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Sipra Education Society's, Spring Orchid School Vs. Pradnya Niketan Education Society's, The Orchid School - (High Court of Bombay) (17 Oct 2018)

Test while determining similarity is of "the possibility" and not "probability of confusion"


Intellectual Property Rights

Instant Appeal is directed against the order passed by the District Judge on the application for temporary injunction filed in a Civil Suit. The said application was preferred by the Respondent herein, restraining the Appellant, during the pendency of the Suit, from using the trade name "Spring Orchid", which is similar to the name of the Respondent-School "The Orchid School". The Trial Court has allowed the said application and by its impugned order, restrained the Appellant from passing off identical services of "Spring Orchid School" as those of the Respondent.

It is undisputed that, registration and user of the Respondent is much prior to the registration and user of the Appellant. The key word "Orchid" is common in both the names and both are dealing in the same field of imparting education and training to the school going children.

The use of the key word "Orchid" being exactly the same in both the names, the added word "Spring" does not distract from deceptive similarity of the two marks. As per the settled law, the test while determining similarity is, one of "the possibility" and not "probability of confusion". Moreover, while comparing the mark, the Court does not go into either the etymological meaning of the rival words or marks, as only a microscopic minority of consumers would be expected to know the real difference between the two schools named as "Spring Orchid" and "Orchid" only.

Further, delay or inordinate delay or laches on the part of the Respondent may defeat its claim for damages or rendition of accounts, but the relief of injunction therefore cannot be refused. In the facts of the present case, there is no delay, much less lapse or acquiescence, on the part of the Respondent in bringing such action. Respondent has issued the notice in the year 2012 itself and immediately thereafter, has also filed the Suit. If there is delay on the part of the Court taking up the matter, Respondent cannot suffer for the same.

In an action for infringement in respect of the trade marks, which are registered, as held by the Hon'ble Apex Court in the case of Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories, for such an action to succeed, the Plaintiff has to merely show that the essential features of the trade mark have been adopted by the Defendant. This is so, because in such an action, the Plaintiff exercises or invokes his statutory rights granted under Section 28 of the Trade Marks Act, 1999 which gives him the exclusive right to use the said mark.

Appellate Court would, normally, not be justified in interfering with the exercise of the discretion under Appeal, even if had it considered the matter at the trial stage, it would have come to a contrary conclusion. Appeal dismissed.

Relevant : Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories, MANU/SC/0197/1964: AIR 1965 SC 980


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