TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION PVT LTD vs T.I.M.E. TIRUPATI & ORS.

2023-10-05 Information

$~19
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 320/2022 & I.A. 7567/2022
TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION PVT LTD ….. Plaintiff
Through: Mr. Lakshay Kaushik, Adv.

versus

T.I.M.E. TIRUPATI & ORS. ….. Defendants
Through: None

CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR

J U D G M E N T (ORAL)
% 05.10.2023

1. Defendants 2 and 3 in the present suit are persons in control of Defendant 1.

2. The defendants were earlier represented by one Ms. Heeba Ansari. However, no one appeared on their behalf either on 27 March 2023 or on 11 April 2023.

3. On 14 July 2023, Ms. Ansari appeared and submitted that, she had lost touch with the defendants and sought to withdraw her Vakalatnama. The Court, therefore, directed court notice, without process fee, to issue to the defendant to enter appearance today.

4. The office report from the Registry indicates that court notice was duly served on all the defendants. None of the defendants are, however, present, despite service of court notice.

5. The defendants have also not chosen to contest the present suit by way of any written statement.

6. Though certain earlier orders record the statement of the learned Counsel for the parties that the dispute stood settled, and that an application would be moved under Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (CPC). Mr. Lakshay Kaushik, the learned Counsel for the plaintiff submits that the defendants never came forward to sign the terms of settlement.

7. The defendants have not only failed to file any response to the plaint; they have also chosen not to remain present even after court notice was served on them on 3 August 2023. It appears, therefore, that the defendants have nothing substantial to offer by way of defence and the assertions in the plaint which, needless to say, have to be treated as admitted on the ground of non-traverse.

8. I have heard Mr. Lakshay Kaushik, learned Counsel for the plaintiff, and perused the material on record.

9. In my view, the case eminently merits passing of a decree in exercise of the powers conferred on the Court under Order VIII Rule 10 of the CPC.

10. The plaintiff claims to be running a comprehensive chain of coaching institutes and training centres operating across the country, providing training for examinations to be undertaken by aspirants seeking entry into institutes of higher education.

11. The plaintiff is the proprietor, inter alia, of the following registrations:

S. No.
Trade Mark
Application No.
Class
Date of Application
User date
1.

1343168
41
09/03/2005
01/05/1992
2.

1408314
41
22/12/2005
01/05/1992
3.

1725338
16
26/08/2008
01/09/1992
4.

2712599
38
04/04/2014
01/05/1992
5.

2712597
38
04/04/2014
01/05/1992
6.
T.I.M.E. TUTIONS (WORD)
2820862

16
01/10/2014
26/06/2011
7.
T.I.M.E. TUITIONS (WORD)
2820864
38
01/10/2014
26/06/2011
8.
T.I.M.E. TUITIONS (WORD)

2820866
41
01/10/2014

26/06/2011
9.

2820863

38
01/10/2014
26/06/2011
10.

2820865

41
01/10/2014
26/06/2011
11.

2820861
16
01/10/2014
26/06/2011

12. The plaintiff claims to have 190 offices in 99 towns and cities across the country, including Delhi, Bangalore, Mumbai, Chennai, Hyderabad, Pune, Cochin, Kolkata and others. In Delhi alone, the plaintiff claims to be running 10 coaching centres. It is further claimed that, by dint of its continued experience, the plaintiff has acquired considerable reputation and goodwill in the field of educational and training and coaching services. In the year 2021 alone, it is claimed that the plaintiffs turnover, from rendering of such services, is in the region of ? 146 crores. The plaintiff also claims to have expended considerable amounts in rendering its services, with the expenditure on that account being in the region of ? 2.28 crores even in the years 2020-2021.

13. It is further submitted that, with the passage of time, the T.I.M.E. mark has become the source identifier of the plaintiff. The plaintiff is also running a YouTube channel under the name TIME4Education.

14. Mr. Kaushik submits that, by virtue of the registrations held by it, under the Trade Marks Act, the plaintiff is entitled to defend itself against infringement of the said mark under Section 28(1) read with Section 29 of the Trade Marks Act, as well as against any attempt by any person to pass off his/her services as services rendered by the plaintiff.

15. The plaintiff is aggrieved by use, by the defendants, of an identical acronym T.I.M.E., along with Tirupati and the logo
. It is averred that, under the said logo, Defendants are providing services identical to those provided by the plaintiff, and also advertising such services on various virtual channels including social media platforms such as Instagram, Twitter, LinkedIn, Facebook and YouTube. The screenshots thereof have also been provided, in the plaint.

16. A pictorial comparison of the two marks is thus provided in para 7 of the plaint:

Plaintiffs Trade Mark
Defendants Trade Mark

17. The plaint avers that, by virtue of a franchise agreement dated 16 February 2013, the plaintiff had allowed the Defendant 2 to run their coaching centres under the mark/name T.I.M.E. However, the said agreement , after having been renewed twice, was terminated on 15 February 2020. The use, by the defendant, of the Mark T.I.M.E. after 15 February 2020 is therefore alleged to be infringing of the plainitffs registered trade marks.

18. Even after 15 February 2020, the defendants are allegedly continuing to use the impugned mark T.I.M.E. Tirupati. In these circumstances, the plaintiff issued a notice to the defendants on 5 January 2022, calling on the defendants to cease and desist from using the mark T.I.M.E. Tirupati or any other mark which incorporated T.I.M.E., which was the dominant and identifying feature of the registered trade mark of the plaintiff.

19. As the defendants did not desist from continuing to use the impugned mark, despite the said legal notice, the plaintiff has approached this Court by means of the present plaint, seeking a decree of permanent injunction, restraining the defendants, as well as all others acting on their behalf, from using T.I.M.E. Tirupati as any part of the mark/name used by the defendants for the services rendered by them including the impugned mark , apart from delivery-up, rendition of accounts and costs and damages.

20. As already noted, the defendants have not chosen to enter appearance in the matter. They have also ceased to instruct Ms. Heeba Ansari who was earlier appearing on their behalf.

21. Service of Court notice on the defendants pursuant to orders passed by this Court have also not persuaded them to appear before the Court.

22. Order VIII Rule 10 of the CPC mandates passing of a decree by the court in such circumstances. Even otherwise, as no written statement has been filed, the assertions on the plaint stand admitted.

23. Given the nature of the assertions, I am of the opinion that no such involved or intricate issue of evidence arises as would inhibit passing of a decree by the Court in terms of the prayer in the plaint.

24. The assertions in the plaint make out a clear case of infringement, by the defendants, of the registered trade marks of the plaintiff. The plaintiff has, in its favour, several trade marks which involved T.I.M.E as the dominant part thereof. Where the dominant part of the plaintiffs mark is copied, the judgment of Division Bench of this Court in South India Beverages Pvt Ltd v. General Mills Marketing Inc.1 holds that a finding of infringement would necessarily have to be returned.

25. Moreover, in the present case, the plaintiff and the defendants are providing identical services and, therefore, cater to the same customer base. As such, the classical test of triple identity, which envisages congruence of similar or identical marks, an identical customer base and availability of access to the marks through the same channels and outlets, is also satisfied in the present case.

26. Section 29(2)(b) of the Trade Marks Act envisages infringement as having taken place where, owing to similarity between the marks of the plaintiff and the defendant and identity or similarity of the goods and services in respect of which the marks are used, there exists a likelihood of confusion in the minds of the public or a likelihood of the public drawing an association between the defendants and the plaintiffs marks.

27. The facts of the present case clearly satisfy these criteria. The plaintiff and the defendants are both using the marks in which T.I.M.E is the dominant feature. The marks are used for providing identical services. They would, therefore, be accessed by the same interested consumers. The mythical consumer of average intelligence and imperfect recollection, through whose eyes infringement has to be assessed by the Court, would, in the event of her coming across the defendants mark some time after she has chanced on the plaintiffs mark, be bound to be placed in a state of confusion, or at the very least in the state of wanderment, as to whether there is no association between the two marks. That by itself is sufficient to make out a case of infringement, as held by the Division Bench in Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd.2 Actual confusion need not be shown to exist. Equally, it is well settled that the test is one of initial interest. In other words, viewed from the perspective of the initial impression conveyed by the defendants mark on the mind of the consumer of average intelligence and imperfect recollection, if a court crosses such consumers mind as to whether the market is not the same as, or associated with, the mark of the plaintiff which she has seen earlier in point of time, likelihood of confusion and likelihood of association, within the meaning of Section 29(2)(b) necessarily exist.

28. In view of the aforesaid, the facts of the case clearly make out a case of infringement, by the defendants, of the registered trade marks of the plaintiff within the meaning of Section 29(2)(b) of the Trade Marks Act.

29. Where infringement is found to exist, the following passages from the judgments of the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah3 and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia4 mandate that an order of injunction be passed:

Laxmikant V. Patel3

8. It is common in trade and business for a trader or a businessman 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, 12th Edn., 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) 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 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 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 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 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.

*****

13. In an action for passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing-off cases are 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. The same learned author states that the defendant’s state of mind is wholly irrelevant to the existence of the cause of action for passing-off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff’s distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name (Kerly, ibid, para 16.97).

14. In the present case the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard. However, the trial court has found him using Muktajivan as part of his business name at least since 1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of colour lab and photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit the defendant was about to commence or had just commenced an identical business by adopting the word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of the business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name, though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the trial court, as also the High Court, behind reasoning that the defendants’ business was situated at a distance of 4 or 5 km from the plaintiff’s business and therefore the plaintiff could not have sought for an injunction. In a city a difference of 4 or 5 km does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him, a resident of Ahmedabad city would not mind travelling a distance of a few kilometres for the purpose of availing a better quality of services. Once a case of passing-off is made out the practice is generally to grant a prompt ex parte injunction followed by appointment of Local Commissioner, if necessary. In our opinion the trial court was fully justified in granting the ex parte injunction to the plaintiff based on the material made available by him to the court. The trial court fell in error in vacating the injunction and similar error has crept in the order of the High Court. The reasons assigned by the trial court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable.

*****

16. There was no delay in filing the suit by the plaintiff. The plaintiff filed the suit with an averment that the defendants were about to commit an injury to the plaintiff. The defendants took a plea that they had already commenced the business with the offending trade name without specifying actually since when they had commenced such business. This has to be seen in the background that the defendants’ business earlier was admittedly being carried on in the name and style of Gokul Studio. The commencement of such business by the defendants could therefore have been subsequent to the institution of the suit by the plaintiff and before the filing of the written statement by the defendants. In such a situation, on the plaintiff succeeding in making out a prima facie case, the court shall have to concentrate on the likelihood of injury which would be caused to the plaintiff in future and simply because the business under the offending name had already commenced before the filing of the written statement or even shortly before the institution of the suit would not make any difference and certainly not disentitle the plaintiff to the grant of ad interim injunction.
(Emphasis supplied)

Midas Hygiene Industries4

5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

30. In that view of the matter, the plaintiff is bound to succeed.

31. Accordingly, there shall be a decree of permanent injunction restraining the defendants as well as all others acting on their behalf from providing any services, advertising and/or promoting or using any mark which includes, as part thereof, T.I.M.E or from using the impugned logo , for providing coaching or educational services or any services which are allied or cognate thereto.

32. Mr. Kaushik, learend Counsel for the plaintiff, does not press the claim for damages but prays for actual costs.

33. In my view, given the nature of the litigation and keeping in mind the fact that the defendants have not even chosen to respond to the plaint or enter appearance even after the court notice was issued by the Court, the defendants have constrained the plaintiff into embarking on an unnecessary litigation.

34. The recalcitrant attitude of the defendants is also reflected from the fact that, at some point, reflecting an intention to settle the matter, the defendants chose to back out.

35. In such circumstances, the plaintiff would, at the very least, be entitled to the actual costs of the suit.

36. It is ordered accordingly.

37. In order for the actual costs to be computed, let the plaintiff appear before the competent Taxation Officer of this Court with a statement of costs. The Taxation Officer would compute the actual costs suffered by the plaintiff in the present litigation, to which the plaintiff shall be entitled, as already noted.

38. Costs, as above, would be paid by the defendants within a period of four weeks on their being computed by the Taxation Officer.

39. For the said purpose, the plaintiff shall appear before the Taxation Officer on 12 October 2023 with a statement of costs and material evidencing the costs suffered by the plaintiff.

40. The suit stands decreed in the aforesaid terms.

41. Let a decree-sheet be drawn up accordingly by the Registry.

C. HARI SHANKAR, J.
OCTOBER 5, 2023
dsn

1 (2015) 61 PTC 231
2 221 (2015) DLT 359 (Del DB)
3 2002 3 SCC 65
4 (2004) 3 SCC 90
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CS(COMM) 320/2022 Page 2 of 11