Pearl Retail Solutions Pvt. Ltd. v. Pearl Education Society
2014 (58) PTC 26 (DEL)
The Plaintiff, Pearl Retail Solutions, was user of the trade mark ‘Pearl Academy of Fashion’ in respect of an educational institute since 1993. The trademark was registered in 2005 with the disclaimer of the words ‘Academy of Fashion’. The Defendant started using the word ‘Pearl’ in relation to his educational institutes in the year 2010. Plaintiff had also filed an application for registration of the word mark ‘PEARL’ per se and the said application was pending.
In Plaintiff’s suit for infringement of his trade mark, the Delhi High Court passed an ex-parte order restraining the Defendant from using the word ‘Pearl’ or any trade mark deceptively similar. The Defendant, aggrieved by the aforesaid order, made an application for vacation of the interim order.
Arguments on behalf of the Defendant:
The Plaintiff does not have exclusive right over the word ‘Pearl’, as it has been registered in favour of nine other entities and therefore, is a generic word. The Supreme Court’s judgment in Skyline Education Institute (Pvt.) Ltd. Vs. S.L. Vaswani; 2010 (42) PTC 217 (SC) was relied upon wherein it was held that the word ‘Skyline’ was a generic word because the same was being used by thousands of persons and institutions.
The Plaintiff is not entitled to injunction as Plaintiff did not disclose that the words ‘Academy of Fashion’ had been disclaimed in the registrations. Reliance was placed upon Om Prakash Gupta Vs. Parveen Kumar; 2000 (20) PTC 326 (DEL) where the Court held that the non- disclosure of the fact of disclaimer was a misrepresentation of material fact made to the Court.
By virtue of Section 17 of the Trade Marks Act, the Plaintiff cannot claim exclusive right in the word ‘Pearl’ especially when the Plaintiff’s case is based on infringement and not on passing off.
There is no chance of confusion or deception as neither the Plaintiff nor the Defendant is dealing with an ordinary man walking on the road but with intelligent species of mankind, i.e., students. The contention was based on the Bombay High Court’s judgment in ITM Trust & Ors. v. Educate India Society; 2013(1) R.A.J. 509 (Bom) that persons who would be deceived are the purchasers of the goods or services and it is the likelihood of their being deceived that would be the subject of consideration.
The Defendant is willing to confine its activities to District Bhilwara, Rajasthan. The judgment in Goenka Institute of Education and Research v. Anjani Kumar was pointed out where the Court had declined injunction as the Defendant was running his school in a confined area.
Arguments on behalf of the Plaintiff:
There is no disclaimer of the word ‘Pearl’ in any of the registrations. Therefore, the disclaimer of the other words of the registered trade mark fortifies the Plaintiff’s claim that the word ‘Pearl’ is a distinctive trade mark in respect of education and training services.
The fact that the trade mark ‘Pearl’ or a variation thereof is registered in the name of other proprietors, does not make it a generic term. Under Section 28(3) of the Act, where two or more persons are registered proprietor of trademarks which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not be deemed to have been acquired by any one of those persons merely by registration of the trademarks but each of those persons has otherwise the same rights as against other persons as he would have if he were the sole registered proprietor.
As per Section 17(2)(a)(i), a proprietor of a trade mark can claim protection on a part of a registered trade mark as a registered trade mark if it has filed a separate application for registration of that mark. In the present case, the Plaintiff has filed a separate application for the mark ‘PEARL’ and is entitled to protect the same.
The word ‘Pearl’ cannot be said to be a generic word in respect of education and training institute. A word may be generic qua a specific business or trade or industry but not across the board for all businesses or trades or industries. ‘Pearl’ is a generic word qua gems and jewellery business but not with regard to educational business as the said expression has no connection or correlation with education or training services.
Consequently, the arbitrary adoption of the word mark ‘Pearl’ with respect to services, with which it has no correlation, is entitled to a very high degree of protection, especially when the trade mark is a registered trade mark.
The judgment of Skyline Education Institute (Pvt.) Ltd. was held to be inapplicable as it related to unregistered trademarks and the parties therein had admitted that a number of other institutes were using the word ‘Skyline’ as a trade mark. Moreover, mere filing of a search report from the Trademark office does not prove that the marks mentioned in the search report are actually being used. As held in Novartis AG. Vs. Crest Pharma Pvt. Ltd., to prove the defence of a common mark, it is imperative on the part of the party who relies upon the mark of third parties to produce cogent and clear evidence of use of the said mark.
The Plaintiff had not suppressed the fact of disclaimer as certified copy of the registration certificates had been filed along with the plaint. Moreover, in view of the judgment in Om Prakash Gupta, the Plaintiff’s trade mark is limited to the parts of the composite mark which have not been disclaimed. This Court is of the opinion that in view of Section 17(2)(a)(i) of the Act in the present case the trade mark PEARL ACADEMY OF FASHION would be read as PEARL alone as ACADEMY OF FASHION has been disclaimed and the word PEARL is a subject matter of separate registration application.
Consequently, this Court is of the opinion that the plaintiff has exclusive proprietary rights in the word PEARL under Section 28(1) read with Section 17(2)(a)(i) of the Act by virtue of two registrations in its favour and non-disclaimer of mark PEARL as well as pending application with regard to the word PEARL.
The Defendant’s undertaking to confine the use of the mark to a particular district is irrelevant as the Plaintiff has the right to set up institutes all over India and the Court cannot prevent Plaintiff’s natural progression, especially when its institutes are already running in the same state of Rajasthan.
The Plaintiff being prior user and registered owner of the trade mark ‘Pearl’, in respect of education and training services, has the exclusive right to use the same.
The application of the Defendant for vacation of ex-parte order was dismissed.
Author: Aadhya, National Law University, Odisha