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M/S CHIREC PUBLIC SCHOOL V SHRI. SHAKTI SCHOOLS PRIVATE LTD

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CITATION(2020) 4 ALT 468 : (2020) 6 ALD 121
DATE OF JUDGMENT3rd JULY, 2020
COURTTELANGANA  HIGH COURT 
APPELLANTM/S CHIREC PUBLIC SCHOOLS
RESPONDENTSHRI. SHAKTI SCHOOLS PRIVATE LTD
BENCHM.S. RAMCHANDRA RAO

INTRODUCTION

The case of  M/S. Chirec Public School v. Shri Shakti Schools Private Ltd deals with the critical legal dispute of the infringement of a Trademark. This legal battle was initiated when the appellant M/S Chirec Public School came to know that the respondent Shri Shakti Schools Private Limited was using a mark that was similar to the appellant’s mark for promoting educational services to the students from classes 1 to 10 at Madhugiri, Tumkur in the state of Karnataka. This case revolved around determining whether the use of the trademark by the respondent which was similar to the one used by the appellant amounts to the infringement of trademark or not. The judgment in this case enlightens on the conditions when similar marks will lead to the infringement of a trademark, influencing future legal proceedings concerning the question of trademark infringement in the Indian legal framework.

FACTS OF THE CASE

The appellant  M/S Chirec Public Schools has been running three campuses in Hyderabad under the name of Chirec International School, where it offers education to a large number of students and it offers a choice of three curricula – a) Cambridge International Examinations b) International Baccalaureate Diploma Programme (IBDP) and Central Board of Secondary Education (CBSE). According to the appellant he got to know that the respondent was using a mark which identical to the Trademark which he owns. The respondent provides educational services for the students of class 1 to 10th  at Madhugiri, Tumkur in the state of Karnataka. The appellant alleged that the respondent is using mark of ‘CHIREC PUBLIC SCHOOL’ which is an unauthorized use. The appellant issued a notice to cease the respondent from using the mark ‘CHIREC’ in the running of its school. The respondent replied to the notice refusing to comply with the same. The appellant filed a suit in June 2018 seeking reliefs from the court. The appellant said that it has been using the word mark ‘CHIREC’ since 20.02.1989 with specific and distinct colours and designs and has earned a great reputation over the years. He also said that he got the said trademark registered vide trademark registration No.3168471 dt.27.01.2016 under Class 41 of the Schedule to the Trade Marks Act, 1999. The respondent contended that the appellant filed an application for registration of its trademark on 27.01.2016, claiming user from 20.02.1989 without providing any evidence; that the Registrar of Trade Marks raised an objection stating that the same trade mark is deceptively similar to another registered trade mark; and that the appellant obtained registration of the trade mark without providing any evidence. Many contentions were put in front of the court by both the parties. It was agreed by a comparative study of the trademark used by both parties showed that the respondent is using the word ‘CHIREC’ with a logo on both sides of the name and their name is written only in blue color with the same font, while the trade mark used by the appellant is in a variety of colors, i.e., red, green, and blue, and the description of the name ‘CHIREC’ is in different font in different style and the term is used without any logo. It also held that the respondent solely taught the Karnataka State Board syllabus from Classes 1 to 10, while the appellant is an International School that teaches CBSC and other International syllabi, and that the appellant charged more than the respondent. It noticed that since the respondent was a Charitable Trust, it charged a minimum fee and it would normally admit students of middle class or lower-middle-class families who would not be carried away by the name of the school, as opposed to parents who would admit their children in the school of the appellant, who are likely to be more prosperous and therefore would have to pay a higher rate of fee and who would be interested in getting their children CBSE or other international. The court said that in these circumstances, the defence of the prior user and concurrent and honest user raised by the respondent since 2005 cannot be simply brushed aside. The court was  Prima facie of the opinion that the use of the trademark ‘CHIREC’ by the respondent is an honest concurrent user since 2005 and since the registered trademark was obtained only in 2016 and the suit is filed in 2018. By keeping in mind the above-mentioned facts the court refused to provide any interim relief to the appellant. Therefore, the court found no merit in the appeal and accordingly dismissed it.

ISSUES RAISED 

(a) Declare that the Defendant has infringed the Plaintiff’s registered trade mark by using “CHIREC” as part of their trade name or business. 

(b) Grant a permanent injunction, restraining the Defendant, their servants, agents, or anyone claiming through them from engaging in the services listed under Trade mark Class 41, using the mark ‘CHIREC’ or any other similar sounding mark in the course of their business and infringing the Plaintiff’s reg. trademark

(c) ) Directing the Defendant to pay the Plaintiff damages of Rs. 1 Crore for infringing the Plaintiffs registered trade mark,

 (d) Order the Defendant to pay the Plaintiff’s suit costs.

 (e) Make any additional orders as the Court deems necessary.

CONTENTIONS OF APPEALENT

  1. According to the appellant, it has been using the word mark ‘CHIREC’ since 20.02.1989 with specific and distinct colors and design and has earned a great reputation over the years that the phrase ‘CHIREC’ is derived from ‘Children’s Recreation Centre’, an institution put up by the promoter of the appellant previous to the foundation of the schools; the claimed mark had been exclusively used by the appellant since 1989 and it had gained a distinctive recognition and association.
  2. The appellant contended that it got the said trademark registered via trademark registration No.3168471 dt.27.01.2016 under Class 41 of the Schedule to the Trade Marks Act, 1999 (for short, ‘the Act’); that such registration ensured that the mark is reserved for the exclusive use of the appellant in the field of education; that the appellant is running three campuses in Hyderabad where it offers education to a large number of students and offers a choice of three curricula- (a) International Baccalaureate Diploma Programme (IBDP), (b) Cambridge International Examinations and (c) Central Board of Secondary Education (CBSE).
  3. According to the appellant, it was discovered in February 2017 that the respondent was using a mark identical to and deceptively similar to the appellant’s trade mark to promote educational services to students in Classes 1–10 at Madhugiri, Tumkur in Karnataka State.
  4. The appellant claims that the respondent is operating under the mark ‘CHIREC PUBLIC SCHOOL’ and thus infringes the appellant’s registered trade mark by its unauthorized use of the word ‘CHIREC’; such unauthorized use, according to the appellant, falls within the scope of Section 29 of the Act. The appellant claims that the respondent’s use of the term ‘CHIREC’ in its business is identical to the appellant’s trade mark and is causing confusion among the public, leading to a false presumption of association with the appellant’s schools; that the respondent is neither a permitted nor prior user of the said word ‘CHIREC’; that the appellant is entitled to protect its exclusive use of the trade mark under Section 28 of the Act.
  5. The appellant issued a cease and desist notice to the respondent on 17.02.2017, requesting that the respondent refrain from using the mark ‘CHIREC’ in the operation of its school, and it is claimed that the respondent responded to the said notice on 09.03.2017, refusing to comply.

CONTENTIONS OF REPONDENT

  1. The respondent made a written statement contesting the award of relief to the appellant.
  2.  In the Written Statement, the respondent claimed that it is the defendant, a registered Charitable Trust named Pavan Education and Charitable Trust, was not accurately characterized in the plaint. As a result, the claim may be denied due to misjoinder of relevant parties.
  3.  The respondent rejected the appellant’s use of the word ‘CHIREC’ for educational purposes for the past 29 years. Additionally, the respondent denied that the appellant’s trademark had any reputation or goodwill outside of Hyderabad.
  4. It is claimed that the respondent has been conducting educational activities in the State of Karnataka in Tumkur District in Madhugiri, a backward Taluk, to impart education to rural masses since 2005; that the respondent, after conducting a thorough search in the trade mark registry, adopted the trade mark ‘CHIREC’ for running schools and began using it after noticing in 2005 that no one else was using the same trade mark ‘CHIREC’ for running schools.
  5. The respondent contended that it does not operate beyond Madhugiri Taluk of Tumkur District in Karnataka State; that it only has an English Medium school where students take the Karnataka State Board Examination; and that because the appellant allegedly imparted education in International syllabus and CBSE, there would be no confusion, as the appellant claimed.
  6.  The respondent stated that there would be no confusion in the minds of parents, and that there could not be any impression in the minds of the general public that the respondent had adopted the term ‘CHIREC’ solely to mislead the parents.
  7. According to the respondent, it adopted the trade mark ‘CHIREC’ as an honest and concurrent user during a 13-year period and had no knowledge of the existence of another school with the same name, thus the respondent is likewise entitled to use it.
  8.  It is argued that the appellant and respondent’s fonts are completely different, as are the color combinations chosen for their respective logos, and that there will be no mistake.
  9. The respondent claims that the cost charged for pupils admitted to its school is small because it is a charitable institution, and it denies that it is exploiting the appellant’s reputation by using a similar name.
  10. According to the respondent, the term ‘CHIREC’ is a short form of “CHILDREN EDUCATION CENTRE”; that parents would not be carried away by the use of name, unlike in the case of consumer goods; that parents who would be well educated would thoroughly go through the advertisements, brochures, and curriculum, apart from medium of instruction, etc., before admitting their children into the school; that use of a similar name in a different State cannot be said to be causing confusion when it is an honest user; and it would not amount to infringement of the registered trade mark of the appellant.
  11. The respondent claims that the appellant applied for registration of its trade mark on 27.01.2016, claiming user status from 20.02.1989 without providing any evidence; that the Registrar of TradeMarks raised an objection stating that the same trade mark is deceptively similar to another registered trademark; and that the appellant obtained registration of the trade mark without providing any evidence. It is argued that the appellant did not come with clean hands; that its registration of the trade mark ‘CHIREC’ was invalid and needed to be corrected.
  12. It is further alleged that the appellant failed to prove the prima facie case; that the suit is blocked by limitation and also affected by delay and laches; and that the Court below lacks jurisdiction to entertain the suit in light of Section 134 of the Act.

JUDGEMENT

The Telangana High Court refused to grant any interim relief to the appellant. The court was of the Prima Facie opinion that the use of trademark ‘CHERIC’ by the respondent is an honest use because they have been using it since 2005 and the appellant got the trademark registered only in 2016 and the suit is filed in 2018.  The court also noticed that the respondent is confining use of the name ‘CHIREC’ only in Madhugiri Taluk in Tumkur District of Karnataka State which is a remote place about 100 KM from the city of Bengaluru according to the google maps, whereas the appellant is located in the city of Hyderabad. This is also a factor which cannot be ignored. It appears improbable that anyone intending to enroll their children in the respondent school will base their decision on the appellant’s supposed reputation in Hyderabad or anywhere else. In these circumstances, the defence of prior user and concurrent and honest user raised by the respondent since 2005 cannot be simply brushed aside. The court also took a note of the fact that The Court below as well as this Bench had perused the trade mark being used by both the parties.  Primarily, it looks that the response is utilizing the word ‘CHIREC’ with a logo, and its name is printed exclusively in blue with the same typeface. but the appellant is using the said trade name with different style and with different font without any logo.Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the respondent is using the appellant’s trade mark particularly when the curricula being adopted by both schools are different. According to the respondent, it is imparting education from Classes 1 to 10 with Karanataka State Board syllabus, while the appellant states that it is imparting education in International syllabi apart from CBSE. Furthermore, the fee levied by the appellant is significantly larger than that of the respondent.

ANALYSIS

  1. Time or duration of the use: In this case, the court noticed that the respondent is a concurrent user of the since 2005, whereas the appellant got the  mark registered only in 2016 and the suit was filed in 2018. It meant that the defence of prior user and honest user which was raised by the respondent was credible defence.
  2. Area of use of the mark: The respondent used the name ‘CHERIC’ in Madhugir Taluk in Tumkur District of the state of Karnataka whereas the appellant used the mark in the city of Hyderabad. The court noted that this fact cannot be ignored. It meant clearly that the people who want to get admission of their children in respondent’s school it is unlikely that they will go in the respondent’s school alleged by the reputation of the appellant’s school in the city of Hyderabad.
  3. Appearance of the Trademark: The court also took a note of the fact that the mark used by respondent that is the word ‘CHIREC’ with a logo in it’s name is written only in the colour of blue using the same font, whereas the appellant the trade name used by the appellant is written with a different style and in different font and without any logo.
  4. Final Verdict of the court: The court rightly refused to grant any interim relief to the appellant. The court found that there was no merit in the appeal and it accordingly dismissed the appeal.

CONCLUSION

In conclusion, the case of M/s. Chirec Public School vs Shri Shakti Schools Private Limited, 2020 deals with a pivotal concept of the use of Trademark and its infringement. It throws light on the usage of Trademarks and the conditions in which the usage of a similar mark will be considered an infringement and when it will be considered a fair or honest usage of the Trademark. The High Court’s ruling, which rightly refused to grant any interim relief to the appellant and held the usage of the similar mark used by the respondent as an honest one, reaffirms the importance of the registration of one’s Trademark by the concerned authorities. This case also sheds light on the defence of prior and honest use of the Trademarks by the firm or enterprise.

REFERENCE

  1. https://indiankanoon.org/
  2. https://www.scconline.com/

This Article is written by Ashish Singh student of the Army Institute of Law, Mohali; an Intern at Legal Vidhiya.

Disclaimer: The materials provided herein are intended solely for informational purposes. Accessing or using the site or the materials does not establish an attorney-client relationship. The information presented on this site is not to be construed as legal or professional advice, and it should not be relied upon for such purposes or used as a substitute for advice from a licensed attorney in your state. Additionally, the viewpoint presented by the author is of a personal nature.

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