The Trademarks Act provides for the registration of trademarks both for goods and services. Education of these forms a vital segment, owing to the nature and prominence of this service. Reputation also playing an important aspect in the area, attracts a greater need to protect a trademark. Addressing such an issue, is the case of Anjani Kr. Goenka & Anr. v. Goenka Institute of Education & Research 2009 (39) PTC 720 (Del.)
Anjani Kumar Goenka registered proprietors of trademarks GD GOENKA, GOENKAS, GOENKA SCHOOL, GOENKA MEDICAL UNIVERSITY & GD GOENKA MEDICAL UNIVERSITY, filed a suit for infringement of trademark and passing off against Goenka Institute of Education and Research (hereinafter Goenka Institute), alleging them of the use of similar trademarks – GOENKA PUBLIC SCHOOL, GOENKA GIRLS SCHOOL, GOENKA COLLEGE OF PHARMACY and others for providing services like education, training, sporting and cultural activities. In this pursuance, Anjani Kumar Goenka had filed an interim application for the grant of an injunction restraining the use of similar marks by Goenka Institute. The High Court of Delhi vide its order dated 12th December 2008 had already passed an ex parte ad interim injunction against Goenka Institute who inturn filed for the vacation of the injunction order.
In pursuance of the matter, Anjani Kr. Goenka pleaded that they had been providing services in the field of education, real estate, travel and tourism since 1994 under the trade name GOENKA/GD GOENKA. They stated that by virtue of long and extensive use their marks had acquired distinctiveness and reputation among the general public. Further, they stated that the use of the word GOENKA for Goenka Institute's school and the names GOENKA PUBLIC SCHOOL, GOENKA GIRLS SCHOOL and GOENKA COLLEGE OF PHARMACY for college would cause confusion in the minds of the public and would mislead the public into thinking that the services of Goenka Institute were originating from those of Anjani Kr. Goenka's.
To these arguments, Goenka Institute contended that in the trade name/mark used by Anjani Kr. Goenka, "GOENKA" is not distinctive being a very common surname. They stated that in such a scenario, the same could not be monopolized by them. Further, they stated that apart from themselves, the trade mark/name GOENKA was commonly used by other players in the field of education as well. Goenka Institute vehemently also argued that the use of the name GOENKA for running a trust, school, college, and pharmacy and girls college must be considered as bona fide use owing to the same being a common surname, and falling under the scope of Section 35 of the Trademarks Act, 1999 (Saving for use of name, address or description of goods or services).Furthermore, they averred that prior to the adoption of trademark GD GOENKA by Anjani Kr. Goenka, they had already set up a trust named SHREE LAL GOENNKA trust in the year 1990. In this view, being a prior user, they stated their claim to be protected in terms of a vested right as propounded by Section 34 of the Trademarks Act. Further, they also contended that a delay had taken place in instituting the suit.
The Court dealing with the issue of Goenka Institute being a 'bonafide user' as under Section 35, held that by virtue of long use of the mark GOENKA since 1994 it had acquired distinctive character. The Honorable High Court held that bona fide use meant the honest use by a person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader. The court held that the word GOENKA is the essential and prominent feature of the trade name of Anjani Kr. Goenka and the use of same by Goenka Institute vide similar names would create confusion and deception.
Dealing with the question of infringement of trademarks, the Court noted that as per Section 29 of the Trademarks Act infringement of the trademark is said to take place if an identical or deceptively similar trademark is put to use. Further, they reiterated that the same is determined by considering not only the whole mark but also the distinguishing or essential feature of the trademark. Relying on the precedents the High Court held that the use of the name GOENKA PUBLIC SCHOOL, GOENKA GIRLS COLLEGE and GOENKA COLLEGE OF PHARMACY in which the mark GOENKA formed an essential feature, the two names were prima facie similar to the name of the plaintiffs' GD GOENKA PUBLIC SCHOOL. The High Court to decide the question of passing off referred to Warnik v. Townend & Sons (HULL) Ltd., 1979 AC 731 to determine if there was an instance of passing off in the present case. The essentials of passing off as laid down in that case are:
- Misrepresentation made by trader in the course of trade to the prospective or ultimate consumers;
- calculated to injure the business or goodwill of another trader;
- causes actual damage to the business or goodwill of the trader by whom the action is brought.
Testing on the touchstone of above essentials, the High court ruled that the use of similar marks by Goenka Institute did constitute passing off. The Court on the issue of third party use, relied upon the authorities cited by the plaintiffs which averred that the unauthorised or unconsented use by the third party was no defense to the infringement claim by the plaintiffs. The Court considered the view of Express Bottlers Services Pvt. Ltd v. Pepsi Inc. &Ors., 1989 (9) PTC 14 (Cal) cited by Anjani Kr. Goenka which reflected that a plea of common use could be taken as a defense against the claim of infringement only when the use of the trade mark in question by other persons was shown to be substantial. The Court in this light held that the use of the marks by Goenka Institute constituted infringement.
Addressing the question of delay, reliance was placed on Sarwan Singh v. Usha Industries, AIR 1986 Delhi 343 (DB) whereby it was held that an exclusive right in the nature of statutory right is granted by the registration to the holder of a registered trade mark. The Court noted that such statutory right could not be lost by delay and reduced to a nullity. The court held that passing off by Goenka Institute constituted continuing wrong which gave rise to a cause of action every time they passed off their services as that of Anjani Kr. Goenka's. Further, the Court also noted that Goenka Institute had failed to prove that Anjani Kr. Goenka was aware of similar trademarks used by them before the advertisement in November 2008 when for they learnt of the use of similar trademarks by Goenka Institute.
In this event, the Court refused to vacate the order of injunction against the use of GOENKA PUBLIC SCHOOL, GOENKA GIRLS COLLEGE and GOENKA COLLEGE OF PHARMACY, stating that the balance of convenience tilted in favour of Anjani Kr. Goenka . The Court stated that in the event of the injunction not being sustained, innocent students joining the educational institutes would be deceived. However, the usage of the names Mohini Devi Goenka Mahila Mahavidalaya, Mohini Devi Goenka Girls B. Ed College, Mohini Devi Goenka Mahila Mhavidalaya and Goenka Shiksha Avam Sodh Sansthan was allowed, owing to these being full names which would not create any deception. The Court stated that these names were used since a long time before Anjani Kr. Goenka brought an action in law and that they themselves admitted delay in addressing a grievance against these.
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