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2018 DIGILAW 2566 (BOM)

Birla Edutech Limited v. Open Minds Birla School

2018-10-22

S.J.KATHAWALLA

body2018
JUDGMENT S.J. Kathawalla, J. - The Plaintiff has filed the present suit against the Defendants for infringement of trade mark and passing off. By a separate order passed today, the petition filed by the Plaintiff seeking leave under Clause XIV of the Letters Patent has been allowed. The Plaintiff is seeking ad-interim reliefs in terms of prayers (a), (b), (c) and (e) of the Notice of Motion. 2. Since the above matter was called out post 5 p.m. yesterday, the same was directed to be placed on the production board today as per practice. Mr. Kamod, Ld. Advocate appearing on behalf of the Plaintiff submitted that notices of this application alongwith papers and proceedings have been served upon Defendants. He submitted that while hard copies of the papers and proceedings were served upon the Defendant Nos.1 and 2, Defendant Nos.3 and 4 have refused to accept the same. He further submitted that the papers have also been served through email on the email addresses of the Defendants. He submitted that the Defendants were also informed about the listing of the above matter through whatsapp and vide messages on their mobile No.9835880001. Mr. Kamod has tenderd two Affidavits of Service dated 19th October 2018 and 22nd October 2018 respectively which are taken on record. 3. It is stated that the Plaintiff is a Yash Birla Group company, running several schools including pre-schools, primary schools, middle schools and high schools across India. It is stated that since 2008, the Plaintiff has been running a school and offering comprehensive solution for education that envelopes the individual''s learning period right from the formative early years to the K-12 schooling through its school viz. the Open Minds - A Birla School ("Birla Open Minds School"). It is stated that the Birla Open Mind School(s) of the Plaintiff are located across India in Mumbai, Karnataka, Hyderabad, Gujarat, Dehradun, Pune, Nashik, Indore, Kolkata, Jaipur, Bihar, etc. and offer programs at at (a) Pre-School Level, (b) Primary School Level, (c) Middle School Level and (d) High School Level. 4. My attention is drawn to the plaint and the Exhibits therein. It is stated that on or about 15th September 2010, the Plaintiff adopted and started using a unique trademark / label in respect of inter-alia educational services. and offer programs at at (a) Pre-School Level, (b) Primary School Level, (c) Middle School Level and (d) High School Level. 4. My attention is drawn to the plaint and the Exhibits therein. It is stated that on or about 15th September 2010, the Plaintiff adopted and started using a unique trademark / label in respect of inter-alia educational services. It is stated that thereafter, the Plaintiff also started using variations of the said trademark / label, i.e. and/or which are substantially similar to the trademark / label It is stated that the Plaintiff has secured registrations of the trademarks bearing no. 2023625 and bearing no. 3760041 both in class 41 inter-alia in respect of education services. Registration certificates in respect of the aforesaid registered trademarks are at Exhibits A and B to the plaint. 5. It is stated that the Birla Open Mind School(s) of the Plaintiff is / are also run on franchise models and as per the terms and conditions of the franchise agreement and the Plaintiff keeps watch and / or monitors the functioning of the Birla Open Mind School(s) run under the said franchise agreements. It is stated that though the franchisees are permitted to use the trademarks, the Plaintiff continues to be the proprietor of the same and all rights in the said trademarks continue to vest with the Plaintiff. Copies of sample franchise agreements executed in relation to Birla Open Mind School(s) are at Exhibits C and D to the plaint. 6. Mr. Kamod submitted that the Plaintiff has been regularly, openly, continuously and extensively using the said trademarks in respect of educational services since the last several years. He submitted that amongst schools and students and in the education sector, the Plaintiff is known as OPEN MINDS / BIRLA OPEN MINDS and the said trademarks OPEN MINDS / BIRLA OPEN MINDS are identified with the Plaintiff and no one else. Copy of the certificate issued by the Plaintiff''s Chartered Accountants setting out the Plaintiff''s annual sales turnover earned and marketing, advertisement, publicity and sales promotional expenses incurred in respect of the said trademarks of the Plaintiff is at Exhibit E to the plaint. It is stated that the Plaintiff''s business / services rendered under the said trademarks have been widely promoted and advertised by various means including the internet. Samples of brochure, admission forms, etc. It is stated that the Plaintiff''s business / services rendered under the said trademarks have been widely promoted and advertised by various means including the internet. Samples of brochure, admission forms, etc. bearing the said trademarks of the Plaintiff are at Exhibits F-1 to F-8 to the Plaint and copies of press releases in relation to the said services rendered by the Plaintiff under the said trademarks are at Exhibits G-1 to G-4 to the Plaint. It is stated that the Plaintiff also has the websites www.openminds.in and www.birlaopenminds.com which provide detailed information about the said services rendered / business done by the Plaintiff under the said trademarks and facilitate faster communication. It is stated that the Plaintiff has been able to generate a lot of business through the said websites which are accessible across India. Printouts of some of the pages of the said websites of the Plaintiff are at Exhibits H-1 to H-10 to the Plaint. Mr. Kamod submitted that the Plaintiff''s said trademarks and the services rendered thereunder and / or the business done thereunder enjoy wide and enviable reputation and goodwill amongst the education and training industry, schools, students and the general public. 7. Mr. Kamod submitted that in or about April 2015, Defendant No.3 approached the Plaintiff with a view to enter into a franchise agreement as the Defendants were desirous of starting / opening Birla Open Mind School in Gopalganj, Bihar. It is submitted that pursuant to the meetings and/or discussion, Defendant No.3/ Defendants were made aware of the terms and conditions for starting / opening Birla Open Mind School in Gopalganj, Bihar and a Letter of Intent ("LOI") thereafter came to be signed on 2 May 2015 between Defendant No.3 and the Plaintiff wherein the obligations of the Plaintiff and Defendant No.3 / Defendants were clearly set out. It is submitted that that it was clearly mentioned in the LOI that the usage of the said trademarks of the Plaintiff was permitted only after execution of the definitive agreement - which, as per the Plaintiff, never came to be executed between the parties. It is submitted that Defendant No.3/ Defendants failed to comply with the terms and conditions set out in the LOI and there was no definitive agreement and/or any other agreements executed between the Plaintiff and Defendants. Mr. It is submitted that Defendant No.3/ Defendants failed to comply with the terms and conditions set out in the LOI and there was no definitive agreement and/or any other agreements executed between the Plaintiff and Defendants. Mr. Kamod submits that the Defendants were well aware of the fact that usage of the said trademarks of the Plaintiff was to be permitted / could have been only permitted by the Plaintiff to Defendants only after the execution of definitive agreements, which never happened, in spite of affording opportunities to the Defendants to do so. My attention is drawn to Exhibit I to the plaint which is a copy of the LOI executed between the Plaintiff and Defendant No.3 and Exhibit J to the plaint which are copies of emails addressed to Defendant No.3 on behalf of the Plaintiff between 15th April, 2015 to 23rd September 2016. I have perused the same. 8. Mr. Kamod submitted that after September 2016, the Defendants almost stopped corresponding with the Plaintiff. In or about mid-March 2018, the Plaintiff came to learn that the Defendants have unauthorizedly started using and/or misusing the said trademarks of the Plaintiff and running a school and allied services under the said trademarks of the Plaintiff at Gopalganj, Bihar. The correspondence exchanged between the parties including the cease and desist notice sent by the Plaintiff is annexed to the Plaint and I have perused the same. It is submitted that in the second week of September 2018, the Plaintiff learnt that despite the Plaintiff''s cease and desist notice dated 5th June 2018 and email dated 4th September 2018, the Defendants were continuing to use the Plaintiff''s said trademarks and represent themselves as the franchisees of the Plaintiff. It is submitted that the Plaintiff also learnt that the Defendants are also using domain names http://www.openmindsgopalganj.com and https://openmindsabirlaschoolgopalganj.elisting.in My attention is drawn to Exhibits O to S to the plaint which are copies of photographs taken by the Plaintiff''s representative of the Defendants'' school and/or flyer/pamphlet on 20th September 2018 and Exhibits T and U to the plaint which are printouts of some of the pages of the said websites of the Defendants. My attention is drawn to Exhibits V, W and X which are printouts of the relevant pages of the Defendants on social media accounts "facebook", "linkedin" and indiamart.com. I have perused the same. 9. Mr. My attention is drawn to Exhibits V, W and X which are printouts of the relevant pages of the Defendants on social media accounts "facebook", "linkedin" and indiamart.com. I have perused the same. 9. Mr. Kamod submitted only the authorized franchisees of the Plaintiff are allowed to use the said trademarks of the Plaintiff. He submitted that the Defendants are admittedly not the franchisees of the Plaintiff and are not authorized to use the said trademarks of the Plaintiff. He submitted that Defendants are unauthorizedly using the said trademarks of the Plaintiff''s and/or the impugned domain names http://www.openmindsgopalganj.com and https://openmindsabirlaschoolgopalganj.elisting.in, which is in complete violation of the Plaintiff''s statutory and common law rights. He submitted that the said unauthorized use of the said trademarks of the Plaintiff and/or the impugned domain names by the Defendant is fraudulent, dishonest and deliberate with a view to trade upon the goodwill and reputation acquired by the Plaintiff in the said trademarks and same would lead to confusion and deception amongst the students and the general public. 10. I have heard the submissions made in detail and perused the plaint and the documents annexed thereto. There is no doubt that the Plaintiff has secured statutory rights in the trademarks and / or . The sales turnover and the marketing, advertising, publicity and sales promotional expenses incurred in respect of the said trademarks are substantial. Though, LOI was signed between Defendant No.3 and the Plaintiff, the parties have not executed definitive agreement after the execution of the LOI. It is clear from the record that the Defendants are not the franchisees of the Plaintiff and / or have not been permitted to use of the said trademarks of the Plaintiff. Absent any authorization from the Plaintiff, the use of the Plaintiff''s said trademarks and / or impugned domain names by the Defendants cannot be termed as honest or as per honest trade practices. Moreover, the Defendants have neither replied to the cease and desist notice nor remained present before this Court, despite service. There are no equities in favour of the Defendants. 11. According to me, the Plaintiff has made out a strong prima facie case and irreparable harm an injury would be caused to the Plaintiff if the Defendants are allowed to continue with their infringing activities. The balance of convenience is also in favour of the Plaintiff. There are no equities in favour of the Defendants. 11. According to me, the Plaintiff has made out a strong prima facie case and irreparable harm an injury would be caused to the Plaintiff if the Defendants are allowed to continue with their infringing activities. The balance of convenience is also in favour of the Plaintiff. In my prima facie view and given the facts of the present case, it is necessary to grant protection to the Plaintiff by way of an ad-interim order. The balance of convenience is also in favour of the Plaintiff. In my prima facie view and given the facts of the present case, it is necessary to grant protection to the Plaintiff by way of an ad-interim order. There shall accordingly be an ad-interim order in terms of prayers (a), (b), (c) and (e) of the Notice of Motion, which read as follows: a. that pending the hearing and final disposal of the suit, the Defendants by themselves or through their trustees, servants, subordinates, representatives, agents and all other persons claiming under and/or through them be restrained by a temporary order and injunction of this Hon''ble Court infringing any of the Plaintiff''s said trademarks bearing nos.2023625 and 3760041 in Class 41 in any manner by the use of OPEN MINDS A BIRLA SCHOOL and label or any part thereof and/or any other trademark containing the words OPEN MINDS and/or BIRLA OPEN MINDS and/or OPEN MINDS A BIRLA SCHOOL and/or any other trademark identical with and/or deceptively similar to the Plaintiff''s said trademarks bearing nos.2023625 and 3760041 in Class 41 in relation to educational services and/or any services which are same or similar thereto or in any other manner whatsoever; b. that pending the hearing and final disposal of the suit, the Defendants by themselves or through their trustees, servants, subordinates, representatives, agents and all other persons claiming under and/or through them be restrained by a temporary order and injunction of this Hon''ble Court from infringing any of the Plaintiff''s said trademarks bearing nos.2023625 and 3760041 in Class 41 in any manner by use of the impugned domain names "http://www.openmindsgopalganj.com" and "https://openmindsabirlaschoolgopalganj.elisting.in" and/or any other domain names containing the words OPEN MINDS and/or OPEN MINDS A BIRLA SCHOOL and/or any other domain names identical with and/or deceptively similar to the Plaintiff''s said trademarks bearing nos.2023625 and 3760041 in Class 41 in relation to educational services and/or any services which are same or similar thereto or in any other manner whatsoever; c. that pending the hearing and final disposal of the suit, the Defendants by themselves or through their trustees, servants, subordinates, representatives, agents and all other persons claiming under and/or through them be restrained by a temporary order and injunction of this Hon''ble Court from using the Plaintiff''s said trademarks OPEN MINDS, OPEN MINDS - A BIRLA SCHOOL, BIRLA OPEN MINDS BIRLA SCHOOL and labels and/or and/or or any part thereof or any other trademark/label deceptively similar to the Plaintiff''s said trademarks and/or impugned domain names "http://www.openmindsgopalganj.com" and "https://openmindsabirlaschoolgopalganj.elisting.in" or any domain name containing the words OPEN MINDS and/or OPEN MINDS A BIRLA SCHOOL in relation to educational services and/or any services which are same or similar thereto so as to pass off the Defendants'' business and/or services as and for the Plaintiff''s business and/or services, or in any other manner whatsoever; e. that pending the hearing and final disposal of the suit, the Court Receiver, High Court, Bombay be appointed under Order 40, Rule 1 of Civil Procedure Code, 1908 as the Receiver of the Defendants'' goods, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printed matter, things and such material and documents of the Defendants bearing or containing the Plaintiff''s said trademarks OPEN MINDS and/or OPEN MINDS - A BIRLA SCHOOL and/or BIRLA OPEN MINDS SCHOOL and/or labels and/or and/or or any part thereof and/or any other trademark/label deceptively similar to the Plaintiff''s said trademarks, the impugned domain names "http://www.openmindsgopalganj.com" and "https://openmindsabirlaschoolgopalganj.elisting.in" with all powers to enter in the premises of the Defendants and/or their trustees, subordinates, representatives, agents and all other persons claiming under and/or through them at any time of the day or night without notice to the Defendants and/or their trustees, subordinates, representatives, agents and all other persons claiming under and/or through them and with the help of the police if necessary, to seize and take charge, possession and control of the aforesaid material in possession and control of the Defendants and/or their trustees, subordinates, representatives, agents and all other persons claiming under and/or through them; 12. The Court Receiver, High Court Bombay shall keep the Defendants'' impugned goods, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printed matter, things and such material of the Defendants bearing or containing the Plaintiff''s said trademarks under his seal in the safe custody of the Defendants. He is authorized to take the assistance of the local Police Authorities. The concerned Police Authorities are directed to render all possible assistance to the Court Receiver on production of an authenticated copy of this order. The Court Receiver is directed to submit a report to this Court on the next date of hearing i.e. 1st November 2018. 13. List the Notice of Motion for further ad-interim reliefs on 1st November 2018. 14. Liberty to the Defendants to apply for variation of this order with 48 hours prior written notice to the Plaintiff. 15. All concerned, including the Court Receiver and Police, to act on an authenticated copy of this order duly authenticated by the Associate of this Court.