Merely Some Words In Two Logos Don’t Match, It Doesn’t Mean Both Are Distinct From Each Other: J&K&L High Court In Trademark Case
The Jammu and Kashmir and Ladakh High Court observed that merely because some of the words appearing in two logos do not match with each other, it does not mean that both are distinct from each other.
The Court observed thus in an appeal against the order of the Trial Court by which it disposed of an application under Order 39 Rules 1 & 2 of the Civil Procedure Code (CPC) filed by the plaintiffs and temporarily restrained the defendant from using the trade mark.
A Single Bench of Justice Sanjay Dhar held, “This will certainly create confusion and deception in the minds of the student community. Thus, merely because some of the words appearing in the two logos do not match with each other, does not mean that these two logos are distinct from each other. Even a cursory look on both these logos would reveal that the defendant has used the design and logo which is deceptively similar to the design and logo which is under the use of plaintiffs.”
Advocate T.H. Khawaja represented the appellant while Advocate Mubashir Mushtaq represented the respondents.
In this case, the plaintiffs/respondents filed a suit before the Trial Court against the defendant/appellant seeking certain reliefs. It was pleaded that the plaintiffs were reputed and renowned service providers in the field of education and imparting coaching to the students of Class 8th to 12th and aspirants of Competitive Exams like NEET, JEE, and its allied services. As per the plaintiffs, the trademarks “KIE”, “MissionE”, “HOPE Classes”, and “EMERGE KIE HOPE MISSIONE PVT. LIMITED” were strong brands and acquired distinctive goodwill with the passage of time.
In November 2023, the plaintiffs decided to amalgamate under one name for providing coaching services and the name to such amalgam was given as “EMERGE - KIE HOPE MISSIONe”. The brand name ‘EMERGE’ was launched in January 2024 and a memorandum of association was signed by the plaintiffs. They applied for the registration of trademark. After a few months, they came to know that the appellant was using identical trademark in respect of the same service of coaching in Srinagar region and was using the trade name/mark “EMERGE Infinity & beyond – powered by KIE”. As the Trial Court restrained the defendant from using the same, it approached the High Court.
The High Court in view of the above facts noted, “… it is clearly reflected that the two marks are similar to each other. It also appears that the trade name and logo used by the appellant/defendant is deceptively similar to the trade name and logo of the plaintiffs.”
The Court said that the student community is likely to get confused that both the coaching centres, one being run by the plaintiffs and the other being run by the appellant/defendant, are being operated, directly or indirectly, by the brand ‘KIE’ which stands registered in the name of plaintiff No.1.
“From the foregoing analysis of law on the subject, it is clear that in order to succeed in an action of passing off, it has to be shown that the plaintiff owns goodwill in the business and that there has been misrepresentation of his trade name/trade mark, as a result of which damage has occurred to the goodwill of the said plaintiff. It is also clear that the provisions of the Trade Marks Act provide that an action for passing off is dependent upon the right of prior user generating a goodwill and, in fact, the right of prior user is superior than that of registration under the Trade Marks Act”, it also noted.
The Court further observed that once the trademarks/brands have been assigned by the plaintiffs to the new entity, the plaintiffs cannot only claim prior user of it, but they can also claim the transfer of goodwill of their brand names to the new entity.
“Thus, not only has the new entity come into existence prior to the defendant/appellant thereby holding prior user of the brand name ‘EMERGE KIE HOPE MISSIONE’ ’but it also has acquired the good-will of the business of plaintiffs No.1 to 3 along with prior user of their brand names. Therefore, all the ingredients for grant of an injunction in an action of passing off are fulfilled in the present case. The view taken by the learned trial court is perfectly in accordance with law”, it added.
The Court concluded that interference can be made by the Appellate Court only in situations where it is satisfied that the Trial Court has acted arbitrarily or contrary to law or that its findings are perverse, capricious and palpably incorrect and are wholly untenable. It, therefore, said that if the view taken by the Trial Court is a possible view, the same cannot be interfered with by the Appellate Court.
Accordingly, the High Court dismissed the appeal and upheld the judgment of the Trial Court.
Cause Title- Emerge Classes Private Limited v. Kashmir Institute of Excellence and Others
Appearance:
Appellant: Advocates T.H. Khawaja, Imam Abul Muiz, and Naseer ul Akbar.
Respondents: Advocate Mubashir Mushtaq
