India: Bombay High Court Passed Ad-Interim Injunction Orders Against Infringement Of Trade Mark On Prima Facie Basis

Last Updated: 3 April 2019
Article by Sagarika Kapur

Bombay High Court vide its judgment dated on 22 October 2018 in the case titled Birla Edutech Limited (Plaintiff) v. Open Minds Birla School & Ors (Defendants) ruled in favour of the Plaintiff in the suit for infringement of trade mark and passing off. The said suit was filed by the Plaintiff, Yash Birla Group Company for an injunction to desist and cease the defendants from the use of trademarks "OPEN MINDS, OPEN MINDS A BIRLA SCHOOL and label and/ or and/or "OPEN MINDS A BIRLA SCHOOL" and impugned domain name http://www.openmindsgopalganj.com and http://openmindsabirlaschoolgopalganj.elisting.in or any domain name containing words OPEN MINDS and/or OPEN MINDS A BIRLA SCHOOL in relation to educational services and/ or any services which are same or similar to the Plaintiff's trade mark.

Plaintiff runs several schools including pre-schools, primary schools, middle schools and high schools across INDIA. On 15 September 2010, Plaintiff adopted and started using a unique trademark or label in respect of educational services and had also started using variations of the said trade mark or labels and OPEN MINDS A BIRLA SCHOOL. Plaintiff got registration for trademarks bearing no. 2023625 and 3 bearing no. 3760041 in class 41 in respect of educational services. Further, the plaintiff had also started running franchise models and as per terms and conditions of franchise agreement. Also, the Plaintiff kept a watch and monitored the functioning of the Birla open mind schools running under the franchise agreements. Though the franchise agreement permits to use the trademarks, the Plaintiff still remains to be the proprietor of the trademarks and all rights in the trademarks vests with the plaintiff. Plaintiff's business and services have been promoted and advertised by various means including internet. Plaintiff also has websites www.openminds.in and www.birlaopenminds.com which provide detailed information about the services rendered or business done by the Plaintiff under the trademarks. The plaintiff enjoys wide and enviable reputation and goodwill amongst the education and training industry, schools, students and the general public. In April 2015, Defendant no.3 approached the Plaintiff to enter into franchise agreement as the defendants desired to start or open Birla Open Mind School in Gopalganj, Bihar. Pursuant to the meeting the Defendants were made aware of the term and conditions for opening and starting Birla Open Mind School in Gopalganj, Bihar. On 2 May 2015, the Defendants and the Plaintiff came to sign the Letter of Intent (LOI) wherein the obligations of the plaintiff and Defendants were clearly mentioned. It was clearly mentioned in the LOI that the usage of the said trademarks of the Plaintiff were permitted only after execution of the definitive agreement. It submitted by the Plaintiff that the defendants failed to comply with the terms and condition mentioned in the LOI and there was no agreement executed between the plaintiff and defendants. It was also submitted by the Plaintiff that the defendants were well aware of the fact that the usage of the said trademarks of the Plaintiff was to be permitted and could have been only permitted by the Plaintiff to the defendants only after execution of the definitive agreement. In or about mid-march 2018, the Plaintiff came to know that the defendants have unauthorizedly started using and misusing the trademarks of the Plaintiff and runs a school and allied services under the said trademarks of the Plaintiff at Gopalganj, Bihar. In the second week of September,2018 Plaintiff learnt that despite Plaintiff's cease and desist notice dated 5th June 2018 and email dated 4th September 2018, the defendants continued to use the said trademarks of the Plaintiff and represented themselves as Plaintiff Franchisees.

Further, the Plaintiff submitted that the Plaintiff also learnt that the defendants were using the impugned domain name http://www.openmindsgopalganj.com and http://openmindsabirlaschoolgopalganj.elisting.in which was a complete violation of Plaintiff's statutory and common law rights. The plaintiff's main submission was that only authorized franchisees of Plaintiff were allowed to use the said trademarks and that the defendants are not the authorized franchisees of Plaintiff and are not authorized to use the trademark. Further, the plaintiff submitted that the unauthorized use of the said trademarks of the Plaintiff or the impugned domain names by the defendants is fraudulent, dishonest and deliberate with a view to trade upon the goodwill and reputation acquired by the plaintiff in the said trademark and it would lead to confusion and deception amongst the students and general public.

After hearing all the submissions, the court held that the Plaintiff has secured statutory rights in the trademarks and that the sales turnover and the marketing, advertising, publicity and sales promotional expenses incurred in respect of the said trademarks are substantial. The court held that the defendants are not the franchisees of the Plaintiff's said trademarks or have not been permitted to use the said trademarks of the Plaintiff. It held that in the absence of any authorization from the Plaintiff, the use of the Plaintiff's said trademarks and impugned domain names by the defendants cannot be termed as honest.

Further, it was stated that the defendants have neither replied to the cease and desist notice nor remained present before the court, despite service.

The Bombay high court held that it is a strong prima facie case and there will be irreparable harm caused to the plaintiff if the defendants are allowed to continue with their infringing activities. The court on prima facie basis held that it is necessary to grant protection to the Plaintiff by way of ad- interim order.

The court passed ad-interim injunction order in terms of the prayers (a),(b),(c) and (e) of notice of motion for restraining the defendants or their trustees, servants, subordinates, representatives, agents and all other person claiming under or/and through them from infringing the use of Plaintiff's said trademarks and labels in any manner or any other trademark containing the words OPEN MINDS and BIRLA OPNE MINDS SCHOOL or any identical or deceptively similar to Plaintiff's said trademarks and/or impugned domain names or any domain names containing the words OPEN MINDS and/or BIRLA OPEN MINDS SCHOOL or any identical or deceptively similar to the Plaintiff's said trademark in relation to educational services or any other similar services.

Further, the court passed ad-interim injunction order for restraining the defendants or their trustees, servants, subordinates, representatives, agents and all other person claiming under or/and through them from using the Plaintiff's said trademarks and labels in any manner or any other trademark containing the words OPEN MINDS and BIRLA OPEN MIND SCHOOL or any identical or deceptively similar to Plaintiff's said trademark and/or impugned domain names or any domain name containing words OPEN MINDS and BIRLA OPEN MINDS SCHOOL in relation to educational services or any other similar services so as to pass off the defendants business and/or services as and for the Plaintiffs business and/or services or in any other manner.

Further, the court passed ad-interim injunction order to appoint the Court Receiver, High Court, Bombay under order XI rule 1 of civil procedure code, 1908 as receiver of the defendant's goods, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printer matter, things and such material and documents of Defendants bearing or containing the Plaintiff's said trademark and labels and/or any other trade mark or label deceptively similar to the plaintiff's said trademarks the impugned domain names with all the powers to enter into the premises of the defendants or their trustees, subordinates, representatives, agents and all other persons claiming under or through them at any time of the day or night without any notice to the defendants or their trustees, subordinates, representatives, agents and all other persons claiming under or through them with the help of police if necessary, to seize and take charge, possession and control of the aforesaid material in possession and control of the defendants or their trustees, subordinates, representative, agents and all other persons claiming under and/or through them.

The court receiver, High Court, Bombay shall keep the Defendants goods, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printer matter, things and such material under his seal in safe custody. He is authorized to take assistance of local police authorities and the concerned police authorities are directed to render all the possible assistance to court receiver. The court has directed the receiver to submit a report to the court on next date of hearing i.e. 1st November 2018.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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