Delhi Public School Society vs DPS Firozabad and Others

Najmi Waziri, J.—The plaintiff has filed the present suit under Sections 134 & 135 of the Trademarks Act, 1999 and under Section 51 of Copyright Act, 1957 for permanent injunction against the defendants and its agents from offering for service, advertising, offering for sale, adopting or using the mark ''DPS'', the words ''Delhi Public School'' or in any manner representing that the defendant is managed by DPS Managing Committee, under the aegis of the DPS Trust.

It is the plaintiff''s case that it was registered as a Society in 1962 registered under the provisions of Society Registration Act, 1860; initially as Delhi Public School. However, the name was subsequently changed to Delhi Public School Society; its objectives were, inter alia, to establish progressive schools and other educational institutions in Delhi or outside Delhi, open to all, without any distinction of race, caste or special status with a view to impart sound and liberal education to boys and girls.

The Society established its first school in the year 1949, the name of Delhi Public School and its logo have become a mark which is identified with the name of the plaintiff Society; it has been using the words ''DELHI PUBLIC SCHOOL'' and ''DPS'' since 1949. To distinguish the institution, a logo was also designed by the Society; that the plaintiff has been using this logo/crest before the enactment of Emblems and Names (Prevention of Improper use) Act, 1950; that the name ''Delhi Public School'', its abbreviation ''DPS and its logo have become marks which are identified with the name of the plaintiff Society and have earned goodwill among the public over the years.

The schools established by the plaintiff are known as ''Delhi Public School'' and are popularly identified with the suffix of the city/locality where the Branch is located. For example, if the school is established in ''Rohini'', then it is commonly known as ''Delhi Public School, Rohini'' and the public at large and students, staff and etc. would refer to the same as ''DPS, Rohini.''

The details of the schools run by the plaintiff are available on its website and all the schools run or established under the aegis of the plaintiff use the same name i.e. Delhi Public School (DPS) and the same crest/logo as adopted by the plaintiff.

It is stated that the plaintiff is running/managing the following schools:

"CORE SCHOOLS:--

a) Delhi Public School, Mathura Road.

b) Delhi Public School, R.K. Puram.

c) Delhi Public School, Noida.

d) Delhi Public School, Vasant Kunj

e) Delhi Public School, Faridabad

f) Delhi Public School, Greater Noida

g) Delhi Public School, Bulandshahr

h) Delhi Public School, Rohini

i) Delhi Public School, Dwarka

j) Delhi Public School, Navi Mumbai

k) Delhi Public School, International, Saket

AFFILIATED SCHOOLS:--

Delhi Public School, Dhaligaon, Assam.

Delhi Public School, Digboi Assam

Delhi Public School, Numaligarh Assam.

Delhi Public School, Nazira, Assam.

Delhi Public School, Duliajan, Assam.

Delhi Public School, Guwahati

Delhi Public School, Visakhapatnam.

Delhi Public School, Patna

Delhi Public School, Bhagalpur

Delhi Public School, Chandigarh

Delhi Public School, Itanagar

Delhi Public School, Hyderabad

Delhi Public School, Nacharam, Hyderabad

Delhi Public School, Sainikpuri Secunderabad

Delhi Public School, Vijayawada

Delhi Public School, Bhilai

Delhi Public School, Korba

Delhi Public School, Durg

Delhi Public School, Bilaspur

Delhi Public School, Pune

Delhi Public School, Kamptee Road Nagpur

Delhi Public School, Raipur.

Delhi Public School, Ahmedabad.

Delhi Public School, East Ahmedabad

Delhi Public School, Surat

Delhi Public School, Tapi Surat

Delhi Public School, Gandhinagar

Delhi Public School, Gandhidham

Delhi Public School, Vadodara

Delhi Public School, Hami Vadodara

Delhi Public School, Rajkot, Gujarat

Delhi Public School, Jhakri Shiirila.

Delhi Public School, Manah, Himachal Pradesh.

Delhi Public School, Maruti Kunj, Gurgaon.

Delhi Public School, Panipat Refinery

Delhi Public School, Panipat City

Delhi Public School, Sushant Lok, Gurgaon

Delhi Public School, Gurgaon

Delhi Public School Rohtak

Delhi Public School Palwal

Delhi Public School, Pinjore

Delhi Public School, Rewari

Delhi Public School, Hisar

Delhi Public School, Sonepat

Delhi Public School, Bhiwani

Delhi Public School, Bahadurgarh

Delhi Public School, Yamuna Nagar

Delhi Public School, Ambala

Delhi Public School, Karnal

Delhi Public School, Jammu

Delhi Public School, Leh

Delhi Public School, Rajouri

Delhi Public School, Anantnag

Delhi Public School, Budgam

Delhi Public School, Katra

Delhi Public School, Udhampur

Delhi Public School, Baramulla

Delhi Public School, Srinagar,

Delhi Public School, Kathua

Delhi Public School, Bokaro

Delhi Public School, Dhanbad

Delhi Public School, Ranchi

Delhi Public School, Jamshedpur

Delhi Public School, Bangalore (North)

Delhi Public School, Bangalore (South)

Delhi Public School, Bangalore (East)

Delhi Public School, Mangalore

Delhi Public School, Whitefield Bangalore

Delhi Public School, Vidhyanagar

Delhi Public School, Nigahi

Delhi Public School, Vijaipur

Delhi Public School, Bhopal

Delhi Public School, Indore

Delhi Public School, Nagpur Road, Jabalpur

Delhi Public School, Sanskardhani, Mandla Road, Jabalpur

Delhi Public School, Gwalior

Delhi Public School, Rourkela

Delhi Public School, Damanjodi

Delhi Public School, Nalco Nagar

Delhi Public School, Kalinga, Orissa.

Delhi Public School, Ludhiana

Delhi Public School, Amritsar

Delhi Public School, Bathinda

Delhi Public School, Jalandhar

Delhi Public School, Khanna

Delhi Public School, Dimapur

Delhi Public School, Jodhpur.

Delhi Public School, Jaipur.

Delhi Public School, Udaipur

Delhi Public School, Bikaner

Delhi Public School, Vidyut Nagar (Dadri)

Delhi Public School, Kalyanpur, Kanpur

Delhi Public School, Azad Nagar, Mainawati, Marg, Kanpur

Delhi Public School, Barra Kanpur South

Delhi Public School, Mathura Refinery

Delhi Public School, Ranipur.

Delhi Public School, Dehradun

Delhi Public School, Roorkee

Delhi Public School, Indira Nagar, Lucknow

Delhi Public School, Jankipuram, Lucknow

Delhi Public School, Eldeco, Lucknow.

Delhi Public School, Moradabad.

Delhi Public School, Agra.

Delhi Public School, Bareilly.

Delhi Public School, Meerut.

Delhi Public School, Varanasi

Delhi Public School, Kashi, Varanasi

Delhi Public School, Allahabad

Delhi Public School, Hapur

Delhi Public School, Aligarh

Delhi Public School, Raj Nagar, Ghaziabad

Delhi Public School, Indirapuram, Ghaziabad

Delhi Public School, Saharanpur

Delhi Public School, Farakka

Delhi Public School, Siliguri.

Delhi Public School, Ruby Park, Kolkata

Delhi Public School, Mega City, Kolkata

Delhi Public School, New Town Kolkata

Delhi Public School, Durgapur

AFFILIATED SCHOOLS ABROAD:

Delhi Public School, FAIPS, Kuwait.

Delhi Public School, TDIS Indonesia

Delhi Public School, Shaijaii

Delhi Public School, MIS Doha

Delhi Public School, Dubai.

Delhi Public School, Dharan Nepal.

Delhi Public School, Birat Nagar, Nepal

Delhi Public School, NMS Bahrain

Delhi Public School, Singapore

Delhi Public School, Jeddah

Delhi Public School, Riyadh

Delhi Public School, Kampala

Delhi Public School, STS Dhaka

Delhi Public School, Tema, Ghana"

Furthermore, they also propose to open the following affiliated schools in the near future:

PROPOSED AFFILIATED SCHOOLS

Delhi Public School, Malanpur, M.P.

Delhi Public School, Kolar Road, Bhopal, M.P.

Delhi Public School, Nellikuppam, Chennai

Delhi Public School, Coimbatore Tamil Nadu

Delhi Public School, Tuticorin, Tamil Nadu

Delhi Public School, Mysore, Karnataka

Delhi Public School, Kurukshetra Haryana

Delhi Public School, Jind Haryana

Delhi Public School, Greater Faridabad, Haryana

Delhi Public School, Fatehabad, Haryana

Delhi Public School, Sikri, Ballabhgarh, Haryana

Delhi Public School, Mahendergarh, Haryana

Delhi Public School, Pathankot, Punjab

Delhi Public School, Gurdaspur Punjab

Delhi Public School, Sangrur, Punjab

Delhi Public School, Abohar, Punjab

Delhi Public School, Patiala, Punjab

IS. Delhi Public School, Sector 132,Gautam Budh Nagar U.P.

Delhi Public School, Sitapur, U.P.

Delhi Public School, Rajnagar Extension, Ghaziabad, U.P.

Delhi Public School, Jhansi, U.P.

Delhi Public School, Etawah, U.P.

Delhi Public School, Hariharpur, Lucknow, U.P.

Delhi Public School, Kashipur, Uttarakhand

Delhi Public School, BALCO KORBA Chhattisgarh

Delhi Public School, Jagdalpur, Chhattisgarh

Delhi Public School, Great Ranchi, Jharkhand

Delhi Public School, Hawrah Kona Expressway, W.B.

Delhi Public School, Hawrah Domjur, W.B

Delhi Public School, Nagbani Jammu, J&K

Delhi Public School, Tanzania, Uganda

Delhi Public School, Abu Dhabi, UAE

Delhi Public School, Dammam, UAE."

The plaintiff submits that it has approached the Registrar of Trade Marks and made an application for the registration of their trademark in Class-16, 35, 36, 41 and 42. The Registrar of trademark has noted the following numbers in respect of the respective trademarks as set out hereunder:

The plaintiff claims to have also obtained registration of its logo under the Copyright Act, 1957 vide Application No. 219 dated 23.09.2010 by the Trademark Registry, Govt. of India and Search Certificate along with certified copy of logo issue by the Govt. of India.

The plaintiff submits that in more than 60 years of service in the field of imparting education, the plaintiff society has produced lakhs of students who are occupying prominent positions in the government as well as in the private sectors and are doing very well in life. The staff members of the school have also attained distinction in the field of academics and have been awarded prestigious awards by the Government.

The plaintiff claims to have inadvertently discovered that defendant No. 1 running a school under the name of ''Delhi Public School, Firozabad''/''DPS, Firozabad'' which is seemingly under the aegis of one ''DPS Trust''; the defendants are using the marks ''DPS'', ''Delhi Public School'' and the logo of the plaintiff to run their school which was scheduled to start session from the academic year 2012-13.

Upon further inquiry, the plaintiff find out that the defendant had misused the plaintiff''s name, marks, reputation and goodwill; defendant No. 1 was advertising its impugned institution under the name of Delhi Public School/DPS in an attempt to deliberately ride upon the goodwill of the plaintiff society and create absolute confusion in the minds of the general public about the source and affiliation of the defendant''s institution. Hence, to protect its rights, reputation and goodwill, the plaintiff has sought a permanent injunction.

On 06.11.2012, the defendant was proceeded ex parte. The plaintiff has led ex parte evidence.

The plaintiffs have led two witnesses by way of affidavit; Mr. Arindam Dass, Additional Secretary of Delhi Public School Society (PW-1) and Ms. Sureksha Luthra, Local Commissioner appointed by this Court (PW-2). In his evidence the PW-1 has deposed that he visited Firozabad after obtaining information about the opening of the defendants'' school there and that Defendant No. 1 and 2 showed themselves to be part of the plaintiff Society; that the name, logo and crest used by ''DPS Firozabad'' are registered copyright and trademark of the plaintiff Society. PW-2 has deposed that she was appointed as the Local Commissioner in this case vide order dated 23.04.2012 and that she was directed to visit the premises of the defendants; that on visiting the premises, she signed the account books and seized all the material which bore the name/logo/mark of the plaintiff and that the same have been produced before this court. The submissions and contentions of the plaintiffs are not rebutted. There is no reason to disbelieve the plaintiff''s case. Accordingly, he Court is satisfied that a case is made out for grant of the relief in terms of the prayers in the plaint. The suit is decreed in terms of prayers, which are as under:

"a) pass a decree of permanent injunction against defendants & in favour of the plaintiff restraining the defendants their partners, proprietors, owners as the case may be and their officers, servants, agents, delegates, representatives, assigns and all others acting for and on their behalf from offering for service, advertising, offering for sale, adopting, using the mark ''DPS'', words ''Delhi Public School'', logo and crest of plaintiff or any other deceptive variant thereof and/or doing anything or taking any step which is likely to lead the passing off the business and products of the defendants as those of the plaintiff and further restraining them from misrepresenting to be managed by DPS Managing Committee under the aegis of DPS Trust;

b) pass a decree of Permanent Injunction in favor of plaintiffs and against the defendants, restraining the defendants, their partners, proprietors, owners as the case may be and their officers, servants, agents, delegates, representatives, assigns and all others acting for and on their behalf from directly or indirectly reproducing and/or using the get up, layout, design, appearance, color scheme and arrangement of features of the plaintiffs mark ''DPS'', words ''Delhi Public School'', logo and crest, thereby amounting to infringement of plaintiffs rights in the said mark, crest and logo;

c) pass a decree of rendition of accounts of profits illegally earned by the defendants by infringing the rights of the plaintiffs and by passing off their products and or business as the products and business of the plaintiffs; a Decree be further passed against the defendants for the exact sum as and when the amounts are ascertained;

d) pass a Decree of Damages for an amount of Rs. 20,50,000/- in favor of the plaintiffs and against the defendants from such date as this Hon''ble Court may deem fit and proper;

e) The defendant be ordered and decreed to deliver to the plaintiffs for destruction of publication, advertisement material, blocks, dies made up of any material, stamps, stationery, and al infringing material bearing the trade mark ''DPS'', ''DELHI PUBLIC SCHOOL'', and logo/crest of the plaintiff;

f) award costs of the present litigation in favour of the plaintiff and against the defendants;"

Besides injunctions, the plaintiff has also claimed rendition of account and damages amounting to Rs. 20,50,000/-. The plaintiff cannot get both, the rendition of accounts as well as specific amount towards damages. I am, therefore considering only the prayer for grant of damages.

The question of granting damages in such cases to be considered by me in Autodesk, Inc. and Another Vs. Mr. Prashant Deshmukh and Others, and the following was given:

"Regarding punitive damages in the case of Time Incorporated Vs. Lokesh Srivastava and Another, , this Court observed that punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that the law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach. In the case of Hero Honda Motors Ltd. Vs. Shree Assuramji Scooters, , this Court noticing that the defendant had chosen to stay away from the proceedings of the Court felt that in such case punitive damages need to be awarded, since otherwise the defendant, who appears in the Court and submits its account books would be liable for damages whereas a party which chooses to stay away from the Court proceedings would escape the liability on account of the failure of the availability of account books.

In Microsoft Corporation Vs. Deepak Raval--> , this Court observed that in our country the Courts are becoming sensitive to the growing menace of piracy and have started granting punitive damages even in cases where due to absence of defendant, the exact figures of sale made by them under the infringing copyright and/or trademark, exact damages are not available. The justification given by the Court for award of compulsory damages was to make up for the loss suffered by the plaintiff and deter a wrong doer and like-minded from indulging in such unlawful activities.

In Larsen and Toubro Limited Vs. Chagan Bhai Patel, , this Court observed that it would be encouraging the violators of intellectual property, if the defendants notwithstanding having not contested the suit are not burdened with punitive damages.

Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing of their goods and/or services as those of that well known brand. If punitive damages are not awarded in such cases, it would only encourage unscrupulous persons who actuated by dishonest intention, in the case of a trademark use the well-reputed trademark of another person, so as to encash on the goodwill and reputation which that mark enjoys in the market, with impunity or in the case of a software use the pirated software thereby depriving the copyright owner of the revenue to which he is entitled by sale of licence to use that software and then avoid payment of damages by remaining absent from the Court, thereby depriving the plaintiff an opportunity to establish actual profit earned by him from use of the infringing mark/pirated software, which, if he is using the infringing mark/pirated software for business purposes, can be computed only on the basis of his account books. This would, therefore, amount to putting premium on dishonesty and give an unfair advantage to an unscrupulous infringer over those who have a bona fide defence to make and therefore come forward to contest the suit and place their case before the Court."

The defendant is running a school using the well-known and reputed brand name of ''Delhi Public School''. As noted earlier, the defendants'' use of the name ''Delhi Public School'', the word mark ''DPS'' and the logo of the plaintiff is dishonest, actuated by greed to encash upon the brand equity which these names enjoy amongst the parents of school going children in the country. Delhi Public Schools being quite well-known, parents would ordinarily leave no stone unturned to admit their wards in these schools. On account of dishonest use of the trademark and logo of the plaintiff by the defendant, some innocent and gullible parents may admit their wards in the schools being run by the defendants under a mistaken belief that their child is studying in one of the schools being run by the plaintiff and consequently pay high fees and other charges, which they would otherwise not pay for admission in some obscure school. It is, therefore, necessary to award appropriate punitive damages to the plaintiff so that such dishonest propensities may be curbed and innocent parents are not trapped into admitting their wards in schools such as the school being run by the defendant. Furthermore, the brand value of the trademark and copyright would be adversely affected if a wannabe school is set-up under the said trademark without meeting the plaintiff''s standards of basic facilities and infrastructure and requisites of trained, qualified and experienced teachers with the ethos of DPS chain of schools for the grant of a license to a prospective applicant. Therefore, an amount of Rs. 2.00 lac is imposed as punitive damages in favour of the plaintiff and against the defendant.

The suit stands disposed off in the above terms. Decree Sheet be drawn up accordingly.