Permanent injunction of Trademark – Trademark Registration in Cochin
Permanent injunction of Trademark
Trademark is one of the most important intellectual property, no one can be used it illegally. When someone uses your trademark illegally, it can cause significant damages to your business. It can be immediate monetary losses and long term damage which can spoil your business reputation. While considering Trademark infringement cases, it can be lengthy, and while they are pending an infringer should not be allowed to profit from its infringing activity. Instead of this, the defendant Obtaining a preliminary or permanent injunction in their trademark case can be critical to protect your rights and minimize the damage you business reputation. In this blog, we are going to discuss the permanent injunction with some real time example of trademark “skyline”. Skyline is held to be a generic word and not a specific word, which is used by thousands of person and institutions as their trade name, in India as well as the foreign countries. The defendant of the trademark “skyline” filed a case against the respondent who infringes his trademark to restraint the use of name ‘Skyline’ as part of the respondent’s trading name in relation to activities in the field of education and as a trademark in relation to any printed matter, literature, syllabus etc., or in any other manner whatsoever. Permanent injunction is also called as perpetual injunction in trademark world. Permanent injunction is issued at the end of the court’s order but the preliminary injunction is issued at the any time or while a lawsuit is pending. Permanent injunction acts as a final relief of the case.
Permanent injunction – Restraint to use name ‘skyline’
In our opinion, the findings recorded by the learned Single Judge and Division Bench on the crucial factors like prima facie case, balance of convenience and equity are based on a correct and balanced consideration of various facets of the case and it is not possible to find any fault with the conclusions recorded by them that it is not a fit case for restraining the respondents from using the word Skyline’ in the name of the institute established by them. It has not been disputed on behalf of the appellant that the word ‘Skyline’ is being used as trade name by various companies/organizations/business concerns and also for describing different types of institute/institutions. The voluminous record produced by the respondents before this Court shows that in India as many as 117 companies including computer and software companies and institutions are operating by using word “Skyline’ as part of their name/nomenclature. In United States of America, at least 10 educational/training institutions are operating with different names using “Skyline’ as the first word. In United Kingdom also two such institutions are operating. In view of this, it is not possible to agree with the learned counsel for the appellant that the Skyline is not a generic word but is a specific word and his client has right to use that word to the exclusion of others.
There is another reason for declining the appellant’s prayer for grant of temporary injunction of trademark. The appellant is shown to have started Skyline Business School in 1997 as one of its division but has conveniently not mentioned that it had started another institution under the aegis of Asian Educational Society housed in the same building where the appellant claims to have its registered office. After three years of starting Skyline Business School, the Director of the appellant vide his letter dated January 4, 2000 permitted the President, Asian Educational Society to use the trademark Skyline Business School, name and the logo albeit without disclosing as to when Skyline Business School was registered under the Trademarks Act, 1999. Thereafter, Skyline Group’s Asian Educational Society through its President, Shri Kamal Puri entered into an agreement dated 9.12.2001 with Manipal Academy of Higher Education (deemed university) for establishing a branch campus at Skyline Business School, Delhi. Sikkim Manipal University also approved Skyline Business School as a University Study Center for taking management programme under distance education despite the fact that the Skyline Business School is not recognized or approved by AICTE/UGC. In 1996, University of Oxford approved the appointment of a centre in the premises of the appellant at Laxman Public School, Hauz Khas Enclave, New Delhi for Certification in Leisure Studies and in Travel and Tourism. In 1997, Skyline Business School entered into a Memorandum of Cooperation with University of Lincolnshire and Humberside, U.K. whereby the latter agreed to offer its BBA (Hons.) Tourism course through a centre established at the appellant’s campus. In large number of advertisements issued in the name of the appellant or Skyline Business School, it has not been made clear that they are neither approved nor recognized by any of the statutory bodies like, AICTE, UGC, etc. Of course, in some of advertisements, it has been mentioned that the degrees/diplomas purported to be awarded by the Skyline Business School are not recognized by Government of India, State Government, UGC/AICTE. All this lends sufficient credibility to the observations made by the Division Bench of the High Court that the present litigation is to have more commerce in education and less education in commerce and gives an impression that functioning of the appellant is shrouded in mystery and those seeking admission in the courses organised by it may find themselves in serious trouble at any given point of time because the degrees and diplomas awarded in the name of foreign universities are not recognized by statutory bodies/authorities in India.
Shri Sudhir Chandra may be right in his submission that even an unregistered prior user of a name can institute action for passing off and seek injunction of trademark against the subsequent user of the same name by proving that misrepresentation by the defendant to the public that the goods/services offered by him are that of the plaintiff and such misrepresentation has caused harm to the goodwill and reputation of the plaintiff or the plaintiff demonstrates that it has suffered loss due to such representation, but, in view of our conclusion that the appellant has failed to make out a case for interference with the discretion exercised by the High Court not to entertain its prayer for temporary injunction of trademark, we do not find any valid ground to entertain and accept the argument of the learned senior counsel. For the same reason, we do not consider it necessary to discuss the judgments on which reliance has been placed by Shri Sudhir Chandra.
Although, during the pendency of the suit, the appellant got trademark registration in cochin of ‘Skyline MEDALLIST under No. 795085 and ‘Skyline Institute’ under No. 795086 in class 16 and its prayer for amendment of the plaint was granted by the High Court on 24.8.2006, but, that by itself, is not sufficient for entertaining the appellant’s prayer for temporary injunction of trademark to restrain the respondents from using the word ‘Skyline’ as part of the Institute of Engineering and Technology established by them.
We may now advert to C.A. No. 1362/2005. The respondents’ grievance is that after having reached the conclusion that the learned Single Judge was not justified in restraining the respondents from starting new courses in business management, etc. and directing them to append a note in the advertisement that they are in no way related to the appellant, the Division Bench should have set aside all the directions impugned before it. We find merit in the contention of the respondents. When the Division Bench found that the learned Single Judge ought not to have given direction restraining the respondents from starting new courses in business management etc. And directed them to append a note in the advertisement that they are not related to the appellant, and then it should have set aside the order of the learned Single Judge in its entirety of trademark registration in cochin. The omission on the part of the Division Bench of the High Court to do so calls for a corrective action by this Court.
In the result, Civil Appeal Nos. 1360-1361 of 2005 are dismissed and Civil Appeal No. 1362 of 2005 is allowed and the modified injunction of trademark granted by the learned Single Judge is vacated in its entirety. The appellant shall pay Rs. 50,000/- as cost of unwarranted litigation thrust upon the respondents.