'The British School': Delhi High Court Directs Sanjay Gandhi Educational Society To Change Name Of 4 Schools Infringing Trademark

While dealing with a trademark infringement suit filed by the British School Society over the mark 'The British School', the Delhi High Court has directed changing of names of four schools run by Sanjay Gandhi Educational Society, purportedly using identical name. Justice Pratibha M Singh directed the defendants to change the name of their schools w.e.f. 1st May, 2022 and apply to the CBSE, with whom they are presently affiliated. "The process shall be undertaken in an expeditious manner so that no inconvenience is caused to the students studying in the schools of the Defendants. Certificates, prizes, medals, etc. to be given to the students presently studying in Defendants' schools shall be issued in the name of 'The British School' only till the end of academic year 2021-2022 and not beyond that," the Court added. The Court observed that the continued use of the mark 'The British School' for schools of Defendants would constitute misrepresentation in the course of rendering educational services to the effect that their schools are in some way connected or affiliated with the Plaintiff. Furthermore, the Court added that such continuous use may cause irreparable prejudice and damage not merely to the Plaintiff's goodwill alone but to various students who may be enrolled and studying in the said school. Opining that it will not be in the larger public interest to permit Defendants to use the mark 'The British School', the Court confirmed the interim order granted on 12th October, 2021, which was modified on 22nd December, 2021.The Plaintiff was the British School Society running The British School in New Delhi, attached to the High Commission of the United Kingdom. Defendant No.1 was the Sanjay Gandhi Educational Society based in Panchkula, Haryana which runs four schools under the name 'The British School' in Punjab and Haryana viz., Mohali, Panchkula, Chandigarh, Firozpur.The British School in Delhi was started in the year 1963 when a group of British parents, with the support of the then British High Commissioner started the school with 40 students representing six nationalities. Various British dignitaries, of the relevant time including the then British High Commissioner to India– Sir Paul Gore-Booth, were the founding members. It offers various educational programmes including EYFS Programme, the IGCSE and the IB Diploma Programme and school has more than 1200 students from 65 nationalities.The domain name of the Plaintiff's school was www.british-school.org, registered in 1999 and the registration of the Plaintiff society under the Society Registration Act of 1860 dates back to 26th June, 1963. "A perusal of the documents filed on record shows that the use of the name 'The British School' by the Plaintiff since the year 1963 is not in dispute," the Court noted. The Defendants used an identical name 'The British School' for 4 of their schools in Punjab & Haryana, even though the name of the society which runs the said schools was Sanjay Gandhi Educational Society. The Defendants had also registered the domain name: www.thebritishschool.org which was registered since the year December, 2004. The Defendants had filed various applications for the registration of the mark 'The British School' claiming user since 2005. The first application for the registration of the mark 'The British School' was filed on 29th May 2015 which was objected to by the Trade Mark Registry on the ground of non-distinctiveness under sec. 9 of the Act as well as under sec. 11 of the Act on the ground that similar trade mark is already on the register. Thereafter another application was filed on 29th January 2020 by Sanjay Gandhi Educational Society for a different device mark containing the words 'The British School'. The said application was opposed by the Plaintiff vide notice of opposition dated 11th September, 2020. It was the contention of the Defendants that the Plaintiff was not a school accredited to the Department of Education, United Kingdom and that the Plaintiff was not entitled to use the mark 'The British School'. It was also submitted that the word 'British' derived its reputation and goodwill from the British Empire since the 16th century. Thus, no one can claim monopoly over the same as it was generic. "Though the Plaintiff have registrations, the same are with disclaimers on the words 'The British School'. Thus, exclusive rights cannot be claimed by the Plaintiff on the strength of trademark registrations. The case has to be, therefore, considered on the principles of passing off. In a suit for passing off, the Court has to test the case of the Plaintiff on the 'classical trinity' of the tort of passing off- goodwill, misrepresentation and damage," the Court observed. Noting that the Defendants were in an identical service sector, i.e., education, the Court said that though the Defendants were located in Haryana & Punjab, the possibility of parents and students carrying the impression that the their schools were...

'The British School': Delhi High Court Directs Sanjay Gandhi Educational Society To Change Name Of 4 Schools Infringing Trademark

Nupur Thapliyal

Tags