1.The plaintiff has instituted this suit to restrain the defendants from using the name “Delhi Public Schoolâ€, “DPS†and the following two
logos / crests:
2.Vide interim order dated 18th April, 2016, the defendants have been restrained from using the trade mark / name “DPSâ€.
3.In an appeal being FAO(OS)(COMM) No.21/2016 preferred by the defendants to the Division Bench, it was inter alia held in the judgment dated
10th April, 2017 as under:
“38. We, therefore, do not find any justifiable reason to interfere with the finding of the learned Single Judge that the name of defendant No.1
„DPS World Foundation‟ and its logo which included the plaintiff‟s registered trade mark „DPS‟ resulted in infringement under Section 29 of the
Trade Marks Act, 1999.
39.However, it may be added that for the trade mark / name
„Delhi Public School‟, no registration has been granted to the plaintiff till date. Moreover, as rightly contended by the appellants, it contains separate
words „Delhi‟ „Public‟ „School‟ in respect of which the plaintiff cannot seek exclusive rights for passing off purposes.
40.It is also relevant to note that though there was a specific prayer in the application to grant injunction in respect of the trade mark / name „Delhi
Public School‟, the same has not been granted by the learned Single Judge.
41.Therefore, may be it is open to the defendant No.1 to adopt the trade name / mark including the words „Delhi‟ „Public‟ „School‟, however,
the registered trade mark / name „DPS‟ of the plaintiff cannot be used in any manner whatsoever.
The appeal is accordingly disposed of.â€
4.In Review Petition No.148/2017 preferred by the plaintiff before the Division Bench, Mr. Salman Khurshid, appellant no.2 therein, assured the
Division Bench that the defendants did not have any intention of using the words „Delhi‟ „Public‟ „School‟ sequentially and even if they used
the said words, they proposed to break the sequence either by inserting a word between the words „Delhi‟ and „Public‟ or between the words
„Public‟ and „School‟, apart from issuing a disclaimer that they were not connected with the plaintiff in any manner; it was further assured that
the same statement would be made before this Bench as well.
5.Being of the view that the parties, which are educational institutions, should not spend their time and energy in Courts and devote the same to the
betterment of the education of the children admitted to their institutions, from time to time, efforts were made for amicable resolution of the
controversy. Though at one point of time, it appeared that a solution was in sight but the past acrimonious relationship between the parties did not
allow the said efforts to bear fruit. Hence, issues were framed in the suit and trial commenced.
6.The counsels were heard on several pending applications and orders thereon reserved on 18th January, 2018.
7.IA No.6764/2017 and IA No.7261/2017, both under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) and both filed by the
plaintiff are inter alia for adjudication.
8.Vide IA No.6764/2017, the plaintiff seeks to restrain the defendants, during the pendency of the suit, from using the registered trade mark/name
„Delhi Public School‟ of the plaintiff or any other trade mark identical or deceptively similar thereto. It is pleaded in the application i) that since vide
order dated 18th April, 2016, the defendants were restrained from using the plaintiff‟s trade marks / name „DPS‟ and the logo only, therefore the
scope of FAO(OS)(COMM) No.21/2016 was confined to the trade mark / name DPS‟ and logo only; ii) still the Division Bench in paras no.38 to 41
of its judgment dated 10th April, 2017 recorded as reproduced above; iii) that since the findings given by the Division Bench were contrary to the
statements given by the defendants before the Single Bench, the plaintiff applied for review and in which the defendant no.2 meted out assurance as
noted above; iv) that the use by the defendants of the mark / name „Delhi Public World School‟ is deceptively similar to the mark / name
„Delhi Public School‟ of the plaintiff; and, v) that the defendants are also describing „Delhi Public World School‟ as a „Dipsites Knowledge
Initiative‟. The plaintiff thus seeks to restrain the defendants from infringing the registered trade mark / name „Delhi Public School‟ of the plaintiff
and from using the word „Dipsites‟.
9.Vide IA No.7261/2017, the plaintiff seeks clarification that the restraint order passed by this Court vide order dated 18th April, 2016 covers the mark
„DPWS‟ and further seeks to restrain the defendants from using the words / name „Delhi Public World School‟ and „Delhi Public World
Foundation‟.
10.The questions which arise for consideration are, whether this Bench can, on merits, consider the interim reliefs aforesaid after the disposal vide
order dated 18th April, 2016 of the application of the plaintiff under Order XXXIX Rules 1&2 of the CPC and after the disposal of the FAO(OS)
(COMM) No.21/2016 preferred thereagainst and whether the plaintiff is entitled to the said reliefs in terms of theorder of the Division Bench and / or
in terms of the order on the Review Petition preferred by the plaintiff before the Division Bench.
11.The senior counsel for the plaintiff has argued that the plaintiff, on 26th April, 2016, has been granted registration of mark „Delhi Public School‟
in Class-42 and use by the defendants of „Delhi Public World School‟ constitutes infringement thereof. It was further contended that the test has to
be applied in the background of the fact that the defendant no.2 Salman Khurshid was the public face of the plaintiff for ten years and has whereafter
set up competing educational institutions and cannot be permitted to use the mark / word „Delhi Public World School‟ or „Delhi Public World
Foundation‟ which are likely to convey to the public at large, owing to the past association of the defendant no.2 with the plaintiff, that the defendants
are the same as the plaintiff. It is further argued that the alumni of the plaintiff‟s schools are referred to as „Dipsites‟ and the defendant no.2 is at
best one of the said alumni and cannot appropriate the word „Dipsites‟, to himself, which belongs to the whole body of alumni of the plaintiff‟s
schools. It was yet further contended that the said use is also intended to mislead the public.
12.Per contra, the defendant no.2 arguing in person has contended that the plaintiff, if at all entitled to any relief, has to go back to the Division Bench
and cannot get any relief before this bench. It was further contended that the defendants are not stopping other alumni of the plaintiff‟s schools from
using the word „Dipsites‟. It was yet further contended that a „Delhi Public Secondary School‟ also exists. It is also the contention that the
plaintiff has not amended the plaint for the plaintiff to be entitled to any additional interim relief than to what the plaintiff was held entitled to in the
order dated 18th April, 2016 and appeal whereagainst has also been disposed of.
13.The senior counsel for the plaintiff, in rejoinder, argued that the objective of Dipsites Association is not to set up schools and the crest being used
by the defendants also uses the word „Dipsite‟.
14.I have considered the controversy and am of the view that even if the plaintiff on 26th April, 2016 obtained registration of the name / mark
„Delhi Public School‟, which as on 18th April, 2016 was pending for registration, but the said registration was granted before disposal of the appeal
preferred against the order dated 18th April, 2016 before the Division Bench. Significantly, the Division Bench did not grant relief to the plaintiff of
restraining the defendants from infringing the mark „Delhi Public School‟ of the plaintiff. Though, there appears to be an error in para 39 of the
judgment dated 10th April, 2017 of the Division Bench to the extent it records that no registration had been granted to the plaintiff of the mark
„Delhi Public School‟ till then, but the plaintiff, even while seeking review of the said judgment, does not appear to have agitated the said aspect
before the Division Bench and was satisfied merely with the assurance given by the defendant no.2 before the Division Bench of not using the words
„Delhi Public School‟ sequentially and even if they used the said words, they would break the sequence either by inserting a word between
„Delhi‟ and „Public‟ or between „Public‟ and „School‟.
15.In the aforesaid facts, following the principle of hierarchy of Benches, it is felt that any exercise by this Court, to now consider the entitlement of
the plaintiff to the said relief, would be in breach thereof and the decorum which the benches are required to maintain. IA No.6764/2017 and IA
No.7261/2017 are thus dismissed. I may however record that the use by the defendants of „Delhi Public World School‟ is in consonance with the
assurance given by the defendant no.2 before the Division Bench.
16.The plaintiff has also filed IA No.6759/2017 under Order XXXIX Rule 2A CPC averring that the defendants have violated the order dated 18th
April, 2016 restraining the defendants from using the trade mark / name „DPS‟ by using the trade mark „DPWS‟ which is deceptively similar to
the plaintiff‟s registered trade mark „DPS‟.
17.„DPWS‟ is acronym for „Delhi Public World School‟, to restrain the defendants from using which, the applications for
interim relief have been dismissed. In this view of the matter, no case of violation by the defendants of the order dated 18th April, 2016 by use of
„DPWS‟ is made out.
18.IA No.6759/2017 is dismissed.
19.IA No.7920/2017 has been filed by Dipsites Association for impleadment as defendant in this suit. It is pleaded in the said application that the
impleadment of Dipsites Association has become imperative in the light of the fact that the plaintiff is seeking to assert exclusive rights in the word
„Dipsite‟.
20.The application is misconceived. The plaintiff is not seeking any relief against the applicant Dipsites Association and the present lis is a lis in
personam and not in rem and the presence of the applicant Dipsites Association is neither necessary nor proper for adjudication of the matter in
controversy in the suit.
21.IA No.7920/2017 is dismissed.
CS(COMM) No.154/2016
22.List on 11th April, 2018 as already scheduled.
