Court’s Decision
The Kerala High Court dismissed an appeal filed by a school challenging a temporary injunction granted by the Trial Court, which restrained it from using the trademarked name “Global Public School.” The Court held that the adoption of a deceptively similar name by the appellant institution—operating within the same district and field of education—amounted to a prima facie infringement of the respondent’s registered trademark. Upholding the Trial Court’s decision, the Court ruled, “The plaintiff has every right to protect its registered trade mark, which the plaintiff started using prior to the use of the defendants.”
Facts
The respondent (plaintiff before the Trial Court), a registered trust running “Global Public School” since 2006 in Ernakulam District, filed a trademark infringement suit under the Trade Marks Act, 1999. It claimed that the appellants had started a school in 2010 named “Lake Mount Global Public School,” which misleadingly used the entire registered trademark “Global Public School” and confused the public into believing an affiliation or franchise relationship. The plaintiff’s mark is registered under Class 41 (education services) since 07.08.2006.
The appellants resisted the claim, arguing that their use of the name was since 2010 and that the terms “Global,” “Public,” and “School” were generic and incapable of trademark protection. They further claimed there was no actual confusion, especially since the schools were located 10 km apart.
Issues
- Whether the use of “Lake Mount Global Public School” constitutes an infringement of the registered trademark “Global Public School.”
- Whether the Trial Court’s grant of a temporary injunction was justified under the facts and applicable legal principles.
Petitioner’s Arguments
The plaintiff submitted that it had priority of use and registration of the trade name “Global Public School” and had gained goodwill and recognition in the education sector. It asserted that the defendants’ use of an identical trade name amounted to infringement under Sections 28 and 29 of the Trade Marks Act. The plaintiff relied on Section 29(3) to argue that there was a statutory presumption of confusion, and that the mark had acquired a secondary meaning identifying the school with the plaintiff’s trust.
Respondent’s Arguments
The appellants argued that “Global Public School” comprises generic terms that cannot be monopolised, especially since the name was not coined or invented. They claimed visual and phonetic dissimilarity between their name and the plaintiff’s mark, and pointed out the 8-year delay in filing the suit. They relied on Skyline Education Institute v. S.L. Vaswani and Orange City Mobile Collection v. City Collection to assert that no exclusive rights existed over such descriptive terms.
Analysis of the Law
The Court undertook a detailed analysis of Section 2(1)(h), 28, and 29 of the Trade Marks Act. It reiterated that even generic or descriptive terms could obtain trademark protection once they acquire secondary meaning through usage. The Court noted that in the education sector, the combination “Global Public School” had become distinct and was associated with the plaintiff.
The statutory presumption under Section 29(3) of likelihood of confusion in cases of identical marks was invoked, especially where both schools operated in the same geographical region and the services provided were identical.
Precedent Analysis
The Court relied extensively on multiple Supreme Court and High Court decisions:
- Laxmikant V. Patel v. Chetanbhai Shah: Deceptive similarity causing business diversion warrants injunction.
- Ramdev Food Products v. Arvindbhai Patel: Delay is not fatal in cases of trademark infringement; prima facie case and balance of convenience suffice.
- Midas Hygiene v. Sudhir Bhatia: Dishonest adoption of trademark mandates injunction irrespective of delay.
- Wockhardt Ltd. v. Torrent Pharmaceuticals: Defendant’s state of mind irrelevant in passing off.
- Renaissance Hotel Holdings v. B. Vijaya Sai: When identical marks are used for identical services, a presumption of confusion is mandatory.
- Godfrey Philips India Ltd. v. Girnar Food and Beverages: Descriptive marks with acquired secondary meaning deserve protection.
The Court distinguished Skyline and Orange City, noting that unlike those cases, the name “Global Public School” had acquired distinctiveness and was not commonly used by others in the industry.
Court’s Reasoning
The Court concluded that:
- The use of the name “Lake Mount Global Public School” incorporated the entirety of the registered trademark of the plaintiff.
- Since the schools are within a 10 km radius and operate in the same field, the possibility of confusion is high.
- Visual representation differences do not negate phonetic identity in the context of school names.
- The plaintiff’s earlier adoption and continuous use of the trademark, along with its registration, give it enforceable rights.
- Delay in filing suit does not bar the grant of an injunction, particularly where dishonest intent or confusion is apparent.
Conclusion
The Court dismissed the appeal and upheld the Trial Court’s order of temporary injunction, thereby restraining the appellants from using the trade name “Global Public School” in any form. It held that the infringement was prima facie established and the plaintiff’s rights under the Trade Marks Act were deserving of protection.
Implications
- The judgment reinforces that even descriptive or generic words can attain trademark protection once they acquire distinctiveness in a specific domain.
- It affirms the principle that phonetic similarity and proximity of services are critical in assessing likelihood of confusion.
- The case signals that delay in initiating trademark litigation will not override established trademark rights or justify ongoing infringement.
FAQs
1. Can generic words be protected under trademark law in India?
Yes, if such words have acquired distinctiveness and secondary meaning in a specific context or industry, they are eligible for trademark protection.
2. Does delay in filing a trademark infringement suit prevent courts from granting injunctions?
No. Courts have consistently held that in trademark cases, delay alone is not a ground to deny injunction, especially if confusion and dishonest adoption are evident.
3. What is the standard to determine deceptive similarity in trademark cases?
The standard is whether the mark is likely to deceive or cause confusion among an average consumer with imperfect recollection, especially where the services offered are similar.
