How British School got its name and reputation back ?
It is not unusual to see here in India, educational institutes with similar names like, British School, Delhi Public School, Modern School, the Harvard Academy etc. The trend is to copy the name of some famous brand in education and try to encash its own business without having any link with the famous and known brand.Coming heavily on this trend in its recent order the Court ruled that “Education is an area where chances of confusion should be completely avoided as it can result in having a damaging effect on the careers of children”.The court recognized that ‘THE BRITISH SCHOOL’ name is exclusive proprietary to the British School Society. ‘THE BRITISH SCHOOL’ is not a generic and common term for schools and it originates from one source only.The parties in the suit are at odds over use of the school name popularly known as ‘THE BRITISH SCHOOL’. The British School Society (“the Plaintiff”) filed a suit for infringement of trade mark, passing off and unfair competition against Sanjay Gandhi Educational Society & Anr. (“the Defendant”) who was found to be using an identical mark ‘THE BRITISH SCHOOL’ for identical services i.e., educational services in relation to their four schools operating in the States of Punjab and Haryana.The Plaintiff is an international, not-for-profit society who runs ‘THE BRITISH SCHOOL’ located in Chanakyapuri, New Delhi and the Defendant is a registered society with its principal place of business in Chandigarh.The plaintiff main contention in this battle of infringement of trademark was that, they came to know about the Defendant’s applications for the mark/logo ‘THE BRITISH SCHOOL’ and the website thebritishschool.org for education services.In this regard a cease and desist notice was served to the Defendant but it fell flat, leading to filing of suit in Delhi High Court. In its suit, the plaintiff, claimed that the school was started in the year 1963 and has acquired a huge reputation, having been associated with the British High Commission in India. It is only the Plaintiff’s school which is using the said mark and name in India.In support of their ground they submitted various accreditation and memberships from various global associations and also submitted the proof of owner of domain name british-school.org registered in 1999. They are also the registered proprietor of the mark/logo ‘THE BRITISH SCHOOL’ since the year 2013.The documents placed on record such as Registration Forms, Admission Slips, etc. also proved use of the mark ‘THE BRITISH SCHOOL’ since the year 1963.While citing the actual incidence of confusion, they submitted that on a third-party website the name of the Defendant’s school in Panchkula (Haryana) was mentioned but it was showing the location of Plaintiff’s school.They also relied upon the recent judgment in the case of The British School Society v. The British International School, CS(COMM) 408/2021, wherein the defendant had changed its name to ‘PLR Academy of Excellence’.However, the defendants were of the view that prayer for interim relief is barred by delay. They also claimed that they have been running the schools under the name ‘THE BRITISH SCHOOL’ since 2005 and there has been honest and concurrent use of the mark for more than 15 years.The justification provided to argue the honest adoption is that the mark was adopted on the advice of Mr. Mark Bartholomew, Regional Manager, University of Cambridge.The other grounds advanced by the defendants also included, being the owner of domain name thebritishschool.org registered since December 2004 in additionto applied for registration of the mark/logo ‘THE BRITISH SCHOOL’ since 2015 which are pending registration.It was also claimed that ‘THE BRITISH SCHOOL’ is not an invented word but a generic/common term used for schools that are promoting the British School education system. Therefore, no one can have monopoly over the same.Further it was pointed out that the Plaintiff’s registrations for the mark ‘THE BRITISH SCHOOL’ have specific disclaimer stating that “the registration of the trademark shall give no right to the exclusive use of ‘The British School’.The defendants schools are fully recognized by the Cambridge International Examinations and follow the Cambridge curriculum. That they have more schools and a greater number of students than the Plaintiff. Any injunction passed by the Court would affect thousands of students who are studying in their schools.The chance of confusion was also denied by stating that there is no chance of confusion as the schools of both parties are located more than 240-400 kms away from each other.After listening to the contentions of both the parties, the Court observed that the present suit is filed for infringement of registered trademark and passing off relating to the mark ‘THE BRITISH SCHOOL’ used as the name of a school.Though the Plaintiff has 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 and the case has to be considered on the principles of passing off.To decide on the claim of passing off, the Court observed that, the Plaintiff’s school was established in the year 1963. It had enjoyed more than 40 years of reputation before the Defendant could adopt an identical name in the year 2005. It continues to impart high level of education to its students. Hence, goodwill in the name/mark was sufficiently established.Although the Defendant is located in the States of Haryana and Punjab, the possibility of parents and students carrying the impression that the Defendant’s schools are affiliated or connected in some manner with the Plaintiff’s school cannot be ruled out.This is a case where the Defendant is wrongfully benefiting from the reputation of the Plaintiff’s mark ‘THE BRITISH SCHOOL’. The Defendant is reluctant to carry out any changes in the name that may have the effect of obviating confusion. Thus, the continued use of the mark ‘The British School’ by the Defendant is causing damage to the goodwill of the Plaintiff.As opposed to Defendant’s claims, their schools are merely CBSE accredited schools. They do not enjoy any accreditation or recognition from any international body.While confirming the interim injunction order against the Defendant, the Court directed them to change the name of their schools w.e.f. May 1, 2022.Our advise for the owners of the business is to get the name of their business trademarked at the earliest and watch for infringement and take necessary action at the earliest to stop people taking advantage of your business name and fame and make money out of it.
Dr. Ajay Kummar Pandey( LLM, MBA, (UK), PhD, AIMA, AFAI, PHD Chamber, ICTC, PCI, FCC, DFC, PPL, MNP, BNI, ICJ (UK), WP, (UK), MLE, Harvard Square, London, CT, Blair Singer Institute, (USA), Dip. in International Crime, Leiden University, the Netherlands )Advocate & Consultant, Supreme Court of India & High Courts4C Supreme Law International, Delhi, NCR. Mumbai & DubaiTel: M- 91- 9818320572. Email: email@example.com