right asserted by the Plaintiff and its alleged violation are both
contested and uncertain and remain uncertain till they are established at the trial on
evidence. The court, at this stage acts on certain well-settled principles of b
administration of this form of interlocutory remedy which is both temporary and
discretionary. The object of the interlocutory injunction, it is stated is to protect the
Plaintiff against injury by violation of his rights for which he could not adequately
be compensated in damages recoverable in action if the uncertainty were resolved in
his favour at the trial. The need for such protection must be weighed against the
corresponding need of the Defendant to be protected against injury resulting from c
his having been prevented from exercising his legal rights for which he could not
adequately compensated. The Court must weigh one need against another and
determine where the “balance of convenience lies.”
21. In AIR 1992 Delhi 302 Shri Gopal Engineering & Chemical Works v. M/s. POMX
Laboratory 3, the Court had noted that where the Plaintiff had learnt about the
infringement action in a case of passing off in June, 1990 and again in July 1990 but
d
had waited up to September, 1991 to file a suit, he was not entitled to any interim
relief as he could not cross the hurdle of delay. In this case, the Court had noted that
both the parties are in concurrent trade and there was nothing to show that because
of the presence of the Defendant, the business of the Plaintiff had suffered and its
sale figure had decreased. In this case also, there is no such averment. It is not the
e
case of the Plaintiff that by the continuous sale of basmati rice by the Defendant
under the trade name ‘CHURCH GATE, there has been any decrease in the sale
figures or that his business has suffered on this count.
22. In 2008 (38) PTC 185 (Del) Warner Bros Entertainment Inc. And Another v. Harinder
Kohli and Others4 while dealing with an interim application under Order XXXIX
Rules 1 & 2 of the CPC in an action of passing off, the Court had noted that delay in f
approaching the Court is fatal; an application seeking interim relief on this ground
alone is liable to be rejected.
23. Noting all the aforenoted parameters and the guidelines laid by the Court, this
Court is of the view that not only has there been an inordinate delay on the part of
the Plaintiff in approaching the Court, there also appears to be an active concealment
g
on the part of the Plaintiff. That Plaintiff has also not disclosed that two of his
applications No. 1580377 and 1436477 seeking registration of the Trade mark ‘INDIA
GATE’ with the device of ‘GATE’ had been refused. This was liable to be disclosed.
He did not do so for the reasons best known to him. The inordinate delay in
approaching the Court on the part of the Plaintiff knowing fully well about the
continuous and extensive use by the Defendant of the trade name/label ‘CHURCH h
GATE’ for sale of basmati rice since 2005 is also unexplainable. Admittedly
2 Ed.: MANU/SC/0595/1990: 1990 (2) ARBLR 399 (SC): 1990 - 1 - LW 495: 1990 - 1 - LW
498: 1990 Supp (1) SCC 727: (1990) II MLJ 2: 1990 (Supp) SCC 727
i
3 Ed.: MANU/DE/0048/1992: AIR 1992 Delhi 302: 1992 (22) DRJ 504: 47 (1992) DLT 490
4 Ed.: MANU/DE/1333/2008: (2009) ILR 1 Delhi 722: 155 (2008) DLT 56: MIPR 2009 (1) 274

proceedings are pending before the Trade mark Authority since 2005 and the Plaintiff
a having approached the Court in January, 2014 and on the other hand, the
documentary evidence filed by the Defendants showing that he also has the sale
figures running into several lac of the sale of his product i.e. basmati rice under the
trade name Lal Mahal since the year 2005 and there also being no argument addressed
by the learned Counsel for the Plaintiff that there has been a dip in his sale or his
business has been effected by the sale being carried out by the Defendant, this Court
b
is of the view that at this stage, it would not be proper to restrain the Defendant from
using the impugned Trade mark/label. Balance of convenience is not in favour of
the Plaintiff. He has not been able to make out a prima facie case in his favour.
Irreparable loss and injury would in fact be suffered by the Defendant in case he is
not permitted to use Trade mark/label ‘CHURCH GATE’ which even as per the
c admitted evidence is being used by him since 2005. Otherwise case of the Defendant
is that he is a user since 1991.
24. All these require a trial. It requires adjudication. The Court had initially put a
query to the learned Counsel for the parties that the matter could be expedited in
trial but the learned Counsel for the Plaintiff wanted a judgment on merits.
25. Application of the Plaintiff is accordingly dismissed.
d
26. This Court deems it fit to expedite the trial. Accordingly, Mr.P.K.Saxena, (retired
ADJ, Mobile No. 9910384668) is appointed as Local Commissioner to conclude the
evidence within a period of eight months from the date of receipt of the order. The
list of witnesses will be filed by the parties within two weeks after exchanging
copies. The Plaintiff will file affidavit by way of evidence within three weeks thereafter
e with advance copy to the learned Counsel for the Defendants. The fee of the Local
Commissioner is fixed provisionally at Rs. 1,00,000.
CS (OS) 427/2014
27. List before the Local Commissioner for cross-examination of the witnesses of the
Plaintiff on 25th March, 2015.
f

MIPR 2015 (2) 0186*

a
Glaxo Group Ltd. and Ors.

v.
S.D. Garg and Ors.
b
CS (OS) 12/2006
Coram
Najmi Waziri, J.
Counsel c
For Appellant/Petitioner/Plaintiff: Manav Kumar, Adv.
For Respondents/Defendant: Inder Deep Singh, Adv.
Authority referred
McCarthy on Trade marks. 3rd Edn. para 23.12 [p. 0190, para 8 g] d
Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd., 1942-59 RPC 127
[p. 0188, para 3 f]
Cases referred
e
Cadila Health Care Limited v. Cadila Pharmaceuticals Limited MANU/SC/0199/2001:
AIR 2001 SC 1952: (2001) 2 GLR 491: JT 2001 (4) SC 243: 2001 (1) UJ 669: (2001) 5
SCC 73: 2001 (3) SCALE 98: [2001] 2 SCR 743: 2001 GLH (2) 53 (Discussed)
[p. 0187, para 3 h]
K. Krishna Chettiar v. Ambal & Co. MANU/SC/0303/1969: AIR 1970 SC 146: 1970 (1)
AnWR 21: (1969) 2 SCC 131: [1970] 1 SCR 290 (Mentioned) [p. 0188, para 3 b] f
Novartis AG v. Crest Pharma Pvt. Ltd. & Anr. MANU/DE/1587/2009: 2009 (41) PTC
57 (Del): MIPR 2010 (1) 44 (Mentioned) [p. 0187, para 3 h]
Veerumal Praveen Kumar v. Needle Industries (India) Ltd. and Anr. MANU/DE/0757/2001:
2001 (21) PTC 889 (Del): 93 (2001) DLT 600 (Mentioned) [p. 0189, para 6 f]
Issues and Findings g
Trademark — Infringement of Trademark — Entitlement to permanent injunction

infringement of Trademarks ‘ZANTAC’ and ‘ZINETAC’ and their passing-off is
sustainable —
Held, In present case, both the Plaintiffs’ medicinal product ‘ZANTAC’ and h
‘ZINETAC’ and Defendants’ ‘GENTAC’ contain Ranitidine Hydrochloride,
which is used in treatment of gastric ailments. Moreover it was apparent that
GENTAC is manufactured and sold in form of injection vials while Plaintiffs’
ZANTAC and ZINETAC are sold in form of tablets they are Schedule H drugs.
This Court notes that two classes of medicinal products are Schedule ‘H’ drugs.
Further this Court was unpersuaded by Defendants’ contention that since i
* MANU/DE/1488/2015

2015] Glaxo Group Ltd. and Ors. v. S.D. Garg and Ors. 0187
(Najmi Waziri, J.)
medicinal products can be procured only through valid prescription, there wasn’t
a any likelihood of confusion in mind of buyer. Also degree of caution in medicinal
and surgical products is greater so as to avoid causing any harm to unsuspecting
consumer. Phonetic similarity is vital in adjudication of a suit for infringement
of Trademark apropos medicinal products. Furthermore it is established that
ZANTAC and ZINETAC are registered Trademarks of Plaintiffs. Hence this Court
was of view that Plaintiffs have made out a case of infringement and passing off
b by Defendants.
JUDGMENT
Najmi Waziri, J.
1. This suit seeks permanent injunction against infringement of the Trade marks
c ‘ZANTAC’ and ‘ZINETAC’ and their passing-off by the Defendants. Plaintiff No. 1
is a company incorporated under the laws of the United Kingdom while Plaintiff
No. 2 was incorporated in India in 1924 under the name of H.J. Foster & Co. It
became a wholly owned subsidiary of Joseph Nathan & Co. in 1926. In October
2001, Plaintiff No. 2 was renamed as GlaxoSmithKline Pharmaceuticals Ltd.,
following the merger with SmithKline Beecham Pharmaceuticals (India) with Glaxo
d India Limited.
2. Plaintiff No. 1 is the owner of the Trade marks ‘ZINETAC’ and ‘ZANTAC’, which
were registered in the year 1985 and 1981 respectively. The Trade marks are
associated with medicinal preparation, and it contains ‘Ranitidine Hydrochloride’
which is used in the treatment of gastric ailments. It is stated that ‘ZANTAC’ is
e administered in the form of tablets, suspension and injection. It is the case of the
Plaintiffs that these two Trade marks have been used in India consistently and
extensively to the extent that a common man might associate these names for the
treatment of gastric ailments, akin to how one would associate popular branded
Paracetamol tablets for the treatment of fever. It is stated that the Plaintiffs’
pharmaceutical products bearing the marks ‘ZINETAC’ is extensively sold in India;
f whereas the medicinal products bearing the Trade mark ‘ZANTAC’ is available in
many parts of the world. As a result of their extensive recognition and goodwill, the
two Trade marks have come to be associated exclusively with the medicinal products
manufactured and traded by the Plaintiffs. It is further submitted that the Defendants’
action of reproduction of the Plaintiffs’ medicinal products under a deceptively
similar mark ‘GENTAC’ amounts to infringement of their registered Trade marks
g and also to passing-off.
3. Mr. Manav Kumar, the learned Counsel for the Plaintiffs submits that while the
Plaintiffs medicinal product are predominantly sold in the form of tablets as opposed
to the Defendants’ selling their medicinal product in the form of injection vials, the
method of administration of the medicines would not affect the Plaintiffs’ suit against
infringement. The learned Counsel further submits that in a suit for infringement
h what requires determination is, whether the infringing products are likely to create
confusion in the mind of a purchaser. In support of this contention, the learned
Counsel relies upon Cadila Health Care Limited v. Cadila Pharmaceuticals Limited1 AIR
2001SC 1952 and Novartis AG v. Crest Pharma Pvt. Ltd. & Anr.2 2009 (41) PTC 57(del).
1 Ed.: MANU/SC/0199/2001: (2001) 2 GLR 491: JT 2001 (4) SC 243: 2001 (1) UJ 669:
i
(2001) 5 SCC 73: 2001 (3) SCALE 98: [2001] 2 SCR 743: 2001 GLH (2) 53
2 Ed.: MANU/DE/1587/2009: MIPR 2010 (1) 44

The learned Counsel submits that ‘ZANTAC’ is an invented word having no specific
dictionary meaning thereby containing a high degree of distinctiveness. In such a
circumstances, the Defendants’ action to use the mark ‘GENTAC’ would amount to
passing off and infringement of the Plaintiffs’ Trade marks. Apart from the packaging
of GENTAC being similar to that of the Plaintiffs’ medicinal products, the learned
Counsel submits that ‘GENTAC’ is phonetically similar to that of the Plaintiffs’
medicinal products. There is hardly a discernible difference between the two classes
b
of medicinal products. The difference between ZANTAC and GENTAC is rather
difficult to be differentiated by a man with average intelligence. Furthermore, keeping
in view of the literacy rate of the population in the country, it is likely that a purchaser
would buy GENTAC instead of the Plaintiff’s products. In support of this contention,
the learned Counsel relies on K. Krishna Chettiar v. Ambal & Co.3 AIR 1970 SC 146
which held: c
“9. The vital question in issue is whether, if the Appellant’s mark is used in a
normal and fair manner in connection with the snuff and if similarly fair and
normal user is assumed of the existing registered marks will there be such a
likelihood of deception that the mark ought not to be allowed to be registered?
(see in the matter of Broadhead’s Application for registration of a Trade mark,
1950-67 RPC 209). It is for the Court to decide the question on a comparison of d
the competing marks as a whole and their distinctive and essential features.
We have no doubt in our mind that if the proposed mark is used in an normal
and fair manner the mark would come to be known by its distinguishing
feature “Andal”. There is a striking similarity and affinity of sound between
the words “Andal” and “Ambal”. Giving due weight to the judgment of the
Registrar and bearing in mind the conclusions of the learned Single Judge and e
the Divisional Bench, we are satisfied that there is a real danger of confusion
between the two marks.
10. There is no evidence of actual confusion, but that might be due to the fact
that the Appellant’s trade is not of long standing. There is no visual resemblance
between the two marks, but ocular comparison is not always the decisive test.
The resemblance between the two marks must be considered with reference to f
the ear as well as the eye. There is a close affinity of sound between Ambal and
Andal.
11. In the case of Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd., 1942-
59 RPC 127, it was found that cola was in common use in Canada for naming
the beverages. The distinguishing feature of the mark coca cola was coca and g
not cola. For the same reason the distinguishing feature of the mark Pepsi Cola
was Pepsi and cola. It was not likely that any one would confuse the word
Pepsi with coca. In the present case the word “Sri” may be regarded as in
common use. The distinguishing feature of the Respondent’s mark is Ambal
while that of the Appellant’s mark is Andal. The two words are deceptively
similar.” h
i
3 Ed.: MANU/SC/0303/1969: AIR 1970 SC 146: 1970 (1) AnWR 21: (1969) 2 SCC 131:
[1970] 1 SCR 290

(Najmi Waziri, J.)
4. The learned Counsel further submits that since both parties are involved in the
a manufacture and trade of identical products, it is possible that the buyers would
confuse the Defendants’ product to be that of the Plaintiffs’. It is submitted that the
past actions of the Defendant reflect their intention to infringe the Plaintiffs’ registered
Trade marks. It is stated that the Plaintiffs had initiated a suit for infringement of
Trade marks and copyrights, being suit No. 326 of 2004, against the Defendant
when the latter started to manufacture a medicine under the trade name ‘BECNATE’
b
with a packaging similar to that of the Plaintiffs’ product ‘ BETNOVATE’. However,
by order dated 6 th April, 2005, this Court restrained the Defendants from
manufacturing or dealing in products that were similar to the product of the
Plaintiffs.
5. Mr. Inder Deep Singh, the learned Counsel for the Defendants submits that the
c Trade mark ‘ZANTAC’ is not associated with any medicinal product and that the
Trade mark is a dummy registration. Furthermore, the Plaintiffs have failed to lead
evidence apropos ‘ZINETAC’. Under such circumstances, the Plaintiffs cannot claim
any protection of their Trade marks. It is submitted that while ‘GENTAC’ has
commercial goodwill, the Plaintiffs have failed to show the existence of the same for
their products. It is submitted that there can be no possible cause for confusion
d between the two classes of the medicines as the Defendants’ product is exclusively
sold in the form of injections as opposed the Plaintiffs’ products being sold in the
form of tablets. In addition, the two classes of medicines being ‘H’ scheduled drugs;
a buyer cannot procure the medicines without producing a medical prescription to
the chemist. Accordingly, it is submitted, that there is no possibility of any confusion
being created in the mind of the buyer.
e
6. The learned Counsel further contends that the Plaintiffs cannot claim an
infringement of a Trade mark when they have failed to prove that the said registration
subsists; that the Plaintiffs have not produced any document to show that they have
applied for renewal of the registration of Trade marks and that non-use of a Trade
mark for a long period of time would bar the Applicant from such seeking registration
f or renewal thereof. It is submitted that the object of a registered Trade mark is to
enable proprietorship over the same when it is put to use and not to monopolize the
Trade mark indefinitely. On this point, the learned Counsel relies upon Veerumal
Praveen Kumar v. Needle Industries (India) Ltd. and Anr.4 93(2001) DLT 600(DB) wherein
this Court held:
“33. On appreciation of the facts of the case we are unable to agree with the
g conclusion of the learned Single Judge that the adoption of the Trade mark
‘555’ is dishonest. Delay simplicitor may not be a defence in a suit for
infringement of Trade mark but where a trader allows a rival trader to expend
money over a considerable period in building up a business with the aid of a
mark similar to his own he will not be allowed to stop his rivals’ business. If he
were permitted to do so great loss would be caused not only to the rival trader
h but to those who depend on his business for their livelihood. (Reference to
Law of Trade marks and Passing Off by P. Narayanan, 5th Edition, page 444)
34. It may, however, be pointed out that there cannot be any hard and fast rule
in determining the cut-off point when non-use of the registered mark would
i
4 Ed.: MANU/DE/0757/2001: 93 (2001) DLT 600

disentitle the trader to any protection. It would depend upon the facts and
circumstances of each case.” a
7. The learned Counsel for the Defendants submits that GENTAC has been
approved by the Drug Licensing Authority to be sold to the public. Accordingly,
once the approval of the Drug Licensing Authority is obtained, the Plaintiffs cannot
restrain the Defendants from manufacturing the injections. In such circumstances,
the Plaintiffs have failed to make out a case for infringement and passing off and b
the suit ought to be dismissed.
8. The Court, while adjudicating a suit for infringement of Trade mark, is required to
consider the Trade mark in its entirety. The primary claim of the Plaintiffs is that the
Defendants’ medicinal product ‘GENTAC’ is deceptively similar to the Plaintiffs’
medicinal products ‘ ZANTAC’ and ‘ZINETAC’ in terms of the packaging, trade
style and the phonetic similarity. Under such circumstance, the Plaintiffs are required c
to show that the Defendants’ products are deceptively similar to the Plaintiffs’
registered medicinal products. In pursuance of establishing the similarity between
the two classes of medicinal products, ZANTAC, ZINETAC marked as Ex Pw1/ 5
and GENTAC marked as Ex Pw 1/8 respectively are placed on record. On a perusal
of the exhibits, this Court finds that, insofar as similarity of the trade style is
concerned, the two classes of the medicinal products contain different packaging d
and trade style. On this facet alone, this Court is of the view that the two categories
of medicinal products are visually distinct. However, this Court is concerned with
the phonetic similarities between the two classes of medicines. It is to be noted that
the product in question is to be assessed in its entirety and not based on one of the
characters alone. The need to distinguish between the products is greater when the
Trade mark in question pertains to medicinal products preparations. In Cadila (supra) e
the Supreme Court has laid down the considerations the Court would have to bear
when the products in question relate to pharmaceutical products. The Supreme
Court observed:
“ 32. Public interest would support lesser degree of proof showing confusing
similarity in the case of Trade mark in respect of medicinal product as against f
non-medicinal products. drugs are poisons, not sweets. Confusion between
medicinal products may, therefore, be life threatening, not merely inconvenient.
Nothing (sic) the frailty of human nature and the pressures placed by society
on doctors, there should be as many clear indicators as possible to distinguish
two medicinal products from each other. It is not uncommon that in hospitals,
drugs can be requested verbally and/or under critical pressure situations. g
Many patients may be elderly, infirm or illiterate. They may not be in position
to differentiate between the medicine prescribed and bought which is ultimately
handed over to them. This view finds support from McCarthy on Trade marks.
3rd Edition para 23.12. of which reads as under:
“The tests of confusing similarity are modified when the goods involved are
medicinal products. Confusion of source or product between medicinal products h
may produce physically harmful results to purchaser and greater protection is
required than in the ordinary case. If the good involved are medicinal products
each with different effects and designed for even subtly different uses, confusion
among the products caused by similar marks could have disastrous effects. For
these reasons, it is proper to require a lesser quantum of proof of confusing
similarity for drugs and medicinal preparations. The same standards has(sic) i
been applied to medical products such as surgical sutures and clavicle splints.”

(Najmi Waziri, J.)
9. In the present suit, both the Plaintiffs’ medicinal product ‘ZANTAC’ and
a ‘ZINETAC’ and the Defendants’ ‘GENTAC’ contain Ranitidine Hydrochloride,
which is used in the treatment of gastric ailments. From the exhibits, it is apparent
that GENTAC is manufactured and sold in the form of injection vials while the
Plaintiffs’ ZANTAC and ZINETAC are sold in the form of tablets they are Schedule
H drugs. The Court notes that the two classes of medicinal products are Schedule
‘H’ drugs. The Court is unpersuaded by the contention of the Defendants that since
b
the medicinal products can be procured only through valid prescription, there wasn’t
any likelihood of confusion in the mind of the buyer. While there may be certain
amount of assurance to the purchaser of medicines against prescriptions but it does
not obviate or negate the likelihood of confusion by an illiterate person or one under
stress, given the very high degree of phonetic similarity between the two competitive
c names for the same cure. The degree of caution in medicinal and surgical products
in greater so as to avoid causing any harm to the unsuspecting consumer. Phonetic
similarity is vital in the adjudication of a suit for infringement of Trade mark apropos
medicinal products. The Supreme Court in Cadila observed:
“ 33.[...] A stricter approach should be adopted while applying the test to judge
the possibility of confusion of one medicinal product for another by the
d consumer. While confusion in the case of non- medicinal products may only
cause economic loss to the Plaintiff, confusion between two medicinal products
may have disastrous effects on health and in some cases life itself. Stringent
measures should be adopted specially where medicines are the medicines of
last resort as any confusion in such medicines may be fatal or could have
disastrous effects. The confusion as to the identity of the product itself could
e have dire effects on the public health.”
It is important to note that the English language is not the primary language to
many in this country. There is a very large percentage of population who are unaware
of the English nuances of the language. The rural population, who are yet to acquire
fluency in the language, may be confused by the phonetic similarity between the two
classes of the medicinal products. Though the medicines are used in the treatment of
f
the same ailment, it does not negate the possibility of side effects from the medicines.
It is established that ZANTAC and ZINETAC are registered Trade marks of the
Plaintiffs. The argument of the Defendants that ZANTAC is not associated with any
medicinal preparation and that the same is only a dummy registration of the Plaintiffs
does not hold merit in the light of the fact that the Plaintiffs have placed on record a
g sample of Ranitidine Hydrochloride tablets bearing the Trade mark ‘ZANTAC’.
Furthermore, the Plaintiffs have produced the registration certificates of each of the
medicinal products thereby showing that their marks have been duly registered.
10. In light of the abovementioned reasons, this Court is of the view that the Plaintiffs
have made out a case of infringement and passing off by the Defendants. The Plaintiff
is entitled to the protection of their Trade mark and for grant for decree as prayed for.
h In the circumstances, the suit is decreed in terms of paragraph No. 25 (i), (ii) and (iii)
of the plaint. Let the decree sheet be drawn up accordingly.
11. The suit is disposed off in the above terms.

MIPR 2015 (2) 0192*

a
IACM Smart Learn Limited and Ors.

v.
Global Think Computer
b
CS (OS) 936 OF 2010
Coram
Najmi Waziri, J.
Counsel c
For Appellant/Petitioner/Plaintiff: Ashish Bhagat, Abdhesh Chaudhary, Manisha
S. and Brajesh Kumar, Advs.
For Respondents/Defendant: None
Foreign Cases referred d
Mathias v. Accor Economy Lodging, Inc. 347 F.3d 672 (7th Cir. 2003) [p. 0197, para 6 a]
Cases referred
In Microsoft Corporation v. Deepak Raval MANU/DE/3700/2006: 2006 (33) PTC 122
(Del): MIPR 2007 (1) 72) (Mentioned) [p. 0197, para 7 d]
Larsen and Toubro Limited v. Chagan Bhai Patel MANU/DE/0004/2009: 2009 (39) e
PTC 538 (Del): MIPR 2009 (1) 194 (Mentioned) [p. 0197, para 7 f]
Sap Aktiengesellschaft & Anr. v. Rohit Sharma & Anr. MANU/DE/3229/2014: 2014
(60) PTC 395 (Del) (Affirmed) [p. 0197, para 7 d]
Time Incorporated v. Lokesh Srivastava & Anr. MANU/DE/0104/2005: 2005 (30) PTC
3 (Del): [2006] 131 CompCas 198 (Delhi) (Affirmed) [p. 0196, para 6 g]
f
Issues and Findings
infringing Trademark of Plaintiffs’ is sustainable —
Held, This Court observed that one of witness led by Plaintiffs’ has deposed that g
Plaintiffs’ are engaged in business of providing Information Technology related
education and training to individuals and corporate entities, either by itself or
through franchisees and has acquired a distinct and unique reputation in said field
for more than 13 years; that Plaintiffs’ have spent huge sums of money in advertising
IACM mark in print media and has been continuously doing so to popularize its
name and its business. It should be noted that Plaintiffs’ claim to have become h
aware about infringement of their Trade mark when Defendant advertised in
newspapers claiming IACM Trade mark to be owned by Defendants. Hence it was
concluded that Plaintiffs were entitled to relief of permanent injunction.
i
* MANU/DE/0693/2015

2015] IACM Smart Learn Limited and Ors. v. Global Think Computer 0193
(Najmi Waziri, J.)
JUDGMENT
a
Najmi Waziri, J.
1. This suit seeks a permanent injunction, restraining infringement of the Trade
mark; passing off; damages; delivery up, etc. against the Defendant apropos the
Plaintiffs’ Trade mark IACM. This Trade mark is used by the Plaintiffs for running
their business of hardware and networking education. The Plaintiffs claim to have
b received awards, one such award is called the Golden Peacock Award, which is
considered prestigious in their industry. It has been won twice over by the Plaintiffs:
once for smart learning teaching methodology in the year 2002 and the other for
excellence in the education and training sector in the year 2004. It is stated that
IACM was also selected as the Resource Provider for Manipal IT Education for
development of its hardware and networking programmes under the umbrella of
c Sikkim Manipal University, for designing the entire course contents and developing
and conducting the most successful train-the-trainer program for more than 150
study centres across India. The Plaintiffs claim that IACM is an institutional member
of the Indian Society for Technical Education and that they have been using the
IACM Trade mark, continuously and extensively for the past 13 years to the full
knowledge of the Defendant and the public at large. The Plaintiffs claim to have
d
achieved the following:
“(i) “IACM” was awarded the National Golden Peacock Innovative Product/
Services Award, in 2002, for its unique SMART Learning teaching methodology.
(ii) “IACM” has attained ISO 9001:2000 Quality Management System
certification for conducting quality IT programs, in 2003.
e (iii) Shri Ravinder Goyal, Director of IACM awarded the Gem of India Award,
in 2002, in recognition of outstanding service to society and excellence in
education sector.
(iv) “IACM” was chosen as a Resource Provider for Manipal It Education to
launch programs in Hardware and Networking under the umbrella of Sikkim
Manipal University in the year, 2002.
f
(v) Shri Rajesh Goyal, a Director of IACM was felicitated by India International
friendship Society with the prestigious Bharat Jyoti Award, 2004.
(vi) “IACM” was recognized as “No.1 Network Training Institute” by India
today, in 2004.
(vii) “IACM” won the Golden Peacock National Training Award in 2004.
g (viii) “IACM” was recognized as “Most Preferred Hardware and Network
Training Institute” By India Today, in 2005.
(ix) “IACM” ranked 1st all over India, in Microsoft Resource Directory.
(x) “IACM” has received the Avaya Global Connect Customer Responsiveness
Awards-2007 scorecard which gave 100% to IACM in meeting student’s
h requirements and 80% to IACM’s placement cell Performance.
(xi) “IACM” won the Rashtriya Shiksha Siromani Award in 2008.
(xii) “IACM” was recognized among the Top 100 Business Opportunities across
India for the year 2009.”
2. The Trade mark IACM was registered on 27th January, 1998 Vide certificate of
Registration of Trade mark No. 789092 issued under Class 16. It is exhibited as
i
Ex.P-5. It is stated that the Defendants have infringed the IACM Trade mark by
projecting that they are the franchisees of the Plaintiffs. A Local Commissioner was

appointed by this Court whose report confirms that the Defendant is indeed
infringing the said Trade mark. The Defendant is a company which has its offices a
and training centres at various places, including at 7 & 9, Second Floor, Gole
Complex, Gole Colony, Ashok Stambh, Nasik-422001. The report in this respect of
the Local Commissioner is as under:
“1. Vide order dated 14th May, 2010, the undersigned was appointed as a Court
Commissioner by this Hon’ble Court to visit the site of the Defendant in the b
suit at 7 & 9, Second Floor, Gole Complex, Gole Colony, Ashok Stambh, Nasik
422 001, and to execute the commission in the following manner:-
i) If on visiting the site, the undersigned would come across any sort of material,
literature, books, packaging or bill boards etc,. which would bear the Plaintiff’s
registered Trade mark “IACM” the same would be seized; and
ii) On seizure of the material indicated in the preceding clause, an inventory c
would be prepared and the same would be released to the Defendant on
superdari.
2. The undersigned, assisted by Shri Sandeep Gupta and Shri Nilesh Patil, the
representatives of the Plaintiffs, visited the above referred site of the Defendant
on 7th July, 2010. Mr. Krishan Sanap, who stated himself to be the proprietor of
the Defendant, was present at the site. He was given a photo copy of the order
d
dated 14th May, 2010 passed by this Hon’ble Court.
3. While climbing up to the second floor to reach the site of the Defendant, it
was seen that the words “IACM” were written at five different places on the
walls of the staircase. Five other big name boards with the name of the Defendant
and mark “IACM” were also seen affixed on the exterior walls of the building e
in reference which the institute of the Defendant herein was situated.
4. The undersigned also noticed that the words “IACM” in plastic material
were screwed on the name board at the entrance of the institute of the Defendant
at the second floor of the building in reference, as also the glass fixed at the
reception of the Defendant’s premises was itched with the words “IACM”.
5. The abovementioned premises of the Defendant was thoroughly searched. f
6. During the course of search, it was found that the Defendant had been using
the words “IACM” on different materials, used not only for imparting
education and training to its students but also for advertising the institute of
the Defendant.
7. The printing material with the words “IACM” included the following:- g
i) Attendance Sheets of the students of the Defendant;
ii) Project Submission Forms of the students of the Defendant;
iii) Marks Sheets of the students of the Defendant;
iv) Placement Feedback Forms duly filled by the students of the
Defendant;
h
v) Question Papers set by Defendant for it students;
vi) Answer Sheets of the students of the Defendant’
vii) Letter Pads of the Defendant;
viii) Notices and Circulars issued by the Defendant from time to time;
ix) Admission Forms of the students;
i
x) Charts prepared for issuing identity cards to the students of the
Defendant;

(Najmi Waziri, J.)
xi) Visiting Cards (including a picture chart thereof) of Mrs. Mohini

a Sanap;
xii) Data Collection Forms of the Defendant;
xiii) Visiting Cards of the Defendant;
xiv) Prospectus of the Defendant;
xv) Details of the Notes and Syllabus of the Defendant in a booklet form;
b xvi) Invitation Cards issued by the Defendant for celebrating its first
anniversary in 2010;
xvii) Posters pasted at different places in the aforementioned premises of
the Defendant;
xviii) Receipt of Admission Fee issued by the Defendant to its one of the
c students;
xix) Publicity and Distribution Material including leaflets of the
Defendant;
xx) General Feed Back Forms of the students of the Defendant;
xxi) Inquiry Forms by the student of the Defendant on the basis of which
the admissions were granted by the Defendant to its students;
d
xxii) Newspaper Advertisements;
xxiii) Rubber Stamp of the Defendant;
xxiv) (Bound copy of the) Course Curriculum Book of the Defendant
which contained the address of the Plaintiff at its last page;
xxv) Envelopes of the Defendant;
e
xxvi) Project Covers of the Defendant.
8. All the aforesaid described materials noticed at the aforementioned site of
the Defendant were collected. The same was kept in nine different files. Since
some posters were also noticed pasted at different places of the aforementioned
premises of the Defendant bearing the words “IACM”, the same were removed
f therefrom.
9. The glass at the reception counter of the Defendant itched with the words
“IACM” was removed by a person engaged by Mr. Krishan Sanap of the
Defendant. However, the said glass broke while it was being removed by the
said person engaged by the Defendant.
10. As already stated by me, there was five name boards at the exterior of the
g building in reference with the name of the Defendant and words “IACM”. On
closer look thereof, it was noticed that the boards were pasted with the flex
sheets. The flex sheets with the name of the Defendant and the words “IACM”
were removed from the three boards. However, the same could not be removed
from the other two boards due to the location of their placement in the building
in reference.
h
11. The materials seized, as described herein before including flex sheets were
kept in a card board carton. The same was duly sealed and counter signed by
the representatives of the Plaintiffs and the Defendant. Thereafter, the same
was handed over, albeit on superdari, to Mr. Krishna Sanap, who stated himself
to be the proprietor of the Defendant. He also executed a Superdarinama in
i this regard.
12. The words “IACM” written at five different places on the walls of the
staircase leading to the second floor, where the premises of the Defendant
were located, was painted with white colour by the painter made available by
Mr. Krishna Sanap of the Defendant. a
13. A photographer was also arranged by the Plaintiffs to observe the aforesaid,
who also video-graphed the proceedings. However, till the time, the present
report is being filed, the same have not been made available by the Plaintiffs to
the undersigned despite his requests to Mr. Sandeep Gutpa, the representative
of the Plaintiffs and/or to the Counsel for the Plaintiffs. b
14. The original “on the site proceedings”, including the superdarinama
executed by Mr. Krishna Sanap, are annexed hereto and may kindly be read as
part of the present report.
15. The report is submitted accordingly for the perusal and further directions,
if any, by this Hon’ble Court.”
c
3. The additional report of the Local Commissioner has annexed photographs of the
Defendant’s site where the Trade mark IACM was being used inside its premises as
well as on the staircase/passage, with directional arrows leading to the office of the
Defendant.
4. The Plaintiffs have led one witness, Mr. Ravinder Goyal, Authorised Representative
of the Plaintiffs (PW-1). In his evidence the PW-1 has deposed that the Plaintiffs are d
engaged in the business of providing Information Technology related education
and training to individuals and corporate entities, either by itself or through
franchisees and has acquired a distinct and unique reputation in the said field for
more than 13 years; that the Plaintiffs have spent huge sums of money in advertising
the said IACM mark in the print media and has been continuously doing so to
popularize its name and its business. The advertisement in The Times of India on e
9th March, 1998 is exhibited as PW -1/4. Other promotional advertisements have
been exhibited as PW-1/5, PW-1/6, PW-1/7 and PW-1/8. The Plaintiffs claim to
have become aware about the infringement of their Trade mark when the Defendant
advertised in the newspapers, i.e., Lokmat in Ahmednagar on 10th March, 2010, in
Maharashtra Times on 19th March, 2010 and again on 2nd and 9th April, 2010
claiming the IACM Trade mark to be owned by the Defendants. It is stated that in f
these advertisements, the Defendant had sought faculty members for its educational
Institute.
5. The legal notice by the Plaintiff to the Defendants went unheeded. Hence, this suit
was filed seeking permanent injunction. The Defendant has been proceeded ex
parte. The submissions and contentions of the Plaintiffs are not rebutted. The learned g
Counsel for the Plaintiffs has handed over in Court today, a certificate of fee, costs
and litigation expenses totalling to Rs.6,62,800/-. The same is taken on record.
6. The learned Counsel for the Plaintiffs relies upon Time Incorporated v. Lokesh
Srivastava & Anr.1 116 (2005) DLT 599, wherein this Court held as under:
“8. This Court has no hesitation in saying that the time has come when the
Courts dealing actions for infringement of Trade marks, copy rights, patents h
etc. should not only grant compensatory damages but award punitive damages
also with a view to discouraged dishearten law breakers who indulge in
violations with impunity out of lust for money so that they realize that in case
they are caught, they would be liable not only to reimburse the aggrieved party
i
1 Ed.: MANU/DE/0104/2005: [2006] 131 CompCas 198 (Delhi): 116 (2005) DLT 599

(Najmi Waziri, J.)
but would be liable to pay punitive damages also, which may spell financial
a disaster for them. In Mathias v. Accor Economy Lodging, Inc. reported in 347 F.3d
672 (7th Cir. 2003) the factors underlying the grant of punitive damages were
discussed and it was observed that one function of punitive damages is to
relieve the pressure on an overloaded system of criminal justice by providing
a civil alternative to Criminal Prosecution of minor crimes. It was further
observed that the award of punitive damages serves the additional purpose of
b
limiting the Defendant’s ability to profit from its fraud by escaping detection
and prosecution. If a tortfeasor is caught only half the time he commits torts,
then when he is caught he should be punished twice as heavily in order to
make up for the times he gets away This Court feels that this approach is
necessitated further for the reason that it is very difficult for a Plaintiff to give
c proof of actual damages suffered by him as the Defendants who indulge in
such activities never maintain proper accounts of their transactions since they
know that the same are objectionable and unlawful. In the present case, the
claim of punitive damages is of Rs. 5 lac only which can be safely awarded.
Had it been higher even, this court would not have hesitated in awarding the
same. This Court is of the view that the punitive damages should be really
d punitive and not flee bite and quantum thereof should depend upon the
flagrancy of infringement.”
7. The learned Counsel further relies upon Sap Aktiengesellschaft & Anr. v. Rohit
Sharma & Anr.2 2014 (60) PTC 395 (Del), wherein this Court held as under:
“32. In Microsoft Corporation v. Deepak Raval3 reported at 2007 (1) 72: 2006 (33)
PTC 122(Del), this Court observed that in our country the Courts are becoming
e sensitive to the growing menace of piracy and have started granting punitive
damages even in cases where due to absence of Defendant, the exact figures of
sale made by them under the infringing copyright and/or Trade mark, exact
damages are not available. The justification given by the Court for award of
compulsory damages was to make up for the loss suffered by the Plaintiff and
deter a wrong doer and like-minded from indulging in such unlawful activities.
f
33. In Larsen and Toubro Limited v. Chagan Bhai Patel4 reported at 2009 (1) 194 :
2009 (39) PTC 538 (Del), this Court has observed that it would be encouraging
the violators of intellectual property, if the Defendants notwithstanding having
not contested the suit are not burdened with punitive damages.
34. In case of Time Incorporated v. Lokesh Srivastava and Anr, reported at 2005
g (30) PTC 3 (Del), the court has recognized third type of damages as punitive
damages apart from compensatory and nominal damages. The court has held
that:
“The award of compensatory damages are aimed at deterring a wrong doer
and the like minded from indulging in such unlawful activities.”
“This Court has no hesitation in saying that the time has come when the
h Courts dealing actions infringement of Trade mark, copy rights, patents etc.
should not only grant compensatory damages but award punitive damages
also with a view to discourage and dishearten law breakers who indulge in
2 Ed.: MANU/DE/3229/2014: 2014 (60) PTC 395 (Del)

i
3 Ed.: MANU/DE/3700/2006: MIPR 2007 (1) 72)
4 Ed.: MANU/DE/0004/2009: 2009 (39) PTC 538 (Del): MIPR 2009 (1) 194

violations with impunity out of lust for money so that they realize that in case
they are caught, they would be liable not only to reimburse the aggrieved party a
but would be liable to pay punitive damages also, which may spell financial
disaster for them.”
35. Based on the report of the Local Commissioner and the investigator, leaves
no room for doubt that the computers were installed at the premises of the
Defendants with the SAP Software, various students were enrolled and fees b
were being charged from them. This is a fit case where the Plaintiff is entitled
to damages of Rs. 5.00 lakhs.”
8. In view of the aforesaid discussion and precedents on punitive damages this
Court deems in appropriate to grant an amount of Rs.5.00 lac as punitive damages
to the Plaintiffs as not doing so would encourage further infringement of Intellectual
Property with impunity. The element of deterrence intrinsic in punitive damages c
needs to be emphasised. The claims and evidence of the Plaintiffs is unrebutted. A
case for decree is made out. Accordingly, the suit is decreed in terms of prayers (a),
(b) and (c) of the plaint. Costs of Rs.6,62,800/- as calculated in para 5 hereinabove,
is also awarded in favour of the Plaintiffs. The learned Counsel for the Plaintiffs
does not press for compensatory damages as prayed under prayer (d) of the plaint.
d
9. The suit is disposed off in the above terms. Let a decree sheet be drawn up
accordingly.

2015] B-5
MIPR 2015 (2) SNC 041

Aditya Birla Nuvo Limited

v.
R.S. Sales Corporation and Ors
CS (OS) 1235/2013
Coram
Jayant Nath, J.
Counsel
For Appellant/Petitioner/Plaintiff: Ajay Sasshni, Advocate
For Respondents/Defendant: B.P. Singh Dhakray and Shakti Singh Dhakray,
Advocates
Plaintiff will be entitled to a grant of permanent injunction since the

Defendants have not been able to show any false statement or fabrication of
evidence
Trade mark — Grant of permanent injunction — Whether suit filed for perpetual
injunction to restrain Defendants from using, stocking, advertising, etc or dealing
in clothing, footwear, head gear or any other allied goods under the impugned
Trade Mark “PETER ENGLAND” is sustainable —
Held, This Court observed from the material on record that the Plaintiff has a
registered Trade mark in Class 25 which relates to clothing, footwear, headgear. It
also states that it has a turnover of Rs.2500 crores in readymade apparels and
accessories. Moreover there is no averment to claim that there is any turnover of
footwear using the said mark “PETER ENGLAND”. Defendant No. 1’s Counsel
was requested to show the registration certificate of Defendant No. 1 of the mark
“PETER ENGLAND”. All that he could show was an application made to the Trade
Mark Registry for the brand “PETER ENGLAND VIP SHOES”. He also showed a
* MANU/DE/1807/2015

B-6 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
registration under the Copyright Act. He admits that there is no Trade mark
registration of the mark “PETER ENGLAND” in favour of Defendant No. 1. Hence
this Court concluded that on the face of this application itself, the Defendants have
been unable to show any false statement made on oath and fabrication of evidence
or any deceit by the Plaintiff. Application dismissed.
MIPR 2015 (2) SNC 051

INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI
Anil Appalam & Chips
v.
K.S. Raja and Ors
R.P. NO. 7/2013 IN OA/44/2012/TM/CH AND M.P. NOS. 313 AND 314/2013
AND 153/2014 IN R.P. NO. 7/2013 IN OA/44/2012/TM/CH
Coram
K.N. Basha, J. (Chairman) and Sanjeev Kumar Chaswal, Member (T)
Counsel
For Appellant/Petitioner/Plaintiff: S.P. Chockalingam
For Respondents/Defendant: Sunil Paul
Notice served is valid since the order impugned has been passed on grounds
of suppression of material factors
Trade mark — Registration of Trademark — Non service of notice — Whether

notice was served on Respondent enabling him to file counter statement —
Held, This Tribunal observed that as per information received by Petitioner from
Public Information Officer, notice of opposition was served. Registry was maintaining
register in respect of dispatching notices. However, records were incomplete during
course of production of such document before Bench. Moreover the impugned order
was passed due to suppression of material factors. Therefore, notice was served and
impugned order was set aside. Petition allowed.
* MANU/IC/0025/2015

2015] Hypnos Limited v. Hosur Coir Foam Pvt. Ltd. and Ors. B-7
MIPR 2015 (2) SNC 061

INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI
Hypnos Limited
v.
Hosur Coir Foam Pvt. Ltd. and Ors.
ORA/126/2012/TM/CH AND M.P. NOS. 396/2012 AND 127/2013 IN ORA/
126/2012/TM/CH
Coram
K.N. Basha, Chairman and Sanjeev Kumar Chaswal, Member (T)
Counsel
For Appellant/Petitioner/Plaintiff: Sushant Singh
Registration certificate granted to applicant will be valid since the applicant's

Trade mark is not contrary to Section 12 of Trade marks Act, 1999
Trade mark — Grant of registration certificate — Challenge thereto — Section 12

of Trade marks Act, 1999/Act - Whether Trade mark of Applicant was contrary to
Section 12 of Act —
Held, This Tribunal observed that the Applicant had not been able to substantiate
that Respondent had gained unfair advantage over goodwill and reputation of
Applicant. Moreover Applicant had failed to show any credible evidence. Applicant
had not been able to substantiate contentions with any cogent documentary evidences.
Also Applicant failed to prove public inconvenience from resemblance of
Respondent’s mark. Therefore, Trademark of Applicant was not contrary to Section
12 of Act. Application dismissed.
* MANU/IC/0024/2015

B-8 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

2015] Notes on International Cases C-3
Notes on International Cases
(an Estonian word for an insulting or

Copyright mocking message or a message inciting
hatred on the Internet) and the comment
Delfi v. Estonia was removed expeditiously.
Furthermore, there was a system of
In the European Court of Human automatic deletion of comments that
included certain stems of obscene
Rights; Decided on: 16th June, 2015 words. In addition, a victim of a
The background against which the defamatory comment could directly
instant case has been filed is that the notify the applicant company, in which
Applicant Company is the owner of case the comment was removed
Delfi, an Internet news portal that immediately. The Applicant Company
published up to 330 news articles a day had made efforts to advise users that the
at the time of the lodging of the comments did not reflect its own
application. Delfi is one of the largest opinion and that the authors of
news portals on the Internet in Estonia. comments were responsible for their
It publishes news in Estonian and content. On Delfi’s Internet site there
Russian in Estonia and also operates in were “Rules of comment” which
Latvia and Lithuania. At the material included the following”The Delfi
time, at the end of the body of the news message board is a technical medium
articles there were the words “add your allowing users to publish comments.
comment” and fields for comments, the Delfi does not edit comments. An author
commenter ’ s name and his or her e- of a comment is liable for his or her
mail address (optional). Below these comment. It is worth noting that there
fields there were buttons labelled have been cases in the Estonian courts
“publish the comment” and “read where authors have been punished for
comments”. The part for reading the contents of a comment ... Delfi
comments left by others was a separate prohibits comments whose content does
area which could be accessed by clicking not comply with good practice. These
on the “read comments” button. are comments that: – contain threats;
Moreover the comments were uploaded contain insults; incite hostility and
automatically and were, as such, not violence; incite illegal activities; contain
edited or moderated by the Applicant off-topic links, spam or advertisements;
Company. The articles received about are without substance and/or off-topic;
10,000 readers’ comments daily, the contain obscene expressions and
majority posted under pseudonyms. vulgarities… Delfi has the right to
Nevertheless, there was a system of remove such comments and restrict their
notice-and-take-down in place: any authors’ access to the writing of
reader could mark a comment as leim comments ...” The functioning of the

C-4 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
notice-and-take-down system was also the moderate sanction imposed on the

explained in the “Rules of comment”. Applicant Company, the Court finds
Moreover the Government submitted that the domestic courts’ imposition of
that in Estonia Delfi had a notorious liability on the Applicant Company was
history of publishing defamatory and based on relevant and sufficient
degrading comments. Thus, on 22 grounds, having regard to the margin
September, 2005 a weekly newspaper of appreciation afforded to the
had published an open letter from its Respondent State. Therefore, the
editorial board to the Minister of Justice, measure did not constitute a
the Chief Public Prosecutor and the disproportionate restriction on the
Chancellor of Justice in which concern applicant company’s right to freedom
was expressed about incessant taunting of expression. Accordingly, there has
of people on public websites in Estonia. been no violation of Article 10 of the
Delfi was named as a source of brutal Convention.
and arrogant mockery. The addressees
of the public letter responded to it in the
29 September, 2005 edition of Eesti Patent
Ekspress. Minister of Justice
emphasised that the insulted persons
had the right to defend their honour
Gaymar Industries, Inc v.
and reputation in court by bringing a Cincinnati Sub-Zero
suit against Delfi and claiming
damages. The Chief Public Prosecutor Products, Inc
referred to the legal grounds which
made threats, incitement to social In the United States Court of
hatred, and sexual abuse of minors Appeals for the Federal Circuit;
punishable under criminal law, and Decided on: 25th June, 2015
noted that liability for defamation and
insults was dealt with under civil The background against which the
procedure. Chancellor of Justice referred instant case has been filed is that
to the legal provisions designed to Gaymar is the owner by assignment of
ensure the freedom of expression as well U.S. Patent No. 6,517,510 (“the ’510
as the protection of everyone’s honour patent”), which is directed to a patient
and good name, including sections 1043 temperature control system, including
and 1046 of the Obligations Act. This a blanket that can conductively warm
Court concluded after a perusal of the or cool the patient. On April18, 2008,
evidence on record that based on the Gaymar sued Cincinnati Sub-Zero
concrete assessment in particular the Products, Inc/CSZ, asserting that CSZ’s
extreme nature of the comments in Blanketrol III device infringed claims 1,
question, the fact that the comments 2, 5, 7–12, 19, 20, 23, 25–27, 29–31, 37,
were posted in reaction to an article 38, 41, 43–45, 47–49, and 55 of the ’510
published by the Applicant Company patent. Gaymar moved for a preliminary
on its professionally managed news injunction against CSZ. CSZ filed an
portal run on a commercial basis, the inter parties reexamination request with
insufficiency of the measures taken by the United States Patent and Trademark
the Applicant Company to remove Office (PTO), asserting that all 134
without delay after publication claims of the ’510 patent were invalid
comments amounting to hate speech primarily based on the combination of
and speech inciting violence and to the ’510 patent’s description of the
ensure a realistic prospect of the authors Medi-Therm II device (“MT-II”) and
of such comments being held liable, and SARNS, a manual for a surgical blood-

warming device. Further on CSZ moved “shifting legal theories,” The District
to stay the District Court action in light Court adopted in full the Magistrate
of the pending reexamination request. Judge’s recommendations on and
PTO granted the reexamination request denied the motion for attorney’s fees.
and issued a first Office Action rejecting Magistrate Judge issued a second report
all claims of the ’510 patent as (the “second report”), recommending
anticipated or obvious over prior art the denial of CSZ’s motion for
cited in CSZ’s request. District Court reconsideration. While the Magistrate
denied Gaymar’s motion for a Judge did not revisit his finding of a lack
preliminary injunction based on a of objective baselessness, the Magistrate
substantial issue of patent validity, and Judge “disagree[d]” that the primary
granted CSZ’s motion to stay the case focus under Octane was the objective
pending the conclusion of the reasonableness inquiry. The Magistrate
reexamination. PTO reaffirmed its Judge denied fees relying on the
rejection of all claims of the ’510 patent. litigation misconduct findings from the
Gaymar filed a notice of appeal with first report, stating that given CSZ’s own
respect to the PTO’s cancellation litigation misconduct, it does not have
decision, but ultimately determined not ‘clean hands’ sufficient to render this
to pursue it. Gaymar filed an express an ‘exceptional case.’ District Court
abandonment of all claims and the PTO again adopted the magistrate judge’s
concluded the reexamination cancelling recommendations in
all of the claims. The District Court lifted full concluding that Octane did not
the stay and referred the case to a require a different result and denying
magistrate judge. Although the PTO’s reconsideration. CSZ appeals the denial
unappealed cancellation had resolved of its attorney’s fees motion. This Court
the merits of the District Court action, noted that in totality the examples cited
the question of attorney’s fees remained. by the District Court—whether
CSZ moved for attorney’s fees under § considered in isolation or in the
285, alleging that Gaymar’s litigation aggregate— amount to sloppy argument,
position was frivolous and that Gaymar at worst. While such sloppiness on the
had engaged in litigation misconduct. part of litigants is unfortunately all too
Magistrate Judge issued a report (the common, it does not amount to
first report) recommending the denial of misrepresentation or misconduct.
CSZ’s § 285 motion. In the first report, Therefore in view of the serious
the Magistrate Judge found that “CSZ consequences of a finding of
has not proven by clear and convincing misconduct, it is important that the
evidence that . . . Gaymar’s claims were District Court be particularly careful not
objectively baseless.” The Magistrate to characterize bad lawyering as
Judge further found that although misconduct. “CSZ’s own litigation
Gaymar intentionally gave a misleading misconduct,” was cited by the District
response to a discovery request relating Court for finding that this was not an
to a prior art reference, that alone was exceptional case in light of Octane. Since
insufficient to render the case none of the examples cited by the
exceptional. Finally, the Magistrate District Court constitutes litigation
Judge noted that he “would not misconduct, a remand is required. As a
recommend an award of attorney’s fees result this Court reverses District
even if the case was exceptional,” Court’s denial of attorney’s fees, and
relying primarily on apparent litigation remand for reconsideration on the
misconduct by CSZ based on four totality of the circumstances under
examples of purported Octane.
“misrepresentations to the court” or

that due to problems with Plaintiff’s

Trademark supplemental documentation and
release as well as supplemental
Luis Adrian Cortes v. Sony documentation of non-party contestant
Elijah King, the names of the top five
Corporation of America; finalists of the Contest were not released.
On January 30, 2014, the five finalists
In the United States Court of were announced and Plaintiff was not
Appeals for the Federal among them. The winner of the Contest
was announced on February 20, 2014,
Circuit;Decided on 10th June, 2015 and again Plaintiff was neither
The background against which the mentioned nor credited. On or around
instant case has been filed is that in the April 22, 2014, Martin released a sound
year 2013, Sony collaborated with recording and music video of the song
Enrique Martin Morales, professionally “Vida”, which made Plaintiff feel
known as Ricky Martin (Martin) in the surprised, disappointed, angered, and
“SuperSong” contest (the Contest), where disillusioned because he alleges it was
contestants would compose, record, and almost identical to the one he composed
submit an original musical composition and created for the Contest. Plaintiff
and an accompanying music video with suffered mental anguish from these
the winning composition to be sung by events. 33. Martin never performed at the
Martin and included in the 2014 FIFA 2014 World Cup. Plaintiff filed this suit
World Cup Official Album. Defendants alleging that he was misinformed and
posted and/or published several lured to enter and participate in the
advertising, videos, and messages about Contest through false information and
the Contest. On or around mid-2013, threats for the sole purpose of obtaining
Plaintiff became aware of the Contest a release to utilize his composition and
while surfing the internet, immediately creations. Plaintiff alleges that
became interested in it, entered it and Defendants violated his exclusive rights
composed a song and recorded a video through direct and vicarious copyright
performance of the composition (the infringement under the Copyright Act,
Submission). Plaintiff uploaded the the Lanham Act, and the Puerto Rico
Submission to the Contest’s website. Trademark Act. This Court observed that
Later on the Plaintiff was selected as one it has not been alleged by the that
of twenty finalists in the Contest. Defendants copied Plaintiff’s
Subsequently, Plaintiff received an email copyrighted work as a factual matter.
from a Contest representative requesting Instead, Plaintiff asserts that Martin’s
that, in connection with his Submission, music video for the song Vida “was
he sign several documents before a almost identical” to the one he composed
notary public and return the signed and created for the SuperSong contest,
documents to Brazil. On the next day, but provides no additional factual
Plaintiff sent the documents to Brazil. allegations to support his claim that the
Further Plaintiff followed up with a works were “almost identical”. In
confirmation email, to which he received addition, although Plaintiff provides
no reply. According to the Sony Music detail as to how Defendants obtained
World Cup/FIFA Songwriting Contest access to the copyrighted work he does
Official Rules (the Contest Rules), the top not provide facts as to how the works are
five finalists were to be publicly disclosed so similar that the court may infer that
on January 20, 2014. Plaintiff alleges that there was factual copying. In order to
his Submission was selected to be obtain the damages Plaintiff seeks under
utilized by Defendants’ production the Lanham Act, Plaintiff must allege
managers prior to January 15, 2014, but that: (1) the Defendants willfully

intended to trade on the recognition of misconduct alleged and thus are liable
the famous mark; and, (2) Defendants to Plaintiff. In order to obtain the relief
willfully intended to harm the reputation Plaintiff seeks under the Puerto Rico
of the famous mark. (B). Plaintiff states Trademark Act, Plaintiff must allege that:
that he was misinformed, and lured to (1) Plaintiff is the owner of a famous
enter and participate in the Contest mark; (2) use of such famous mark or
through false information and threats substantially similar mark is likely to
from Defendants for the sole purpose of cause dilution by blurring or dilution by
obtaining his release to his compositions tarnishment of the famous mark; and, (3)
and creations. However, these Defendants had the intention of causing
statements, even when taken as true, do dilution of the famous mark or of taking
not permit the court to infer more than a advantage of its distinctive nature. As
mere possibility of misconduct. Moreover with his Lanham Act claim, aside from
the Plaintiff does not establish how he stating that he is bringing an action under
was misinformed or by whom, nor does the Puerto Rico Trademark Act, Plaintiff
he explain how he was lured to enter and makes no factual allegations that show
participate in the contest or by whom. To he is the owner of a mark for purposes of
the contrary, Plaintiff stated he saw an his Puerto Rico Trademark Law claim. A
ad for the contest while surfing the complaint does not need detailed factual
internet and immediately became allegations, but threadbare recitals of the
interested because he is a young artist elements of a cause of action, supported
and musician. Therefore, the Court finds by mere conclusory statements, do not
that Plaintiff’s claim fails the plausibility suffice. Here, Plaintiff does not even
standard because it does not allow the provide threadbare recitals of the
Court to draw the reasonable inference elements of the Puerto Rico Trademark
that Defendants engaged in the Act cause of action.


2015] International News D-3
International News
two years since Ericsson has been

GSK agrees to license IPR making futile attempts to execute a
and assets to Padlock license agreement with Apple for
Ericsson’s patents on fair, reasonable
Therapeutics and non-discriminatory (FRAND) terms.
G
laxoSmithKline (GSK) has
reportedly agreed to license
intellectual property and assets
INTA announces hosting
relating to protein-arginine deiminases the largest Annual
(PADs) to Padlock Therapeutics.
According to Padlock, the assets will be Meeting this year in
used to create new treatments for
autoimmune disease by targeting the
California.
T
PAD enzymes. As per reports, Padlock he International Trademark
receives the exclusive right of IP, selected Association (INTA) announced its
compounds in several chemical series, largest ever Annual Meeting in the
assays, data, and crystal structures that last 137 years when about 9,875
are developed by the GSK scientists. In trademark professionals from more than
consideration of the grant of license, GSK 145 countries attended the 2015 Annual
will reportedly receive an undisclosed Meeting in San Diego, California.
equity grant and observer rights on Registrants enjoyed five days of
Padlock’s board. educational sessions, brand strategy
meetings and business development
opportunities.
Ericsson files suits
against Apple in UN Agencies support
Germany, UK and extension of TRIPS LDC
Netherlands Waiver
E
ricsson has announced filing suits
T
he United Nations Development
against Apple in Germany, UK and
Programme (UNDP) and the Joint
the Netherlands. It has been over UN Programme on HIV/AIDS,

D-4 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
have reportedly supported request made

by least-developed countries to extend a
Patent granted to
waiver which will allow them to refrain DermTech for Method of
from enforcing patents on
pharmaceutical products beyond 1 detecting Melanoma
January, 2016. UNDP and UNAIDS have
T
he US Patent Office has granted
attempted to draw attention “to the patent to DermTech, a San Diego-
urgent and compelling case for the based biotechnology company for
international community to take all the method of detecting melanoma in
measures possible to protect the health humans. The patent is titled ‘Diagnosis
of people living in least-developed of Solar Lentigo by Nucleic Acid
countries (LDCs).” Analysis’. With the help of DermTech’s
technology, skin samples can be
analysed non-invasively by using an
adhesive patch.

2015] National News E-3
National News
Indian Artists Find “IPR” to be Part of Ninth

Violation of Moral Rights Standard School
Syllabus
M
oral rights of Indian artists have
been violated several times.
T
Recent destruction of a he Department of Industrial Policy
sculpture created by Balan Nambiar on and Promotion (‘DIPP’) is eager to
the premises of the Kotak Mahindra Bank introduce “IP rights”, as a subject
in Bangalore, removal of Satish Gujral’s in the CBSE curriculum from standard
ceramic mural from the Odeon cinema nine. The idea of introducing “IPR” as a
and taking down of artist Jatin Das’s subject in schools emerges from the Draft
creation “Flight of Steel” are some National IPR Policy’s recommendations.
reported instances of disregard for works DIPP is in talks with the National
of art. Similarly, several works of art are Council of Educational Research and
reportedly being neglected or destroyed Training (‘NCERT’) and the Central
even at the “Lalit Kala Akademi”. While Board of Secondary Education (‘CBSE’),
Mr. Nambiar is contemplating legal in this regard. DIPP is also
action, one of the remedies available to contemplating discussions with the
authors in such cases is to initiate action Ministry of Human Resource
under section 57 of the Indian Copyright Development and the All India Council
Act for violation of moral rights that for Technical Education to include IPR
includes the right to object to distortion, as a subject in engineering courses.
mutilation or modification of the work
in a manner prejudicial to author’s honor
or reputation.
BMS-Cipla Attempt to
Close “Entecavir
Dispute”
R
eports indicate that Bristol-Myers
Squibb and Cipla are negotiating
an agreement to settle a patent

E-4 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
dispute relating to a pharmaceutical

composition the Hepatitis B drug
Sugen Enters into
Entecavir. Cipla had filed a petition at Settlement with
the IPAB for revocation of the patent in
the year 2010. As Entecavir is a pre-1995 Opponents for its Lung
(pre TRIPS) molecule and it could not
obtain product patent, only a particular
Cancer Drug
S
composition of the “Entecavir molecule” ugen Inc. has entered into a
is protected in India. settlement with opponents of its
patent for lung cancer drug Xalkori
(crizotinib). The opponent, Fresenius
Union Health Minister Kabi Oncology Ltd. is also engaged in
the development and manufacture of
Discusses IP Policy at cancer drugs. In the year 2012, Fresenius
WHO Kabi had filed two post grant
oppositions to Sugen’s Xalkori patent on
T
he Indian Health Minister, Jagat various grounds. Thereafter, on 29th
Nadda, has been elected president April, 2015, the Controller passed an
of the current session by the order allowing Fresenius Kabi’s request
68th World Health Assembly of the World for withdrawal of their oppositions.
Health Organisation (WHO). In his
speech at the Assembly Mr. Nadda made
a mention of Access to Medicines and USTR Lists India in its
diagnostics as being some of the public
health priorities. The opinion of Jagat Annual “Special 301
Nadda reflects India’s position with
regard to innovation and intellectual
Report”
T
property, which was a topic of he United States Trade
discussion at the Assembly. India Representative (USTR) issued
reportedly contemplates contributing $1 their annual “Special 301 Report”,
million for a project on R&D for neglected putting India on their “Priority Watch
diseases and $100,000 for the project on List”. The said Report enlists countries
substandard medicines. having a poor IPR regime. Soon thereafter,
Indian Commerce and Industry minister
Nirmala Sitharaman reportedly made a
statement that “India believes in a strong
patent regime. We are compliant with
international standards. India is fully
aligned with international intellectual
property rights standards and “there is
no need for anyone to question us.”

2015] F-25
Innovativeness & Competitiveness under Trade Secret

Laws in India
Dr. Md. Zafar Mahfooz Nomani* and Dr. Faizanur Rahman**
Trade Secrets law is vortex of Intellectual Property and it is dexterous to figure

out legal doctrine. The trade secrets are a mix creation of law of contract, law of
tort, law of property, law of crime hence uncertainty looms large in seeking
remedies and action for infringement. The trade secrets as Intellectual Property
incentives inventions and grass root innovations. Trade secret fosters idea, concept
as well as commodity selling and spurning economic growth. The legal protection
to trade secret protects is a boon to small creators who cannot afford procedural
requirements of Patent Law, small patent model and utility model. Among all
intellectual properties, trade secret offers some significant advantages for inventors
in the pantheon of legal protection for inventions.
1. Protection of Trade Secret Trademark and Copyright have an

A trade secret refers to data or element of uncertainty as compared to
information relating to the business Trade Secret. Secondly, trade secrets have
which is not generally known to the gained importance because, in many
public and which the owner reasonably fields, the technology is changing so
attempts to keep secret and confidential. rapidly that it has surpassed the existing
Trade secrets generally provide business laws intended to encourage and protect
a competitive edge over their rivals. inventions and innovations submitted
Almost any type of data, processes or for the patent grant and sealing. The
information can be referred to as trade patent is also limitation of time period
secrets so long as it is intended to be and which generally ranges from five years
kept a secret, and involves an economic to twenty one years. Moreover there is no
interest of the owner. A business may specific law in India that protects trade
have certain internal business processes secrets and confidential information.
that give it an edge over its competitors Trade protection jurisprudence is an
thus be regarded as a trade secret.1 There outcome of common law remedies
are mainly two reasons for that, one meticulously developed by English and
among them is that other forms of Indian Courts on principles of equity,
Intellectual Property like Patent, breach of confidence and breach of
* Professor, Department of Law, Aligarh Muslim University, Aligarh-202002

** Lecturer-in-Law, Nehru Memorial Law PG College, Hanumangarh Town (Raj.) 335513
1 Kunal Arora, Trade Secrets- As an Intellectual Property and its Protection, available at:
http://www.legalserviceindia.com/article/l123-Trade-Secrets.html

F-26 Manupatra Intellectual Property Reports (MIPR) [Vol. 2
contract. This is manifested in colonial five years, the condition being that
legislation of the Indian Contract Act, 1872 during this period he shall not serve
under Section 27 anywhere else even if he left the service
2. Trade Secret under Contract law earlier. Shelat J. held the agreement to be
valid. The Defendant was accordingly
Trade secret in India is primarily restrained from serving anywhere else
administered under provision relating to during the currency of the agreement. It
restraint of trade under Indian Contract is further observed that:
Act, 1872 provision relating to restraint
The evident is clear that the Appellant
of trade. 2 An agreement to restraint a
has torn the agreement to pieces only
servant from competing with his
because he has been offered a high
employer after the termination of
remuneration. Obviously he cannot be
employment may not be allowed by the
heard to say that no injunction should
Courts. 3 The provision relating to
be granted against him to enforce the
restraint of trade is aptly culled under
negative covenant which is not
Brahmaputra Tea Co v. E. Scarth,4 where
opposed to public policy. The
an attempt was made to restrain a servant
injunction issued against him is
from competing for five years after the
restricted as to time, the nature of
period of service. The Court observed:
employment and as to area and cannot
Contracts by which persons are therefore be said to be too wide or
restrained from competing, after the unreasonable or unnecessary for the
term of their agreement is over, with protection of the interest of the
their former employers within respondent company.
reasonable limits, are well known in
English law, and the omission to One of the principles is that a master is
make any such contract an exception not entitled to restrain his servant after
to the general prohibition contained the termination of employment from
in Section 27 indicates that it was not offering competition, but he is entitled to
intended to give them legal effect in reasonable protection against
this country. exploitation of trade secrets.6
The principles thus established have 3. Breach of Confidentiality & Contract
been approved by the Supreme Court in Indian Contract law besides putting
Niranjan Shanker Golikari v. Century Trade Secrets under breach of contract
Spinning & Manufacturing Co. Ltd.5 In this offers remedies for encouragement of
case, a company manufacturing type creative and innovative abilities. The
cord yarn was offered collaboration by a principle on which the protection
foreign producer on the condition that afforded by law is exemplified in the
the company shall maintain secrecy of following statement in Charlesworth:7
all the technical information and that it Intellectual Property Rights overlap,
should obtain corresponding secrecy protecting different facets of a product,
arrangements from its employees. The For example, the product itself may be
Defendant was appointed for a period of patented, its method of manufactured
2 Pollock & Mulla, Indian Contract Act & Specific Relief Acts, 818-822 (Lexis Nexis Butterworths
Wadhwa Nagpur,2013)
3 Avtar Singh, Law of Contract 260-261( Eastern Book Company, Lucknow, 2013)
4 (1885) 11 Cal 545
5 (1967) 2 SCR 378:AIR 1967 SC 1098
6 See the Judgement of Younger LJ in Attwood v. Lamont, (1920) 3 KB 571: (1920) All ER
Rep 55.
7 J. Charlesworth, Charlesworth’s Business Law, 637 (Sweet & Maxwell Ltd, UK,1997)

2015] Innovativeness & Competitiveness under Trade Secret Laws in India F-27
may be protected as a trade secret; a willing purchaser. This method may

sales literature and software used to be more appropriate for confidential
run the product, may be protected by information relating to industrial
copyright; its shape or configuration designs or processes or business secrets.
may be protected by new design right; 4. Intellection of Trade Secrets
and its name by a Trade mark.
It now appropriate to assess Intellectual
The usual remedies for breach of Property dimensions of Trade secrets
confidence are: action for an account of under confidentiality and non disclosure
earnings from the use of the information; agreements. If the confidentiality of the
action for damages and an injunction for information is breached it is no more a
prevention of misuse. For an action to secret. The TRIPS agreement recognizes
succeed it would be necessary to show different form of Intellectual Property.
that there was information of Article 39.1 of the TRIPS provide that ‘in
confidential nature which was shared course of ensuring effective protection
under an obligation of confidence with against unfair competition as provided
the person proceeded against and that in Article 10bis of the Paris Convention,
there was an actual or threatened use or 1967 says that members shall protect
disclosure of the information. If the undisclosed information’ of the sort
information has already become a part which is described in paragraphs 2 and
of public knowledge, no action may lie.8 3 of Article 39. Paragraph 2 describes the
Since the information alleged to be general category of confidential
confidential may be of value to the information, which is protected in
plaintiff only for a certain period, interim common law countries through judge-
injunction will ordinarily be granted made law, rather through statute.
only for a specified period depending Article 10bis contains no reference to the
upon the circumstances and the nature protection of confidential information as
of the confidential information. In regard an aspect of unfair competition.
to balance of convenience the following Article 10bis (2) defines as an act of unfair
factors are considered: competition ‘any act of competition
(i) Whether the effect of an injunction contrary to honest practices in industrial
would be disclosure be disastrous and commercial practices’. Article 10bis
to Defendants, lists three particular practices which are
to be prohibited. The TRIPS Agreement
(ii) Whether the terms of injunction are
negotiators were anxious to preserve the
such that it is extremely difficult
confidentiality of test data submitted to
for the Defendants to know what
government approval agencies. Given the
they may do and what they may long approval process, particular for
not do, pharmaceutical products, the
(iii) Whether it is certain upon the opportunity for wrongful appropriation
material before the Court that even of such data by competitors was self
if they were successful at the trial, evident. This concern is accommodated
the plaintiff would obtain an by Article 39.3 which provides that:
injunction rather than damages.9 Members, requiring as a condition of
Damages or compensation is determined approving the marketing of
on the basis of the market value of the pharmaceutical or of agricultural
confidential information based on a chemical products which utilize new
notion sale between a willing seller and chemical entities, the submission of
8 Sir Robert Megarry in Thomas Marshall v. Gunile, (1978) 3 All ER 193, 203
9 P. Narayanan, Intellectual Property Law, 323-331(Eastern Law House, Kolkata, 2013)

undisclosed test or other data, the the details of invention relatable thereto
origination which involves a was given by a person who was holding
considerable effort, shall protect such an exclusive right to sell or distribute
data against unfair commercial use. In the article or substance.
addition, Members shall protect such The TRIPS agreement intends to
data against disclosure, except where
necessary against unfair commercial
effort shall protect such data against
unfair commercial use. In addition, The TRIPS agreement
Members shall protect such data against intends to recognize and
disclosure, except where necessary
against unfair commercial use. protect the Intellectual
It should be noted that Article 39.3 Property Rights across the
contains three limitations. First, it applies
only to pharmaceutical products and world
chemical agricultural products; secondly,
the protection is extended only against recognize and protect the Intellectual
unfair competition uses; and thirdly, the Property Rights across the world. The
government authority is exempted from agreement brought uniformity in the
the requirement of confidentiality in the Intellectual Property laws throughout
public interest. Thus, it has been held that the world. The agreement is a blueprint
a government accrediting agency may use on Intellectual Property Rights and
the confidential test data of an applicant regulation. All the members’ states of the
when considering applications by other TRIPs agreement have adopted the
applicant in respect of similar products.10 provisions of the agreement either by
amendments to the existing laws or by
Where, the specifications of an invention enacting new legislation. India, being a
relatable to an article substance covered member state, did follow the suit by
under sub-section (2) of Section 5 have amending its Patent Law, copyright law
been recorded in a document or the and by enacting new legislations on
invention has been tried or used, or , the Trade marks, Geographical Indications,
article or the substance has been sold, by Industrial Designs and Integrated
a person, before a claim for a patent of Circuits. However, still there is no law
that invention is made in India or a on the trade secrets and confidential
convention country, then, the sale or information. It is only area where India
distribution of the article or substance by is lagging behind as far as Intellectual
such person, after the claim referred to Property Rights are concerned.12
above is made, shall be deemed to be an
infringement of exclusive right to sell or 5. Innovation & Competitiveness
distribute under sub-section(1)11: under Trade Secret
Provided nothing in this sub-section In response to obligations underpinned
shall apply in a case where a person in TRIPS Agreement the Indian
makes or uses an article or a substances Government has taken a step ahead by
with a view to sell or distribute the same, releasing a draft National Innovation Act
10 M.P.Bhatnagar, ‘Country Report: TRIPS Implementation in India’, in S.K. Verma and

Raman Mittal (ed.), Intellectual Property Rights: A Global Vision, 518-521 (ILI, Delhi, 2004)
11 Section 24B (2) of Patent Act, 1970
12 N.S. Sreenivasulu and M.S. Sowmya, TRIPS Complaint Intellectual Property Regime in
India: Implications of TRIPS in modifying the cantors and canons of our system, 3(2)
Manupatra Intellectual Property Reports (MIPR) A79-80 (October,2007)

(NI Act), 2008 to boost research and confidentiality demonstrates the

innovation. 13 significance of trade secrets and
The draft Act proposed by the confidential information within the
Department of science and technology, realm of innovation.14 Innovative ideas,
has a three pronged approach. Firstly it products and business practices help
undertakes to encourage innovation enterprises to maintain competitive
through an Innovation support system superiority in the market alongside
facilitated by the public, private or public- furthering their economic interests.15 It is
private partnership. The second for this reason that there is a need to
approach is evolving into a National prevent others from taking advantage of
Integrated Science and Technology Plan. the breakthrough ideas and knowledge
The third objective is the codifying and or in ordinary parlance the confidential
consolidating the law of confidentiality information or trade secrets.
in aid of protecting confidential It may be recalled that under the TRIPs
information, trade secret and innovation. Agreement ‘trade secrets’ are referred as
The draft NI Act widely speculated to be ‘Undisclosed Information’. 16 Any
modelled on America’s Creating information prevented from being
Opportunities to Meaningfully Promote disclosed so long as such information:
Excellence in Technology, Education, (a) is secret in the sense that it is not,
and Science Act-COMPETES Act, 2007. as a body or in the precise
The Preamble of the COMPETES Act puts configuration and assembly of its
the objective of the law as to invest in components, generally known among
innovation through research and or readily accessible to persons within
development, and to improve the the circles that normally deal with the
competitiveness of the United States. It kind of information in question; (b)
focuses on three primary areas of has commercial value because it is
importance of maintaining and secret; and (c) has been subject to
improving United States’ innovation in reasonable steps under the
the 21st Century: circumstances, by person lawfully in
(a) Increasing research investment, control of the information, to keep it
secret.
(b) Strengthening educational
opportunities in science, For the purpose of this provision, ‘a
technology, engineering, and manner contrary to honest commercial
mathematics from elementary practices’ shall mean at least practices
through graduates school, and such as breach of contract, breach of
confidence and inducement to breach,
(c) Developing an innovation and includes the acquisition of
infrastructure. undisclosed information by third parties
The draft NI Act through codification who knew, or were grossly negligent in
and consolidation of the law of failing to know, that such practices were
involved in the acquisition.
13 Kamakhya Srivastava, Indian Innovation Act: Trade Secrets and Confidentiality, Available
at: http://ipfrontline.com/2008/10/indian-innovation-act-trade-secrets-and-
confidentiality/
14 MZM Nomani and Faizanur Rahman, Intellection of Trade Secret and Innovation Laws in
India, 16(4) JIPR 341-350 (2011)
15 Malathi Lkshamikumaran et al., Utility Models: Protection for Small Innovations, 46 (2)
Journal of Indian Law Institute 322-332 (2004)
16 Article 39 of TRIPS Agreement

6. Trade Secrets and Innovation Law misappropriation of confidential

Under the draft NI Act, trade secret and information 21 besides the mandatory
confidential information are elucidated damages 22.
in Chapter VI titled as ‘Confidential and 7. Ambit of Confidentiality and
Confidential Information and Remedies Confidential Information
and Offences’. The chapter explicates on Chapter VI of the draft NI Act titled as
Obligations of Confidentiality and ‘Confidential and Confidential
remedies to protect and preserve Information and Remedied and Offences’
confidentiality. The obligations to containing Sections from 8 to14 and deals
maintain confidential information under extensively with confidentiality,
the draft statute rest on the contractual confidential information and its allied
terms and conditions, government issues.23 Initial Sections of the chapter
recommendation and on any right lays down obligations on the party
arising in equity. The draft NI Act casts received the confidential information.
an obligation of confidentiality to parties
7.1 Confidentiality and Confidential
contractually set out the terms and
Information
conditions governing rights and
obligations in respect of confidential Specifically, Section 8 of the draft NI
information and prevents Act casts an obligation of
misappropriation.17The confidentiality confidentiality to parties contractually
arising from non-contractual set out the terms and conditions
relationships such as equitable governing rights and obligations in
considerations may also create rights to respect of confidential information
maintain and obligation as to preserve and prevents misappropriation.
confidentiality and rights to prevent Section 8 read as follows:
disclosure into public domain.18 8. Obligations of Confidentiality:
The remedies to protect and preserve (1) Parties may contractually set out
confidentiality and misappropriation the terms and conditions
include granting mandatory protective governing rights and obligations
orders in connection with discovery in respect of Confidential
proceedings, holding in-camera Information, including with a view
hearings, sealing the confidential to maintain confidentiality and
information including confidential prevent Misappropriation.
filings or records of the action, and (2) Subject to any terms and
ordering any person.19 The exception to conditions agreed to between
misappropriation of confidential
parties, the respective rights and
information enumerates that confidential
obligations in relation to the said
information shall not have been
Confidential Information shall be
misappropriated if available in the
governed by such terms and
public domain and held to be in public
interest by a Court of law.20The remedy conditions as may be prescribed
under the draft NI Act include preventive by the Appropriate Government
or mandatory injunction restraining pursuant to Section 15(d).
17 Section 8 of draft NI Act, 2008

18 Id., Section 9
19 Id., Section 10
20 Id., Section 11
21 Id., Section 12
22 Id., Section 13
23 http://www.dst.gov.in/draftinnovationlaw.pdf (Retrieved on March, 2014)

(3) Notwithstanding anything orders in connection with discovery

contained in sub-section (1), parties proceedings, holding in-camera
may nevertheless enforce any hearings, sealing the confidential
rights in Confidential Information information including confidential
arising in equity or as a result of filings or records of the action and
circumstances imparting an ordering any person. Section 10 read as
obligation of confidence. follow:
In relation to any proceeding
The Section states that parties are at
concerning actual or apprehended
liberty to contractually set out the terms
Misappropriation of Confidential
and conditions governing rights and
Information, the Court shall preserve
obligations in respect of maintenance of
the secrecy of the subject matter of the
confidentiality and to prevent
dispute claimed as Confidential
misappropriation of confidential
Information by reasonable means,
Information.
which may include granting
The confidentiality arising from non- mandatory protective orders in
contractual relationships such as connection with discovery
equitable considerations may also create proceedings, holding in-camera
rights to maintain and obligation as to hearings, sealing the Confidential
preserve confidentiality and rights to Information including confidential
prevent disclosure into public domain.24 filings or records of the action, and
Section 9 read as follows: ordering any person or class of
9. Confidentiality Arising from Non- persons impleaded in an action not to
Contractual Relationships: Obligations disclose the Confidential Information
of confidentiality and equitable referred to in the claim without prior
considerations may also create rights to orders of the Court.
maintain and obligation as to preserve Section 10 of the Act deals with remedies
confidentiality and rights to prevent to protect and preserve confidentiality
disclosure or release into the public and orders to prevent threatened or
domain of Confidential Information by apprehended misappropriation of
any third party who has received such information. It prescribes certain
information other than with the consent guidelines to preserve and protect
of a Complainant. confidential information from being
Section 9 imposes an obligation of misused during Court proceedings.
confidentiality even in the absence of Guidelines include:
contractual obligation on party who (i) Grant of mandatory protective
received confidential information to orders
preserve confidentiality and not to (ii) Holding proceedings in-camera
disclose or release it in the public domain
(iii) Filings or recording confidentially
or third party without the consent of a
of the information, and
proprietor of information on the basis of
equity principles. (iv) Ordering any person or class of
persons impleaded in an action not
7.2 Regulation of Trade Secret
to disclose the confidential
The remedies to protect and preserve information without prior orders of
confidentiality and misappropriation the Court.
include granting mandatory protective
24 Id., Section 9

The exception to misappropriation of Section speaks about preventive or

confidential information enumerates that mandatory injunction restraining
confidential information shall not have misappropriation of Confidential
been misappropriated if available in the Information:
public domain and held to be in public (1) A Court shall grant such
interest by a Court of law25. According to injunctions, including interim, ad
the Section followings shall not be interim or final injunctions, as may
considered as misappropriation of be necessary to restrain actual,
confidential information under the Act: threatened or apprehended
(i) if the information is available in the Misappropriation of Confidential
public domain; or Information.
(ii) if it has been independently (2) A Court may vary or vacate an
developed by the alleged injunction granted under sub-
Misappropriator, or by any third section (1) in the event that the
party or; Confidential Information in
(iii) where disclosure of information is question is found to fall under any
considered by Court of law in the of the categories described in clause
interest of the public (a) to (c) of Section 11.
The remedy under the draft NI Act (3) In the event a Complainant secures
include preventive or mandatory an interim injunction against an
injunction restraining misappropriation alleged or apprehended
of confidential information26 besides the Misappropriation and is later
mandatory damages. Significantly, found not to have been entitled to
Section 12 is an extensive Section such relief for failure to establish
providing for preventive or mandatory any of the grounds essential to
injunctions restraining the securing interim relief, or where the
misappropriation of confidential issue relating to which interim
information. An injunction, being an relief was initially secured, is
equitable remedy, is generally only eventually decided against the
issued when other remedy at law (such Complainant, then such
as damages) is inadequate. Mandatory Complainant shall be liable to
damages on proof of breach of compensate the Defendant for
confidentiality are also provided for in actual losses arising as a direct
Section 13. result of the interim relief earlier
8. Remedies & Enforcement secured.
According to Section 12 of the Act, Court (4) In exceptional circumstances, an
is authorized to grant interim, ad interim injunction may stipulate conditions
or final injunctions, as it may be for future use upon payment of a
necessary to restrain actual, threatened reasonable royalty for no longer
or even apprehended misappropriation than the period of time for which
of confidential information. Further, if the use could have been prohibited.
Court have already granted an (5) The Appropriate Government shall
injunction, may vary or vacate it, if is provide its machinery, including
found that, information in question will police and local administration, to
under fall under any of exceptions
aid and assist in implementation/
mentioned in preceding Section. The
enforcement of any injunction
25 Id., Section 11
26 Id., Section 12

granted or other direction passed by intent, the Complainant shall be

a Court under sub-section (1). entitled to not more than three times
In addition to this, Section imposes an the mandatory damages provided
obligation on the Complainant who for in Section 15 (1) (a) and costs
secured an interim injunction against including attorney fees.
Defendant and is later found by the (3) Subject to the requirements for
Court that the Complainant is not securing grant of interim relief, a
entitled to such relief for failure to Court may require an alleged
establish any of the grounds essential to Misappropriator to pre-deposit upto
securing interim relief, then such 10 percent of the damages claimed
Complainant shall be liable to by the Complainant as under sub-
compensate the Defendant for actual section (1), as a pre-condition to a
losses arising as a direct result of the continued right to defend the suit.
interim relief earlier secured. In addition
to this, the provision asks the appropriate According to the Section where a
Government to provide machinery misappropriator has misappropriated
including police and local confidential information either directly
administration to aid and assist in or indirectly or made it to fall into the
hands of a third party or into the public
implementation/enforcement of any
injunction granted Section. domain without consent and knowledge
of the Complainant, he shall be bound to
Section 13 speaks about mandatory give damages, hence the Complainant is
damages on proof of breach of entitled to elect and receive anyone of the
confidentiality. The Section read as following damages:
follow:
(i) such mandatory damages not
(1) Where a Misappropriator has exceeding the limit as may have
utilized Confidential Information been notified by the appropriate
or is directly or indirectly Government from time to time;
responsible for Confidential
(ii) such damages as may have been
Information falling into the hands
agreed upon by contract between
of a third party or into the public
the parties; or
domain, the Complainant shall be
entitled to elect to receive anyone (iii) actual damages as may be
demonstrated including
of the following:
consequential losses.
(a) such mandatory damages not
exceeding the limit as may have been In addition to damages, the Complainant
notified by the Appropriate is entitled to receive but not more than
Government from time to time as three times the mandatory damages as
under Section 15 (c), which sum shall prescribed by the appropriate
be recoverable as a contract debt; or Government including attorney fees, if it
is found that the misappropriator have
(b) such damages as may have been acted with wilful or malicious intent to
agreed upon by contract between incur loss to Complainant in pursuance
the parties; or of this the Defendant is required to
(c) actual damages as may be deposit upto 10 percent of the damages
demonstrated, including claimed by the Complainant in order to
consequential losses; defend his right in the suit.
(2) In addition to damages provided The final Section of the chapter, i.e.
for in sub-section (1), where a Section 14 provides immunity for acts
Misappropriator is found to have done in good faith, or purporting to do
acted with wilful or malicious so. Section states that:

No legal proceedings or any other claim and fiscal incentives for innovation and
or action, shall lie against any person for the creation of designated special
anything done in good faith under this economic zones for innovation. The
Act or the Rules and Regulations made management of Intellectual Property in
thereunder. India Trade Secrets under the NI Act is
Section 14 immunes all persons who dubbed absurd by many IP practitioners
come under the ambit of the Act from in the country.
taking up any judicial proceedings The draft Act does not stands as piece of
against them for acts done in good faith legislation to codify and consolidate the
or purporting to be so done under this law of confidential information because
Act or the Rules and Regulations made it does not address the issue of
under the Act. confidential information in proper
9. Implication of Innovation on Trade manner to be a successful law relating to
Secret confidential information. Since, the Act
does not deal with subject matters ideally
The overall scheme of the proposal but also includes other allied areas such
National Innovation Act indicates that encouragement and development of
it is a preliminary policy framework innovation, marketing of results of
representing the board targets to be innovation, therefore, it can be stated that
chased coupled with the basic plan it is the first time in the history of India
along the lines of which a systematic that Government has proposed to enact
policy and substantive legislative legislation which combines allied subject
prescription shall be framed for bringing matters each other.28
innovative activity to the fore. The
interesting and perhaps most Chapter VI containing Sections from 8 to
substantive (at least in terms of 14 exclusively discusses on allied issues
enforceability) part of this Bill are the concerning to confidential information.
provisions on trade secrecy or ‘breach of Section 9 deals with obligation of
confidence’. To appreciate this branch confidentiality on the person who
of Intellectual Property, think the secret received the confidential information on
Coke formula, the KFC formula and in contractual terms to maintain secrecy or
the Indian context, the Ayurvedic not to disclose to the public or third party
‘massage’ formula by the famous without the consent and knowledge of
Kottakal family. Under the ‘trade secrecy’ the person who conveyed the
provisions of the NI Act, Kottakal can information. In addition to this, it further
take steps to prevent the wrongful states that the respective rights and
disclosure of its massage techniques by obligations of parties in relation to the
ex-employees etc., to third parties.27 It is confidential information shall be
at best a guide into what an ambitious governed by such terms and conditions
legislation like an Innovation Act should as may be prescribed by the appropriate
like. Nonetheless, the draft Act has many Government. Generally it would be
salubrious provisions including the reasonable that if the parties have
provision compelling the Ministry of contractual agreements to govern their
Science And Technology to present an rights and obligations in relation to
annual national integrated science and confidential information but it is
technology plan to the government, tax irrational and unjust that such power has
27 Shashwat Purohit, ‘India “National Innovation Act” and Trade Secrecy Provisions’, Available
at: www.tradesecretsblog.info/2008/10/managing_intellectual_property.htm
28 Gouramma Patil, Critical Analysis of ‘The National Innovation (Draft) Act, 2008’, Available
at: http://ssrn.com/abstract=2239718 or http://dx.doi.org/10.2139/ssrn.2239718

been conferred on Government to direct steal the recipe for making Coca Cola and
and govern rights and obligations of to manufacture a drink using this recipe
parties because if such absolute power at a cheaper price, while paying a 10%
has been bestowed on Government to royalty fee.
oversee right and duties of parties it Apart from bunch of flaws just discussed
would lead to irrationality, unfairness above another fault of the Act which joins
and unjustness. the same group lies in Section 14 of the
10. Conclusion & Summations Act because Section absolutely immunes
The draft Act recommends common law person for acts done in good faith or
remedies such as injunctions and purporting to be so done under the Act,
damages etc. in case of misappropriation rules or regulations made there under,
of confidential information which this provision can be misused by any
already exist in India in case of misuse person who might come under the ambit
or infringement of confidential of the Act like Complainant, Defendant
information; so the Act again fell short and authorities who acts under
in providing any new remedies in case provisions of the Act.
of misappropriation of confidential The draft NI Act has suitably identified
information. In addition, to this the Act the performance metrics for building up
has failed to lay down any penalty an innovation- based competitive
provisions in case of misappropriation economy, but the parameters and
of confidential information which is roadmap for their execution has to be
regarded as grave offence in relation to designed. The Draft is open to public
confidential information. suggestions and debate following which
Section 11 provides an exception to the it shall become a final legislative
offence of breaching trade secrets. It says enactment. The final Act should reflect
that disclosure of the confidential the plans and measures to be undertaken
information can be held to be in public in furtherance of the broad goals, the
interest by a Court of law. The ground corpus to be set aside to realize them and
for criticism is the term ‘public interest’ should also identify the various
which in the Act is too vague.29 Moreover governments and authorities responsible
Section 12(4) is also controversial. This for clearances, infrastructural support,
says that an injunction restraining uses participation and benefit sharing. It
of confidential information ‘may needs to be furnished with sound
stipulate conditions for future use upon provisions for different sectors for
payment of a reasonable royalty for no execution of the goals have to be put
longer than the period of time for which down. The enforcement mechanisms
use could have been prohibited’. The and the infrastructural set up to
proposed exception from infringement effectuate the substantive proviso ions
tantamount to introduce a compulsory have to be stated clearly. There is a need
license in trade secrets. To buttress this to integrate planning with building
point one may say that these provisions linkages across different sectors to spur
would make it possible for someone to innovative activity.
29 Peter Ollier, Managing Intellectual Property : India trade secrets law dubbed “absurd”,
Available at: www.tradesecretsblog.info/2008/10/managing_intellectual_property.html

TRIPS and its Impact on India’s Health

Prachi Gupta*
India amended its Patents Act, 1970 to introduce TRIPS compliant product
patent regime in 2005. Law and policy makers in India were confronted with
two major concerns viz. the future of the Indian pharmaceutical industry and
access to affordable medicines in India and other developing countries. To address
these concerns India and other developing countries attempted to incorporate
TRIPS flexibilities in their domestic law. This article examines whether these
premises hold true after five years into the implementation of the TRIPS compliant
patent system in India. In this context this article attempts to identify and
analyzes the legal, policy and institutional challenges that India is currently
facing in the implementation of TRIPS flexibilities. Mere incorporation of TRIPS
flexibilities in the domestic legislation alone is not enough and the domestic
legislation needs to be complemented with policy and institutional framework.
Introduction not establish a uniform international

The innovations in a knowledge law, but sets out minimum standards of
intensive sector are essentially a patent protection that must be met by all
dynamic process. India’s stance at World WTO members. The background to
Trade Organisation (WTO) has TRIPS is revealing. A study undertaken
undergone a sea change. India being a by WIPO in 1988 for the negotiating
founder member of WTO, acceded to the group that was dealing with TRIPS in
Trade-Related Aspects of Intellectual the Uruguay Round revealed that of the
Property Rights (TRIPS) agreement, and ninety-eight members of the Paris
the product patent regime was Convention for the Protection of
reintroduced in India. The patent system Industrial Property i.e. Paris Convention,
is a social policy tool that aims to forty-nine excluded pharmaceutical
stimulate innovation. Internationally, products from protection. 1 These
patent protection is governed by the numbers include developed as well as
World Trade Organization (WTO) Trade- developing countries. Many of today’s
Related Aspects of Intellectual Property developed countries excluded
Rights (TRIPS) Agreement. TRIPS does pharmaceutical products from patent
* Advocate, currently working with the Competition Commission of India. The article
represents the personal views of the author.
1 P. Drahos, Developing countries and international intellectual property standard-setting,
UK Commission on Intellectual Property Rights (2002).

2015] TRIPS and its Impact on India’s Health F-37
protection until quite recently: Germany concerns viz. the future of the Indian
until 1968; Switzerland until 1977; Italy pharmaceutical industry and access to
until 1978; Spain until 1992; Portugal affordable medicines in India and other
until 1992; Norway until 1992; Finland developing countries. To address these
until 1995, and Iceland until 1997. concerns India along with many other
TRIPS Agreement had a significant developing countries attempted to
impact on pharmaceutical industry in incorporate TRIPS flexibilities in their
India, leading to the amendment to the domestic law. However, the success of
Patents Act, 1970 in fulfilment of the the TRIPS flexibilities in addressing the
obligation to comply with TRIPS. The question of access to affordable
Indian pharmaceutical industry, which medicines mainly depends on three
had little technological capabilities to factors: a) the incorporation of
manufacture modern drugs locally in flexibilities in the domestic law; b) the
the 1950s, has emerged technologically manufacturing capability of a country;
as the most dynamic manufacturing and c) the political will to use the public
segment in the Indian economy in the interest safeguards provided in the
1990s. It achieved a significant scale domestic law. There are only a few
and level of technological capability for countries like India, which satisfy the
manufacturing modern drugs above-mentioned conditions to a certain
indigenously and cost efficiently to extent. It is further essential that to
emerge as a major developing country effectively use TRIPS flexibilities to
competitor in the world market. Only address access to affordable medicines
after the emergence of TRIPS on the require changes in three areas viz. law,
horizon, Indian pharmaceutical policy and institutions and mere
industry woke up to the challenges of incorporation of TRIPS flexibilities in
new intellectual property regime. The the domestic legislation alone is not
Indian pharmaceutical industry became enough and the domestic legislation
part of the knowledge industry needs to be complemented with policy
consequent to TRIPS. India has had a and institutional framework.3
unique position among the countries in A successful patent policy of any
the developing world for it has a strong developing country is one that strikes a
generic pharmaceutical industry, which clear balance between protecting the
has been able to provide medicines at rights of innovators & services at
prices that were among the lowest in the affordable prices to the population. In a
world. Much of the credit for this democratic country, like India, it is not
development goes to the Patents Act that easy to shift the policy against public
India enacted in 1970.2 interest. Earlier, India’s patent policy, in
In 2005, India amended its Patents Act, fact, protecting the interest of public more
1970 to introduce TRIPS compliant than that of the monopoly rights. After
product patent regime. Generally the TRIPS, India was in the difficult
speaking, law and policy makers in situation of protecting people’s interest
India during the time of the amendment on the one hand and fulfilling the WTO’s
were confronted with two major agreement of TRIPs on the other hand.
2 Sonal Gupta, Trips And Its Impact On Indian Pharmaceuticals, available at http://
alexis.org.in/trips-and-its-impact-on-indian-pharmaceuticals/
3 M.,Gopakumar K. (2010) “Product Patents and Access to Medicines in India: A Critical
Review of the Implementation of TRIPS Patent Regime,” The Law and Development Review:
Vol. 3: No. 2, Article 11. Available at: http://www.bepress.com/ldr/vol3/iss2/art11

Now the social cost of granting patent committees concluded that the Indian
would obviously entail in monopoly. As patent system had failed “to stimulate
a result, there will be a rise in price, inventions among Indians and to
accompanied by lower supply of encourage the development and
quantity. So in the short run, it is true exploitation of new inventions”. 5
that consumer welfare will fall. Hence Thereafter, India chose to redesign its
short run costs will have an adverse patent system to suit its national
impact on society. TRIPS implementation circumstances - a country with a meager
in India and other manufacturing infrastructure, scanty research and
countries will effectively cut the lifeline development expertise, with a large
of affordable drugs unless safeguard population of underprivileged people
measures are implemented to prevent and having some of the highest drug
this. One danger in compulsory licensing prices in the world. Passed in 1970
is that it will discourage further the India’s new patent law followed the
commercial research and development German system of allowing the
necessary to new drugs to fight global patenting of methods or processes that
epidemics. Criticizing intellectual led to drugs, but not allowing the
property rights as monopoly power that patenting of the drugs themselves. Patent
would affect the growth and expansion protection for pharmaceuticals was only
of the health sector. However, the granted for seven years as opposed to 14
monopoly power in the short run would years for other inventions. India’s patent
encourage more innovation and greater law became the stepping stone for a
enthusiasm in research and development highly successful Indian generics
which would be beneficial in the long industry.
run. Patent is one of the IPRs which gives Trade-Related Aspects of Intellectual
the inventor sole right to produce his Property Rights
property or license it to other producers.
But misuse of this right is not desirable The General Agreement on Tarriffs and
and it is not expected that patent holders Trade (GATT) was originally conceived
would get into anti competitive ways in the early post-war years. The purpose
such as ever-greening of patents, patent was to establish a legal framework for‘
pooling etc.4 international trade in goods. In the
beginning, intellectual property
Some of them began to review the protection was outside the GATT agenda,
operation of the intellectual property but it did take notice of intellectual
systems that had been left to them by their property protection in Article IX and
colonizers. After India’s independence, Article XX.6 The Agreement on Trade-
a review of India’s patent system was Related Aspects of Intellectual Property
reviewed by two expert committees. The Rights (TRIPS) 7 was one of the most
4 Supra, Note 1.
5 S. Vedaraman, ‘The New Indian Patents Law’, 3 (1972) International Review of Industrial
Property and Copyright Law, 39, 43.
6 Dr. Peter Drahos, The Universality Of Intellectual Property Rights: Origins And Development,
available at http://www.wipo.int/edocs/mdocs/tk/en/wipo_unhchr_ip_pnl_98/
wipo_unhchr_ip_pnl_98_1.pdf
7 K D Raju, WTO-TRIPS Obligations and Patent Amendments in India: A Critical Stocktaking,
available at http://nopr.niscair.res.in/bitstream/123456789/4874/1/JIPR%209(3)%20226-
241.pdf

contentious issues in the Uruguay

Round (UR) of multilateral trade
negotiations, which was concluded
among 125 nations, including India, in The TRIPS Agreement
April 1994 at Marrakech. Almost a covers seven major IPR areas,
decade after coming into effect, the TRIPS
Agreement remains a controversial but viz., Patent, Copyrights and
forceful legacy of the UR trade related rights, Trade marks,
agreements. However, the Agreement
leaves considerable room to deal with the Geographical Indications,
national level issues, such as the Industrial Designs, Layout
definition of an invention, exception to
exclusive rights, compulsory licensing, Designs (Topographies) of
etc. The TRIPS Agreement provides a
three-stage time frame for developing
Integrated Circuits, and
countries to comply with its obligations. Protection of Undisclosed
They are:
i) Introduction of a ‘mailbox’
Information
facility starting from 1995 to
receive product patent legislation. Among developing countries
application in the field of faced with the 2005 deadline to comply
pharmaceuticals till 31 with the TRIPS Agreement, India with
December 2004. An Exclusive its well-established domestic
Marketing Rights (EMRs) for a pharmaceutical industry, strong
period of five years or till the international position, emerging
product patent is granted or economy and vibrant civil society was
patent application is rejected. perhaps the best placed to implement the
ii) Other rights related to rights of TRIPS flexibilities. India complied with
patentee, term of patent most of the obligations and the remaining
protection, compulsory will be fulfilled with the passing of Patent
licensing, reversal of burden of (Amendment) Bill 2003. 8 The TRIPS
proof, etc., are to be complied Agreement covers seven major IPR areas,
with by 1 January 2000. viz., Patent, Copyrights and related
iii) Introduction of product patent rights, Trade marks, Geographical
protection in all fields of Indications, Industrial Designs, Layout
technology from 1January 2005 Designs (Topographies) of Integrated
including food, drugs, Circuits, and Protection of Undisclosed
pharmaceuticals and chemicals. Information. India made a series of
amendments to its existing laws and
Many developing and least developed enacted new legislations in consonance
countries made use of the flexibility with the TRIPS commitments. They are:
within TRIPS in their domestic
8 Ibid.

i) Patents (Amendment) Act, 2002 A ‘discovery’ is commonly considered

and Patents (Amendment) Bill to mean the mere recognition of what
2003 already exists. It means that India can
ii) Trade Marks Act, 1999 legitimately follow a definition of
iii) Designs Act, 2000 invention that broadly excludes
materials pre-existing in nature. Article
iv) Copyright (Amendment) Act,
27(1) of TRIPS Agreement provides that
1999
patents shall be granted to protect
v) Protection of Plant Varieties and inventions, which are “new, involve an
Farmers’ Rights Act, 2001 inventive step and are capable of
vi) Geographical Indications of industrial application.” The Agreement
Goods (Registration and allows Member countries to interpret
Protection) Act, 1999 ‘inventive step’ as synonymous with
vii) Semiconductor Integrated ‘non-obviousness’. Similarly, a country
Circuits Layout Designs Act, can consider treating ‘capable of
2000 industrial application’ as synonymous
with ‘usefulness.’ The latter concept is
The Concept of Invention
looking somewhat broader, since it
The TRIPS Agreement does not specify would allow even the patentability of
what an ‘invention’ is; national laws can purely experimental inventions. Other
define this concept according to the options to be considered relates to the
standards generally applied. But all concept of ‘prior art’ which may be
these are subject to normal tests of novelty defined more or less broadly, and to the
and inventiveness capable of industrial processes that are not novel but which
application. Article 27(1) of the TRIPS use or produce a novel product. Where
Agreement provides that: the invention has not been properly
i) Patents shall be available for any described and will not function in the
inventions, whether product or way claimed by the applicants, the
process, in all fields of opponents succeed even when they fail
technology; and to establish “prior publication” as well
ii) Patent rights shall be enjoyable as “prior public knowledge” and,
without discrimination in the therefore, the application for grant of
field of technology. patent is liable to be rejected.9
There is no obligation under the TRIPS Indian Practice and Exceptions to
Agreement to adopt an expansive Patentability
concept of ‘invention.’ While The Indian Patents (Amendment) Act,
implementing Article 27(1), each country 2002 defines an invention. Section 3 of
considers its economic, legal and ethical the Act enumerates what are not
aspects involved in the patenting of its ‘inventions’ and inventions which are
pharmaceutical inventions. There is no not patentable. An invention that is
uniform definition available which frivolous or contrary to well-established
relates to the distinction between natural laws cannot be patentable.10 An
‘invention’ and ‘discovery.’ According invention intended to commercial
to the basic principles of patent law, the exploitation or contrary to public order
former is patentable and the latter is not. or morality or which causes serious
9 Abid Kagalwala v Edgar Haddley Co (P) Ltd, 1984 PTC 234 (PO)
10 Section 3 (a)

prejudice to human, animal or plant life exemptions from patentability remain, to

or health or to the environment, is also protect public order or morality, prevent
not patentable. Mere arrangement, environmental deterioration and protect
rearrangement or duplication of a known animal, human or plant life. This is an
device cannot be patented. 11 Mere area where India can enjoy some room to
discovery of a scientific principle or the manoeuvre. The same applies to
formulation of an abstract theory or therapeutic and surgical methods for
“discovery of any living thing or non- treatment of humans or animals.
living substance occurring in nature” is The exemptions are in Article 27 (3) (b)
not acceptable. The new clause (j) 12 for biotechnological inventions. It
excludes plants and animals other than exempts plants and animals, essentially
micro-organisms in whole or any part biological processes for the production
thereof including seeds, varieties and of plants and animals. The TRIPS
species and essentially biological Agreement permits the patenting of
processes for production or propagation micro-organisms and non-biological and
of plants and animals. Sub-section (k) microbiological processes. Nowadays,
excludes a mathematical, business biotechnology has become one of the most
method, computer program or significant areas of innovative inventions
algorithms. Sub-section (l) excludes “a like cloning. In principle, patents must
literary, dramatic, musical or artistic be provided for micro-organisms and
work or any other aesthetic creation biotechnological inventions.13 But at the
whatsoever includes cinematographic same time, the ethical, economic and
works and television productions. legal implications of allowing the
Sub-section (m) excludes ‘a mere scheme patenting of plants and animals, even if
or rule or method of performing mental genetically modified, strongly indicate
act or method of playing game.” that all patents on life-forms and living
Presentation of information and processes should be rejected from
topography are included in sub-sections inclusion in TRIPS. 14 A few judicial
(n) and (o). Traditional knowledge or decisions are also available for
traditionally known component is considering the determination of
excluded from patenting. This provision invention. An “invention is the act or
may adequately check the piracy of huge operation of finding out something new;
Indian traditional knowledge in the the process of contriving and producing
sphere of Ayurvedic medicines. In something not previously known or
addition to what is not an ‘invention’, existing, by the exercise of independent
national laws can establish exceptions investigation and experiment.”
to the patentability of invention that Section 2(8) of the Patents and Designs
would otherwise be protectable. There Act, 1911, defines ‘invention’ as any
are three permissible exceptions to the manner of new manufacture and
basic rule on patentability. Broad includes an improvement and allied
11 Standipack Pvt Ltd v Oswal Trading Co Ltd, 1999 (19) PTC 479 (Del.)
12 Inserted by Patent (Amendment) Act, 2002, w.e.f. 20.5.2003 vide S.O.561 (E), dt.20.5.2003
13 Maskus Keith E, Intellectual Property Rights in the Global Economy (Institute of International
Economics ,Washington), 2000, 20
14 Mae-Wan Ho and Terje Traavik, Why We Should Reject Biotech Patents from TRIPS (Institute
of Science in Society, UK and Institute of Gene Ecology, Norway) p 1, http://www.i-sis.org.uk

invention. Unlike the Patents Act, 1970, companies control 80 per cent of the
the 1911 Act does not specify the domestic market. Only two multinational
requirement of being useful in the corporations, viz . Glaxo Smithkline
definition of ‘invention.’ But the Courts (GSK) and Pfizer, figure in the top 10
were always of the view that a patentable pharmaceutical companies in India. In
invention, apart from being a new 1970, Indian companies only had a 20
manufacture, must also be per cent market share.17 The exports of
useful.”15Without violating the TRIPS drugs and pharmaceuticals by the
provisions, the Indian Courts can Indian pharmaceutical industry are
interpret what is contrary to morality or around USD 5.3 billion. 18 Indian
what are the kinds of commercial pharmaceutical companies play an
exploitations that can cause serious important role in providing life-saving
prejudice to human or animal or plant drugs at affordable prices. For instance,
life. Like the TRIPS provisions, Indian 70 per cent of the antiretroviral drugs
law also does not precisely enumerate procured to treat HIV/AIDS under the
what is opposed to public policy. It is for Global Fund to Fight HIV/AIDS, TB and
the Indian Courts and authorities to Malaria comes from Indian companies.
interpret and consider each case Similarly, 70 per cent of UNICEF, IDA
separately and fix the standards. and Clinton Foundation procurement is
Access to Pharmaceutical Products: also from Indian companies.
Indian Scenario The absence of product patent protection
Since the introduction of the Indian played a crucial role in the development
Patents Act 1970, which prohibited of the Indian pharmaceutical industry.19
product patent protection to Indian companies could easily introduce
pharmaceutical inventions, new drugs in the market. Further, it
pharmaceutical industry in India generated competition in the
succeeded in achieving self-sufficiency. pharmaceutical market which drove the
The industry, i.e., the Indian generic prices of pharmaceuticals and also
industry “holds fourth position in terms helped Indian companies to introduce
of volume and thirteenth position in innovative products. The competitive
terms of value of production.”16 It also environment in the domestic market also
enjoys a 22 per cent share of the global induced Indian companies to develop
generic market. Currently, domestic cost-effective process for the
manufacturing of medicines. The public
15 Supra Note 7
16 Planning Commission of India, Report of the Working Group on Drugs and Pharmaceuticals for
the Eleventh Five Year Plan (New Delhi: Planning Commission, 2006), p. 21.
17 Padmashree Gehl Sampath, Economic Aspects of Access to Medicine After 2005 (2005,
UNU Merit), p. 22, available at: http://www.who.int/intellectualproperty/studies/
PadmashreeSampathFinal.pdf
18 Reji K. Joseph, India’s Trade in Drugs and Pharmaceuticals: Emerging Trends, Opportunities and
Challenges, Discussion Paper No.159 (New Delhi: Research Information System for
Developing Countries, 2009), p. 10.
19 For the role of patents in the evolution of the Indian pharmaceutical industry, see Biswajith
Dhar and Niranjan Rao, Transfer of Technology for Successful Integration into the Global Economy:
A Case Study of the Pharmaceutical Industry in India (New Delhi: UNCTAD/UNDP Programme
on Globalisation, Liberalisation and Sustainable Development, 2002). See also, Sudip
Chaudhuri, WTO and India’s Pharmaceutical Industry: Patent Protection, TRIPS and Developing
Countries (New Delhi: Oxford University Press, 2006).

health situation in India requires Compulsory Licensing

medicines at affordable prices. There is Compulsory licenses are generally
also growing requirement of medicines, defined as “authorizations permitting a
as the country is overburdened by the third party to make, use, or sell a patented
co-existence of communicable and invention without the patent owner’s
infectious diseases alongside an consent.” 22 Compulsory licenses are
emerging epidemic of non-communicable generally granted to enable the
diseases. While the burden of disease on underprivileged get access to life saving
account of communicable diseases is drugs at an affordable price. Since
expected to decline, India’s compulsory licenses limits the monopoly
noncommunicable disease burden is set rights conferred to the patent holders,
to increase significantly. Cardiovascular there have always been controversies
diseases and diabetes will more than associated with its implementation. As
double.20 There may be a continued threat per the Indian Patent law, applicant
of the emergence of new infectious should first make an attempt to get
diseases. Further, it has been estimated voluntary license from the patentee itself
that by 2015, the number of HIV/AIDS to manufacture the patented drug. Only
cases would be three times more than the if the applicant is not able to procure the
current level, with a potential likely same within the prescribed period of 6
increase in the existence prevalence level months, the applicant can file an
of TB of about 8,500,000 cases. The application before the Controller General
number of cancer cases is expected to rise of Patents for providing compulsory
by 25 per cent, with more than 47 per license to manufacture the said patented
cent of the incidence reported in cervical drug. As per Section 84 of the Act, for the
and breast cancer patients. compulsory license of patented
The above facts show that the invention, the interested party can apply
availability of affordable medicine is to the controller after the expiry of three
critical for India’s health system. The years from the date of grant of such patent
new product patent regime changes the based on the following reasons: (i)
rules of the game. Indian generic reasonable requirements of public have
companies are prevented from not been satisfied; or (ii) patented
introducing the generic version of invention is not available with the
patented medicines. The only way to public; or (iii) patented invention is not
introduce generic versions of patented worked in the territory of India. India’s
medicines is through a compulsory first compulsory license was granted to
license or a government use Natco Pharma Ltd (Natco) for
authorization. Otherwise, Indian generic manufacturing Bayer Corporation’s
companies can produce only off- (Bayer) patented drug Nexaver used for
patented medicines. This would result the treatment of liver and kidney cancer.
in denial of new medicines at an Nexavar is a life-enhancing drug as it
affordable price to the general public.21 would extend the life span of the patients
20 National Commission on Macroeconomics and Health, Report of the National Commission on

Macro Economics and Health (New Delhi: Ministry of Health and Family Welfare, Government
of India, 2005), pp.28-34
21 M. Gopakumar K. (2010) “Product Patents and Access to Medicines in India: A Critical
Review of the Implementation of TRIPS Patent Regime,” The Law and Development Review:
Vol. 3: No. 2, Article 11. Available at: http://www.bepress.com/ldr/vol3/iss2/art11
22 F.M. Scherer & Jayashree Watal, POST-TRIPS options for access to patented medicines in
developing countries 13 (Common on Macroeconomics & Health, Working Paper No. WG4:1,
2001, available at http://www.cmhealth.org/docs/-wg4_paper1.pdf.

suffering from kidney or liver cancer. In an another interesting case between

Bayer launched Nexavar in the year 2006 BDR Pharmaceuticals Ltd and Bristol
and obtained patent protection on March Myers Squibb Pharmaceuticals Ltd,
3, 2008. Bayer sold the drug at an Controller General of Patents rejected the
approximate cost of INR 280,000 application filed by BDR Pharma for
(approximately USD 4,666) per month. compulsory license of anti cancer drug
Natco, an Indian pharmaceutical Dasatinib, a patented drug of BMS
company, applied to Bayer for a Pharma citing that the applicant has
voluntary license to manufacture and failed to make out a prima facie case for
sell the drug but since then Bayer had an order under Section 87 of the Act. BMS
continued to reject Natco’s proposal. Pharma was selling the drug at a price of
Aggrieved by this rejection, Natco filed INR 2761 (USD 6) per tablet whereas
an application for the grant of a BDR Pharma proposed to the sell the
compulsory license with the IPO and the generic version of the drug for INR 135
Controller General of Patents after (USD 2.25) per tablet. As mentioned
considering all the three aforementioned earlier, an applicant in order to obtain a
grounds for grant of compulsory licenses, compulsory license must have made the
decided in favor of Natco. Controller necessary efforts to procure a voluntary
General of Patents permitted Natco to license from the patent holder and only
manufacture the patented drug based on in the event of the failure of such attempts
its assurance to sell the drug at a price of that the applicant can file an application
INR 8,800, which is only 3% of the for compulsory license within 6 months
Bayer’s cost. Further, a lot of conditions of the initial request. Likewise, BDR
have been imposed on Natco including Pharma had sent a request to BMS
payment of a royalty of 6% of net sales to Pharma to issue voluntary license for the
Bayer, manufacturing of the drug at its manufacture of its anticancer patented
own manufacturing facility, selling the drug Dasatinib, but BMS Pharma
drug within Indian Territory and supply responded by raising numerous
of the same to at least 600 patients per questions to BDR Pharma such as
year free of cost. Aggrieved by the whether BDR Pharma posses necessary
decision, Bayer appealed before the wherewithal for the manufacture of good
Intellectual Property Appellate Board quality patented drugs. BDR Pharma did
against the CGP’s decision alleging that not reply to the queries raised by BMS
the grant of compulsory license was Pharma, but chosen to file an application
illegal and untenable under law. for compulsory license with the
However, Intellectual Property Appellate Controller General of Patents. Controller
Board dismissed the appeal stating that General of Patents in his order held that
granting compulsory license to Natco is BDR Pharma by failing to reply to the
valid under law and revoking the same queries raised by BMS Pharma had not
would jeopardize the interest of the fulfilled the conditional steps required
public who are in need of the drug. Thus, for obtaining compulsory license and,
eventually the Controller General of thus rejected the application. It was also
Patents’s order granting compulsory pointed out that the BDR Pharma must
license to Natco was upheld. 23 have negotiated with BMS Pharma for at
23 Sindhu Varma and Krishnakanth Balasubramani, A glimpse of recent developments in

patent arena, available at http://www.mondaq.com/india/x/319732/Patent/
A+Glimpse+Of+Recent+Developments+In+Patent+Arena

least 6 months for obtaining voluntary the scope of patent protection. This may
license and, therefore BDR Pharma failed result in an interpretation, which is
to prove the existence of a prima facie contrary to the original purpose. Further,
case for the grant of compulsory license. the provisions like compulsory license
More recently, two recent Court cases in and government use involve
India may have changed the rules of the cumbersome legal procedures and
game. Pharma giant Novartis lost a six- neutralizes the practical use of public
year legal battle after the Indian Supreme interest safeguards. Hence, amendments
Court ruled that small changes to its to the existing provisions on scope of
leukemia drug Glivec did not deserve a patentability and compulsory license are
new patent. Campaigners had long required for the effective implementation
highlighted this as a clear case of “ever of the TRIPS flexibilities. The
greening” – making minor alterations to incorporation of the TRIPS flexibilities
existing drugs in order to secure a new in domestic law has to be complemented
patent, and so extend its monopoly through sound policy measures to
(Glivec costs patients $2,600 (£1,670) a facilitate the actual use of the public
month). And only one month before, interest safeguards provided in the law.
India had upheld a compulsory licence The objective of the TRIPS Agreement is
of Bayer’s cancer drug Nexavar, to enforce globally tough standards in
effectively allowing generics firms to respect of several forms of intellectual
copy a patented drug, reportedly property, which include patents,
bringing the price down drastically. Both trademarks, protection of undisclosed
rulings are landmark cases, vehemently information etc. It prescribes the
criticised by both Big Pharma and major maximum standards that will
drugs-producing countries. Crucially, substantially increase the degree of
India broke no rules. Its verdicts are harmonization of intellectual property,
allowable under TRIPS – it’s just that no but it does not provide a uniform law.
country had previously dared try it. 24 Even the protection is on a universal scale
leaving considerable room for national
Conclusion laws to define a number of important
It is clear that there is a legal, policy and aspects. The Agreement catalyses
institutional deficit in the monopolies, inhibits competition and
implementation of the TRIPS flexibilities freezes the initiative of scientists and
in India. Even though the Indian Patent technologies in providing cheaper and
Act contains all the TRIPS flexibilities, better products through more and finer
the relevant provisions require further processes in the developing countries.
fine-tuning, especially of those related to The TRIPs Agreement, in its restrictive
the scope of patent protection, provisions, sabotages developmental
compulsory licence and government use. objectives of countries like India through
The current provisions provide space for TRIPs taboos and WTO handcuffs.25 The
legal interpretation of critical areas like review of India’s patent policy and
24 Patent wars: has India taken on Big Pharma and won? http://www.theguardian.com/
sustainable-business/patent-wars-india-takes-on-big-pharma
25 Iyer Krishna V R, Frontline, 17, 14-27 October 2000

negotiations point to the need for countries to promote their interests

promoting a relaxation of TRIPs for India internationally. The time is right not just
and other developing countries. The for calling for a modification of TRIPs
current scenario provides the right but actually demanding a scaling back
moment for India and other developing of TRIPs.

MIPRJune Issue 20151

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

MIPRJune Issue 20151

Uploaded by

Copyright:

Available Formats

Journal Subscription 2015

Please start/renew my subscription for 2015 for the following Journals:

Journals No. of Issues Price

q Chartered Accountant Practice Journal (CAPJ) 12 ` 3000

All subscribers of above Journals will get Complimentary access for

Contact your bookseller or mail your orders to:

Please find enclosed Cheque/Demand Draft* No.___________________

*Cheque/DD to be in favour of Manupatra Publishing Pvt. Ltd.

Please issue the Cheques/Drafts in favour of Manupatra Publishing Pvt. Ltd.

Sunil B Krishna Nikhil Krishnamurthy

6 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 7

Trademark — Infringement of Trademark — Grant of interim injunction —

8 Manupatra Intellectual Property Reports v June 2015

VIT University v. Bagaria Education Trust and Ors.

Trademark — Infringement of Trademark — Entitlement for permanent injunction

Trademark — Infringement of Trademark — Entitlement for permanent injunction

Trademark — Infringement of Trademark — Entitlement to permanent injunction

Hydrochloride, which is used in treatment of gastric ailments. Moreover it was

Trademark — Infringement of Trademark — Grant of ad-interim injunction —

Trademark — Infringement of Trademark — Grant of interim injunction —

10 Manupatra Intellectual Property Reports v June 2015

Summarised Notes on Cases

Manupatra Intellectual Property Reports v June 2015 11

12 Manupatra Intellectual Property Reports v June 2015

MIPR 2015 (2) 0095*

Manupatra Intellectual Property Reports v June 2015 13

14 Manupatra Intellectual Property Reports v June 2015

Applicant/Plaintiff’s registered service/Trade mark ‘VIT’ by use of the Trade mark

S.No. Names of schools

16 Manupatra Intellectual Property Reports v June 2015

Plaintiff had developed academic partnerships with reputed universities

only to show their institute is an associate institution of the Plaintiff, who is

20 Manupatra Intellectual Property Reports v June 2015

22 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 23

24 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 25

26 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 27

28 Manupatra Intellectual Property Reports v June 2015

a MIPR 2015 (2) 0111*

Darius Rutton Kavasmaneck

Manupatra Intellectual Property Reports v June 2015 29

Printers (Mysore) Private Ltd. v. Poothan Joseph, MANU/SC/0001/1960: AIR 1960 SC

Issues and Findings g

30 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 31

32 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 33

34 Manupatra Intellectual Property Reports v June 2015

“According to the well-established rule that an agent cannot act on

Manupatra Intellectual Property Reports v June 2015 35

36 Manupatra Intellectual Property Reports v June 2015

Manupatra Intellectual Property Reports v June 2015 37

38 Manupatra Intellectual Property Reports v June 2015

A., but who is in reality a shareholder in company B., and has no

Manupatra Intellectual Property Reports v June 2015 39

42 Manupatra Intellectual Property Reports v June 2015

MIPR 2015 (2) 0125*

Industria De Diseno Textile SA

Manupatra Intellectual Property Reports v June 2015 43

44 Manupatra Intellectual Property Reports v June 2015