Use of Identical Names by Educational Institutions Leading to Confusion in Students & Parents Unacceptable: Delhi HC
The High Court of Delhi in The British School Society vs The British International School – IA 15651/2021- held that two educational institutions cannot have identical names that leads to confusion among students and parents.
A single-judge bench of Justice Yogesh Khanna upheld the ad-interim order passed by a single-judge bench of the Delhi High Court on 03.09.2021 and reinstated:
Keeping in view the user of the plaintiff of the mark since 1963 and the reputation of the plaintiff, plaintiff has made out a prima facie case. The defendant is restrained by an ex parte injunction from using or asserting any right on trademark “THE BRITISH INTERNATIONAL SCHOOL” or any other trademark similar to the plaintiff’s trademark THE BRITISH SCHOOL. The defendant will take steps within three months from the date of receipt of the injunction order.
The defendant had filed an interim application under Order 39 Rule 4 of Code of Civil Procedure for dismissal of an ad-interim order dated 3rd September 2021 wherein he was restrained from using the trademark of the plaintiff’s school name. The counsel for the defendant submitted that the mark of the defendant, British International School of Chennai, was registered on 16.07.2007 and whereas the mark of the plaintiff was registered only on 23.04.2013 as per a copy of the Trademarks Journal 1852 dated 04.06.2012, and that there has been concealment of facts in the plaint.
The counsel further, argued that the mark, The British School, was not exclusive to anyone, including the plaintiff. Further, he stated that the plaintiff’s claim that he was not aware of the fact until September 2020 was incorrect as there were similar marks available even at the time of registration of plaintiff’s mark. The counsel for the plaintiff had also agreed that visually and structurally the marks are different from each other and thus there was no confusion among them.
The defendant had filed a plea alleging that the ad-interim order passed by the court was illegal and that the defendant was in the mid of an academic year and an injunction order passed in the middle of an ongoing academic year is against the interests of the students and their parents and the defendant had rightly used the words The British International School, Chennai.
The court while hearing the application read Section 18(4) of Trademarks Act, 1999 and went through a number of decisions passed by the same court on similar issues and observed that the mark used or the word used by the defendant are almost similar with the plaintiff and thus it shall create confusion in the minds of students and their parents.
The court observed:
The British School is an essential feature of the mark of the plaintiff and its adoption by the defendant shall certainly infuse confusion in the minds of the students as also their parents as they shall believe the defendant has connection with the plaintiff and thus, the defendant shall ride upon the goodwill of the plaintiff. Being a prior user and adopter, the plaintiff is entitled to get the defendant restrained to use the mark deceptively similar of plaintiff’s mark irrespective of the fact the defendant got its mark registered prior in time. The mark of the defendant when compared as a whole with the mark of plaintiff it certainly shall create confusion, especially, when both are in identical field viz. educational. The similarity in the name shall certainly cause damage not only to the career of students but also to the reputation of the plaintiff.
The court added:
One may also look at the reply of the defendant it gave to the Cease and Desist notice wherein the claim of the plaintiff qua the user since 1963 etc. was simply denied and it was never alleged in reply the defendant was not aware of the plaintiff’s using The British School as its trademark since the year 1963. The defendant rather admitted of using the website http://www.britishschool.co.in i.e., exactly with the same name of plaintiff. One may also note the area of operation is same, in this case, education, hence in this field the chances of confusion need to be completely eliminated.
Accordingly, the court dismissed the application of the defendant by giving an opportunity to comply with the ad-interim order till the completion of academic year 2021-2022.
Rasmita Behera | Research Intern | EduLegaL
Swapna Iyer | Legal Editor | EduLegaL