IP Connect

The SHRI RAM School Trademark Conflict and Ruling on Bonafide Use

Recently, the Delhi High Court delivered an order wherein the name of famous school SHRI RAM was disputed. The Court in the case analysed issues pertaining to bonafide use of a trademark under Section 35 of Trademark Act, 1999 and also opined the merits and demerits while granting an injunction against any party.

Brief Facts of the case:

1. SRF Foundation (hereinafter referred to as the Plaintiffs) is a registered non-profit society engaged in several social and community development initiatives including running of schools under the name of The Shri Ram School. The Plaintiffs claims to be the prior user of the mark/name SHRI RAM in respect of the schools;
2. An application for registration of the trademark THE SHRI RAM SCHOOL was filed by the Plaintiffs on  June 6, 2008 vide Application No.1696277 in Class 41 which is pending with the Registrar of Trade Marks;
3. In or around June 2011, Ram Education Trust (hereinafter referred to as the Defendant) which is managed by the Plaintiffs’ Trust, opened SHRI RAM GLOBAL PRE SCHOOL;
4. Here it would be relevant to mention that the Trust of the Defendant   was opened by Plaintiffs' brother. In view thereof,   Plaintiffs wrote a letter to the Defendant apprising them of the substantial reputation of 'The Shri Ram School' run by the Plaintiffs;
5. However, the Defendant did not stop use of the impugned mark but expanded its operations under the trademark SHRI RAM and opened the SHRI RAM CENTENNIAL SCHOOL, SHRI RAM CENTENNIAL SCHOOL, AGRA and  SHRI RAM CENTENNIAL SCHOOL, INDORE, and is proposing to open SHRI RAM GLOBAL PRIMARY WING a mere 240 metres away from the Plaintiffs’ establishment;
6. Aggrieved by the said, the Plaintiffs put up notices in Indore, Gurgaon and Dehradun informing the general public that THE SHRI RAM SCHOOL had no relation or connection with these schools;
7. Thereafter the Plaintiffs received letter for withdrawal of the advertisements and to tender a public apology for releasing these advertisements

Contentions of the Parties:

Plaintiffs – SRF Foundation & Anr.

1. That they have no objection if the said mark/name SHRI RAM is used by the Defendant in relation to any other different activities or services except in relation to the services of school;
2. That as far as running of school bearing the mark SHRI RAM is concerned, they are prior user and have acquired unique goodwill, name and reputation;
3. That use of similar names would create confusion and deception among public;
4. That the Defendant chose almost a similar name for its schools with the intention of misrepresentation;
5. The use of the words "Centennial" and "Global" by the Defendant in conjunction with the name SHRI RAM for its schools do create confusion and deception as THE SHRIRAM MILLENNIUM SCHOOL (Plaintiffs’ school) and SHRI RAM CENTENNIAL SCHOOL (Defendants’ school) are confusing and deceptively similar; 
6. That even the use of the shield device by the Defendant on its school symbol would not make any difference as the foremost and essential feature of the Defendant's school name is the word 'SHRI RAM";
7. That there is no bonafide use of the family name SHRI RAM by the Defendant as the Defendant malafidely intends to associate its SHRI RAM schools with the Plaintiffs' well- known SHRI RAM schools in Delhi and Gurgaon so as to piggy bank on its reputation and goodwill and gain illicit profits out of the same.

Defendant – Ram Education Trust

1. That it has the right to use the name “SHRI RAM” for schools as it emanates from the common lineage i.e. from the legacy of Late Sir Shri Ram, who is the grandfather of the founding member of the Plaintiffs’ school and the Defendant’s Trust.
2. While forwarding its response, the Defendant adduced a list of educational institutions set up by the Late Sir Shri Ram beginning from the year 1920, thereby showing that the Plaintiffs are not entitled to claim proprietorship / monopoly over the mark / word “SHRI RAM”;
3. That the use of the name "SHRI RAM" by the Defendant in relation to running the services of schools is in furtherance of the common family name held by the Plaintiffs as well as the Defendant, which constitutes a bonafide use under the provisions of the Trade Marks Act, 1999;

Court Observations and Judgment:

1. That it was clear that the mark / word “SHRI RAM” was being used as an essential feature in the logos of both the Plaintiffs and the Defendant, which might be confusing and cause deception;
2. The Court observed that inspite of a letter sent by the Plaintiffs to the Defendant, specifically stating not to use the name “SHRI RAM”, the Defendant without paying any heed went ahead and used the impugned mark. Hence, there was no specific admission made by the Plaintiffs to share the mark “SHRI RAM” with the Defendant in respect of  services of  running schools;
3. That the goodwill in the name SHRI RAM in the field of schools in India is indeed a result of the efforts of Plaintiffs. Hence, the Defendant cannot be allowed to use the identical name SHRI RAM for its schools, amounting to the continuing detriment of the Plaintiffs who have built up a goodwill and reputation in the name SHRI RAM for its schools after years of hard work;
4. That “bonafide use" normally means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader;
5. That the words “bonafide use” are the governing words and heart and soul of the Section 35. The party cannot blindly read this Section that under the statute, he is entitled to use his own name, surname in respect of same goods and services. No different meaning can be given to this Section, if the use is not bonafide and the same is tainted and dishonest. Hence, Section 35 would not apply in the facts of the present case;

In view of the aforesaid, the Honourable Court directed the Defendant to display/use the disclaimer in their signboard and all stationary material indicating that they have no connection or relation with the Plaintiffs' school and further restrained the Defendant from using the mark SHRI RAM in relation to running of schools which were under construction.

Conclusion:

Courts often confront trademark tussle among kins over use of family name. A similar issue had cropped up before the Supreme Court in 2014 in the case of Precious Jewels & Anr. v. Varun Gems wherein the use of family name i.e. surname “RAKYANS” as trade name was disputed contention. In the case the Apex Court had prima facie acknowledged the right of using one’s family name as part of a trade name.

However, in this case the Court recognized the reputation, goodwill and secondary significance acquired by the Plaintiffs’ which entitled them to the relief claimed in the case.