In the case of Chronicles Publications (P) Ltd. v.
Chronicle Academy Pvt. Ltd, Chronicles Publications
(Plaintiff) alleged Chronicle Academy (Defendant) of passing off
their trademark "CHRONICLE" and thus prayed for an
injunction to restrain the Defendant from such use.
The Plaintiff is a reputed publisher carrying on its business
under the name of "Civil Services Chronicle". They have
been involved in publishing various magazines for coaching/guidance
purposes used for various competitive examinations, since 1992. It
was contended by the Plaintiff that their trade name 'CIVIL
SERVICES CHRONICLE', 'CHRONICLE YEAR BOOK 2001' have
been registered in India. Further, it was mentioned that the
Plaintiff had started a coaching academy under the name of
"CHRONICLE IAS ACADEMY", which was in operation for 2-3
years before it was shut down.
The Defendant is a coaching center using the trade name
'CHRONICLE ACADEMY PVT. LTD.' with an identical style of
writing the mark. The Plaintiff became aware of this fact through a
brochure or Information Bulletin published by the Defendant.
The Plaintiff alleged that the said use of the mark by the
defendant was done with mala fide intentions blatantly
attempted to cheat the public. Further, the use of such mark being
used identically as its name and in the publications, had affected
the reputation of the plaintiff and the customers had associated
the mark with plaintiff's publication.
It was argued by the plaintiff that a descriptive trademark
should be entitled to protection if it has assumed a secondary
meaning. It is their case that the words CHRONICLE or CIVIL
SERVICES CHRONICLE, were associated with the plaintiff because of
its long use and considerable efforts and investments, that if it
was used by anyone in the relevant field, i.e. of imparting
knowledge, it was capable of amounting to representation that it
belongs to plaintiff. Further plaintiff stated that the intention
of the defendant was to pass off their goods/services as that of
the plaintiff and such use amounts to commercial invasion and
piracy of the plaintiff's trade name.
It was also contended that the said trademark is a well-known
trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
Further, the class of user of the goods and services offered by the
plaintiff and defendant were the same, i.e. students and candidates
wishing to avail of these services to appear successfully in the
Civil Service examinations. Hence, the act of the defendant
amounted to passing off.
The Defendant absented himself from the proceedings.
The Court observed that Plaintiff was not the registered owner
of the word "CHRONICLE", except in the case of a year
book. In addition, the Court was watchful of the fact that the
impugned word was a common word, which means a periodical. The
Plaintiff in the context of the services offered by them use the
word quite literally. The Court further opined that the word is
common, a dictionary one and is also generic or descriptive as it
conjures up the image of the goods or services the word mark caters
The Court referred to the case of SBL Limited v. Himalaya
Drug Company, wherein it was held that no one can claim
exclusive rights to use a generic word, abbreviation, or acronym
which has become publici juris. Another case where it was held that
common, generic or descriptive words do not automatically evoke
Court's protection unless they acquire a secondary meaning was
Rhizome Distilleries P. Ltd. & Ors. v. Pernod Ricard S.A.
The Court stated that it was essential for the court to rely on
hard reality and it was the obligation on the Plaintiff failed to
prove that due to the defendant's action, confusion was likely
to be caused, and merely relied on averments. Further, the court
opined that it was mindful of the fact that the Plaintiff's
claim for injunction based on the Defendant's use of the mark
"CHRONICLE" fell under Section 29 (5), in respect of
goods and services of the same or identical kind. However, in this
case, the defendant is not in the business of publishing
periodicals and thus is not in the same business as the
Also, the Court noted that the Plaintiff had not established
that the word mark had acquired distinctiveness so as to compel the
Court to conclude that the use of the word by the Defendant is
likely to dilute its reputation.
In light of the above resons, the Court concluded that the
Plaintiff was not entitled to a decree of permanent injunction,
accordingly, the suit was dismissed.
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