Partly allowed

Riad Mahmood v. Naveen Mahesh

Karnataka HC30 Aug 2021MFA/1664/2021

Case brief

AI extract

What is this about?

Three appeals against interim orders in a trademark infringement suit. The High Court upheld the grant of injunctions against using the 'Head Start' mark for educational services but set aside the dismissal of the application restraining use of specific domain names.

What did the court decide?

Orders dismissing two appeals and setting aside the order dismissing the domain name injunction application, restraining the respondents from using the domain names www.headstartschool.org and www.hea

Riad Mahmood Vs Naveen Mahesh — Intellectual Property | Karnataka HC (2021)

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IN THE HIGH COURT OF KARNATAKA AT BENGALURU DATED THIS THE 30^TH DAY OF AUGUST, 2021

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BEFORE

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THE HON’BLE MR. JUSTICE M.I.ARUN

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MFA NO.1664 OF 2021 (CPC) C/W MFA NO.1761 OF 2021 AND MFA NO.1765 OF 2021 (IPR)

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IN MFA No.1664/2021

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BETWEEN :

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RIAD MAHMOOD MANAGING TRUSTEE HEAD START EDUCATIONAL TRUST A PUBLIC CHARITABLE TRUST HAVING OFFICERS AT C.A.SITE NO.32(P) 16^TH MAIN, 4^TH BLOCK KORAMANGALA BENGALURU-560 034

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MS. SAMINA MAHMOOD WIFE OF LATE PERWEEZ MAHMOOD AGED 74 YEARS NO.3302, OAKWOOD APARTMENTS 8^TH MAIN, BLOCK-III KORAMANGALA

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BENGALURU-560 034 … APPELLANTS

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(BY SRI. PRADEEP NAYAK AND SRI. VEDANTH CHUGH, ADVOCATES)

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AND :

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NAVEEN MAHESH DIRECTOR, HLC INTERNATIONAL SCHOOL WING HAVEN GARDENS THALAMUS LINK ROAD KARANAI, CHENNAI-600 130

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VIDYOTHSATHI EDUCATIONAL AND CHARITABLE TRUST 3/353, 5^TH STREET VENKATESWARA NAGAR KOTTIVAKKAM CHENNAI – 600041 THROUGH ITS MANAGING TRUSTEE. … RESPONDENTS

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(BY SRI. P.V.S. GIRIDHAR, ADV. FOR SRI. B. PRAMOD, ADV. AND

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SMT. SWAPNA SUNDAR, ADV. FOR C/R1 AND R2)

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THIS MFA IS FILED UNDER ORDER 43 RULE 1(r) OF CPC AGAINST THE ORDER DATED 15.12.2020 PASSED ON IA NOS.3 AND 7 IN O.S.NO.3639/2020, ON THE FILE OF THE XVIII ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY (CCH-10), DISMISSING THE IA NO.3 UNDER ORDER 39 RULE 1 AND 2 READ WITH SECTION 151 OF CPC FILED BY THE PLAINTIFF AND ALLOWING THE IA NO.7 UNDR ORDER 39 RULE 4 READWITH SEC.151 OF CPC.

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IN MFA NO.1761/2021

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BETWEEN :

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NAVEEN MAHESH AGED ABOUT 50 YEARS DIRECTOR, HLC INTERNATIONAL SCHOOL

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WING HAVEN GARDENS THALAMBUR LINK ROAD KARANAI, CHENNAI-600 130.

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VIDYOTHSAHI EDUCATIONAL AND CHARITABLE TRUST 3/353, 3^RD STREET VENKATESWARA NAGAR KOTTIVAKKAM CHENNAI – 600 041 … APPELLANTS

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(BY SRI. P.V.S. GIRIDHAR, ADV. FOR SRI B.PRAMOD, ADV. AND SMT. SWAPNA SUNDAR, ADV.)

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AND :

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RIAD MAHMOOD MANAGING TRUSTEE HEAD START EDUCATIONAL TRUST A PUBLIC CHARITABLE TRUST HAVING OFFICERS AT C.A.SITE NO.32(P) 16^TH MAIN, 4^TH BLOCK KORAMANGALA BENGALURU-560 034

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MS. SAMINA MAHMOOD WIFE OF LATE PERWEEZ MAHMOOD AGED 74 YEARS NO.3302, OAKWOOD APARTMENTS 8^TH MAIN, BLOCK-III, KORAMANGALA BENGALURU-560 034.

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… RESPONDENTS

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(BY SRI. PRADEEP NAYAK, ADV. FOR SRI. VEDANTH CHUGH, ADV. FOR SRI. Y. SANKEERTH VITTAL, ADV. FOR C/R-1 AND 2)

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THIS MFA IS FILED UNDER ORDER 43 RULE 1(r) OF THE CPC., AGAINST THE ORDER DATED 15.12.2020, PASSED IN O.S.NO.3639/2020 ON THE FILE OF THE XVIII ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY (CCH10), ALLOWING THE IA NO.1 FILED UNDER ORDER 39 RULE 1 AND 2 R/W SECTION 151 OF CPC.

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IN MFA NO.1765/2021

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BETWEEN :

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NAVEEN MAHESH AGED ABOUT 50 YEARS DIRECTOR, HLC INTERNATIONAL SCHOOL WING HAVEN GARDENS THALAMBUR LINK ROAD KARANAI, CHENNAI-600 130

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VIDYOTHSAHI EDUCATIONAL

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AND CHARITABLE TRUST 3/353, 3^RD STREET VENKATESWARA NAGAR KOTTIVAKKAM

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CHENNAI – 600 041 … APPELLANTS

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(BY SRI. P.V.S. GIRIDHAR, ADV. FOR SRI. B.PRAMOD, ADV. AND SMT. SWAPNA SUNDAR, ADV.)

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AND :

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RIAD MAHMOOD MANAGING TRUSTEE HEAD START EDUCATIONAL TRUST A PUBLIC CHARITABLE TRUST HAVING OFFICERS AT: C.A.SITE NO.32(P) 16^TH MAIN, 4^TH BLOCK

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KORAMANGALA BENGALURU-560 034

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MS. SAMINA MAHMOOD WIFE OF LATE PARWEEZ MAHOOD AGED 74 YEARS NO.3302, OAKWOOD APARTMENTS 8^TH MAIN, BLOCK-III KORAMANGALA BENGALURU-560 034 … RESPONDENTS

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(BY SRI. PRADEEP NAYAK, ADV. AND SRI VEDANTH CHUGH, ADV. FOR SRI. Y. SANKEERTH VITTAL, ADV. FOR C/R-1 & 2)

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THIS MFA IS FILED UNDER ORDER 43 RULE 1(r) OF CPC., AGAINST THE ORDER DATED 15.12.2020, PASSED ON IA NO.2 IN O.S.NO.3639/2020 ON THE FILE OF THE XVIII ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY (CCH-10), ALLOWING THE IA NO.2 FILED UNDER ORDER 39 RULE 1 AND 2 R/W SECTION 151 OF CPC.

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THESE APPEALS HAVING BEEN HEARD AND RESERVED ON 16.07.2021 FOR JUDGMENT AND COMING ON FOR PRONOUNCEMENT OF JUDGMENT, THIS DAY, THE COURT THROUGH VIDEO CONFERENCE DELIVERED THE FOLLOWING:

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JUDGMENT

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Aggrieved by the orders passed on I.A.Nos.1 and

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2 in O.S.No.3639/2020 by the XVIII Additional City

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Civil Judge, Bengaluru (CCH-10), the defendants

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therein have preferred M.F.A.Nos.1761/2021 and

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1765/2021 respectively.

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Aggrieved by the order passed on I.A.No.3

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and I.A.No.7 in O.S.No.3639/2020, the plaintiffs therein have preferred M.F.A.No.1664/2021.

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For the sake of convenience, the parties are

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referred to as per their status in the original suit.

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The plaintiffs filed O.S.No.3639/2020

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contending that they have registered Trademark ‘Head Start’ and to restrain the defendants from using the said term along with its variants. They have also filed

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I.A.No.1 in the original suit seeking an order of temporary injunction to restrain the defendants, their officers, servants, agents and all other persons claiming through or under them from in any manner whatsoever from infringing, adopting or using the plaintiffs’ registered trademarks ‘Head Start’ and

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‘Headstart’, as well as its variants or any other mark identical or deceptively similar thereto pending disposal of the suit.

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I.A.No.2 was filed by the plaintiffs seeking an order of temporary injunction to restrain the

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defendants from in any manner whatsoever from passing off their educational services as the educational services provided by the plaintiffs by adopting or using plaintiffs’ registered trademarks ‘Head Start’ and ‘Headstart’ as part of their trade name or in any manner whatsoever, pending disposal of the suit.

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I.A.No.3 was filed by the plaintiffs seeking an order of temporary injunction to restrain the defendants from passing off their education services by using domain names www.headstartschool.org and www.headstartschool.in or any other domain name

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incorporating the plaintiffs’ registered trademarks ‘Head Start’ and ‘Headstart’, as well as its variants or any other mark identical or deceptively similar thereto pending disposal of the suit.

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The trial court granted an ex parte interim order on I.A.Nos.1 to 3.

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Upon service of notice, the defendants have entered appearance and filed their objections. They also filed I.A.Nos.5 to 7 to have the ex parte interim order passed on I.A.Nos.1 to 3 vacated.

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The trial court, after hearing both the parties, was pleased to allow I.A.Nos.1 & 2 filed by the plaintiffs and I.A.No.7 filed by the defendants and has dismissed I.A.No.3 filed by the plaintiffs and I.A.Nos.5 & 6 filed by the defendants. The defendants therein have preferred M.F.A.No.1761/2021 and M.F.A. No.1765/2021 challenging the orders passed in

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I.A.Nos.1 & 2 and aggrieved by dismissal of I.A.No.3 and allowing of I.A.No.7, the plaintiffs therein have preferred M.F.A. No.1664/2021.

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The case of the plaintiffs is that they started an education institution in the year 1984 in the name and style of “Head Start Montessori House of Children”. In the year 2005, they established “Head Start Educational Academy”. In the meanwhile, they had obtained registration of label mark ‘Head Start’ bearing Reg. No.728903 in Class 16. In 2005, they obtained registration of label mark ‘Head Start’ bearing Reg.No.1374604 in Class 41.

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The defendant No.2 had filed an application dated 22.02.2011 bearing No.1591516 seeking registration of the label mark ‘HEADSTART LEARNING CENTRE’ under class 41, which was published in the Trade Marks Journal bearing No.1498-0. On

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31.10.2011, the plaintiffs filed a notice of opposition before the Trade Mark Registry, expressing their intention to oppose the application of defendant No.2 for registration of trade mark bearing Application No.1591516 under Class 41. On 14.11.2011, the Trade Marks Registry took the notice of opposition on file and forwarded it to defendant No.2. On 01.05.2013, upon receiving no communication from the Trade Mark Registry, the plaintiffs submitted a letter dated 16.04.2013 seeking intimation on whether the applicant i.e. defendant No.2 has filed its counter statement to the notice of opposition within prescribed time. On 20.08.2013, the Trade Marks Registry passed an order recording the opposition filed by the Appellant Trust to the defendant Nos.2’s application for registration of the trademark ‘Headstart Learning Centre’ under Class 41 vide mark Application No.1591516 and on account of defendant’s failure to

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respond to the same, ordered that defendant No.2’s Application No.1591516 be treated as abandoned. On 27.08.2014, the plaintiff obtained registration of following marks:

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Word mark ‘Headstart’ bearing registration No.2798292 in Class 16;

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Word mark ‘Headstart’ bearing registration No.2798293 in Class 41;

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Word mark ‘Head Start’ bearing registration No.2798294 in Class 16;

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Word mark ‘Head Start’ bearing registration No.2798295 in Class 41;

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It is contended by the plaintiffs that they

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are providing Educational services and they having registered the aforementioned trademarks, the defendants who are also providing educational services are prohibited from using the said trademarks or any mark deceptively similar.

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It is submitted that on 28.11.2014, the plaintiffs’ Trust received an e-mail from one Ms.Divya Rai, a former teacher at defendant No.2’s school, seeking a job opportunity with the plaintiffs and claiming that the Principal of the defendant No.2’s school had recommended the plaintiffs’ Trust to her. Attached with the e-mail, was a recommendation letter dated 08.05.2014 issued by defendants’ school, which bore the name, logo and stamp of ‘HLC International’. This made the plaintiffs to bona fide believe that the defendants had abandoned the use of logo ‘Headstart’ and were using ‘HLC International’. However, later they discovered that the defendants were using the name of ‘Headstart’ on their website and e-mail addresses. Appellant No.2 sent an e-mail addressed to the Board of Trustees of the defendants’ school, intimating them of the plaintiffs long, continuous, exclusive and registered use of trademark

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‘Headstart’ and calling upon them to immediately cease and desist from using the words ‘Head Start’ in any web pages, correspondences, e-mail IDs etc. The said mail was sent on 20.10.2015. On 02.06.2017, the defendants’ school issued a transfer certificate to a student who subsequently joined the plaintiffs’ school, wherein the name, logo and stamp bore only the name ‘HLC International’. Based on the same, it is contended that the defendants stopped using the term ‘Head Start’ after objected by the plaintiffs.

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On 16.06.2020, the plaintiffs received an e-mail from the Teacher Foundation, inviting educators to participate in a Webinar, as part of series of webinars by leading educationalists titled ‘Heads Net’. The speaker in the month’s feature was the defendant No.1, who had listed his designation as ‘Managing Trustee & Founder of Headstart Learning Centre, Chennai’. On 13.07.2020, plaintiffs had

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issued a legal notice calling upon the defendants to cease and desist themselves from unauthorized use of plaintiffs’ registered trademarks. On 27.07.2020, defendant No.1 issued a holding response denying the contents of legal notice and expressing his intention to issue a detailed response in due course. On 03.08.2020, the defendants had issued a detailed response to the plaintiffs’ legal notice. As the defendants did not agree for the terms demanded by the plaintiffs, the plaintiffs filed O.S.No.3639/2020 and the I.As. thereunder.

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The defendants do not dispute the

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registration of trademark as claimed by the plaintiffs. They also do not dispute the fact that they had also applied for registration of trademark of ‘Head Start Learning Centre’ under class 41 vide mark Application No.1591516 and on the objection of the defendants, the same was abandoned. They also do not dispute

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that both plaintiffs and defendants are involved in providing educational services. However, it is contended that the plaintiffs are located in Bengaluru and defendants are located in Chennai and both are running Day School and the question of the defendants passing off its services as that of plaintiffs’ do not arise.

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It is contended that the word ‘Head Start’ is

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a generic term and that the plaintiffs have been using it from past 25 years and the plaintiffs have not objected to the same and it amounts to acquiescence and waiver on the part of the plaintiffs. It is further contended that the defendants have spent substantial time, knowledge and money to build their school name as ‘Head Start’ in Chennai and the plaintiffs having kept quite for so long cannot object the same now. It is further contended that they had registered the domain names www.headstartschool.org and

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www.headstartschool.in several years back and it was

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well within the knowledge of the plaintiffs and they cannot object to the same.

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The plaintiffs have prayed for dismissal of M.F.A.No.1761/2021 and M.F.A.No.1765/2021 and allowing of M.F.A.No.1664/2021 and the defendants have prayed for dismissal of M.F.A.No.1664/2021 and allowing of M.F.A.No.1761/2021 and

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M.F.A.No.1765/2021.

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18. Heard the learned counsel for the parties.

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19. The question that arises for consideration in

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the instant appeals is whether the trial court erred in coming to conclusion that the plaintiffs have made out a prima facie case for grant of temporary injunction as prayed by them in I.A.Nos.1 to 3 in the original suit and having so concluded did the trial court erred in not allowing I.A.No.3 along with I.A.Nos.1 and 2.

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20. Admittedly, the plaintiffs have registered word marks ‘Head Start’ and ‘Headstart ’ in classes 16 and 41 under the Trade Marks Act, 1999 (‘the Act’ for short). The plaintiffs are providing services in the educational field. The defendants also sought to have ‘Headstart’ registered in their name which was objected to by the plaintiffs and the same was abandoned by the defendants. The defendants are also providing services in the field of education. After the objection by the plaintiffs, the defendants started to use the term ‘HLC International’.

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21. Sections 28, 29, 31, 33, 78 and 135 of the Trade Marks Act, 1999 read as under:

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“28. Rights conferred by registration. — (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

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(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

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(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

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29. Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

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(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—

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(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

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(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

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(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,

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is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

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(3) In any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public.

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(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and

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(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

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(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

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(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as

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his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

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(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—

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(a) affixes it to goods or the packaging thereof;

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(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

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(d) uses the registered trade mark on business papers or in advertising.

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(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

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(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—

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(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or

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(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

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Registration to be prima facie evidence of validity .— (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

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(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

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33. Effect of acquiescence.— (1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—

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(a) to apply for a declaration that the registration of the later trade mark is invalid, or

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(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.

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(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.

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78. Rights conferred by registration of certification trade marks.— (1) Subject to the provisions of sections 34, 35 and 76, the registration of a person as a proprietor of certification trade mark in respect of any goods or services shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services.

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(2) The exclusive right to the use of a certification trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

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135. Relief in suits for infringement or for passing off.— (1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

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(2) The order of injunction under subsection (1) may include an ex parte injunction

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or any interlocutory order for any of the following matters, namely:—

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(a) for discovery of documents;

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(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;

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(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

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(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case—

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(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or

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(b) where in a suit for infringement the defendant satisfies the court—

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(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and

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(ii) that when he became aware of the existence and nature of the plaintiff’s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or

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defendant satisfies the court—

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(i) that at the time he commenced to use the trade mark complained of in the suit he was

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unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and

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(ii) that when he became aware of the existence and nature of the plaintiff’s trade mark he forthwith ceased to use the trade mark complained of.”

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22. Thus, once a person registers a trade mark

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in a particular field, another person cannot use the

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same mark in the same field. However, if the former has permitted or acquiesce d the use of the same by

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the latter, the former cannot object to it.

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23. Both the learned counsel for the parties have relied upon a catena of judgments of the Hon’ble Supreme Court and various High Courts to establish the above proposition of law. In SATYAM INFOWAY LTD. vs. SIFFYNET SOLOUTIONS (P) LTD reported in (2004) 6 SUPREME COURT CASES 145, in paragraph Nos.24, 25 and 33 it has been held as under:-

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“24. Rule 4(k) provides that the proceedings under the UDNDR Policy would not

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prevent either the domain-name owner/registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution, either before proceeding under ICANN's policy or after such proceeding is concluded.

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25. As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off.

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33. The respondent then says that confusion is unlikely because they operate in different fields. According to the respondent their business is limited to network marketing unlike the appellant which carries on the business of software development, software solution and connected activities. The respondent's assertion is factually incorrect and legally untenable. A domain name, is accessible by all internet users and the need to maintain an exclusive symbol for such access is crucial as we have earlier noted. Therefore a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought for services. Besides the

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appellants have brought on record printouts of the respondent's website in which they have advertised themselves as providing inter alia software solution, integrating and management solutions and software development covering the same field as the appellant. To take a specific example, the respondent's brochure explicitly offers Intranet and Extranet solutions which are also explicitly offered by the appellant. There is clearly an overlap of identical or similar services. It may be difficult for the appellant to prove actual loss having regard to the nature of the service and the means of access but the possibility of loss in the form of diverted customers is more than reasonably probable.”

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In T ATA SONS LIMITED v. MANU KOSURI &

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OTHERS reported in (2001) SCC ONLINE DEL 250 ,

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in paragraph No.9 it has been held as under:-

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“9. In view of the above decisions, I am satisfied that it is now settled law that with the advent of modern technology particularly that relating to cyberspace, domain names or Internet sites are entitled to protection as a trade mark because they are more than a mere address. The rendering of Internet services is also entitled to protection in the same way as goods and services

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are, and trade mark law applies to activities on Internet.”

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In MIDAS HYGIENE INDUSTRIES (P) LTD. AND ANOTHER vs. SUDHIR BHATIA AND OTHERS reported in (2004) 3 SUPREME COURT CASES 90 , in paragraph Nos.5 and 7 it has been held as under:-

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“5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.

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7. In our view on the facts extracted by the learned Single Judge, this was a fit case where an interim injunction should have been granted and should have been continued. In our view the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and latches. Under the circumstances, the impugned order is set aside and that of the trial court is restored. It is clarified that all observations made by the High Court and by this Court are prima

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facie and shall not be taken into consideration at the time of the trial of the suit.”

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24. The plaintiffs have further relied upon the following judgments which are in support of aforementioned proposition of law:-

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REDIFF COMMUNICATION LIMITED v. CYBERBOOTH AND ANOTHER REPORTED IN 1999 SCC ONLINE BOM 275

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RAJAT AGARWAL & ORS. v. SPARTAN ONLINE PVT. LTD. REPORTED IN 2017 SCC ONLINE CAL 5035

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PEOPLE INTERACTIVE (I) PVT. LTD. v. GAURAV JERRY AND OTHERS REPORTED IN 2014 SCC ONLINE BOM 4607

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BROOKE BOND INDIA LTD. v. ROYAL PRODUCTS AND ORS. REPORTED IN ILR 1981 KAR 795

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SOM DISTILLERIES AND BREWERIES LTD. v. SAB MILLER LTD. REPORTED IN 2013 SCC ONLINE BOM 895

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M/S. HINDUSTAN PENCILS PVT. LTD. v. M/S. INDIA STATIONARY PRODUCTS CO. & ANOTHER REPORTED IN 1989 SCC ONLINE DEL 34

¶196

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P.M. DIESELS LTD., v. PATEL FIELD MARSHAL AGENCIES & OTHERS REPORTED IN 2000 SCC ONLINE DEL 803

¶198

CADILA PHARMACEUTICALS LIMITED vs. SAMI KHATIB REPORTED IN 2011 SCC ONLINE BOM 484.

¶199

OZONE SPA PVT. LTD. vs. M/S OZONE CLUB REPORTED IN 2010 SCC ONLINE DEL 114

¶200

MIND GYM LIMITED v. MIND GYM KIDS LIBRARY PVT. LIMITED REPORTED IN 2014 SCC ONLINE DEL 1240

¶201

HINDUSTAN EMBROIDERY MILLS PVT. LTD. vs. K. RAVINDRA AND CO. REPORTED IN 1967 SCC ONLINE BOM 123

¶202

AUTOMATIC ELECTRIC LIMITED v. R.K.DHAWAN AND ANOTHER REPORTED IN 1999 SCC ONLINE DEL 27

¶203

INDCHEMIE HEALTH SPECIALITIES PVT. LTD. v. NAXPAR LABS PVT. LTD. AND ANOTHER REPORTED IN 2002 (2) Mh LJ 513

¶204

NOVARHS A. G. vs. WANBURY LTD. AND ANOTHER REPORTED IN 121 (2005) DLT 316

¶205

M/S. SOHAN LAL NEM CHAND JAIN vs. TRIDENT GROUP AND OTHERS REPORTED IN 2011 SCC ONLINE DEL 4272

¶206

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N. R. DONGRE AND OTHERS vs. WHIRLPOOL CORPORATION AND ANOTHER REPORTED IN 1996 5 SCC 714

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(INDIA TV) INDEPENDENT NEWS SERVICE PVT LIMITED vs. INDIA BROADCAST LIVE LLC AND OTHERS REPORTED IN ILR (2007) II DELHI 1231 CS (OS)

¶209

BENGAL WATERPROOF LIMITED vs. BOMBAY WATERPROOF MANUFACTURING COMPANY AND OTHERS REPORTED IN (1997) 1 SCC 99

¶210

RUSTON & HORNSBY LTD. v. THE ZAMINDARA ENGINEERING CO. REPORTED IN 1969 (2) SCC 727

¶211

M/S ANSUL INDUSTRIES v. M/S SHIVA TOBACCO COMPANY REPORTED IN ILR (2007) I DELHI 409

¶212

JAGDISH GOPAL KAMATH AND OTHERS v. LIME AND CHILLI HOSPITALITY SERVICES P. LTD. REPORTED IN 2015 SCC ONLINE BOM 531

¶213

CATERPILLAR INC. v. MEHTAB AHMED AND OTHERS REPORTED IN 2002 SCC ONLINE DEL 865

¶214

MANISH VIJ AND OTHERS v. INDRA CHUGH AND OTHERS REPORTED IN 2002 SCC ONLINE DEL 104

¶215

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UNITED BIOTECH PVT. LTD. v. ORCHID CHEMICALS AND PHARMACEUTICALS LTD. AND OTHERS REPORTED IN ILR (2012) V DELHI 325

¶217

SANTOSH M. KATARIYA v. RAVI GOENKA REPORTED IN 2016 SCC ONLINE BOM 8608

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25. The respondents have relied upon the following judgments which also support the

¶219

aforementioned proposition of law:-

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KRBL LTD. vs. LAL MAHAL LTD. REPORTED IN 2016(65) PTC 119 (DEL)

¶221

ESSEL PROPACK LTD. vs. ESSEL KITCHENWARE LTD. AND ANOTHER REPORTED IN 2016(66)PTC 173(BOM)

¶222

WARNER BROS. ENTERTAINEMENT INC. AND OTHERS vs. HARINDER KOHLI AND OTHERS REPORTED IN 2008(38) PTC 185 (DEL)

¶223

MARICO LIMITED vs. AGRO TECH FOODS LIMITED, REPORTED IN 2010(44) PTC736(DEL)

¶224

SKYLINE EDUCATION INSTITUTE (INDIA) PRIVATE LTD. vs. S.L.VASWANI AND

¶225

¶226

ANOTHER REPORTED IN 2010(42) PTC 217

¶227

INTEL CORPORATION vs. ANIL HADA AND OTHERS REPORTED IN MANU/DE/9767/2006

¶228

SATYAM INFOWAY LTD. vs. SIFYNET SOLUTIONS PVT. LTD. REPORTED IN (2004) 6 SCC 145

¶229

RAYMOND LTD. vs. RAYMOND PHARMACEUTICAL PVT. LTD. REPORTED IN 2017 (69) PTC79 (BOM)

¶230

GAIL GUARULHOS INDUSTRIA E COMRCIO LTD. v. KEVIN WATSON CASE NO.D20060655 IN WIPO ARBITRATION AND MEDIATION CENTRE

¶231

RELIGARE HEALTH INSURANCE COMPANY LIMITED v. NAME ADMINISTRATION INC./DOMAIN ADMINISTRATOR CASE NO.D2019-2073 IN WIPO ARBITRATION AND MEDIATION CENTRE

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26. As stated above, the plaintiffs have

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registered trademarks ‘Headstart’ and ‘Head Start’ which they are using in providing educational services.

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Having registered the same, the defendants are

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prohibited from using the same trademark or its variants so as pass off their services as the services of the plaintiffs.

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27. Further, in view of the fact that the said trademark has been registered, it cannot be considered as a generic term. If the defendants are of the opinion that the concerned authorities ought not to have registered the said term, they can always initiate appropriate proceedings to have the same revoked.

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28. The next question that needs to be considered under the given facts and circumstances of the case is whether the plaintiffs have acquiesced the use of the said registered trademark by the defendants.

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29. Undisputedly, after registration of the term ‘Headstart’ by the plaintiffs, the defendants also tried

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to have the same registered which was objected by the plaintiffs and the defendants have abandoned the usage of the same. Prima facie, it is also noticed that whenever it has come to the knowledge of the plaintiffs that the defendants are using the term ‘headstart’ they have objected to it. After abandonment of the use of the word mark ‘headstart’, the defendants started using the term ‘HLC International’. Thus, in my opinion, the plaintiffs have made out a prima facie case for issuance of an order of injunction preventing the defendants from using the term ‘headstart’ for the services provided by them. There is no error in the order of the trial court insofar as it relates to allowing I.A.Nos.1 and 2 and dismissing I.A.Nos.5 and 6. However, the trial court in respect of I.A.No.3 has concluded that though the plaintiffs have made out a prima facie case for grant of an order of injunction, the issuance of injunction

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with respect to use of website may result in dismantle of the website. It is noticed that the defendants have

¶244

pleaded that restraining their use of website would hamper the online education of 413 students who are undergoing online education during COVID-19 period and balance of convenience lies in favour of them not to allow the said application. On that ground, I.A.No.3 has been dismissed and I.A.No.7 has been allowed.

¶245

30. Having come to the conclusion that the plaintiffs have made out a prima facie case of infringement and passing off by the defendants, the trial court ought to have allowed I.A.No.3 and dismissed I.A.No.7. If the trial court felt that dismantling of the website would result in inconvenience to the defendants, some time could have been granted for the defendants to create a fresh website and operate under the said name.

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Hence, in my opinion, the trial court erred in

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dismissing I.A.No.3 filed by the plaintiffs. Hence, the

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following:

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ORDER

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(i) MFA Nos.1761/2021 and 1765/2021 are hereby dismissed.

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(ii) The order dated 15.12.2020 passed by XVIII Additional City Civil Judge, Bengaluru (CH-10), insofar as it relates to I.A.No.3 and I.A.No.7 in O.S.No.3639/2020 is hereby set aside. The defendants are restrained from using the domain names ‘ www.headstartschool.org’ and ‘www.headstartschool.in’. However, the defendants are given three months’ time to stop using the domain names ‘www.headstartschool.org’ and ‘www.headstartschool.in’. M.F.A.No.1664/ 2021 is hereby allowed accordingly.

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(iii) Pending I.As. do not survive and they stand disposed of accordingly.

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Sd/JUDGE

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MH/hkh.

Riad Mahmood v. Naveen Mahesh

Case brief

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Riad Mahmood v. Naveen Mahesh

Case brief

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