'The British School': Delhi High Court Directs Sanjay Gandhi Educational Society To Change Name Of 4 Schools Infringing Trademark

While dealing with a trademark infringement suit filed by the British School Society over the mark 'The British School', the Delhi High Court has directed changing of names of four schools run by Sanjay Gandhi Educational Society, purportedly using identical name.

Justice Pratibha M Singh directed the defendants to change the name of their schools w.e.f. 1st May, 2022 and apply to the CBSE, with whom they are presently affiliated.

"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 added.

The Court observed that the 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 their schools are in some way connected or affiliated with the Plaintiff.

Furthermore, the Court added that 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.

Opining that it will not be in the larger public interest to permit Defendants to use the mark 'The British School', the Court confirmed the interim order granted on 12th October, 2021, which was modified on 22nd December, 2021.

The Plaintiff was the British School Society running The British School in New Delhi, attached to the High Commission of the United Kingdom. Defendant No.1 was the Sanjay Gandhi Educational Society based in Panchkula, Haryana which runs four schools under the name 'The British School' in Punjab and Haryana viz., Mohali, Panchkula, Chandigarh, Firozpur.

The British School in Delhi was started in the year 1963 when a group of British parents, with the support of the then British High Commissioner started the school with 40 students representing six nationalities. Various British dignitaries, of the relevant time including the then British High Commissioner to India– Sir Paul Gore-Booth, were the founding members. It offers various educational programmes including EYFS Programme, the IGCSE and the IB Diploma Programme and school has more than 1200 students from 65 nationalities.

The domain name of the Plaintiff's school was www.british-school.org, registered in 1999 and the registration of the Plaintiff society under the Society Registration Act of 1860 dates back to 26th June, 1963.

"A perusal of the documents filed on record shows that the use of the name 'The British School' by the Plaintiff since the year 1963 is not in dispute," the Court noted.

The Defendants used an identical name 'The British School' for 4 of their schools in Punjab & Haryana, even though the name of the society which runs the said schools was Sanjay Gandhi Educational Society. The Defendants had also registered the domain name: www.thebritishschool.org which was registered since the year December, 2004.

The Defendants had filed various applications for the registration of the mark 'The British School' claiming user since 2005. The first application for the registration of the mark 'The British School' was filed on 29th May 2015 which was objected to by the Trade Mark Registry on the ground of non-distinctiveness under sec. 9 of the Act as well as under sec. 11 of the Act on the ground that similar trade mark is already on the register.

Thereafter another application was filed on 29th January 2020 by Sanjay Gandhi Educational Society for a different device mark containing the words 'The British School'. The said application was opposed by the Plaintiff vide notice of opposition dated 11th September, 2020.

It was the contention of the Defendants that the Plaintiff was not a school accredited to the Department of Education, United Kingdom and that the Plaintiff was not entitled to use the mark 'The British School'. It was also submitted that the word 'British' derived its reputation and goodwill from the British Empire since the 16th century. Thus, no one can claim monopoly over the same as it was generic.

"Though the Plaintiff have registrations, the same are with disclaimers on the words 'The British School'. Thus, exclusive rights cannot be claimed by the Plaintiff on the strength of trademark registrations. The case has to be, therefore, considered on the principles of passing off. In a suit for passing off, the Court has to test the case of the Plaintiff on the 'classical trinity' of the tort of passing off- goodwill, misrepresentation and damage," the Court observed.

Noting that the Defendants were in an identical service sector, i.e., education, the Court said that though the Defendants were located in Haryana & Punjab, the possibility of parents and students carrying the impression that the their schools were affiliated or connected in some manner with the Plaintiff's school could not be ruled out.

"In an action for passing off, the Court has to see the possibility or likelihood of deception and misrepresentation. Even if there is a remote chance of the possibility or likelihood of deception, the Court is bound to protect the people who avail the said services, from such confusion or misrepresentation being caused. The Court would loathe to permit the use of identical names especially in the educational field as the same may mislead parents and students to admit their wards in Defendants' institutions under a mistaken belief," the Court said.

In the opinion of the Court, this was a case where the Defendants are wrongfully benefiting from the reputation of the Plaintiff's mark 'The British School'. Thus, the Court noted that the Defendants were reluctant to carry out any changes in the name that may have the effect of obviating confusion and that the continued use of the mark 'The British School' by the Defendants was causing damage to the goodwill of the Plaintiff.

"Furthermore, none of the letters which are relied upon by the Defendants show any permission given for the use of the name 'The British School' by any international accreditation agency or international examination conducting body. Pleadings to the contrary are bereft of any merit. The existence of the Defendant's schools itself is not in dispute but the question is whether the Defendants can continue to use the name 'The British School' causing damage to the goodwill of the Plaintiff," the Court said.

The Court observed that there was no doubt that the appropriation of the mark 'The British School' by the Defendants was with the intention to cause misrepresentation and confusion to the public.

"Thus, this Court is of the opinion that Defendants cannot be permitted to continue with the use of the name/mark 'The British School' for its 4 schools. The permission given to the Defendants vide order dated 22nd December, 2021 to use the mark 'the British School' expires with the end of the academic session 2021-2022," the Court said.

It added "Usually, the academic session ends around March/April every year with the final examinations being held at that time. The Defendants have had adequate notice of the injunction order to be able to carry out a name change. Moreover, a categorical undertaking has already been given to the Court by the ld. Counsel for the Defendants that the Defendants will not advertise the admission for the next academic session under the mark 'The British School'."

The Court also noted that there was no document on record, as claimed by the Defendants that any international or British University had permitted the Defendants to use the name `The British School'.

"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 observed.

Case Title: THE BRITISH SCHOOL SOCIETY v. SANJAY GANDHI EDUCATIONAL SOCIETY & ANR.

Citation: 2022 LiveLaw (Del) 370

Click Here To Read Order