FAO (OS) No. 118/2009 Page 1 * IN THE HIGH COURT OF DELHI AT NEW DELHI + FAO (OS) No. 118/2009 Reserved on : May 21, 2009 Date of decision : May 29, 2009 GOENKA INSTITUTE OF EDUCATION & RESEARCH ...Appellant Through: Mr. Sudhir Chandra Agarwal, Sr. Advocate with Ms. Vrinda Sharma, Advocate. VERSUS ANJANI KUMAR GOENKA & ANR. ....Respondents Through: Mr. Rajiv Nayar, Sr. Advocate with Ms. Nidhi Bisht, Mr. Kapil Wadhwa, Ms. Saya Chaudhary, Ms. Archna & Mr. J.P.Karunakaran, Advocate CORAM: HON’BLE MR. JUSTICE MUKUL MUDGAL HON’BLE MR. JUSTICE VALMIKI J.MEHTA 1. Whether the Reporters of local papers may be allowed to see the judgment? yes 2. To be referred to the Reporter or not? yes 3. Whether the judgment should be reported in the Digest? yes FAO (OS) No. 118/2009 Page 2 % JUDGMENT VALMIKI J.MEHTA, J. 1. The dispute in this appeal centres around the use of the expression “Goenka” as a trademark and/or trade name. The respondents claim exclusive ownership/right to use the word “Goenka”, whether per se or with other words or initials, as their trademark /trade name with respect to their educational institutions and which is disputed by the appellant. The learned Single Judge agreed with the respondents/plaintiffs and allowed their injunction application. Hence, this appeal filed by the defendants/appellant. Reference to trade mark hereinafter, in the facts of the present case, will include reference to trade name also wherever the circumstances so require. 2. The appellant claims the right to use the word “Goenka” on the basis of three basic contentions:- (i) From the year 2000 they have been using “Goenka” for their school “Goenka Public School” and hence are owners being prior users of the trade mark. In fact the appellant is running since the year 1995 “Mohini Devi Goenka Mahila Mahavidyala” and, therefore, “Goenka” is very much a prominent part of FAO (OS) No. 118/2009 Page 3 the name of this Mahavidyala. Though the respondents have registered “Goenka” as a trade mark in the year 2005 (w.e.f 2003 the year of the application), yet the respondents have never per se used “Goenka” i.e “Goenka” itself and have used the same only as part of “G D Goenka Public School” and therefore mere registration without actual use does not confer ownership of a trade mark. (ii) The appellant had formed vide a trust deed in 1990 a trust in the name of “Shree Lal Goenka Charitable Trust” by the trustees Sh. Shyam Sunder Goenka & Sh. Ashutosh Goenka and which trust is also running various institutions including the institutions stated in (i) above. The adoption and user of the trademark is therefore claimed to be honest. (iii) The word “Goenka” being a common surname is per se not distinctive and to acquire distinctiveness in such a common surname is not possible. It is further contended that even if distinctiveness can be achieved for such a common surname, it is contended that the respondents have not achieved such distinctiveness. (iv) A further limb of the above argument is that the word “Goenka” is publici juris or at least in prior common use by other persons/institutions i.e. such other persons/institutions have used the word “Goenka” in the field of education even FAO (OS) No. 118/2009 Page 4 prior to the use thereof by the respondents from 1995. It is, therefore, contended that the respondents cannot be said to be exclusive owners and entitled to exclusively use the trademark “Goenka” and they cannot prevent the appellant from using the same. 3. On the other hand, the stand of the respondents/plaintiffs is based upon three main counts: (i) The respondents since the year 1994 have been running a school in the name of “G.D.Goenka Public School” and the word “Goenka” forms a prominent and distinctive part of the trademark “G.D.Goenka Public School” and, therefore, the respondents are prior users/owners of the trademark inasmuch as the appellant had set up “Mohini Devi Goenka Mahila Mahavidhyala” for the first time only later in the year 1995 and “Goenka Public School” much later in the year 2000. (ii) The respondents are the owners of the word “Goenka” inasmuch as they have got the word “Goenka” registered in 2005 w.e.f 2003 in different classes under the Trademark Act, 1999. FAO (OS) No. 118/2009 Page 5 (iii) The adoption of “Goenka” by the appellant was not honest inasmuch as the appellant adopted the word “Goenka” after one employee Mrs. S. C. Arora left the respondents and joined the appellant. 4. The learned Single Judge by the impugned order dated 24.2.2009 has restrained the appellant from using “Goenka Public School” and “Goenka College of Pharmacy” by granting four months‟ time to dis-continue the use of the said names. The learned Single Judge has held that on account of the use by the appellant of the word “Goenka” in the aforesaid two institutions the same leads to infringement of the registered trademark of the respondents/defendants and also passing off. The learned Single Judge also restrained the appellant from using “Goenka Girls School” since there was no use shown of the said name except in the website of the appellant. The learned Single Judge, however, permitted the appellant to use the names “Mohini Devi Goenka Mahila Mahavidyala”, “Mohini Devi Goenka Girls B.Ed College”, “Mohini Devi Goenka Girls Mahavidayala” and “Goenka Shiksha Avam Sodh Sansthan”. 5. The conclusions of the learned Single Judge are basically as follows: (a) There is an infringement of the registered trademark “Goenka” of the respondents/plaintiffs because the word “Goenka” forms an essential feature of FAO (OS) No. 118/2009 Page 6 the trademark of the respondents/plaintiffs and the use of the said expression by the appellant leads to deceptive similarity and consequently infringement of the trademark of the respondents/plaintiffs. (b) There arises passing off on account of the use of the word “Goenka” by the appellant in the names of their educational institutions because both the parties are in the same field viz of education. The learned Single Judge negated the arguments of the appellant that the respondents/plaintiffs cannot have monopoly of a common surname and further that the respondents did not have exclusive rights as there were other educational institutions in India which use the word “Goenka” as part of their name. The learned Single Judge held that unauthorized or un-consented use by other parties of “Goenka” is of no avail and in this regard with respect to the prior use than of both the appellant and the respondents viz of “M/s Goenka College of Commerce” by a third party, the learned Single Judge held as under: “Apart from one M/s Goenka College of Commerce whose present actual status could not be traced till date by the Plaintiffs there is no other institute on record showing use of the mark/word „Goenka‟ per se, prior to that of the Plaintiffs or even otherwise” FAO (OS) No. 118/2009 Page 7 The learned Single Judge also held with respect to other institutions using the word „Goenka‟ by holding as under: “The Defendant in para 9 at page 7 of I.A.307/2009 has named a few institutions which are using the word „Goenka‟ in their name. A perusal of the same list itself establishes that all these institutions are using their own/full name as the name of their institutes.” (c) The learned Single Judge also held that the defence of the respondents that since the surname of their trustees is „Goenka‟, so far as the claim of their being entitled to use the same under Section 35 of the Trademark Act, 1999 is concerned, is not correct because the defence of bona fide user of the name applies to use of the full name and that too by a natural person and not by institutions which can adopt different names. (d) Balance of Convenience was held to be in favour of the respondents and delay in instituting the suit in 2008 was found to be not relevant in the facts of the case, inter alia as the suit was also for infringement. 6. In this present appeal, therefore, we are called upon to basically decide the following basic issues: FAO (OS) No. 118/2009 Page 8 (i) In between the appellant and the respondents who is the prior user of the trade mark „Goenka‟? (ii) If respondents are prior users of the trade mark „Goenka‟ can the same make them owners of the trade mark „Goenka‟ per se as the word „Goenka‟ was only a part of their name „G.D. Goenka Public School‟ and the word „Goenka‟ per se has never been used independently in itself? Related to the above question is whether the „Goenka‟ is an essential feature/prominent part/predominant part of their trade mark/trade name and has it achieved distinctiveness independently so as to enable the respondents to claim ownership rights in the name of „Goenka‟ in itself? (iii) Even if as between the appellant and the respondents, the respondents are prior users of the word „Goenka‟, what would be the effect of others using the word „Goenka‟ in the names of their institutions much prior to the adoption and user of „Goenka‟ by the respondents? Will this make the trade mark „Goenka‟ either lose distinctiveness or that it cannot achieve distinctiveness, more so as the same is a surname commonly used in India? Is the surname „Goenka‟ publici juris? FAO (OS) No. 118/2009 Page 9 (iv) Is not the appellant entitled to use the word „Goenka‟ on account of being an honest concurrent user? (v) Are the respondents entitled to claim infringement of their registered trade mark „Goenka‟? Is there passing off of the name „G.D. Goenka Public School‟ when the appellant uses the word „Goenka‟ in their institutions „Goenka Public School‟ and „Goenka College of Pharmacy‟? (vi) What is the effect of delay in filing the suit in 2008 when the appellant is using the word „Goenka‟ in „Goenka Public School‟ since the year 2000 and since 1995 in „Mohini Devi Goenka Mahila Mahavidyalaya‟ and in whose favour is balance of convenience and who will be caused irreparable injury? 7. During the course of hearing of the present appeal, the appellant moved an application under Order 41 Rule 27 Code of Civil Procedure (CPC) for taking on record additional documents to show firstly that it has been running school under the name “Goenka Public School” since the year 2000. This was necessitated because the learned Single Judge found that the appellant‟s documentation with respect to the use of the name “Goenka Public School” was only from 2004-2005 only. Secondly, the application under Order 41 Rule 27 CPC has sought to bring in further documents of various other institutions using the word „Goenka‟ in FAO (OS) No. 118/2009 Page 10 their educational institutions much prior to the user by both the parties herein and the documents also sought to buttress the plea with regard to the earlier institution „M/s G.D.Goenka College of Commerce‟ on which matter the arguments were urged before the learned Single Judge. This application was allowed by us on 14.5.2009 after calling for the reply from the respondents. The said order dated 14.5.2009 is reproduced below : - “ This is an application under Order 41 Rule 27 of the Code of Civil Procedure for taking on record the additional documents on behalf of the appellant. The additional documents sought to be filed are in order to show the user of the name “Goenka Public School” by the appellant since the year 2000 by referring to the register of the students, the secondary school admit cards, forms filled in by the wards of the students and so on. We find that prima facie these documents appear to be genuine/authentic. We note that the appellant has claimed that the school “Goenka Public School” started as a Lower K.G. in the year 2000. The second set of documents pertain to user of the surname “Goenka” by various other institutions, much prior to the user and registration of the same by the respondent. In order to determine the issue with regard to the user of the appellants and also the prior user by persons other than the respondent, the documents are relevant to determine the matter in controversy. We feel that in the interest of justice, in order to enable this Court to come to a decision with respect to the matters in controversy qua the grant of injunction, the additional documents sought to be filed are required to be taken on record. The respondent would be caused no prejudice inasmuch as the suit itself is at an initial stage and the present appeal arises only from the interim order of injunction. The respondents will have ample opportunity to meet these documents and the case sought to be urged thereon. We may note that the plea with respect to the prior user is FAO (OS) No. 118/2009 Page 11 already there in the pleadings and in fact, user of other persons is also a fact which is mentioned not only in the pleadings but also in the impugned order. In these circumstances, the application is allowed and the additional documents sought to be relied upon in this appeal are taken on record.” 8. The basic facts which have emerged on record qua the appellant are : The appellant has been running “Mohini Devi Goenka Mahila Mahavidalaya” since the year 1995. The school is run by the society managed by the trust namely “ Shree Lal Goenka Charitable Trust” which was formed by a trust deed of the year 1990. The trustees of the trust are Shyam Sunder Goenka and Ashutosh Goenka. The appellant started running the school “Goenka Public School” since the year 2000. Qua the respondents, the facts which have emerged on record are: They started running their school under the name of “G.D.Goenka Public School” from the year 1994, the first session being of 1994-95. The respondents applied for registration of the trademark „Goenka‟ in different classes in the year 2003 and which registrations were granted to it in the year 2005 w.e.f. 2003. Though registrations have been obtained by the respondent with respect to the word „Goenka‟, they have never used the word „Goenka‟ per se with respect to their school i.e their school has been called not as “Goenka Public School” but has been called as “G.D.Goenka Public School”. There is, therefore, no user of the word „Goenka‟ per se i.e in itself without any other additions there to. FAO (OS) No. 118/2009 Page 12 9. We may now take up one by one the issues which we are called upon to answer as stated in para 6 above. Honest concurrent use – para 6(iv) 10. For the purpose of deciding this issue we will assume that respondents are the prior users of the trade mark „Goenka‟. We will also assume that „Goenka‟ is an essential feature/prominent or predominant part of the full name „G.D. Goenka Public School‟. Making these assumptions let us examine whether the appellant is entitled to the benefit of the doctrine of honest concurrent use. 11. Section 12 of the Trade Mark Act, 1999 (equivalent of Section 13 of the Trade Merchandise Marks Act, 1957) contains the subject matter of honest concurrent use. The same reads as under :- “12. Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.” FAO (OS) No. 118/2009 Page 13 12. There are two parts of the doctrine of honest concurrent use. First part is that the adoption must be honest and the second part is that there is concurrent use of the trade mark with another trade mark. There is however a third salient feature on the applicability of this doctrine and which is that conditions and limitations can be imposed by the Registrar of Trade Marks while allowing registration of one or more trade mark which are identical or similar in case there is found a case of honest concurrent user. This third part will also, as will be seen, be an important aspect while issuing directions for disposing off the appeal. 13. Taking up the aspect of honesty in adoption we are clearly of the view that the adoption by the appellant by the word „Goenka‟ in the name of its institution is honest. This is because the Trust Deed is of 1990, well before the „G.D. Goenka Public School‟ was started in 1994 and that the name of the trustees of the trust have their surnames „Goenka‟. The institution „Mohini Devi Goenka Mahila Mahavidyalaya‟ was started in 1995, in the District of Sikar in Rajasthan (well away from Delhi) just one year after the respondents started „G.D. Goenka Public School‟. In one year it is not possible that „G.D. Goenka Public School‟ became so famous that its name and fame spread well beyond Delhi into Sikar District of Rajasthan, that it can be said that appellant would have liked to copy the same to pass off its institute as that of the respondents. Nothing so categorical FAO (OS) No. 118/2009 Page 14 and clinching has been placed on record by the respondents to this effect. Also as stated above the appellant had a valid reason to us „Goenka‟ in their institution in 1995 as the trustees were Goenkas themselves. So far as use of „Goenka‟ in the name „Goenka Public School‟ in the year 2000 is concerned the arguments as stated in favour of the appellant as stated above will hold good and additionally also that the respondents had till 2000 admittedly called their school „G.D. Goenka Public School‟ and had never used „Goenka‟ in itself/per se. Therefore, we have no reason to hold that adoption of „Goenka‟ per se by the appellant in the year 2000 was in any manner mala fide. A feeble argument was sought to be raised that one Mrs. S.C. Arora was working with the respondents left them in around 1996 and joined the appellant immediately thereafter and then in the year 2000 „Goenka Public School‟ was started by the appellant and therefore the adoption is stated not to be honest. We find this argument wholly devoid of merit as there is absolutely nothing on record to substantiate these facts of joining of Mrs. S.C. Arora with the appellant prior to the year 2000. We asked the counsel for the respondents to refer to documents to substantiate this contention and chain of facts chronologically and he was not able to do so. Further, admittedly the respondents applied for registration only in the year 2003 i.e. well after 2000. We also feel that if respondents feel that „Goenka‟ is a prominent/essential part of FAO (OS) No. 118/2009 Page 15 their name then the same argument will logically favour the appellant also who is running „Mohini Devi Goenka Mahila Mahavidyalaya‟ since 1995. We therefore hold that the appellant is entitled to the benefit of the doctrine of honest concurrent user for use of the word „Goenka‟ in the name of their institutions. However, to avoid any confusion in the minds of the public, we are passing certain directions in the later part of this judgment by exercising powers similar to those vested in a Registrar under Section 12 of the Trade Marks Act, 1999. Prior use paras 6(i) & (ii), Infringement & Passing off Paras 6(v), Surname and Distinctiveness para 6(iii) 14. The respondents started their school „G.D. Goenka Public School‟ in 1994. Therefore, as between the appellant and the respondents, they are prior users so far as the word „Goenka‟ as part of their trade mark/trade name. But, are they „prior users‟ within the meaning of the term as understood in the law of infringement of trade mark and passing off to get an injunction in their favour? Further can the respondents be said to be prior users of „Goenka‟ though the user is not of „Goenka‟ in itself but it is only a part of their trademark/trade name „G.D. Goenka Public School‟? 15. Section 34 of the Trade Marks Act, 1999 provides that priority of use prevails as compared to registration and deals thus with principle well established FAO (OS) No. 118/2009 Page 16 in the law of trade mark that ordinarily it is the prior user of a trade mark who is the owner of the trade mark. Section 34 reads : “34. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior— (a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; Whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.” 16. Prior user has been sufficiently pronounced upon and we need to refer to only two Division Bench Judgments of this Court in the case of N.R.Dongre & others Vs. Whirlpool Corporation and others, AIR 1995 Delhi 300 and Century Traders VS. Roshan Lal Duggar & Co. & others, AIR 1978 Delhi 250. In N.R.Dongre‟s case, the relevant paras holding that prior user prevails over subsequent registration are as under: “29. Thus the right created by Section 28 (1) of the Act in favour of a registered proprietor of a trade mark is not an FAO (OS) No. 118/2009 Page 17 absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section 28 nor any other provision of the Act bars an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as under Section 27(2) of the Act a prior user of trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not immune to the over-riding effect of Section 27(2).” “The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1) (d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of good will and reputation in a trade mark was recognized at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by