Delhi High Court
Ims Learning Resources Priavate … vs Young Achievers on 20 January, 2025
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 602/2018
IMS LEARNING RESOURCES PRIVATE LIMITED .....Plaintiff
Through: Mr. Vaibhav Vutts, Ms. Aamna
Hasan, Ms. Anupriya Shyam, Ms.
Aarya Deshmukh, Advocates
(M:9971576500)
versus
YOUNG ACHIEVERS .....Defendant
Through: Ms. Niddhi Akhouri, Advocate
(M:8882620960)
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
JUDGMENT
% 20.01.2025
MINI PUSHKARNA, J:
Introduction:
1. The present suit has been filed for permanent injunction seeking to
restrain the defendant from using the words “IMS” or any other mark, name
logo, monogram or label that is identical with and/ or deceptively similar to
the trademark “IMS” of the plaintiff.
2. The present suit was instituted in the year 2011 bearing no. CS(OS)
2316/2011 and was re-numbered as commercial suit bearing no. CS(COMM)
602/2018 vide order dated 08th February, 2018, passed by this Court.
3. The plaintiff and defendant entered into agreements in 2007 and 2010,
allowing the defendant to use the “IMS” trademark and proprietary materials
for a center in Meerut, Uttar Pradesh. By mutual consent, the center was
closed on 01st February, 2011, and the defendant signed an Exit Paper
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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(Agreement), agreeing to cease any use of the “IMS” trademark from that
date onwards.
4. The plaintiff is aggrieved by the user of the IMS trademark by the
defendant despite the said Exit Paper, which the plaintiff claims, is the
intellectual property of the plaintiff and defendant has been illegally
infringing the rights of the plaintiff in the said mark.
Facts of the case
5. The facts, as canvassed by the plaintiff, are as follows:
5.1 The plaintiff, i.e., IMS Learning Resources Pvt. Ltd., popularly known
as IMS, was established in 1977 by late Prof. Nagesh Raghunath Rane and
his wife, Mrs. Leela Rane. On 20th September, 1999, the plaintiff was
incorporated with Mrs. Leena N. Rane as its promoter and director.
Subsequently, the entire business of IMS, along with its goodwill and the
trademark “IMS”, was transferred to the plaintiff by Mrs. Rane vide
Agreement dated 01st November, 1999.
5.2 The plaintiff’s trademark “IMS”, derived from “Institute of
Management Studies,” has been in use since 1977 in relation to educational
courses, materials, and products and is a leading provider of coaching for
management entrance exams, particularly, the Common Admissions Test
(CAT) and other MBA-related tests like MH-CET and SNAP.
5.3 The plaintiff’s copyrighted courseware, study materials, and test series
are integral to its business operations, contributing to the success of over
40,000 students annually at prestigious institutes in India and abroad.
Further, the plaintiff operates through over 100 centers across India,
including 40 directly owned centers and others run by business partners and
franchises under mutually agreed terms.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
5.4 The plaintiff holds trademark registrations for “IMS” and its variants
across multiple Classes, including, Classes 9, 16, 35, and 41.
5.5 In addition to statutory rights, the plaintiff has established common
law rights in the IMS mark, as its goodwill is exclusively associated with the
plaintiff’s business. Any unauthorized use by third parties jeopardizes this
goodwill and reputation.
5.6 The plaintiff and defendant entered into a Service Provider Agreement
dated 01st April, 2007, followed by a Business Partnership Agreement dated
01st April, 2010. Under these agreements, the plaintiff permitted the
defendant to use its trademark “IMS” for operating a center in Meerut, Uttar
Pradesh, and provided proprietary training formats, materials, and know-
how. However, by mutual consent, the IMS Meerut center was closed,
effective from 01st February, 2011. On the same date, the defendant signed
an Exit Paper agreeing to cease using the “IMS” trademark in any manner.
5.7 The plaintiff sent a letter dated 18th March, 2011 to the defendant
stating that obligations under the said Exit Paper dated 01st February, 2011
remained unfulfilled, followed by a legal notice dated 12th April, 2011
demanding compliance with the Exit Paper. However, the defendant did not
respond.
5.8 Moreover, the defendant published a full-page advertisement on 30th
March, 2011 in Hindustan-Chak De, claiming a new image for “IMS” under
the defendant’s leadership and using phrases like “Old IMS is now more
vibrant” and “IMS Young Achievers Learning Centre.” The advertisement
also featured a modified version of the plaintiff’s IMS logo.
5.9 Aggrieved by the same, the plaintiff issued another legal notice dated
20th April, 2011 demanding removal of IMS materials and a public apology
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By:AMAN UNIYAL
Signing Date:20.01.2025
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in the Hindustan Times by the defendant. Further, the plaintiff addressed an
Email dated 21st April, 2011 to Everonn Education Ltd. and Enabilon
Learning Pvt. Ltd. (Test Funda), that the defendant is showing an association
with them, to which Enabilon’s General Manager confirmed, vide Email
dated 24th April, 2011, that the defendant’s actions were without their
consent.
5.10 Further, the defendant vide Email dated 27th April, 2011,
communicated to the plaintiff’s hundred business partners that it had signed
the Exit Paper and was no longer associated with the plaintiff, and was now
operating under the name “IMS Young Achievers”.
5.11 The defendant acknowledged the plaintiff’s ownership of the IMS
trademark but claimed to have rebranded by removing IMS logos,
introducing a new syllabus, and reducing fees. It admitted enrolling 150
students at reduced fees, leading to profits₹22,50,000
of /- and causing
damages of ₹31,50,000/- to the plaintiff.
5.12 The defendant further sought to disrupt the plaintiff’s business by
inviting its partners to join the new brand “IMS Young Achievers” and
offering 85:15 sharing ratio.
5.13 Hence, the present suit has been filed.
Submissions on behalf of the plaintiff:
6. On behalf of the plaintiff, the following submissions have been made:
6.1 The defendant has no independent rights in the mark ‘IMS’ and has
acknowledged awareness of the plaintiff’s trademarks since 1993. The
defendant operated under the name “Young Achievers” from 1998 to 2007
without using any trademark until entering into the license agreement with
the plaintiff, after which it began using “IMS Young Achievers”. TheSignature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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defendant’s reputation was built solely on the strength of the plaintiff’s
trademark.
6.2 The defendant admitted to signing the Exit Paper dated 01st February,
2011, agreeing to cease using the mark “IMS”, as recorded in court orders
dated 16th April, 2012, 10th July, 2012, and 22nd August, 2013. Despite this,
the defendant continued using “IMS” to capitalize on the plaintiff’s
goodwill, claiming it was necessary to maintain its image with students and
parents. The defendant’s continued use of “IMS Young Achievers” post
license termination, clearly seeks to mislead the public into believing an
ongoing affiliation with the plaintiff.
6.3 The actions of the defendant clearly demonstrate trademark
infringement, and passing off, leading to dilution of the plaintiff’s brand
reputation, and wrongful interference in the plaintiff’s business, causing
substantial financial and reputational harm to the plaintiff.
6.4 The malafide and dishonest intention of the defendant is evident from
the fact that the defendant has also misused trademark of third parties such
as TEST FUNDA and EVERONN. The use of the trademark IMS by the
defendant is fraught with malafide and dishonest intention to ride upon the
reputation and goodwill of the plaintiff.
6.5 The defendant cannot under any circumstances claim ownership in
the mark IMS of the plaintiff and the conduct of the defendant evidences
commercial dishonesty.
6.6 The infringing use of the mark IMS by the defendant is already
causing and is likely to cause incalculable losses to the plaintiff. The
plaintiff is suffering and likely to suffer tremendous losses and damages to
its reputation and goodwill.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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Submissions on behalf of the defendant:
7. On behalf of the defendant, it is submitted as follows:
7.1 The defendant had entered into a contractual arrangement with the
plaintiff in the year 2007 for the purpose of providing a national player for
the students in Meerut. The defendant was very popular otherwise in the city
of Meerut, much prior to the said agreement with the plaintiff.
7.2 When the defendant expressed his disagreement on revenue sharing
reduction terms, the plaintiff unilaterally terminated the agreement dated 01st
April, 2010 on 01st February, 2011, which was to conclude on 31st March,
2013, leaving the enrolled students’ future in dark. The defendant, in order
to fulfil the professional commitments made to the students, completed the
session.
7.3 The plaintiff has no exclusive rights over the word “IMS” or the term
“Institute of Management Studies”, as the said words are commonly used by
educational institutions, and hence, incapable of distinguishing the plaintiff’s
products/services from any other. The plaintiff’s trademark registrations
pertain to composite marks with specific designs, hence, the plaintiff has no
exclusive rights to the mark ‘IMS’ or ‘Institute of Management Studies’,
particularly, in view of Section 17 of the Trade Marks Act, 1999.
7.4 Post signing the Exit Paper dated 01st February, 2011, the defendant
adopted a distinct device mark, “IMS Young Achievers”, comprising unique
elements such as colours, numerals, and slogans, which sufficiently
differentiate it from the plaintiff’s trademark. Therefore, the impugned mark
of the defendant is neither identical nor similar.
7.5 The mark ‘IMS’ is an acronym, which is derived from descriptive
words ‘Institute of Management Studies’, which is commonly used by
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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various educational institutions. Therefore, the same cannot be monopolized
by the plaintiff. The said mark is widely used by various educational
institutions, including, IMS Ghaziabad, IMS Noida, and IMS Dehradun, as
evidenced by Exhibit DW7. The plaintiff has failed to establish any
secondary meaning or exclusive association of the acronym with its services.
Further, the defendant’s logo, “IMS Young Achievers”, is distinct and does
not create confusion, as the target consumers, i.e., students, are educated and
capable of distinguishing between the parties.
7.6 The plaintiff had no prior presence or goodwill in Meerut before the
Business Partnership Agreement/ Franchise Agreement dated 01st April,
2010 and has provided no evidence of damage caused by the defendant’s use
of the impugned mark. The defendant has built its reputation through years
of independent efforts and the plaintiff in fact benefited financially from the
Meerut operations, during the agreement. Additionally, the termination of
the agreement via Exit Paper imposed an unfair burden on the defendant to
continue servicing students without support from the plaintiff.
7.7 The plaintiff’s claims of passing off are baseless as the defendant’s
services were localized to Meerut, where, the plaintiff had no significant
reputation or presence.
7.8 Nobody can claim exclusive right to use any word, abbreviation or
acronym, which has become publici juris and which is used descriptively.
The plaintiff’s mark ‘IMS’ per se is a common acronym and does not
possess a word mark registration or use of any such word mark ‘IMS’.
7.9 The composite marks are to be compared as a whole, unless
individual parts are thereof registered separately. The mark of the defendant
is capable of indicating its own independent source of identity. Therefore,
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
there is no question of any likelihood of confusion or actual confusion from
the use of the defendant’s trademark. Defendant’s consumers are well
educated and qualified enough to understand the origin of source of the
special courses that are offered to the management students under the
defendant’s trademark.
7.10 The services of ‘coaching classes’ are local in nature. The plaintiff
has failed to prove that the plaintiff had acquired immense reputation/
goodwill in the territory where the defendant exists, as the plaintiff has no
existence in Meerut.
7.11 In view of the plaintiff having failed to pass any of the tests laid down
for ‘infringement’ and passing off, the suit of the plaintiff is liable to be
dismissed.
8. I have heard the learned counsels for the parties and have perused the
record.
Proceedings before the Court:
9. This Court vide order dated 19th September, 2011 granted an ex-parte
ad interim order in favour of the plaintiff and against the defendant
restraining the defendant from using the mark IMS of the plaintiff. Further,
the said order was made absolute vide order dated 23rd May, 2012.
10. This Court had also appointed a Local Commissioner vide order dated
19th September, 2011, to inspect and collect evidence of infringing acts at
the defendant’s premises. However, the defendant refused to allow the Local
Commissioner to inspect the premises, take an inventory or pictures. The
defendant also refused to produce the books of accounts for inspection by
the Local Commissioner.
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 8 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
11. The defendant had filed an application, being I.A. No. 818/2012 under
Section 8 of the Arbitration and Conciliation Act, 1996. However, the said
application was dismissed vide order dated 16th April, 2012, thereby,
holding that the Exit Paper (Agreement) dated 01st February, 2011 between
the parties superseded any previous contracts between the parties and the
arbitration clause fell within the previous contracts.
12. The said order dated 16th April, 2012 was challenged by the
defendant. By judgment dated 10th July, 2012 passed in FAO(OS) 290/2012,
the Division Bench of this Court dismissed the appeal of the defendant. The
said judgment of the Division Bench was upheld by the Supreme Court vide
judgment dated 22nd August, 2013, in Civil Appeal No. 6997/2013.
13. This Court notes that despite the injunction order, the defendant
continued to use the trademark IMS and also filed a trademark application
for registration of the trademark IMS, bearing no. 2220757 dated 17th
October, 2011. Thus, vide order dated 07th March, 2013, directions were
passed by this Court, in the following manner:
“I.A. No. 14021/2012 (u/o 39 R1 & 2 CPC)
Today learned counsel for the defendant submitted that after
defendant had been served with the notice of the order passed by this
Court in the present matter, the defendant had stopped using the
trademark of which plaintiff claims to be a registered owner. When
counsel for the plaintiff pointed out that despite the stay order the
defendant has gone ahead with the filing of an application before the
trademark authorities for getting the same trademark registered and
that also is an act of gross disobedience of the order of this Court.
While not disputing the fact that defendant has applied for
registration of the trademark in question after receipt of the stay order
of this Court, counsel for the defendant volunteered to withdraw that
application and to take necessary appropriate steps in future
depending upon the fate of the defence already taken by the defendant
in the suit at appropriate stage. It is also submitted that once thatSignature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
application before the trademark authorities is withdrawn and this
Court is informed of that fact then this Court may take up the matter
for further consideration and appropriate orders.
Let the defendant withdraw its application before the trademark
authorities as volunteered on its behalf by its counsel today. Further
consideration of this application is adjourned for 08th April, 2013 on
which date the proprietor of the defendant firm shall appear in person
along with the proof of withdrawal of its application for registration
of the trademark in question.”
14. Subsequently, the said trademark application was withdrawn by the
defendant, as noted in the order dated 08th April, 2013, which is reproduced
as under:
“I.A. No. 14021/2012 (u/o 39 R 1 & 2 CPC)
In compliance of the order dated 7th March, 2013, counsel for the
defendant today informs the defendant has withdrawn the application
which it had submitted to the trade mark authorities for registration of
trade mark in question.
Re-notify on 9th October, 2013.”
15. It is further to be noted that since the defendant was found to be
prosecuting its trademark application despite its undertaking, the plaintiff
filed I.A. No. 3265/2017 under Order 39 Rule 2A Code of Civil Procedure,
1908 (“CPC“). The said application was disposed of vide order dated 11th
May, 2017 on the statement of the defendant that the prosecution was being
carried out by the Attorneys on record, without its instructions.
16. Ten issues have been framed in the present suit vide order dated 09th
October, 2013, as follows:
“xxx xxx xxx
(i) Whether the Plaintiff is the proprietor of the trade mark ‘IMS’?
OPP
(ii) Whether the Defendant is infringing the Plaintiff’s registered trade
mark IMS? OPPSignature Not Verified
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By:AMAN UNIYAL
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(iii) Whether the Defendant is passing off the Plaintiff’s trade mark
IMS? OPP
(iv) Whether the Defendant is diluting and tarnishing Plaintiff’s well
known trade mark IMS? OPP
(v) Whether the Defendant is infringing the Plaintiff’s copy right in
the study and course material? OPP
(vi) Whether the Plaintiff is entitled to permanent injunction against
the Defendant? OPP
(vii) Whether the Plaintiff is entitled to rendition of accounts of
profits? OPP
(viii) Whether the Plaintiff is entitled to delivery up of impugned
material? OPP
(ix) Whether the Plaintiff is entitled to damages? OPP
(x) Relief
xxx xxx xxx”
17. Both the parties filed their evidence in support of their affidavit. The
cross examination of PW-1 was carried out on 16th February, 2016, 10th
February, 2017 and 30th May, 2017. Cross examination of PW-1 was
completed on 30th May, 2017.
18. The Cross Examination of DW-1 was conducted on 23rd October,
2019, 01st February, 2023 and 06th April, 2023.
Issue-Wise Findings and Analysis:
Issue No. i: Whether the plaintiff is the proprietor of the trademark
‘IMS’?
19. As per the documents and evidence on record, the plaintiff is a leading
player in management entrance test coaching, with a specific focus on
Common Admission Test (“CAT”) and mainstream MBA tests and other
state/ university level MBA entrance tests. The plaintiff also offers study
material and training for Common Law Admissions Tests, international
admissions consulting, GMAT, GRE, TOEFL, IELTS, SAT and many
others.
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 11 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
20. The plaintiff’s business is conducted through over 100 IMS centers
across the country, out of which 40 centers are owned by the plaintiff and
rest are owned by business partners. All the centers carry the name IMS
prominently.
21. The plaintiff adopted the trademark IMS in 1977 in relation to
education related courses, materials and products. The mark IMS has been
obtained from the first letters of the words ‘Institute of Management
Studies’. The trademark IMS of the plaintiff forms the dominant and
prominent portion of its trade name.
22. The plaintiff holds registrations for the mark IMS and IMS variants in
numerous classes, including, in Classes 9, 16, 35 and 41, the details of
which, are tabulated as under:
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
23. The plaintiff has filed documents and evidence pertaining to its
registrations, and propriety of the mark IMS, in its favour, that have been
exhibited and marked, and proved during the course of evidence. The said
documents are as follows:
i. Business Transfer Agreement dated 1st November, 1999 – Mark B.
ii. Profile of the plaintiff and internet extract from the website of plaintiff
along with prospectuses from the year 1991 to 2001 – Exhibit PW1/9.
iii. Internet Extract from the website of plaintiff and a list of partners
from Advance Edge 2003 – 2004 – Exhibit PW1/10.
iv. Copy of 17th December, 2003 issue of Brand Equity (Economic
Times) containing a survey of India’s Most Trusted Brands 2003, featuring
plaintiff – Exhibit PW1/11.
v. Copy of registration certificate of establishment under the Bombay
Shops and Establishments Act, 1948 indicating receipt for the shop rent
payment from the year 1979 – Mark C.
vi. Original Legal Proceeding Certificates for the registration under
Trademark no. 822490, 1421967 and 1432184 – Exhibit PW1/13.
vii. Trademark Registration Certificates for the mark IMS in various
Classes – Mark D.
24. Accordingly, the issue is decided in favour of the plaintiff and against
the defendant, holding that the plaintiff is the proprietor of the trademark
‘IMS’.
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 13 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
Issue No. ii- Whether the Defendant is infringing the plaintiff’s
registered trademark IMS?
Issue No. iii – Whether the Defendant is passing off the plaintiff’s
trademark IMS?
Issue No. iv – Whether the Defendant is diluting and tarnishing
plaintiff’s well-known trademark IMS?
25. The plaintiff and defendant entered into a Service Provider Agreement
dated 01st April, 2007. Subsequently, the plaintiff and defendant entered into
a Business Partnership Agreement dated 01st April, 2010, wherein, the
plaintiff permitted the defendant to use its trademark IMS for running a
center in the District Meerut, Uttar Pradesh, and provided the defendant with
its training formats, materials and know-how. Under the Agreement dated
01st April, 2010, the defendant had no authority to create or assume the mark
IMS. The defendant was required to maintain secrecy and confidentiality in
the information received. The defendant also acknowledged the rights of the
plaintiff in the mark IMS. The relevant clauses of the said Agreement are
reproduced, as under:
“xxx xxx xxx
6. RELATIONSHIP OF IMS AND BUSINESS PARTNER:
xxx xxx xxx
2. The Business Partner has no authority to create or assume in
IMS’s name or on behalf of IMS, any obligation, express or implied,
except as specifically provided herein: All employees hired by or
working for the Business Partner shall always be the employees of
the Business Partner in the Business Partner shall always be
deemed to be responsible for all obligations, statutory, contractual or
otherwise, towards his employees to the exclusion of IMS.
xxx xxx xxx
7. BUSINESS PARTNER’S OBLIGATION:
xxx xxx xxx
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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5. Confidentiality/IPR: The Business Partner undertakes to
preserve the secrecy and confidentiality of all information that he
may receive during the course of rendering service and shall always
protect IMS’s Intellectual Property Rights (IPR) in the databases,
materials, books, etc.
xxx xxx xxx
13. NON COMPETE CLAUSE:
The Business Partner avers that (As applicable):
1. No Director, Shareholder, employee, contractual service
provider or their family members:
2. No partner, employee, contractual service provider or their
family members:
3. Neither he, his employees or contractual service provider, nor
their family members are directly or indirectly interested in any
business or not for profit activity in direct competition with that of
IMS and The Business Partner agrees and undertakes to ensure that
neither he nor his family members shall be involved in or be
concerned with any such business or not for profit activity in direct
competition with that of IMS at any time during the currency of this
agreement and for a further period of six months thereafter.
xxx xxx xxx
18. TRADE MARKS & INTELLECTUAL PROPERTY RIGHTS:
1. Notwithstanding anything contained herein, the Business
Partner accepts and acknowledges that IMS is the exclusive owner
of all rights in the Trade Names, all registered Trade Marks and
unregistered trademarks which are associated with it’s Products
and/or Service. For the duration of this agreement, IMS grants a
non-exclusive, non-transferable, non-assignable, limited-term,
royalty-free licence to the business partner to use its Trade Marks
for the sole purposes of discharging its oligations-as-contemplated
under this agreement. The business partner shall always remain
obligated to notify IMS of any infringement of the Trade Marks or
intellectual property rights of which it becomes aware, and to provide
IMS all reasonable assistance that may be required to enforce IMS’s
Intellectual Property Rights.
2. The Business Partner states that any and all changes,
improvements, modifications, enhancements and derivative works to
the materials or books belonging to IMS suggested by them are herebySignature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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assigned by the Business Partner to IMS and IMS will exclusively own
all rights, title, and interest,
2. Additional Services: IMS may require The Business Partner to
render additional services from time to time and in that event, the
remuneration or fees for the same shall be as may be mutually agreed
upon by the parties.
3. Transfer In Students: In the case of a Student enrolled at any other
Learning centre, who has shifted his residence into the Territory and
is desirous of joining the same or similar Course at the Learning
centre, IMS may subject to the availability of seats at the Learning
centre and in consultation with The Business Partner admit him to
such Course. IMS shall pay fees on a pro rata basis to The Business
Partner in respect of all such “transfer in” students at the same rates
applicable to a regular student at the learning centre.
4. Transfer out Students: In the case of a Student enrolled at the
Learning centre, who has shifted his residence to another Territory
and is desirous of joining the same or similar Course at that Learning
centre, IMS may subject to the availability of seats at the Learning
centre and in consultation with The Business Partner admit him to
such Course. IMS shall deduct the fees paid or payable to The
Business Partner on a pro rata basis in respect of all such “transfer
out” students at the same rates applicable to a regular student at the
learning centre.
5. Authority: Both parties confirm that they have the power to enter
into this Agreement and where applicable, the sanction of their
respective governing body has been obtained in this regard.
6. Severance: In the event that any provision of this Agreement
becomes illegal by virtue of any fresh legislation or is declared by any
judicial authority to be void, voidable, illegal or otherwise
unenforceable, such provision shall be deemed to have been modified
to the extent required to render the agreement legal and valid in the
eyes of the law, or if not feasible, shall be deemed to have been
deleted and the remaining provisions of this Agreement shall full force
and effect
7. Entire Agreement: This Agreement, including all
Schedules/Annexure hereto constitutes the entire Agreement between
the parties with respect to the matters contained herein and
supersedes all prior agreements and understandings between the
parties. Neither party shall make reference to any other
communication, email, conversation, deed or writing in determining
the rights and obligations of a party under this agreement.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
8. Advertising & Publicity: IMS may formulate and carry out
advertisement and publicity campaigns for marketing its products
and services or otherwise and may require The Business Partner to
participate in such initiatives as part of his obligations. Any sums
expended by the Business Partner with the prior written approval of
IMS shall be reimbursed to him. All media, text, design, layout of
any advertisement, publicity material, poster, brochure, leaflets,
press release, etc. shall be provided by IMS.
9. Waiver: Any forbearance or waiver on the part of IMS to enforce
it’s rights under this agreement shall never be deemed to act as a
waiver of any such rights in respect of any future act(s) by The
Business Partner:
10. Notices: Unless otherwise advised in writing by a contracting
party to the other, all notices shall be delivered in writing by Courier
or Registered Post A.D. to the other party at the following addresses:
xxx xxx xxx”
(Emphasis Supplied)
26. With effect from 01st February, 2011, IMS, Meerut being run by the
defendant, was closed by mutual consent of plaintiff and the defendant. The
defendant signed an Exit Paper dated 01st February, 2011, wherein, he
agreed not to use the mark IMS in any form with effect from 01st February,
2011. The Exit Paper dated 01st February, 2011, i.e., Exhibit P-2 ( PW-1/2),
is reproduced as under:
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
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Signature Not Verified
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By:AMAN UNIYAL
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27. Since the defendant continued to use the mark IMS, the present suit
came to be filed.
28. Subsequent to the signing of the Exit Paper, the defendant started
using the mark of the plaintiff by adding suffix, as ‘IMS YOUNG
ACHIEVERS LEARNING CENTER’. The defendant got a full page
advertisement published in a newspaper on 30th March, 2011, Exhibit PW-
1/4, which is reproduced as under:
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 19 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
29. Perusal of the aforesaid advertisement, shows that the defendant
claimed that the trademark IMS now has a new image and runs under the
defendant’s independent leadership. The defendant used the terminology that
‘Old IMS is now more vibrant & more effective with new image under the
independent leadership of Mr. Love Jain’. The defendant crossed the IMS
logo of the plaintiff and used IMS in a different logo. Further, the defendant
also used the plaintiff’s trademark IMS on bottom of the advertisement
stating, ‘IMS YOUND ACHIEVERS LEARNING CENTER’.
30. It is also to be noted that the defendant sent an Email dated 27th April,
2011, Exhibit PW-1/29, to almost 100 business partners of the plaintiff,
admitting that he is no longer associated with the plaintiff and is using the
trademark IMS of the plaintiff in a new form. The said Email dated 27th
April, 2011, Exhibit PW-1/29, is reproduced hereunder:
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31. In the aforesaid Email dated 27th April, 2011, Exhibit PW-1/29, the
defendant has categorically stated that it is using the brand IMS as a
trademark, while also acknowledging that IMS is a brand of the plaintiff.
The defendant states in the said letter that it is using the name “IMS
YOUNG ACHIEVERS” after having recently left IMS LEARNING
RESOURCES PVT. LTD., MEERUT FRANCHISEE. The defendant has
also admitted that it signed the Exit Paper dated 01st February, 2011.
32. Upon reading the aforesaid Email, written by the defendant it is
evident that the defendant created its “own logo reflecting ‘IMS Young
Achievers’ backed by a full paged advertisement declaring independence by
older brand IMS”. The defendant also admitted, “I rebranded on the very
next day my centre as ‘IMS Young Achievers’ after removing all sign
boards with IMS Logo”.
33. In the said Exhibit PW-1/29, the defendant admits to reducing the fees
to ₹15,000/ – from ₹21,000/ – and has had 150 enrolments in the last two
months. The defendant also attempted to break the relationship of plaintiff’s
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business partners by stating, “I call upon all the business partners of the
plaintiff’s to join the defendant under its umbrella brand IMS Young
Achievers at a sharing ratio of 85:15 with no strings attached”.
34. This Court had appointed a Local Commissioner, who conducted the
commission on 28th September, 2011. The relevant portions of the Local
Commissioner Report dated 26th November, 2011, has been reproduced as
under:
“xxx xxx xxx
6. Upon arrival the undersigned noticed a sign-board of the
Defendant displayed outside the complex wherein the mark ‘IMS’
was displayed at two places. The size of the Board and the mark was
such that it was clearly visible and distinguishable from any other
board around. The undersigned took pictures of the said sign-board
and the same are annexed hereto and marked as Annexure ‘B’.
7. Thereafter, the undersigned along with the aforementioned
persons and the clerk of the Counsel for the Plaintiff, Mr. Mahender
went to the Third Floor of Ganga Plaza Complex, where the office
of the Defendant was situated. The undersigned noticed the mark
‘IMS’ was again displayed at 5 places. The undersigned again took
pictures of the impugned mark displayed at the entry of the subject
premises and the same are annexed hereto and marked as Annexure
‘C’.
8. Thereupon, the undersigned proceeded inside the office of the
Defendant wherein one Mr. Love Jain was present. The office of the
Defendant comprised of two rooms. The outer room had three
cubicles/work stations with computers and printers, a book shelf
wherein a number of course material, reference books and papers
containing the mark ‘IMS’ were displayed in the open. There were
various posters displayed on the walls of the said room, which also
displayed the impugned mark. Further, there was a notice board
which displayed old newspaper cuttings wherein new stickers of the
impugned mark were pasted on. The second room was set up like a
classroom wherein the impugned mark was displayed as well.
9. The undersigned served a copy of the order passed by this Hon’ble
Court on Mr. Love Jain and informed him that the undersigned has
been directed to carry out inspection of the said premises of theSignature Not Verified
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defendant, seize the infringing material and hand it back on Superdari
after making the inventory. He was also upraised that the undersigned
is also directed to sign the books of accounts of the Defendant.
10. Mr. Love Jain after reading the order of the Hon’ble Court refused
to allow the undersigned to inspect the premises or make an inventory
or take pictures of his premises. He further also refused to produce
the books of accounts for the inspection.
xxx xxx xxx”
(Emphasis Supplied)
35. Perusal of the Local Commissioner’s Report dated 26th November,
2011, shows that a sign board of the defendant was displayed outside the
complex, where the office/center of the defendant was situated, and, the
mark IMS was displayed at two places. Further, the mark IMS was displayed
at five places at the entry of the premises of the defendant. It is noted that the
mark IMS, along with a bookshelf with a number of course material,
reference books, papers containing the mark IMS, were also displayed in the
open. There were various posters displayed on the walls of the office room,
which also displayed the impugned mark. There were notice boards which
displayed old newspaper cuttings, wherein, new stickers of the impugned
mark were pasted, and the impugned mark was also displayed in the
classroom.
36. This Court notes that despite the injunction order dated 19th
September, 2011, which was made absolute on 23rd May, 2012, the
defendant continued the use of the mark IMS for nearly one year after the
injunction order. Not only did the defendant continue using the mark, it also
filed a trademark application dated 17th October, 2011 (Exhibit PW-1/5), for
the mark “IMS Young Achievers”. It was only when the plaintiff filed an
application under Order XXXIX Rule 2A CPC, bearing number I.A. No.
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14021/2012, for contempt of the orders dated 19th September, 2011 and 23rd
May, 2012, that the defendant volunteered to withdraw its trademark
application and accordingly withdrew the same.
37. Perusal of the cross-examination of the defendant shows that the
defendant was running its institute in Meerut since the year 1998, by the
name of “Young Achievers”. Further, the defendant has admitted that he was
aware of the plaintiff, having heard about the plaintiff as a student since his
graduation in 1993. The relevant portion of the cross-examination of DW-1,
Mr. Love Jain dated 23rd October, 2019, is reproduced as under:
“xxx xxx xxx
Q When was the defendant established?
A It was established in 1998 in Meerut.
Q What business are you involved since 1998?
A I am involved in training & counseling students.
Q What was the name of your establishment in 1998?
A Young Achievers
xxx xxx xxx
Q Since when are you aware of plaintiff IMS Learning Resources
Pvt Ltd?
A I heard it as a student since my graduation in 1993.
xxx xxx xxx”
(Emphasis Supplied)
38. Thus, from the aforesaid cross-examination of the defendant, it is
established that the defendant has been aware of the plaintiff’s trademark
IMS since at least since 1993.
39. The cross-examination of the defendant as DW-1 also brings to the
fore that the defendant has been calling its establishment as “IMS Young
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Achievers Meerut” since 2007. Further, the defendant has admitted that
people recognise the institute of the defendant as IMS. The defendant has
further admitted that he does not claim any rights in the trademark IMS. The
relevant extracts from the cross-examination of DW-1 dated 23rd October,
2019, is reproduced as under:
“xxx xxx xxx
Q Since 2007 what you have been calling your establishment?
A We have been calling as IMS Young Achievers, Meerut, though
people recognize it as IMS.
xxx xxx xxx
Q Do you claim rights in trademark IMS?
A No.
xxx xxx xxx”
(Emphasis Supplied)
40. During the course of his cross-examination, DW-1 also admitted that
the advertisement, Exhibit PW-1/4, meant that defendant was an independent
centre and did not have any further relationship with IMS. The defendant
admitted that the advertisement was published as a message to stop
confusion in the mind of students and parents of Meerut. The cross-
examination of DW-1 dated 23rd October, 2019 in this regard, is reproduced
as under:
“xxx xxx xxx
Q At pg385 of plaintiff’s document there is advertisement. What
is meant by this Advertisement?
A This advertisement meant that we are an independent centre
and do not have further relationship with IMS and specifically we
went into running our own operations with the help of content
partners like Test Funda and Everon. This was important as a
message to stop confusion in mind of students & parents of Meerut
only. This advertisement was limited to 5000 copies distributed with
Hindustan Times.
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xxx xxx xxx”
(Emphasis Supplied)
41. The defendant also admitted that he was aware that the plaintiff was
using the trademark IMS, before the plaintiff started using the same for his
centre. The relevant extract from cross-examination of DW-1 dated 01st
February, 2023, is reproduced as under:
“xxx xxx xxx
Question : Are you aware that the plaintiff was using the plaintiffs
Trade Mark IMS before to your use of the mark IMS ?
Answer : I was aware that the plaintiff is using the Trade Mark
IMS. (Volt. I have used it in a different context as I have used “IMS
Young Achievers” as Trade Mark and not “IMS” and the same
“IMS” mark has been used by lot of other people in the industry.)
xxx xxx xxx”
(Emphasis Supplied)
42. The defendant also admitted during the course of his cross-
examination that the defendant was licensed to use the trademark IMS by the
plaintiff during the term of the agreement. The relevant extract from the
cross-examination of DW-1 dated 01st February, 2023, is reproduced as
under:
“xxx xxx xxx
Question : I put it to you that you were licensed to use the Trade
Mark IMS by the plaintiff during the term of the agreement?
Answer : Yes, it is correct. (Volt. the initial agreement was from 2007
to 2009, where the terms and conditions were changed in year 2010 at
the time of renewal of agreement and that agreement was abruptly
terminated by the plaintiff.)
xxx xxx xxx”
(Emphasis Supplied)
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43. The defendant further admits that his clients recognise his business
and his identity is better known by the name of “IMS Young Achievers”.
The cross-examination of DW-1 to this effect dated 06th April, 2023, is
reproduced as under:
“xxx xxx xxx
Question : Do your clients recognize your business as “Young
Achievers”?
Answer : My clients recognize me by my personal name Love
Jain and as I had given up Young Achievers to IMS when I took the
franchisee so my identity is better known by the name of “IMS
Young Achievers”.
xxx xxx xxx”
(Emphasis Supplied)
44. Perusal of the cross-examination of the defendant, i.e., DW-1, clearly
establishes that the defendant has acknowledged that the mark IMS belongs
to the plaintiff and that the defendant was aware of the mark of the plaintiff
since his student days, at least since 1993. It is clear that the defendant
initially started using the mark IMS, as the defendant was licensed to use the
said mark by the plaintiff in terms of the agreements between the plaintiff
and the defendant. Therefore, use of the mark IMS by the defendant after
termination of the agreement by the plaintiff, can neither be considered as
honest nor bonafide.
45. The Exit Paper dated 01st February, 2011 (Exhibit PW-1/2) signed by
the defendant stands established, wherein, the defendant admitted that from
the date of signing the Exit Paper, the defendant was not eligible to use the
IMS brand in any form. In the Exit Paper, Exhibit PW-1/2, the defendant
agreed to stop using the mark IMS for its business.
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46. The Division Bench of this Court in the case of Morgardshammar
India Limited & Others Versus Morgardshammar AB, 2012 SCC OnLine
Del 4945, while holding that once licence is revoked, any use by the licensee
of the trademarks and trade name, would amount to infringement, has held
as follows:
“xxx xxx xxx
40. It is well settled law that once the licence is revoked, any use
by the licensee of the trademarks and trade name would amount to
infringement of the trade mark and the rights of the proprietor and
on revocation, the licensee is restrained from using the trade mark
and trade name belonging to the proprietor. We refer the following
decisions on this aspect:–
(a) In Fedders North American v. Show Line, reported in 2006 (32)
PTC 573 (DEL), it has been held that after termination of the
agreement dated 21st May, 1956, plaintiff had given right to defendant
No. 18 to use the trade mark “Fedders” for a period of five years, by
virtue of the agreement dated 11th October, 1963. It was held that
after this period came to an end in the year 1968, use of trade mark
“Fedders” by defendant No. 18 from 1968 onwards was not in line
with the rights available to the plaintiff as a registered proprietor of
trademark “Fedders”. In Velcro Industries B.V. v. Velcro India Ltd.,
reported in 1993 (1) Arb.LR 465, the facts involved were, more or
less, similar to the present case. In the said case, Velcro Industries
(plaintiff) had entered into collaboration agreement with the Indian
Directors and pursuant thereof Velcro India Ltd. (Defendant) came in
existence. Defendant was granted trademark license vide a License
Agreement which was renewed and subsequently, defendant was
permitted to use the word “Velcro” as part of its trade name.
Renewed agreement also expired on 30th September, 1986, thereafter
plaintiff called upon defendant to stop using the mark of the plaintiff
which was not complied with. Accordingly, plaintiff approached the
Bombay High Court wherein defendant was restrained from using the
mark “Velcro” as their trade name in India. It was held that after the
license expired, defendants had no right to use the same as that of
their corporate name/trade name.
(b) In Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, reported
in 1997 (17) PTC 669 (DB), this Court echoed the view expressed by
the Supreme Court in Power Control Appliances v. Sumeet Machines
Pvt. Ltd., reported in 1994 (2) SC 17 to the effect that it is a settled
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principle of law relating to trademarks that there can be only one
mark, one source and one proprietor. A trademark cannot have two
origins. It was held that after termination of the collaboration
agreement between the parties to that litigation, the appellant
therein, not the owner of the trademark, could not use the word
“Synthes” or the trademark “AO/ASIF” after revocation of the
collaboration agreement.
(c) The Division Bench in the case of J.K. Jain v. Ziff Davies,
reported in 2000 PTC 244 (DB) held that an ex licensee, having
taken the benefit of an agreement with the licensor is estopped from
resisting an application for an injunction by the licensor after
termination of the agreement between the parties.
(d) In Baker Hughes Limited v. Hiroo Khushalani, reported in 1998
PTC (18) 580, this Court held as under:–
“Permission to use the mark granted in terms of a collaboration
agreement which stipulated that the joint venture company shall be
entitled to use the name of collaborator company till the share holding
does not fall below 40% – Use of mark after the share in equity fell
below 40% – Improper – Interim injunction granted.”
xxx xxx xxx”
(Emphasis Supplied)
47. It is an admitted position that the defendant started calling itself IMS
only after getting the licence from the plaintiff. The defendant has
acknowledged that after 2007, people recognised the defendant as IMS. It is
also an admitted position that in the year 2010, defendant’s licence was
renewed by the plaintiff. Thus, it is clear that after the termination of his
licence, the defendant adopted the mark “IMS Young Achievers” solely to
free ride upon the goodwill and reputation of the plaintiff.
48. From the documents and evidence on record, it is established that the
business partnership between the plaintiff and defendant was terminated by
virtue of the Exit Paper dated 01st February, 2011. In terms of the Exit Paper,
the defendant was required to cease the use of the mark “IMS”. Instead, the
defendant issued an advertisement in the newspaper calling the defendant
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institute as “IMS Young Achievers”. The defendant in doing so adopted the
plaintiff’s mark in its entirety, thereby, misleading the students into
believing that it continues to have association/affiliation with the plaintiff,
even after termination of the franchisee.
49. Further, the advertisement, i.e., Exhibit PW-1/4, issued by the
defendant also mentions Everon and Test Funda as partners of the defendant,
whereas, they had absolutely no business relationship with the defendant.
This is established from the Emails dated 21st April, 2011 written by the
plaintiff to Everonn Education Ltd. and Enabilon Learning Pvt. Ltd. (Test
Funda) being Exhibit PW-1/27, informing them of the defendant’s
advertisement and their replies, and Exhibit PW-1/28, confirming that they
do not have any business relationship with the defendant.
50. The documents and evidence on record also establish that IMS is the
brand of the plaintiff and that the defendant is not permitted to use the brand
IMS without permission from the plaintiff. It is the admitted position by the
defendant that it was the licensee of the plaintiff and was permitted to use
the plaintiff’s mark IMS under the terms of the license entered into with the
plaintiff from 2007 to 2010 (Exhibit D1 and D2). The defendant had no
independent right in the mark IMS.
51. It is evident that the defendant started calling itself “IMS Young
Achievers Learning Centre”, which is very similar to the trading name of the
plaintiff i.e., “IMS Learning Resources Pvt. Ltd.” Clearly, even after the
licence granted to the defendant to use the mark IMS terminated, the
defendant continued using the same. The defendant issued a newspaper
publication, Exhibit PW-1/4, claiming that the trademark IMS now has a
new image and runs under the defendant’s independent leadership. The
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plaintiff used the terminology “Old IMS is now more vibrant & more
effective with new image under the leadership of Mr. Love Jain”. The
defendant in the said newspaper publication, Exhibit PW-1/4, also used
plaintiff’s trademark IMS on bottom of the advertisement, stating “IMS
Young Achievers Learning Centre”.
52. Thus, it is apparent that even after the licence granted to the defendant
to use the mark IMS was terminated, the defendant continued using the
same. The wording of the newspaper advertisement makes it clear that the
defendant was trying to create association with the plaintiff’s mark IMS and
take undue advantage of the goodwill and reputation of the plaintiff’s mark.
53. Further, on 27th April, 2011, the defendant sent an email, Exhibit PW-
1/29, to the business partners of the plaintiff, admitting that he is no longer
associated with the plaintiff and is using the trademark IMS of the plaintiff
in a new form.
54. As noted in the order dated 07th March, 2013, the defendant admitted
that the trademark application for the mark IMS was filed by the defendant
subsequent to the injunction orders passed by this Court and volunteered to
withdraw the trademark application bearing no. 2220757 for the mark “IMS
Young Achievers”.
55. In his cross-examination dated 01st February, 2023, the defendant has
stated that to safeguard its image in front of its students and parents, he
started using the mark “IMS Young Achievers”, after the termination of the
licence agreement dated 01st April, 2010, as it included his identity of
previous time, i.e., from 2007-2010, when defendant ran its business as a
franchisee of the plaintiff, and presently. Therefore, this admission by the
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defendant makes it abundantly clear that the only reason that he continued to
use IMS, was to show an association and affiliation with the plaintiff.
56. Further, the defendant during his cross-examination dated 06th April,
2023, admits that his identity is better known as “IMS Young Achievers”.
He has further admitted that he does not claim any rights in “Young
Achievers” and that the same is not his trademark. Therefore, clearly, IMS
remains the dominant part of the mark of the defendant i.e. “IMS Young
Achievers”. An ordinary consumer of average intelligence and recollection
is bound to associate the defendant’s mark with the plaintiff. This is more
so, given the previous association of the plaintiff and defendant, the students
and parents in Meerut are aware of the business relationship between the
plaintiff and defendant.
57. A pictorial comparison of the trademark of the plaintiff and the
defendant is reproduced as under:
Plaintiff’s mark Defendant’s mark
58. The aforesaid comparison shows that the defendant has subsumed the
mark IMS of the plaintiff completely in his mark, by adding suffix to the
mark of the plaintiff. Clearly, IMS remains the dominant part of the mark of
the defendant, “IMS Young Achievers”. The defendant is using the mark
“IMS Young Achievers”, which is deceptively similar to the mark IMS of
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the plaintiff. As laid down in a catena of judgments, the present issue has to
be approached from the point of view of a man of average intelligence and
imperfect recollection. Considering the overall similarity between the two
names in respect of the same description of goods/services, the same is
likely to cause deception or confusion.
59. Thus, expounding upon with the issue as to when a trademark is likely
to deceive or cause confusion, the Supreme Court in the case of Amritdhara
Pharmacy Versus Satya Deo Gupta, 1962 SCC OnLine SC 13, has held as
follows:
“xxx xxx xxx
6. It will be noticed that the words used in the sections and
relevant for our purpose are “likely to deceive or cause confusion”.
The Act does not lay down any criteria for determining what is likely
to deceive or cause confusion. Therefore, every case must depend on
its own particular facts, and the value of authorities lies not so much
in the actual decision as in the tests applied for determining what is
likely to deceive or cause confusion. On an application to register, the
Registrar or an opponent may object that the trade mark is not
registrable by reason of clause (a) of Section 8, or sub-section (I) of
Section 10, as in this case. In such a case the onus is on the applicant
to satisfy the Registrar that the trade mark applied for is not likely to
deceive or cause confusion. In cases in which the tribunal considers
that there is doubt as to whether deception is likely, the application
should be refused. A trade mark is likely to deceive or cause
confusion by its resemblance to another already on the Register if it
is likely to do so in the course of its legitimate use in a market where
the two marks are assumed to be in use by traders in that market. In
considering the matter, all the circumstances of the case must be
considered. As was observed by Parker, J., in Pianotist Co
Application [(1906) 23 RPC 774] which was also a case of the
comparison of two words.
“You must take the two words. You must judge them, both by their
look and by their sound. You consider the goods to which they are to
be applied. You must consider the nature and kind of customer who
would be likely to buy those goods. In fact you must consider all the
surrounding circumstances; and you must further consider what is
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as a trade mark for the goods of the respective owners of the
marks.” (p. 777)
For deceptive resemblance two important questions are : (1) who are
the persons whom the resemblance must be likely to deceive or
confuse, and (2) what rules of comparison are to be adopted in
judging whether such resemblance exists. As to confusion, it is
perhaps an appropriate description of the state of mind of a customer
who, on seeing a mark thinks that it differs from the mark on goods
which he has previously bought, but is doubtful whether that
impression is not due to imperfect recollection. (See Kerly on Trade
Marks, 8th Edition, p. 400.)
xxx xxx xxx”
(Emphasis Supplied)
60. The defendant is using the mark IMS in course of trade, which is
identical with the registered trademark IMS of the plaintiff. The defendant’s
manner of usage of the mark IMS, will be perceived as though the usage is
by the plaintiff. The same is bound to create association and affiliation with
the plaintiff in the minds of the consumers.
61. Holding that the question whether the two marks are likely to give rise
to confusion or not is a question of first impression, the Supreme Court in
the case of Corn Products Refining Co. Versus Shangrila Food Products
Ltd., 1959 SCC OnLine SC 11, has held as follows:
“xxx xxx xxx
18. We think that the view taken by Desai, J., is right. It is well
known that the question whether the two marks are likely to give rise
to confusion or not is a question of first impression. It is for the
court to decide that question. English cases proceeding on the
English way of pronouncing an English word by Englishmen, which it
may be stated is not always the same, may not be of much assistance
in our country in deciding questions of phonetic similarity. It cannot
be overlooked that the word is an English word which to the mass of
the Indian people is a foreign word. It is well recognised that in
deciding a question of similarity between two marks, the marks have
to be considered as a whole. So considered, we are inclined to agree
with Desai, J., that the marks with which this case is concerned are
similar. Apart from the syllable “co” in the appellant’s mark, the twoSignature Not Verified
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marks are identical. That syllable is not in our opinion such as would
enable the buyers in our country to distinguish the one mark from the
other.
xxx xxx xxx”
(Emphasis Supplied)
62. In the present case, it is evident that the mark IMS is the essential and
prominent feature of the defendant’s trademark “IMS Young Achievers”.
Thus, considering that the essential feature of the defendant’s mark is IMS,
which is also the registered trademark of the plaintiff, it is established
beyond doubt that this is a clear case of infringement of the plaintiff’s
trademark IMS. It is settled law that in cases of infringement, if the essential
features of the trademark of the plaintiff have been adopted by the
defendant, the fact that the defendant shows marked differences in the get
up, packaging and writing or marks on the goods or packets, the same would
be immaterial. Thus, the Supreme Court in the case of Kaviraj Pandit Durga
Dutt Sharma Versus Navratna Pharmaceutical Laboratories, 1964 SCC
OnLine SC 14, has held as follows:
“xxx xxx xxx
28. The other ground of objection that the findings are inconsistent
really proceeds on an error in appreciating the basic differences
between the causes of action and right to relief in suits for passing off
and for infringement of a registered trade mark and in equating the
essentials of a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark. We have
already pointed out that the suit by the respondent complained both of
an invasion of a statutory right under Section 21 in respect of a
registered trade mark and also of a passing off by the use of the same
mark. The finding in favour of the appellant to which the learned
counsel drew our attention was based upon dissimilarity of the
packing in which the goods of the two parties were vended, the
difference in the physical appearance of the two packets by reason of
the variation in the colour and other features and their general get-up
together with the circumstance that the name and address of the
manufactory of the appellant was prominently displayed on hisSignature Not Verified
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packets and these features were all set out for negativing the
respondent’s claim that the appellant had passed off his goods as
those of the respondent. These matters which are of the essence of the
cause of action for relief on the ground of passing off play but a
limited role in an action for infringement of a registered trade mark
by the registered proprietor who has a statutory right to that mark and
who has a statutory remedy for the event of the use by another of that
mark or a colourable imitation thereof. While an action for passing off
is a Common Law remedy being in substance an action for deceit, that
is, a passing off by a person of his own goods as those of another, that
is not the gist of an action for infringement. The action for
infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for the vindication of the
exclusive right to the use of the trade mark in relation to those goods”
(Vide Section 21 of the Act). The use by the defendant of the trade
mark of the plaintiff is not essential in an action for passing off, but is
the sine qua non in the case of an action for infringement. No doubt,
where the evidence in respect of passing off consists merely of the
colourable use of a registered trade mark, the essential features of
both the actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action would
also be such in an action for infringement of the same trade mark. But
there the correspondence between the two ceases. In an action for
infringement, the plaintiff must, no doubt, make out that the use of
the defendant’s mark is likely to deceive, but where the similarity
between the plaintiff’s and the defendant’s mark is so close either
visually, phonetically or otherwise and the court reaches the
conclusion that there is an imitation, no further evidence is required
to establish that the plaintiff’s rights are violated. Expressed in
another way, if the essential features of the trade mark of the
plaintiff have been adopted by the defendant, the fact that the get-
up, packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from that of
the registered proprietor of the mark would be immaterial; whereas
in the case of passing off, the defendant may escape liability if he can
show that the added matter is sufficient to distinguish his goods from
those of the plaintiff.
xxx xxx xxx”
(Emphasis Supplied)
63. It is to be seen that plaintiff’s registered mark IMS is the prominent
and conspicuous part of the defendant’s trademark “IMS Young Achievers”.
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The services provided under the impugned mark and the plaintiff’s mark, are
identical. The trading channels are also identical. Thus, the use of the
impugned mark by the defendant constitutes infringement and passing off.
64. While laying down the test for determining infringement in trademark
matters, the Division Bench of this Court in the case of Pankaj Goel Versus
Dabur India Ltd, 2008 SCC OnLine Del 1744, has held as follows:
“xxx xxx xxx
18. The Supreme Court in the case of Amritdhara Pharmacy referred
to hereinabove, held the mark AMRITDHARA to be deceptively
similar to the mark LAXMANDHARA. The Apex Court in the said
Judgment further stipulated that the issue was to be examined by
applying the test of an unwary purchaser having average
intelligence and imperfect recollection. The Supreme Court in the
said case held that even though a critical comparison of the two
names may disclose some points of differences, yet an unwary
purchaser of average intelligence and imperfect recollection would
be deceived by the overall similarity of the two products.
19. We find in the present case the Appellant’s and
Respondent/Plaintiff’s mark are not only similar but their products
are identical and are purchased by the same class of customers and
the said goods are sold through the same trading channel. In our
view the trinity of factors makes for a case for confusion and
consequently for passing off. Appellant’s subsequent adoption of a
similar mark seems prima facie dishonest and no amount of user
can cure it. In case the injunction as granted by this Court is not
continued, the use of the same mark by the Appellant is likely to
deceive the public at large.
20. In B.K. Engineering Complaint v. U.B.H.I. Enterprises
(Registered), AIR 1985 Del 210 : (1986) 5 PTC 1 (Del) (DB), a
Division Bench of this Court has held that trading must not only be
honest but must not even unintentionally be unfair. In Laxmikant V.
Patel v. Chetan Bhat Shah, (2002) 24 PTC 1 (SC), the Apex Court has
held that where there is probability even in business, an injunction
will be granted even though the defendants adopted the name
innocently.
xxx xxx xxx”
(Emphasis Supplied)
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65. The defendant is using the trademark IMS as a part of its trading name
“IMS Young Achievers Learning Centre”, in relation to identical services,
i.e., educational and coaching services. Thus, any use of a registered
trademark as a part of a trading name, would constitute infringement.
66. Further, the defendant has advertised in newspaper, Exhibit PW-1/4,
and admitted in its cross-examination that the advertisement has run in 5000
copies of the newspaper. Thus, it is apparent that the defendant has taken
unfair advantage contrary to honest practices, of the goodwill and reputation
of the trademark IMS. Moreover, the conduct of the defendant by
denigrating the trademark IMS by crossing out the brand in the newspaper,
shows that such an action is detrimental to the distinctive character and
against the reputation of the trademark IMS. Thus, the same constitutes
infringement, within the meaning of Section 29(8) of the Trade Marks Act,
1999.
67. The contention of the defendant that the plaintiff did not have any
presence in Meerut prior to agreement with the defendant in order to justify
his use of the impugned mark, cannot be accepted. The adoption of the
impugned mark by the defendant is neither honest nor bonafide. It stands
established that the defendant adopted the impugned mark only after
termination of the license agreement by the plaintiff. Besides, the defendant
has already admitted to the proprietary rights of the plaintiff in the mark IMS
during his cross-examination. Moreover, the defendant’s conduct, apart from
being dishonest, amounts to unfair trade practices, since the defendant
continued the use of the impugned mark despite the injunction order dated
19th September, 2011 passed by this Court. Further, the defendant filed
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trademark application bearing no. 2220757 for registration of the impugned
mark after the injunction was granted by this Court against the defendant.
68. Underscoring that honesty and fair play ought to be the basic qualities
in the world of business and that adoption of a mark which already belongs
to someone else, has the propensity of diverting the customers and clients of
someone else to oneself, thereby resulting in injury, the Supreme Court in
the case of Laxmikant V. Patel Versus Chetanbhai Shah and Another,
2001 SCC OnLine SC 1416, has held as follows:
“xxx xxx xxx
8. It is common in trade and business for a trader or a
businessman to adopt a name and/or mark under which he would
carry on his trade or business. According to Kerly (Law of Trade
Marks and Trade Names, 12th Edn., para 16.49), the name under
which a business trades will almost always be a trade mark (or if the
business provides services, a service mark, or both). Independently of
questions of trade or service mark, however, the name of a business (a
trading business or any other) will normally have attached to it a
goodwill that the courts will protect. An action for passing-off will
then lie wherever the defendant company’s name, or its intended
name, is calculated to deceive, and so to divert business from the
plaintiff, or to occasion a confusion between the two businesses. If
this is not made out there is no case. The ground is not to be limited
to the date of the proceedings; the court will have regard to the way
in which the business may be carried on in the future, and to its not
being carried on precisely as carried on at the date of the
proceedings. Where there is probability of confusion in business, an
injunction will be granted even though the defendants adopted the
name innocently.
xxx xxx xxx
10. A person may sell his goods or deliver his services such as in
case of a profession under a trading name or style. With the lapse of
time such business or services associated with a person acquire a
reputation or goodwill which becomes a property which is protected
by courts. A competitor initiating sale of goods or services in the
same name or by imitating that name results in injury to the
business of one who has the property in that name. The law does not
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persuade the customers or clients in believing that the goods or
services belonging to someone else are his or are associated
therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two. Firstly, honesty and
fair play are, and ought to be, the basic policies in the world of
business. Secondly, when a person adopts or intends to adopt a
name in connection with his business or services which already
belongs to someone else it results in confusion and has propensity of
diverting the customers and clients of someone else to himself and
thereby resulting in injury.
xxx xxx xxx ”
(Emphasis Supplied)
69. This Court notes that the use of the impugned mark IMS by the
defendant would be contrary to the reputation and goodwill enjoyed by the
plaintiff and such use would in all likelihood cause confusion and deception.
Thus, holding that an action of passing off lies if defendant represents his
business as being that of or connected with that of the plaintiff, a Division
Bench of this Court in the case of B.K. Engineering Co. Versus UBHI
Enterprises (Regd.) and Anr., 1984 SCC OnLine Del 288, has held as
follows:
“xxx xxx xxx
34. “B.K.” is the manufacturer’s mark of the plaintiffs. This is
seen by the public. In a “common field of activity” it is likely to
deceive prospective purchaser if the defendants are allowed to
market their product under the mark “B.K.-81”. There is likelihood
of diversion of trade from the plaintiffs to the defendants. This is an
injury against which an injunction is directed in the action of
passing off. The plaintiffs can well complain that their goodwill
suffers from an “injurious association” with the defendants’ goods.
In Harrods Ltd. v. R. Harood Ltd., (1924) 41 RPC 74 (22) the public
thought that the great, departmental store had stopped to money
lending. An action of passing off lies if one trader represents his
business as being that of or connected with that of, the plaintiff, as isSignature Not Verified
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the case here. There is a false suggestion by one competing trader in
the same line of business that his business is connected with that of
the other. This, I apprehend, would damage the reputation and thus
the goodwill of the plaintiffs’ business.
xxx xxx xxx”
(Emphasis Supplied)
70. By way of documentary evidence and evidence adduced at the time of
examination and cross-examination conducted in the present proceedings,
the plaintiff has established its goodwill, reputation in the mark IMS. The
infringement, passing off, dilution and tarnishment of its mark, by the
defendant, also stand established. Further, the business relations and use of
the mark IMS by the defendant pursuant to obtaining license from the
plaintiff also stand established. The evidence on record firmly establishes the
long usage of the mark in question by the plaintiff continuously,
uninterruptedly and openly. The various documents pertaining to the same
have been produced by way of evidence, that have been marked and
exhibited and duly proved during the course of evidence, as follows:
i. Business Partner Agreement between plaintiff and defendant dated
01st April, 2010 – Exhibit P-1 and Exhibit DW-1/1.
ii. Service Provider Agreement dated 01st April, 2007 – Exhibit DW-1/2
iii. Exit Paper executed by the defendant terminating the Business
Partnership Agreement with plaintiff effective 01st February, 2011 – Exhibit
P-2.
iv. Letter from plaintiff to defendant dated 18th March, 2011 – Exhibit P-
3.
v. Original Newspaper Advertisement of the defendant’s infringing IMS
logo in Hindustan (Hindi Edition) dated 02nd April, 2011 – Exhibit P-4.
vi. Copy of 17th December, 2003 issue of Brand Equity (Economic
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Times) containing survey of India’s Most Trusted Brands 2003 featuring
plaintiff – Exhibit PW1/11.
vii. Extracts from the website of the plaintiff where the students of
plaintiff have made it to some of the most prestigious institute in the world –
Exhibit PW1/15
viii. Letter from Institute of Chartered Accountants to plaintiff in July,
2009 for conducting orientation and educational courses – Mark E.
ix. Letter from Ministry of Minority Affairs to plaintiff approving
plaintiff’s CSR Initiative on 16th July, 2009 – Mark F.
x. Front Page of ‘Advance Edge 2003-04’, the original ‘B- School
Billboard, 2006’, The ‘MBA Career Guide – 2005’ and ‘MBA Career Guide
– 2006 – Exhibit PW1/18.
xi. Report of the Chartered Accountant indicating the details of
marketing and sales figures of plaintiff from the year 1999 – 2000 – Mark G
xii. Newspapers dating back to the year 1998 evidencing the unmatched
success of IMS for last ten years – Mark I.
71. Considering the established prior use by the plaintiff, the deceptive
similarity between the plaintiff’s mark and the defendant’s mark, and the use
by the defendant on the basis of license from the plaintiff, it is held that the
defendant’s use of the mark ‘IMS’ amounts to infringement, passing off,
diluting and tarnishing the plaintiff’s registered trademark ‘IMS’.
72. Consequently, issue nos. ii, iii and iv, are answered in favour of the
plaintiff and against the defendant.
Issue No. vi – Whether the Plaintiff is entitled to permanent injunction
against the Defendant?
73. The defendant has contended that its mark is different from that of the
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plaintiff. Further, the mark IMS is generic and that third parties are using the
said mark. These contentions are totally misplaced. Once the defendant has
acknowledged the rights of the plaintiff in the mark IMS after signing the
license agreement, it does not lie in the mouth of the defendant to state that
IMS is a generic expression, when the defendant itself has applied for the
registration of trademark “IMS Young Achievers”. (See: Automatic Electric
Limited Versus R.K. Dhawan and Another, 1999 SCC OnLine Del 27,
Para 16). Moreover, defendant has acknowledged the right of the plaintiff in
the mark IMS in the license agreement dated 01st April, 2007, Exhibit DW-
1/2, 01st April, 2010, Exhibit DW-1/1, and Exit Paper dated 01st February,
2011, Exhibit P-2/PW-1/2, including, during the course of cross-
examination.
74. It is evident that defendant’s right to use the mark IMS flows from the
license agreements with the plaintiff. Therefore, any usage of the mark IMS
by the defendant after termination of license agreement is unauthorised. The
plaintiff, has by placing cogent material on record, established its prior and
exclusive rights in the mark IMS, along with goodwill and reputation
associated with the plaintiff’s mark by virtue of extensive usage. To show
that the plaintiff’s mark IMS is generic and common to the trade, the
defendant is relying upon the search results from the Trade Marks Registry
containing the mark IMS (Exhibit DW-1/7). However, the same does not in
any way establish that the mark IMS is common to trade, as the extent of use
of such marks cannot be determined.
75. Further, the defendant has relied upon certain internet extracts
(Exhibit DW-1/7), wherein, third parties are using the mark IMS. However,
such extracts are inconclusive about the nature and extent of usage of the
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mark IMS by these third parties. Neither do the extracts have any date, nor
do they show any period of user by these parties.
76. In the absence of any evidence as to the user of the marks with the
common element, no finding can be given as to the mark IMS being
common to the trade. Thus, in the case of Corn Products Refining Co.
(Supra), the Supreme Court has held as follows:
“xxx xxx xxx
16. The series of marks containing the common element or
elements therefore only assist the applicant when those marks are in
extensive use in the market. The onus of proving such user is of
course on the applicant, who wants to rely on those marks. Now in
the present case the applicant, the respondent before us, led no
evidence as to the user of marks with the common element. What
had happened was that the Deputy Registrar looked into his register
and found there a large number of marks which had either ‘Gluco’ or
‘Vita’ as prefix or suffix in it. Now of course the presence of a mark
in the register does not prove its user at all. It is possible that the
mark may have been registered but not used. It is not permissible to
draw any inference as to their user from the presence of the marks
on the register. If any authority on this question is considered
necessary, reference may be made to Kerly p. 507 and Willesden
Varnish Co. Ltd. v. Young & Marten Ltd. [39 RPC 285 p 289] It also
appears that the appellant itself stated in one of the affidavits used on
its behalf that there were biscuits in the market bearing the marks
‘Glucose Biscuits’, ‘Gluco biscuits’ and ‘Glucoa Lactine biscuits’. But
these marks do not help the respondent in the present case. They are
ordinary dictionary words in which no one has any right. They are
really not marks with a common element or elements. We, therefore,
think that the learned appellate Judges were in error in deciding in
favour of the respondent basing themselves on the series marks,
having ‘Gluco’ or ‘Vita’ as a prefix or a suffix.
xxx xxx xxx”
(Emphasis Supplied)
77. Likewise, in the case of Pankaj Goel (Supra), the Division Bench of
this Court has held that to establish the plea of common use, the use by other
persons should be shown to be substantial. Thus, it has been held as follows:
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“xxx xxx xxx
21. As far as the Appellant’s argument that the word MOLA is
common to the trade and that variants of MOLA are available in the
market, we find that the Appellant has not been able to prima facie
prove that the said ‘infringers’ had significant business turnover or
they posed a threat to Plaintiff’s distinctiveness. In fact, we are of
the view that the Respondent/Plaintiff is not expected to sue all small
type infringers who may not be affecting Respondent/Plaintiff
business. The Supreme Court in National Bell v. Metal Goods, (1970)
3 SCC 665 : AIR 1971 SC 898 has held that a proprietor of a
trademark need not take action against infringement which do not
cause prejudice to its distinctiveness. In Express Bottlers Services
Pvt. Ltd. v. Pepsi Inc., (1989) 7 PTC 14 it has been held as under:–
“….To establish the plea of common use, the use by other persons
should be shown to be substantial. In the present case, there is no
evidence regarding the extent of the trade carried on by the alleged
infringers or their respective position in the trade. If the proprietor
of the mark is expected to pursue each and every insignificant
infringer to save his mark, the business will come to a standstill.
Because there may be occasion when the malicious persons, just to
harass the proprietor may use his mark by way of pinpricks…. The
mere use of the name is irrelevant because a registered proprietor is
not expected to go on filing suits or proceedings against infringers
who are of no consequence… Mere delay in taking action against the
infringers is not sufficient to hold that the registered proprietor has
lost the mark intentionally unless it is positively proved that delay was
due to intentional abandonment of the right over the registered mark.
This Court is inclined to accept the submissions of the respondent No.
1 on this point… The respondent No. 1 did not lose its mark by not
proceeding against insignificant infringers…”
xxx xxx xxx”
(Emphasis Supplied)
78. The defendant’s adoption and use of the impugned mark, is tainted at
inception. Admittedly, the nature of services and class of consumers which
the parties target is also the same, through which the likelihood of confusion
is bound to accrue. Thus, it is evident that the defendant seeks to bank on the
reputation and goodwill of the plaintiff. Simultaneously, the defendant is
causing an injurious association with the trademark of the plaintiff. In
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trademark law, it is a well recognized principle that even brief marks
containing letters are entitled to protection, provided they are arbitrary in
composition and uniquely identified with a single source.
79. The evidence on record makes it apparent that plaintiff’s mark IMS
has become popular in the field of education over the last four decades.
Many students of the plaintiff have cleared most difficult competitive tests
held in India, over the years. The plaintiff has been awarded numerous
accolades and awards and has been ranked high in the education sector many
times.
80. By virtue of continuous use of the mark IMS since 1977, extensive
sales, marketing expenses running into crores, and high success rates in
competitive exams, the mark IMS has attained high reputation and goodwill
all over India. In addition to the aforesaid, on account of the plaintiff’s
association with high quality of education and services, the trademark IMS
has attained a secondary meaning and significance among the relevant class
of public, in this case, students.
81. Accordingly, in view of the aforesaid detailed discussion, issue no. vi
is decided in favour of the plaintiff and against the defendant.
Issue no. vii – Whether the plaintiff is entitled to rendition of accounts
of profits?
82. The plaintiff has not pressed this issue. Therefore, issue no. vii is
decided, as not pressed.
Issue no. v – Whether the defendant is infringing the plaintiff’s
copyright in the study and course material?
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Issue no. viii – Whether the plaintiff is entitled to delivery up of
impugned material?
83. This Court had appointed a Local Commissioner, who conducted its
commission on 28th September, 2011. In its report, the Local Commissioner
stated that the mark IMS along with a book shelf with a number of course
material, reference books, papers containing the mark IMS were displayed in
the open.
84. Though during the course of his cross-examination dated 10th
February, 2017, the plaintiff witness, PW1 admitted that there was no clause
for return of the study material by the defendant in the Exit Paper, PW1/2,
this Court is of the view that once the infringement and passing off is
established against the defendant, there is no cause of action in favour of the
defendant to retain the study material of the plaintiff.
85. After the termination of the said license agreement, the defendant was
not entitled to either use the mark of the plaintiff or its study material.
86. Accordingly, issue no. viii is decided in favour of the plaintiff and
against the defendant.
87. However, it has not been established that the defendant has been using
the course material of the plaintiff for imparting education in its center after
termination of the license.
88. Accordingly, issue no. v is decided against the plaintiff and in favour
of the defendant.
Issue no. ix: Whether the plaintiff is entitled to damages ?
89. It has been established that the defendant has infringed the registered
trademark, i.e., IMS of the plaintiff. It is an admitted position that the
defendant was the licensee of the plaintiff and was permitted to use the
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plaintiff’s mark IMS, under the terms of the license entered into with the
plaintiff from 2007 – 2010.
90. It is an admitted position that the defendant was aware of the plaintiff
and its trademarks since the year 1993. The defendant commenced its
business in the year in 1998 in Meerut under the name ‘Young Achievers’
and started using the mark IMS only under license of the plaintiff.
91. It is noted that the conduct of the defendant throughout the
proceedings has been dishonest and vexatious. The defendant is guilty of
infringing the mark of the plaintiff and has continued to use the plaintiff’s
mark even after expiry of the licence agreement. The defendant continued
with its infringing activities even after the interim order dated 19th
September, 2011 was passed by this Court.
92. In the Email dated 27th April, 2011, Exhibit PW-1/29, written by the
defendant to all the plaintiff’s business partners, the defendant has
categorically stated that it is using IMS as its mark, while also
acknowledging that IMS is a brand of the plaintiff. The defendant has
admitted to reducing the fees from₹21,000/ – to ₹15,000/- in the said letter,
and that he had 150 enrolments in the last two months. The plaintiff has
₹22,50,000/
submitted that the defendant has made a profit of at least – by
reducing the fees to₹15,000/ – and thereby leading to overall damage of
₹31,50,000/-, (if calculated with 150 students enrolled at ₹21,000/-).
93. As submitted by the plaintiff, as per the defendant itself, it had
enrolled 150 students in two months, i.e., from 01st February, 2011 to 27th
April, 2011. As per the plaintiff, it is reasonable to estimate that the
defendant continued to enrol at least 10-20 students every month from 27th
April, 2011 to July, 2012, i.e., the date of contempt application. As per the
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estimate of the plaintiff, the defendant enrolled about 160-320 more students
@ ₹15,000/- per student. Thus, as per the case put forward by the plaintiff,
the defendant made profits of about ₹ 24 Lacs to ₹ 48 Lacs.
94. The table of calculation showing the revenue made by the defendant
and loss to the plaintiff, as given by the plaintiff, is as follows:
“xxx xxx xxx
84. Based upon the above calculation, therefore, the estimated
revenue made by the Defendant is at least Rs. 46,50,000/- to
70,50,000/- based upon the below calculation:
85. Likewise, the loss to the Plaintiff due to violating use of the
trademark IMS and lowering of the fees from Rs. 21,000/- to Rs.
15, 000/- is calculated as below:
xxx xxx xxx”
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95. It is to be noted that during the course of the defendant’s cross-
examination, as to the number of students enrolled, the reply of the
defendant was evasive. Further, the defendant has deposed that he started
with two students in the year 1998, and till 2007, he must have taught
around 500 to 1000 students approximately. The relevant extract from the
cross examination of DW-1, dated 01st February, 2023, is reproduced as
under:
“xxx xxx xxx
Question: Do you know the meaning of the word “impugned”?
Answer: Impugned means that something is questionable.
Question: How many students are you enrolling as of right now?
Answer: I do not want to tell as these figure are confidential.
Question: How many students have you enrolled from 1998 to
2007?
Answer: I started with two students in the year 1998 and till 2007
I must have taught around 500 to 1000 students approximately.
Question: How many students have you enrolled from 2007 to 2011?
Answer: I cannot provide this data as the data for this period is
already available with plaintiff.
Question: How many students have you enrolled from 2011 to
2013?
Answer: I do not have exact number. The number was very less
due to abrupt closure of the centre.
Question: I put it to you that you are deliberately and with
malicious intent not disclosing the number of students enrolled
during the term of the license agreement and after the
termination of license agreement as you have made significant
profits by riding on the goodwill and reputation of the plaintiffs
Trade Mark IMS?
Answer: It is incorrect.
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xxx xxx xxx”
(Emphasis Supplied)
96. To the questions as to whether the defendant maintained any books of
accounts and fee receipts of the students that have been enrolled, the answer
of the defendant was in the negative. The extracts from the cross-
examination of DW-1 dated 06th April, 2023, is reproduced as under:
“xxx xxx xxx
Question: Do you keep books of accounts?
Answer: No, I do not keep any books of accounts.
Question: How do you maintain your accounts?
Answer: It is a simple calculation of revenue and expenses that can
be seen through my income tax returns.
Question: Do you maintain fee receipts of the students that have
been enrolled?
Answer: No, I do not keep any fee receipts as we are a very small
enterprise.
Question: Do you maintain the record of the students enrolled?
Answer: No, we do not keep any records.
Question: I put it to you that it is false that fee receipts and records
of students is not maintained?
Answer: It is incorrect in current context. (Volt. In the past we used
to maintain).
Question: How do you then enrol students if you do not issue
receipts or maintain any records?
Answer: There is a verbal commitment and people trust us.
Question: Do you have an enrolment form?
Answer: Currently we do not have any enrolment form. We use to
have it in the past.
Question: I put it to you that the above statements that there is no
records maintained or enrolment form is false?
Answer: It is incorrect in current context. (Volt. In the past we used to
maintain).
Question: Do you charge fees from your students?
Answer: Yes.
Question: What is the fees that you are charging?
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Answer: For different courses the fees is different and it is
confidential.
xxx xxx xxx”
(Emphasis Supplied)
97. Thus, it is manifest that the defendant has not been forthcoming in
answering the questions relating to the number of students enrolled and the
fees being charged by the defendant.
98. This Court in the case of Koninlijke Philips N.V. and Anr. Versus
Amazestore and Ors., 2019 SCC OnLine Del 8198 has held that degree of
misconduct by defendant in a civil suit is often determinative of the nature of
relief to be granted by a court to the plaintiff. Degree of malafide conduct
has a direct impact on the quantum and nature of damages that could be
awarded. Thus, it has been held as follows:
“xxx xxx xxx
30. This Court is of the opinion that the degree of misconduct by
Defendants in a civil suit is often determinative of the nature of
relief to be granted by a Court to the Plaintiffs. The law is well-
settled that the degree of mala fide conduct has a direct impact on
the quantum and nature of damages that could be awarded in
addition to a claim for actual / compensatory damages.
xxx xxx xxx”
(Emphasis Supplied)
99. Thus, considering the facts and circumstances of the present case and
evidence on record, issue no. ‘ix’ is decided in favour of the plaintiff. The
plaintiff is held entitled to damages. The plaintiff is also held entitled to
costs. The present suit has been pending since the year 2011 and the plaintiff
has been forced to incur substantial costs in pursuing the present suit for the
last so many years. Accordingly, this Court awards an amount of ₹ 30 Lacs
(Rupees Thirty Lacs) towards costs and damages payable by the defendant
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 53 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
to the plaintiff. The same shall be paid by the defendant within a period of
four months from the date of the judgment.
Issue no. x: Relief
100. In view of the aforesaid discussion, a decree for permanent injunction
is issued in favour of the plaintiff and against the defendant, restraining the
defendant, their partners or proprietors, officers, servants, agents, their
assignees in business, dealers, and others, associated with them, from using
the mark ‘IMS’ or any other mark, name, logo, monogram or label, that is
identical with or deceptively similar to the trademark ‘IMS’ of the plaintiff.
101. Decree sheet be drawn up.
102. The present suit, along with the pending applications, is accordingly,
disposed of.
(MINI PUSHKARNA)
JUDGE
JANUARY 20, 2025
Kr/c
Signature Not Verified
Digitally Signed CS(COMM) 602/2018 Page 54 of 54
By:AMAN UNIYAL
Signing Date:20.01.2025
15:31:26
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