Notice of Motion No. 310 of 2012,Suit No. 284 of 2012

20th July, 2012

Petitioner Counsel: RAVI KADAM, ASHISH KAMAT, Ms. SNEHAL MHATRE, JITAL MEHTA, ANUJ AGRAWAL
Respondent Counsel: ARVIND CHAUDHARY, A.A. DESHPANDE

Cases Cited:
Ruston & Hornsby Ltd. Vs. The Zamindara Engineering Co., 1969 (2) SCC 727 [Para 4,10,11,13]
Durga Dutt Sharma Vs. Navratna Pharmaceuticals Laboratories, AIR 1965 SC 980 [Para 4,10,11,13,18]
Consolidated Foods Corporation Vs. Brandon & Co. Private Ltd., AIR 1965 Bom. 35 [Para 4]
Century Traders Vs. Roshan Lal Duggar & Co., AIR 1978 Delhi 250 [Para 4]
Poddar tyres Ltd. Vs. Bedrock Sales Corporation Ltd., AIR 1993 Bom. 237 [Para 4,8]
Biochem Pharmaceutical Industries Vs. Biochem Synergy Limited, Notice of Motion No.1736/92 : Suit No.1680/92 [Para 4,8]
M/s.Maxheal Pharmaceuticals (India) Vs. Shalina Laboratories Pvt. Ltd., Appeal No. 88/2005 : Notice of Motion No.2638/2004 Dt.16/2/2005 [Para 4,9]
Aktiebolaget Volvo Vs. Volvo steel, 1998 PTC 18 (DB) [Para 4]
M/s.Hindustan Pencils Pvt. Ltd. Vs. M/s.India Stationery Products Company, AIR 1990 Delhi 19 [Para 4]
Schering Corporation Vs. Kilitch Co. (Pharma) Pvt. Ltd., 1994 IPLR 1 (Bom) DB [Para 4]
National Bells Vs. Metal Goods Manufacturing Co., (1970) 3 SCC 665 [Para 4]
Pidilite Industries Ltd. Vs. S.M. Associates Pvt. Ltd., 2003 (5) Bom CR 295 [Para 4]
Ultra Tech Cement Ltd. Vs. Alknanda Cement Pvt. Ltd., 2011 (5) Bom CR 588 [Para 4]
Indian Hotels Co. Ltd. Vs. Jiva Institute of Vedic Science and Culture, 2008 (37) PTL 468 DB [Para 4]
Yonex Kabushiki Kaisha Vs. Philips International, 2007 (35) PTC 35 Del. [Para 5]
Khoday Distilleries Ltd. Vs. Scotch Whisky Association & Ors., 2008 (37) PTC 413 SC [Para 5,19]
Goenka Institute of Education and Research Vs. Anjani Kumar Goenka & Anr., 2009 (40) PTC 393 (Del.) DB [Para 5]
Alchem Laboratories Ltd. Vs.Mega International (P) Ltd., 2009 (41) PTC 302 (Del.) DB [Para 5]
Star Bazaar Pvt. Ltd. Vs. Trent Ltd. & Anr., 2010 (43) PTC 35 (Del) DB [Para 5]
Indian Institute of Human Resource Development, Madras Vs. National Institute of Human Resources Development, 1992 PTC 201 [Para 5]
Charak Pharmaceuticals (India) Pvt. Ltd. and Anr. Vs. Gelnmark Pharmaceuticals Ltd., 2007(6) ALL MR 596=2007 (35) PTC 708 Bom. [Para 5]
V. Pinchandi, Sole Proprietor Vs. G.Chakrapani Match Works, 2010(1) ALL MR 7 =2010 (42) PTC 29 Bom. [Para 5]
Shelke Bevarages Pvt. Ltd. Vs. Rasiklal Manikchand Dhariwal & Dhariwal Industries Ltd., 2010(3) ALL MR 667=2011 (45) PTC 241 (Bom) DB [Para 5]
Shubham Plywood, Rajesh Chheda, Prop. Vs. Shubham Plywood Park PK Loohda (Jain), Prop., 2011 (45) PTC 315 Bom. [Para 5]
Marico Limited Vs. Agro Tech Foods Limited, (174) 2010 DLT 279 (DB) [Para 5]
American Cyanamid Vs. Ethicon Limited, (1975) AC 396 : (1975) 1 ALL ER 504 (House of Lords) [Para 5]
S.P. Chengalvaraya Naidu Vs. Jagananth, AIR 1994 SC 853 [Para 5]
K.D. Sharma Vs. Steel Authority of India Ltd., 2008 (12) SCC 481 [Para 5]
Amar Singh Vs. Union of India, 2011 ALL SCR 1235 =2011 (7) SCC 69 [Para 5]
Skyline Education Institute (India) Pvt. Ltd. Vs. S.L. Vaswani, 2010(2) ALL MR 427 (S.C.) = 2010 (2) SCC 142 [Para 5]
Prof.Yashpal & ors. Vs. State of Chhattisgarh & Ors, 2005 (5) SCC 420 [Para 11]
J.R.Kapoor Vs. Micronix India, 1994 PTC 14-260 : 1994 SCC Supp 3 215 [Para 14]
Hiralal Prabhudas Vs. Ganesh Trading Company, AIR 1984 Bom. 218 : 1984 PTC 155 [Para 15,19]
Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558 [Para 17]

JUDGMENT

JUDGMENT :- The plaintiff No.1, which is a registered public trust engaged in educational activities and plaintiff Nos.2 and 3 who are the trustees of plaintiff No.1 Trust, have filed the present suit for infringement of their trademark, namely, "Institute of Technology and Management" and "ITM". The plaintiffs have prayed for perpetual injunction against the defendants from using the impugned marks "ITM" and "Institute of Technology and Management" and/or "ITM University". The plaintiffs have along with the suit filed notice of motion praying for order of injunction restraining the defendants from using the aforesaid marks.

2. It is the case of the plaintiffs that plaintiff No.1 was registered with the Charity Commissioner on 8th October 1993. It is their further case that after registration the plaintiffs have established various educational institutions in association with Southern New Hampshire College. It is their case that the plaintiffs, since last two decades, are conducting various education courses in the field of technology, management, hotel management etc. It is their case that the plaintiffs were notified as ITM University by Chhattisgarh Government. It is also their case that the institutions of the plaintiffs are recognized by All India Council for Technical Education (AICTE) and their courses have received accreditation. The students after passing the course from their institutions have got placements in various reputed concerns. It is their case that the plaintiffs have adopted the trademark "Institute for Technology and Management - ITM" for last several years and have made huge expenditure on advertisement and, as such, the word "ITM" has become synonymous with the plaintiffs' educational activity. It is further submitted by the plaintiffs that recently before filing of this suit, on 18th March 2010, one student desirous of seeking admission in the plaintiffs' institute for technology and management pointed out the allegations made against ITM Gurgaon. It is the case of the plaintiffs that only after the information was given by the said student the plaintiffs came to know that the defendants were using a similar and deceptive mark as that of the plaintiffs. It is submitted that the plaintiffs then issued notices to the defendants asking them to refrain from using the plaintiffs' trademark. However, since even after receipt of the notices, the defendants did not stop using the said trademark, the plaintiffs were required to file the present suit along with notice of motion.

3. Heard Shri Kadam, learned senior counsel for the plaintiffs and Shri Chaudhary, learned counsel appearing on behalf of the defendants.

4. Shri Kadam, learned senior counsel appearing for the plaintiffs submits that the plaintiffs are using the impugned trademark right from 1991. He further submits that in any case the trademark of the plaintiffs has been duly registered. He submits that as long as trademark of the plaintiffs is registered, it is not permissible for the Court to go beyond the registration and in case of infringement of the said mark an injunction must follow. The learned counsel further submits that in any case the plaintiffs are in the field of education much prior to that of the defendants and, as such, irrespective of the registration of the trademark of the plaintiffs, on the ground of prior use their trademark is liable to be protected. Learned counsel further submits that the defendants have nowhere averred as to how they adopted the trademark which they are using and, as such, the defendants with dishonest and deceptive intention are using the trademark of the plaintiffs. In reply to the contention of the defendants that since the words used in the the trademark are generic in nature the same cannot be registered, learned counsel for the plaintiffs submits that since the defendants themselves have filed suit against the University of the same name at Gwalior, notified by the Madhya Pradesh Government it is not permissible for them to raise the contention in that regard. The learned counsel relies on the following authorities:

Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., 1969 (2) SCC 727; Durga Dutt Sharma v/s Navratna Pharmaceuticals Laboratories, AIR 1965 SC 980; Consolidated Foods Corporation v. Brandon & Co. Private Ltd., AIR 1965 Bombay 35; Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Delhi 250; Poddar tyres Ltd. v. Bedrock Sales Corporation Ltd., AIR 1993 Bombay 237; Biochem Pharmaceutical Industries v. Biochem Synergy Limited (Notice of Motion No.1736/92 in Suit No.1680/92); M/s.Maxheal Pharmaceuticals (India) v. Shalina Laboratories Pvt. Ltd. [Appeal No. 88/2005 in Notice of Motion No.2638/2004 (unreported)]; Aktiebolaget Volvo v. Volvo steel, 1998 PTC 18 (DB); M/s.Hindustan Pencils Pvt. Ltd. v. M/s.India Stationery Products Company, AIR 1990 Delhi 19; Schering Corporation v. Kilitch Co. (Pharma) Pvt. Ltd., 1994 IPLR 1 (Bom) DB; National Bells v. Metal Goods Manufacturing Co., (1970) 3 SCC 665; Pidilite Industries Ltd. v. S.M. Associates Pvt. Ltd., 2003 (5) Bom CR 295; Ultra Tech Cement Ltd. v. Alknanda Cement Pvt. Ltd., 2011 (5) Bom CR 588; Indian Hotels Co. Ltd. v. Jiva Institute of Vedic Science and Culture, 2008 (37) PTL 468 (DB).

5. Shri Choudhary, learned counsel for the defendants, on the contrary, submits that as a matter of fact, the user by the defendants of the trademark "ITM University" is much prior to that of the plaintiffs. It is submitted that the claim of the plaintiffs that plaintiff No.1 is university is itself without any basis. It is submitted that the plaintiff No.1 has claimed to be university under the Chhattisgarh University Act. However, the said Act has been struck down by the Apex Court and, as such, the plaintiff No.1 cannot claim to be a university. It is further submitted that the plaintiffs' claim is fraudulent and, therefore, the plaintiffs are not entitled to any equitable reliefs. He submits that the defendant is the first autonomous college established in the State of Haryana, running from the year 1996 and now, in view of the notification dated 21st October 2009 issued by the State of Haryana, it is the first autonomous university in the State of Haryana. Learned counsel further submits that the defendants are running various courses like MTech, MBA, BBA, LLM, BBA-LLB and 7,500 students are taking education in the defendant society. It is submitted that the defendant university has a large campus at Gurgaon having various facilities for the students. It is submitted that the defendant is a university as notified by the Haryana Government under the provisions of the Haryana Private Universities Act, 2009 whereas the plaintiff No.1 is only an institute recognised by a nonstatutory body. He submits that the perusal of the list of universities approved by the University Grant Commission (UGC) would reveal that defendant's name is found in the said list whereas the plaintiff's name is not found there. He submits that from the perusal of documents relied upon by the plaintiffs themselves, it would reveal that the plaintiff No.1 is not an university but only an institute. Learned counsel further submits that there are various institutes running in the country having the words "Institute of Technology and Management" as part of their name. He, further submits that the plaintiffs cannot claim monopoly over these words. Shri Choudhary, in the alternative, submits that both plaintiffs and defendants are bonafide concurrent users of the trademark and, as such, the plaintiffs are not entitled to the injunction as prayed for. Learned counsel relied on the following judgments:

Yonex Kabushiki Kaisha v. Philips International, 2007 (35) PTC 35 (Del.); Khoday Distilleries Ltd. v. Scotch Whisky Association & Ors., 2008 (37) PTC 413 SC; Goenka Institute of Education and Research v. Anjani Kumar Goenka & Anr., 2009 (40) PTC 393 (Del.) DB; Alchem Laboratories Ltd. v. Mega International (P) Ltd., 2009 (41) PTC 302 (Del.) DB; Star Bazaar Pvt. Ltd. v. Trent Ltd. & Anr., 2010 (43) PTC 35 (Del) DB; Indian Institute of Human Resource Development, Madras v. National Institute of Human Resources Development, Madras, 1992 PTC 201; Charak Pharmaceuticals (India) Pvt. Ltd. and Anr. v. Gelnmark Pharmaceuticals Ltd., 2007 (35) PTC 708 (Bom) : [2007(6) ALL MR 596]; V. Pinchandi, Sole Proprietor v. G.Chakrapani Match Works, 2010 (42) PTC 29 (Bom) : [2010(1) ALL MR 7]; Shelke Beverages Pvt. Ltd. v. Rasiklal Manikchand Dhariwal & Dhariwal Industries Ltd., 2011 (45) PTC 241 (Bom) DB : [2010(3) ALL MR 667]; Shubham Plywood, Rajesh Chheda, Prop. v. Shubham Plywood Park PK Loohda (Jain), Prop., 2011 (45) PTC 315 (Bom); Marico Limited v. Agro Tech Foods Limited, (174) 2010 DLT 279 (DB); American Cyanamid v. Ethicon Limited, (1975) AC 396 = (1975) 1 ALL ER 504 (House of Lords); S.P. Chengalvaraya Naidu v. Jagananth, AIR 1994 SC 853; K.D. Sharma v. Steel Authority of India Ltd., 2008 (12) SCC 481; Amar Singh v. Union of India, 2011 (7) SCC 69 : [2011 ALL SCR 1235]; Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, 2010 (2) SCC 142 : [2010(2) ALL MR 427 (S.C.)].

6. With the assistance of learned counsel for the parties I have gone through various documents placed on record so also various judgments cited in support of rival contentions.

7. In so far as various judgments which are relied on by learned counsel for the plaintiffs on the point that when the impugned mark is found to be identical to the mark of the plaintiff, the Court cannot inquire further and it is the duty of the Court to protect the statutory rights are concerned, there cannot be any quarrel with the said proposition and, as such, I do not find it necessary to refer to the various judgments cited in that behalf.

8. In so far as issue as to whether the Court can go beyond the validity of the registration of the trademark or not while considering an application for an injunction is concerned, there appears to be some difference of opinions between this Court and the Delhi High Court. The learned single Judge of this Court in Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. (supra) has observed thus:

"41. ....... Whatever the worth of said application, it is not possible to accept the contention that such an application can prevent the registered proprietor from asserting his rights as registered proprietor of the trade mark under S.28 of the Act as long as the trade mark continues on the register. The short answer to the contention is contained in the judgment of Justice Vimadalal of this Court in H8ndustan Embroidery Mills Pvt.Ltd. v. K.Ravindra and Co., (1974) 76 Bom LR 146, wherein the learned Judge pointed out that it is not the practice of this Court to consider the validity of the registration of a trade mark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While a mark remains on the register (even wrongly), it is not desirable that others should imitate it. I am unable to accept the contention that the pendency of the rectification application prevents the plaintiffs from exercising the statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon."

Similar view has been taken by another single Judge of the Court in Biochem Pharmaceutical Industries v. Biochem Synergy Limited (Notice of Motion No.1736/92 in Suit No.1680/92) dated 12th March 1997.

9. The Division Bench of this Court vide judgment and order dated 16th February 2005 in Appeal No.88/2005 in Notice of Motion No.2638/2004 in Suit No.2663/2004 (M/s.Maxheal Pharmaceuticals (India) and anr. v. Shalina Laboratories Pvt.Ltd. and ors.) has observed thus:

"6. Mr.Tulzapurkar also submitted that the mark was earlier registered in the name of American Remedies and having regard to the fact that in the examination report the said mark (American Remedies) was cited as conflicting mark there is reason to believe that the respondents managed to get registration by fraud and misrepresentation. The answer to this contention is contained in the judgment of Justice Vimadalal of this Court in Hindustan Embroidery Mills Pvt Ltd vs K Ravindra and Co (l974) 74 Bom L R, l46,wherein the learned Judge pointed out that it is not the practice of this court to consider the validity of registration of a trade mark on a motion for interlocutory reliefs taken out by the person who has got the mark registered in his name. While a mark remains on the register (even wrongly), it is not desirable that others should imitate it. Moreover the respondents have already applied for rectification of the registration in favour of the American Remedies."

Though somewhat different view is taken by the Delhi High Court, sitting as a single Judge of this Court, I would be bound by the view taken by the Division Bench of this Court and, as such, it will have to be held that once the mark is registered the injunction should be granted.

10. For appreciating the rival submissions and deciding the issue in question, it will be necessary to refer to the judgments of the Apex Court in the case of Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. and Durga Dutt Sharma v. Navararatna Pharmaceuticals Laboratories (both cited supra). The Apex Court, in the case of Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. (supra), has observed thus:

7. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. (emphasis supplied)

It is also relevant to reproduce the observations of the bench of the Apex Court consisting of three Hon'ble Judges in the case of Durga Dutt Sharma v. Navararatna Pharmaceuticals Laboratories (supra)

"28. ......... 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 s. 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 limitation 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 use of the defendant's mark is likely to deceive, but were 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 make 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.

29.When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide s. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, in deceptively similar. This has necessarily to be ascertained by a comparison of the two marksthe degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

30. The mark of the respondent which he claims has been infringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the respondent claimed was a colourable limitation of that mark is 'Navaratna Pharmacy'. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part of feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer in regard to that word by the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna'. Even otherwise, as stated in a slightly different context : (Kerly on Trade Marks 8th Edn. 407)

"Where common marks are included in the trade marks to be compared or in one or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common". (emphasis supplied)

11. In view of the aforesaid legal position as laid down by the Apex Court in the case of Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. (supra) and Durga Dutt Sharma v. Navararatna Pharmaceuticals Laboratories (supra), I have examined the facts in the present case. Undisputedly, the plaintiffs so also the defendants are engaged in the field of imparting higher education. As contended by the plaintiffs, the plaintiffs are running various courses in the faculties of management, health sciences, hospitality, culinary, fashion designing, financial markets and engineering. From the material placed on record by the plaintiffs, it would reveal that the plaintiffs have registered their mark on 8th October 1993. Material is placed on record to show that the plaintiffs have purchased books from 1993. Material is also placed on record to show that the plaintiffs have started PGDBA (MBA) from the year 1992. Material placed on record would show that name given by the plaintiffs to their institution is "Institute of Technology and Management". Material on record would also reveal that plaintiff No.1 was notified as private university under the provisions of the Chhattisgarh Private Universities Act. However, it is to be noted that in view of the judgment of the Apex Court in the case of Prof.Yashpal & ors. v. State of Chhattisgarh & Ors, 2005 (5) SCC 420, the said Act was struck down and as a consequence of which the universities established under the said Act including that of plaintiff No.1 ceased to exist. No doubt, the plaintiffs have placed on record a copy of the notification dated 3rd February 2012 issued by the Chhattisgarh Government under the provisions of Chhattisgarh Private Universities (Establishment and Operation) Act, 2005 whereby the ITM University has been recognised. The perusal of the said notification would reveal that the said permission has been granted in favour of the ITM University which is said to have been registered on 13th August 2003 under the Firms and Societies Registration Act, 1973 having its head office at village-Uparwara, tehsil-Abbhanpur of Raipur district in Chhattisgard State. From the perusal of pleading in the plaint, it would reveal that the plaintiff No.1 has been registered at Mumbai on 8th October 1993. The perusal of the said notification would also reveal that the jurisdiction of the said university is Chhattisgarh. It is therefore doubtful as to whether the said notification is in favour of the plaintiffs or not. However, for the purpose of the present dispute I do not think that much would turn on it, inasmuch as present case is a case of infringement of trademark.

12. Undisputedly, the defendants are also engaged in the field of education. The defendants have started running their educational institute from the year 1996. The defendants are also running various courses in the field of technology, management, law etc. The perusal of record would reveal that the courses conducted by the defendants are duly recognised by AICTE for last several years. The defendant is also notified as private university by the Haryana Government under the provisions of the Haryana Private Universities Act vide notification dated 21st August 2009 in the name of ITM University at Gurgaon. Perusal of material would also reveal that UGC has included the name of the defendant in the universities approved by it.

13. In this factual background and in the light of law laid down by the Apex Court, the present motion will have to be decided. It has been held by the Apex Court in the case of Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. (supra) and Durga Dutt Sharma v. Navararatna Pharmaceuticals Laboratories (supra) that where defendant's mark is so similar and close either visually, phonetically or otherwise and the Court reaches to the conclusion that there is an imitation, no further evidence is required that the plaintiffs' rights are violated. It has further been held by the Apex Court that when once the use by the defendant of the mark, which is claimed to infringe the plaintiffs' mark, is shown to be "in the course of the trade" then, the question whether there has been any infringement has to be decided by comparison of two marks. It has been held that where two marks are identical no further question arises and the case of infringement is made out. However when two marks are not identical, the plaintiff will have to establish that mark used by the defendant nearly resembles the plaintiff's registered trademark as is likely to deceive or cause confusion in relation to which it has been registered. As held by the Apex Court, relying on the the observations of Kerly on Trade Marks, 8th Edn. in such a case the proper course is to look at the marks as whole and not to disregard the parts which are common.

14. It would also be relevant to refer to the judgment of the Apex Court in the case of J.R.Kapoor v. Micronix India, 1994 PTC 14-260 : 1994 SCCSupp 3 215. In the said case, the plaintiff who was the owner of the registered trademark MICRONIX had filed a suit against the defendant under the trade name MICROTEL. The High Court had granted injunction. In appeal against the order of injunction the Apex Court observed thus:

"6. ... Thus microchip technology being the base of many of the products, the word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of microchip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix 'micro' in the trade name. Once, therefore, it is held that the word 'micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be primafacie decided at this stage is whether the words 'tel' and 'nix' in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, even the visual impression of the said two trade names is different. In the first instance, the respondent's trade name 'MICRONIX' is in black and white in slimmer letters and they are ensconced in designs of elongated triangles both above and below the said name. On the other hand, the appellant's trade name 'MICROTEL' is in thick bold letters in red colour without any design around. As regards the logo, the respondent's logo consists of the word 'M' in a slim letter with 'I' sporting a dot on it and drawn in the well of 'M'. Below the letter 'M' in small letters is written word 'MICRONIX' and all these letters and words are wrriten in white in a black square in northsouth direction. As against this, the appellant's logo is one letter, vi?.., 'M' which is drawn in bold board letter with its left leg sllimmer than all other parts which are in thick board brush. The letter has also white lines drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore, unable to see how the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is no even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both the trade names and the logos.

7. The learned Counsel for the respondentplaintiff contended that on the carton the same address, viz., "New Delhi - 110020" has been given by the appellant. We are unable to understand how anybody can claim the two cartons inasmuch as the respondentplaintiff's carton mentioned the words "MODEL TB-212 (INDOOR TYPE)" WHILE THE APPELLANT HAS ALSO MENTIONED THE WORDS "model mt-212 (Indoor Unit)". Hence, he submitted that there was a resemblance between the two descriptions. He then submitted that whereas the respondentplaintiff had mentioned the words "Best for Colour, Black and White TVS and FM Radios" with a black rectangular background of the workd 'White' before the words, "TVs and FM Radios", the appellant has also mentioned words "For Colour/Black and While TVs and FM Radios". Again, we do not find that the manner in which the said words are written by both the parties on their respective cartons are likely to misguide or confuse the buyers. This is apart from the fact that whereas the respondentplaintiff's carton is in black and white the appellant's carton is fully in colour.

8. Hence we allow the appeal and set aside the impugned order of the High Court. It is made clear that the observations made above are only for deciding whether the appellant should be restrained from using the trade mark, the logo and the carton, at this interim stage. The High Court will not be precluded from coming to a different conclusion at the final hearing on perusing the entire evidence before it. The costs will be the costs, in the cause." (emphasis supplied)

15. The Division Bench of this Court in the case of Hiralal Prabhudas v. Ganesh Trading Company, AIR 1984 Bom. 218 = 1984 PTC 155 has observed thus:

5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure phonetic simitant and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (I) overall similarity is sufficient. In addition indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.

16. The documents placed on record by the plaintiffs would reveal that various advertisements issued by the plaintiffs are in the name of Institute of Technology and Management. No doubt, in some advertisements the word ITM is also used. In the present case, we are only concerned with Class41 which deals with education services. In this class, the plaintiffs have two registered trademarks, first is in the name of "ITM - Institute of Technology and Management" and second in the name of "IHMCT". It will also be appropriate to reproduce the said marks.

It would thus be seen that the first mark that though it has alphabets ITM in the smaller circle, in the bigger circle the words "INSTITUTE FOR TECHNOLOGY & MANAGEMENT" are printed. So also at the bottom of the word ITM the words "INFORMATION IS LIFE" and below that figure "1991" are also printed. In so far as second trademark of the plaintiffs is concerned, inside the circle in a smaller font alphabets "itm" are printed and below that in bigger font alphabets "IHMCT" are printed. Surrounding this in a semicircle on the upper side the words "INSTITUTE OF HOTEL MANAGEMENT & CATERING TECHNOLOGY" are printed and below that words "ITM UNIVERSITY" are printed. It can, thus, clearly be seen that in so far as the first mark which is issued on 19th January 2007 is concerned, the word University is not written and the word ITM is combined with the words "INSTITUTE FOR TECHNOLOGY & MANAGEMENT" and "INFORMATION IS LIFE" and figure "1991". Whereas, so far as the other mark which is issued on 11th October 2006 is concerned, what is predominantly printed is IHMCT. No doubt, in the outer side the words "ITM UNIVERSITY are printed, however, these words are combined with the words "INSTITUTE OF HOTEL MANAGEMENT & CATERING TECHNOLOGY".

17. As against this the trademark which is used by the defendants is thus:

It can, thus, be seen that the defendants' trademark uses the words "itm UNIVERSITY" and below that, three words "INDEPENDENT - INNOVATIVE - INSPIRING" are printed. Above all these, there is a distinctive logo. It can, thus, clearly be seen that there is no similarity of whatsoever nature in the registered trademark of the plaintiffs with that of the trademark which is used by the defendants. Whereas in one of the trademarks of the plaintiffs, alphabets "itm" are combined with the words "INSTITUTE FOR TECHNOLOGY & MANAGEMENT", "INFORMATION IS LIFE" and figure "1991", in the other trademark though in smaller font it is printed as "ITM UNIVERSITY" but in bigger font alphabets IHMCT are printed and, that too, combined with the words "INSTITUTE OF HOTEL MANAGEMENT & CATERING TECHNOLOGY". Perusal of the registration of the plaintiffs' mark dated 11th October 2006 (page 192 of the plaint) would reveal that mark, in fact, is registered in the name of "itmIHMCT". At this stage it would be relevant to refer to provisions of Section 17 of the Trade Marks Act which reads thus:

"S.17 (1) When a trade mark consists of several matters, its registeration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in subsection (1), when a trade mark--

(a) contains any part---

(i) which is not the subject of a separate application by the proprietor for registeration as a trade marks; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a nondistinctive character.

The registeration thereof shall not confer any exclusive right in the matter forming only a part of the whole or the trade mark so registered."

It will also be relevant to refer to para 14 of the Judgment of Apex Court in the case of Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd. {AIR 1955 Supreme Court 558} which reads thus:

"14. It is true that where a distinctive lable is registered as a whole, such registeration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in - 'Pinto v. Badman', 18918RPC 181 at p191 (J):

"The truth is that the label does not consist of each particular part of it, but consists of the combination of them all."

Observations to the same effect will be found also in - 'In re Apollinaris Company's Trade Marks', 18912 Ch 186 (K), ' In re SmokelessPowder Co. (F) (supra)', ' In re Clement and Cie Trade Mark', 19001 Ch 114 (L) and - 'In re Albert Baker and Company (B) (supra)' and finally in the Tudor case (H), referred to above which was decided by Sargant, J. This circumstance, however, does not necessarily mean that in such a case disclaimer will always be unnecessary. It is significant that one of the facts which give rise to the jurisdiction of the tribunal to impose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registeration of the mark as a whole does not confer any statutory right with respect to that part."

From the perusal of the aforesaid oobservations of the Apex Court it is clear that when a distinctive label is registered as a whole, such registeration would not give any exclusive statutory right to the Proprietor of the Trade mark to the use of any particular word or name contained therein apart from the mark as a whole. I have already reproduced the trade mark as a whole which have been registered in favour of the plaintiff. It can be seen that in the first mark only words ITM are common with words used in the mark of the defendaants whereas insofaras the second mark is concerned, words ITM and University are common in the trade mark of the plaintiff and that of the defendant. However, as held by the Apex Court the Registration of mark as a whole would not confer any statutory right in favour of the plaintiff with respect to parts of words used in a mark which is registered as a whole. In that view of the matter, I find that merely because the Alphabets ITM which is used in both the registered trade marks of the plaintiff and word University which is used in the second trade makr of the plaintiff are also found in the defendant's trade mark, cannot be a ground to hold that a primafacie case is made out by the plaintiff for infringement of its statutory rights.

18. As already discussed hereinabove, it is not in dispute that both the plaintiffs and the defendants are engaged in the filed of education services and, as such, the use of mark by the defendants will have to be construed in the course of the trade. As already discussed hereinabove, I find that there is no similarity in the marks used by the plaintiffs and that of defendants. In that view of the matter and in view of law laid down by the Apex Court in the case of Durga Dutt Sharma v. Navararatna Pharmaceuticals Laboratories (supra) it will be for the plaintiffs to establish that the mark used by the defendants is so nearly resembling the plaintiff's' registered trademark as is likely to deceive or cause confusion in relation to the services in respect of which it is registered. On visual comparison of the marks of both plaintiffs and defendants, I prima facie find that it cannot be said that the mark used by the defendants is of such a nature which can deceive or cause confusion. As held by the Apex Court in the aforesaid case, the persons who would be deceived are the purchasers of the goods or services and it is likelihood of their being deceived would be the subject of consideration.

19. As held by the Division Bench of this court in the case of Hiralal Prabhudas (supra), some of the factors which are to be taken into consideration are nature of the commodity; class of purchasers; mode of purchase; and other surrounding circumstances. Undisputedly, both the plaintiffs and the defendants are catering to the educated classes, inasmuch as both of them are running courses for higher education. As held by the Apex Court in the case of Khoday Distilleries Ltd. v. Scotch Whisky Association, 2008 (37) PTC 413 SC, where class of buyers is an educated one the test to be applied would be different than the one where the product would be purchased by the villagers, uneducated and poor people. Assuming for the sake of argument that there may be some similarities in the marks of the plaintiff and defendant, it is difficult to believe that in the present era, the students seeking admission for higher education would be confused or deceived by any similarities in the trademarks of the plaintiffs and the defendants. The students who are seeking higher education, who are required to make investment of a substantial amount for their higher studies, are bound to make enquiries regarding credentials of the institutes concerned. In today's era of advanced technology, the information of the institutes is easily available on the internet. The students before taking decision would apply their mind to the suitability of the institute on the basis of information available, since it will be an important decision pertaining to their career. In this background it is difficult to believe that the students would be misguided or confused by the trademark either of the plaintiffs or of the defendants.

20. It is, however, pertinent to note that both the plaintiffs as well as the defendnats have applied for registration of trademarks in the name of "ITM University". The application of the plaintiffs is of 22nd June 2010 whereas that of the defendnats is of 1st April 2010. It is, thus, clear that the defendants' application for registration for "ITM University" is prior to that of the plaintiffs. If the plaintiffs are of the opinion that they are absolute owners of the trademark ITM and, such, defendants cannot use the trademark ITM University, then there was no necessity on behalf of the plaintffs to make an application for registration of the trademark in the name of "ITM University".

21. The contention of the plaintiffs that they have recently came to know that the defendants are running institute in the name of ITM, when one student desirous of taking education in their institute brough to their notice the adverse newsreports pertaining to the defendants, is also totally unbelievable. The courses conducted by the defendant are duly approved by AICTE for a period of not less than a decade. It is well known that list of the colleges approved by AICTE is widely published and known to one and all at least in the same field. The plaintiffs are also in the education field and it is, therefore, difficult to believe that though defendants' courses are duly approved by AICTE for a period of more than a decade the plaintiffs were not aware of the existence of the defendant. Since I find that there is no similarity in the trademarks of the plaintiffs and the defendants and, in any case, no such similarity which would deceive or create confusion in the mind of the users of the services rendered by the plaintiffs and the defendants, I am of the considered view that plaintiffs have failed to make out a prima-facie case.

22. At this stage, I do not think it necessary to go into the larger question as to whether monopoly can be created in favour of someone for using the trademark which is derived from common generic and descriptive trade or service in which the user of the trademark is engaged in. At the same time I do not think it necessary to go into the question raised by the defendants as to whether plaintiff No.1 is an university or not and that even as per the notification issued by the State of Chhattisgarh dated 3rd February 2001, the plaintiff No.1 is not a trust which has been granted permission to open the university, but it is some other trust registered in Uparwara village of Abhanpur taluka in Raipur district of Chhattisgarh State.

23. I am aware about the law laid down by this Court that once a case of infringement of trademark is made out the factors regarding balance of convenience and irreparable injury would not be germane. As already discussed hereinabove I have held that theer are no similarities in the registered trademark of the plaintiffs and trademark used by the defendants. In tht view of the matter, I find that the consideration of balance of convenience and irreparable injury would also be relevant in the present matter. As already stated hereinabove, more than 7, 000 students are taking education in various institutes run by the defendants. The institutes of the defendants are duly approved by UGC, the Government of India, AICTE and the Bar Council of India etc.. The defendant university is established under the Haryana Private Universities Act and, if any injunction as sought is granted, it would prejudice the career of the students who are bonafide taking education in the institutes which are duly approved by various competent authorities. As against this, if injunction is not granted, the plaintiffs can always be compensated in the monetary terms, if they establish that due to the use of the impugned trademark by the defendants they have sustained any damages. In any case, the perusal of the advertisements issued by the defendants clearly state " We have no other branch or campus in India". It is thus clear that the defendants have themselves declaeered that they do not have any sort of relationship with the educational institute having similar name. As such the interest of the plaintiff is sufficiently safeguarded.

24. In the result, I do not find any case is made out by the plaintiffs for grant of injunction as prayed for. The notice of motion is, therefore, rejected.

Ordered accordingly.