Delhi High Court directs school chain in Punjab, Haryana to change its name for infringing Delhi school's mark 'The British School'

The Delhi High Court on Monday directed a school chain operating in Punjab and Haryana not to use the name of a prominent Delhi school, ‘The British School’ [The British School Society v Sanjay Gandhi Educational Society and Anr]..Justice Prathiba M Singh held that appropriation of the mark ‘The British School’ by the defendant school chain was with the intention to cause misrepresentation and confusion to the public.“This Court has no doubt in concluding that continued use of the mark ‘The British School’ for schools of Defendants would constitute misrepresentation in the course of rendering educational services to the effect that Defendants’ schools are in some way connected or affiliated with the Plaintiff. Further, such continuous use may cause irreparable prejudice and damage not merely to the Plaintiff’s goodwill alone but to various students who may be enrolled and studying in the said school,” the Court said. .The Court was dealing with a petition filed by the British School Society (plaintiff) against Sanjay Gandhi Educational Society (defendants) which runs a chain of schools in places like Panchkula, Mohali, Chandigarh and Ferozepur.In the same petition, the Court had passed an ex-parte ad interim injunction against the defendants on October 12, 2021 restraining them from using the mark ‘The British School’ or any other mark deceptively similar to plaintiff’s mark, till further orders.Thereafter, an application for the modification of the order was filed by the defendants and through an order of December 22, 2021, concession was given by the Court to the defendants to comply with the injunction order till the end of the academic session of 2021-22 on the condition that defendants will not advertise the admission for the next session under the name ‘The British School.An application was also filed by the defendants seeking vacation of injunction.The court was told that The British School was set up in the year 1963, by a group of British parents, supported by the British High Commissioner to India with the aim of serving the diplomatic and expatriate community. ‘The British School’ operates under the aegis of the plaintiff society with the British High Commissioner to India as its President, the court was told.It was argued that the mark ‘The British School’ is registered in favour of the plaintiff in respect of services related to education, schools, colleges, etc. However, a condition to the effect that the registration of the said mark shall give no right to the exclusive use of ‘The British School’ was attached to the trade mark registration..Justice Singh has now noted that the colonial influence on the education system in India has taken a distinct dimension in the present case wherein the mark involved has reference to the British.The Court said that though the plaintiff school was not set up by any funding from the British Government but it is undoubtedly a school which is under the patronage of the British High Commissioner since he/she is the president of the plaintiff-society and is one of the most sought-after schools in the country.It said that though defendants have argued that the words ‘British’ and ‘School’ on a standalone basis as also taken together are generic names, there are no documents on record to say that there is use of the mark or name ‘The British School’ by any other school in India.“The word ‘British’ on a stand-alone basis refers to anything related to Britain, but the use of the words ‘The British School’ in the manner as is done by the plaintiff signifies the plaintiff and none else. The plaintiff’s school has been in existence for more than 60 years now and it continues to impart a high level of education to its students. From the material placed on record, the plaintiff has been able to show that it has goodwill in the mark ‘The British School’,” the Court said. .It was noted by the Court that the defendants are in an identical service sector, they are located in Haryana and Punjab and the possibility of parents and students carrying the impression that the defendants’ schools are affiliated or connected in some manner with the plaintiff’s school cannot be ruled out. The Court said that present case before the Court was a case of triple identity: same name, same service and same class of persons availing the service.Justice Singh rejected the proposal put forward by defendants for slightly modifying the names of its schools holding that the proposals indicated would not obviate the chances of confusion but would, in fact, compound it further.The court has also said that in terms of the court’s order dated December 22, 2021, it is not in dispute that the defendants are continuing to use the name ‘The British School’ and though suggestions were called for alternative names on their behalf, none of the names showed any bona fides.Pertinently, the Court said that the conduct of the defendants who claimed during the arguments that its schools are recognised by international examination bodies which turned out to be false towards the conclusion of submissions, showed that the defendants do not deserve any further indulgence. .Justice Singh held that continuous use of the trademark ‘The British School’ may cause irreparable prejudice and damage not merely to the plaintiff’s goodwill alone but to various students who may be enrolled and studying in the said school.Therefore, it directed the defendants to change the names of their schools with effect from May 1, 2022 and apply to CBSE for changing the name of their schools.“The process shall be undertaken in an expeditious manner so that no inconvenience is caused to the students studying in the schools of the Defendants. Certificates, prizes, medals, etc. to be given to the students presently studying in Defendants’ schools shall be issued in the name of ‘The British School’ only till the end of academic year 2021-2022 and not beyond that,” the Court directed. .While advocates Peeyoosh Kalra, CA Brijesh Dhruv Grover appeared for the plaintiff, advocate Ashish Upadhyay represented the defendants..[Read Judgment]