Under the Trade Marks Act, 1999 (hereinafter “the Act”), a trade mark includes a trade name. The Act states that a registered trade mark may be infringed owing to unauthorized use of the trade mark as a trade name or part of a trade name if the party accused of such unauthorized use is dealing in goods or services in respect of which the trade mark is registered. Similarly, an unauthorized use of an unregistered trade mark as part of a trade name may be an actionable common law tort of passing-off. There is adequate case law restraining the use of trade names that pass off unregistered marks covering goods or services different from the one in which the business concern deals. The Act, however, fails to address the concerns of trade mark owners whose marks are registered in respect of goods or services different from the ones in which the offending enterprise deals. The question that necessarily follows is whether a trade mark owner could sue such an offending business concern dealing in different goods/ services, by invoking the plea of dilution of its reputed trade mark in India? Courts in India are not consistent on this issue. While few courts are of the opinion that the statutory protection accorded to well-known marks in respect of dissimilar goods or services, is inapplicable to situations where such marks are infringed by being used as part of trade names, others are of the view that the above provision is a ‘no-fault’ provision which offers a higher degree of protection since there is no requirement to show that any confusion is likely to arise from the use by the infringer of the registered mark as part of its trade name. The Delhi High Court, for instance, has considered the dishonest intention of the defendants in cashing on to the reputation and goodwill acquired by the plaintiff in quite a few cases and has restrained the defendants that deal in goods dissimilar to the ones in respect of which the plaintiff’s trade mark is registered, from using the plaintiff’s registered trade mark or any other mark identical with or deceptively similar thereto, as a trade name, corporate name or trading style. Apart from trade mark law, an additional and independent remedy in respect of corporate names incorporating someone else’s trade marks, is available to trade mark owners under the new law governing companies in India. The law governing companies clearly stipulates that the proposed name of a company would be considered undesirable if it includes the name of a registered trade mark or a trade mark which is subject of an application for registration, unless the consent of the owner or applicant for registration, of the trade mark, has been obtained by the promoters. Despite such an explicit criterion been laid down, cases of company names incorporating trade marks of others without authorization, are not uncommon in India. Under the law governing companies, the registration granted to a company name may be cancelled if a company is registered by a name which is identical with or too nearly resembles a registered trade mark. The owner of the registered mark must petition to cancel an offending company name within three years of incorporation or change of name of the company. The provisions of the law on companies evidently seem much wider in ambit than those of the Act as they provide trade mark owners the alternative of seeking cancellation of offending company names, regardless of the identity or similarity of goods traded in or services provided by the company. However, the effectiveness of these provisions is yet to be examined.

Recently Apple Inc. (“Apple”) was sued by Rohit Singh, a local software developer, in the Delhi High Court for passing-off. The suit emanated from Apple’s use of the term SPLITVIEW as the name of a feature of its recently launched software. As the term suggests, the SPLITVIEW feature gives users the ability to split the screen into two separate parts so that two tabs can be used simultaneously. The Plaintiff alleged that, since 2005, he has sold software bearing the name SPLITVIEW. This software enables a user to simultaneously work on multiple windows on the user’s computer screen. The learned Single Judge passed an order granting an ex-parte ad interim injunction against Apple’s use of SPLITVIEW as the name of any software program or as the name of a feature within a software program or in any hardware. The judge was of the view that such use amounts to passing-off of the Plaintiff’s SPLITVIEW mark. It is notable that the learned Single Judge agreed with the Plaintiff’s argument that SPLITVIEW is not descriptive because the combination of SPLIT and VIEW is unique. The learned Single Judge also agreed with the Plaintiff’s contention that if Apple’s use was bona fide and honest, then it could have used other marks such as SPLIT SCREEN, SPLIT MONITOR, MULTI VIEW, DUAL VIEW, MULTI SCREEN or DUAL SCREEN. etc. Click here to read the single judge’s order. Apple appealed the learned Single Judge’s order. The Division Bench vacated the ex-parte ad interim injunction against Apple, holding that such an injunction “in a matter concerning trademark violation should ensue only if a very strong prima- facie case is made out with respect to a trade mark which is inherently distinctive.” In this case, the Plaintiff had not made out a case for grant of such an injunction, particularly because there is a serious issue for consideration, namely, whether SPLITVIEW “is descriptive of an essential feature of the computer program, thereby rendering the words, even if used in conjunction with each other, not eligible to be a trade mark.” The nature of SPLITVIEW, whether as a descriptor or as a trade mark, came into question because counsel for Apple submitted various documents and precedents to demonstrate that SPLITVIEW had been used to describe an essential feature of the functions of the software program. Furthermore, Apple alleged that it was, in fact, the prior user of SPLITVIEW through a predecessor-in-interest. Click here to read the Division Bench’s order Both parties were directed to file their respective pleadings within the time frames set by the Division Bench. Furthermore, Apple was directed to file the documents it sought to rely on as per the procedure in the Code of Civil Procedure, the code that governs procedural matters in all civil disputes. The next date of hearing is May 9, 2016.

The law on trade marks requires all trade mark applicants to state whether their applications are based on proposed use or use. If an applicant bases an application on use, the law on trade marks requires the application to state a first use date in dd/mm/yyyy form. However, there is nothing in the law that requires an applicant to prove use prior to obtaining a registration. Rather,  the Registrar of Trade Marks may, at his discretion, require an applicant to file affidavit of use – which will become a public document once uploaded on the Registry’s web site. Why is it Important for an Application to Contain the Correct Earliest Use Date? Use information in an application is often not a big focus of trade mark applicants filing in India. However, it is imperative that applicants pay attention to first use dates for the purpose of Indian applications. If an applicant overstates the earliest use date in India, then, this overstatement may, by itself, become a ground for cancellation of a registration if the use date cannot be supported by evidence. Although the law on trade marks does not require an applicant’s use of a mark prior to registration, in practice, a registration can be cancelled on the ground that a registrant obtained a registration by claiming a false use date. Such a consequence can be avoided if an applicant investigates his use of a mark in India prior to filing. Obviously, such investigation should be followed by steps to preserve relevant evidence. What is Construed as the “Use” of Mark? The law on trade marks defines use very broadly to include both use on a good and in relation to goods (non-physical use). Furthermore, manufacture of goods in India for the sole purpose of export is considered as use if a mark is affixed to the goods in India. Even use of a mark prior to the act of affixation may constitute use of the mark. Thus, promotional activities around a mark could constitute use. For services, however, mere advertisement may be insufficient if the services are not being provided in India under the mark in question. Generally applicants file for a slew of goods/services in a class. Whether use of a mark on or in relation to one good will constitute use on or in relation to another good in the same class has not been considered so far by courts. To err on the side of caution, one should choose specification terms flexible enough to cover a wide range of goods/services. For example, the display of the mark on an advertisement for soaps, is more likely to constitute use for both deodorants and soaps, if the specification included “toiletries.” How is “Use” relevant in Practice? As far as goods are concerned, in practice, tribunals and courts sometimes differ in their determination of the use status of a mark. The Intellectual Property Appellate Board (“IPAB”), a tribunal that adjudicates cancellation actions apart from the Trade Marks Registry, has, in some cases, chosen to not to construe “use” liberally. It has, instead, asked for evidence of affixation of marks to goods. Therefore, the only situation where it is 100% safe to file an application with a use date, is if you have already affixed your mark on the goods for which you have made the application. In such a situation, though you may claim the earliest affixation date as the use date in your application, you should also make sure to detail non-physical use of your mark (the other ways by which you have used your mark) before the affixation date in your affidavit of use. By doing so, you avoid acquiescing your rights to claim a first use date prior to the affixation date in a civil suit for passing off/trademark infringement – where courts are known to liberally acknowledge use even if the mark is not affixed on the goods. As far as services are concerned, in practice, use is construed liberally, and the IPAB’s decision-making has so far been consistent with the statute. This could be possibly because it is impossible to insist upon the affixation of a mark upon a service. “If you must hit the mark, you must aim a little above it,” proclaimed the American poet, Henry Wordsworth Longfellow. This holds true for the “use” of a trademark as well. If you must use the mark, you must aim a little above it – “It” being the minimal threshold for “use” as is followed in practice by the Trade Marks Registry and the IPAB, rather than the liberal definition of “use” given in the statute.

IP owners have long preferred the High Court in Delhi for filing lawsuits involving their property.  This preference is based on a number of factors, including savvy judges who have long been exposed to intellectual property issues, the court’s willingness to grant ex-parte orders (without a defendant’s appearance) and expertise of lawyers.  A very recent judgment rendered by India’s Supreme Court may have whittled down an IP owner’s preference for Delhi.  In Indian Performing Rights Society Ltd. v. Sanjay Dalia and others (read judgment here), the court has held that IP plaintiffs cannot engage in forum shopping in cases in which they carry on business in the same jurisdiction in which a cause of action arises.  In these cases, the court held, plaintiffs must sue in courts having jurisdiction where they carry on business. In the case before the court, the plaintiff had a head office in Mumbai and a branch office in Delhi.  The defendant owned movie theatres in Mumbai and the allegedly infringing activities occurred in Mumbai.  However, the plaintiff sued the defendant in the High Court in Delhi.  In so doing, the plaintiff invoked special provisions in the laws on trademarks and copyrights that allow a plaintiff to file a lawsuit in a court within whose jurisdiction it resides or carries on business.  The defendant objected to the suit in Delhi.  A single bench and a division bench of the Delhi High Court ruled that the suit ought to have been filed at Mumbai. This matter was then referred to the Supreme Court. The plaintiff put forth the argument that the laws on trademarks and copyrights confer a special right on rights owners by allowing them to file suits where they carry on business without any regard to where the cause of action might have arisen.  The plaintiff sought to read this special right independently of a provision in India’s civil procedure code under which a plaintiff is required to file a lawsuit where the defendant resides or does business or where the cause of action arises.  In fact, according to the plaintiff, the legislature introduced this special right in India’s trademark and copyright laws so as to make it convenient for a plaintiff to approach a court that has jurisdiction where he does business and without needing to travel far in order to safeguard his rights.  In support of its arguments, the plaintiff put forth numerous judgments that had allowed parties to file suits where they carried on business. The defendant argued that the special provision in the trademarks and copyright laws could not be read without a consideration of legislative intent.  The legislature could not have intended that a plaintiff could file a suit in order to inconvenience a defendant.  Thus, the court needed to correct the law. The court agreed with the plaintiff that the special provision in the trademarks and copyright laws was enacted to provide parties an additional forum to bring suits so that they are not deterred from instituting infringement proceedings because “the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence”. However, the court observed that the intent of this provision was not to drag the defendant further away from such a place. Holding for the defendants, the court, distinguishing each and every case the plaintiff had put forth to support its position, stated that when a plaintiff carries on business at a place and the cause of action also arises at that place, the plaintiff must bring a suit at that place.  It cannot file in another jurisdiction where the cause of action has not arisen. Undoubtedly, by linking the special provision in India’s trademarks and copyright laws to the cause of action, the court has whittled down the scope of the special provision.  However, the court was dealing with a specific set of facts, namely, that the plaintiff’s head office was located in Mumbai and the cause of action also arose in Mumbai. The court found that the branch office in Delhi did not confer jurisdiction on the Delhi High Court.  Thus, in cases in which a plaintiff does business in a particular city, but the cause of action does not arise in that city, a plaintiff could sue in the city in which it does business. How this judgment plays out in future IP cases must be watched!

In recent times the Trade Marks Registry has introduced an e-filing portal through which most documents, including trade mark applications, can be filed quite easily. Here are the requirements to file in India and some tips to ensure that your applications sail smoothly through to examination: Mark: If the mark is a logo mark, it is advisable to file it in black and white. Your lawyer will need a clear image of the mark. Similarly if the mark has stylized lettering, it is best to file in block letters. Applicant’s Name and Address: Make sure that these details are accurate. Although this information may be corrected later (as long you are not changing the applying entity or person), an amendment request could delay advancement of the application to examination. Date of First Use: All applicants are required to state a use basis in an application, e., whether a mark has been used in India or not. If not, you can file on the basis of proposed use in India. Use means commercial use of the mark within the territory of India. Technically speaking it is possible to amend use information in an application, but the Registry’s position on such amendments is unclear, so it is best to get it right in the first instance. Specification of Goods and Services: You may file broadly. However, you should be aware that a consequence of filing broadly is that an ensuing registration may be subject to a partial cancellation action on the ground that the application was filed without a bona fide intention to use a mark and the mark was not used. Power of Attorney: Though not required at the time of filing an application, it is best to submit with the application. If not, Power of Attorney may be submitted later, but submission must be done in person by hand. This may sometimes lead to delayed advancement of applications because the Registry may not match the Power to the application. If a Power of Attorney is not submitted timely, the application will not pass the formalities stage. Again, this might delay prosecution. Excess Character Fee: Under the rules of the Trade Marks Registry, if the number of characters in a particular class exceed 500, an applicant must pay an excess character fee of USD 0.15 (INR 10) for each character in excess of 500.It is best to pay excess character fee, if any, with the application filing fee. If this is not done, sometimes, applications can remain pending for months because the Registry will not inform you of the deficiency suo moto. With the online filing system, the excess character fee has to be paid at the time of filing itself. The system automatically calculates the excess characters and lets the applicant know at the time of filing.

Nestle’s recall of the iconic MAGGI noodle brand continues to make news in India! India’s food regulator, The Food Safety and Standards Authority of India (“FSSAI”), has determined that Nestle’s MAGGIE noodle packaging did not comply with the Food Safety Standards Act, 2006 (“FSSA”) and the Food Safety and Standards (Packaging and Labelling) Regulations, 2011 (“FSSR”).  On 5 June, 2015, the FSSAI served an order on Nestle stating, inter alia, that Nestle had failed to comply with the FSSA and the FSSR (see order here) MAGGI noodles contain hydrolysed ground-nut protein, onion powder and wheat flour. All of these contain MSG or monosodium glutamate (a product that is widely used by food manufacturers as a flavour enhancer).  Generally speaking, MSG is regarded as safe, but, if it is above permissible limits, it has been known to have ill-effects on the human body.   Each packet of the noodles has a label that states “No Added MSG”.  Nestle argues that its labelling is accurate because it does not add MSG to the noodles.  Rather MSG is a naturally occurring element in its tastemaker and noodles.  Nestle relied on a legal opinion it had taken from a former Chief Justice of the country among other things.  The FSSAI disagrees. In its order, the FSSAI has relied primarily on the following provision in the FSSR: Every pre-packaged food shall carry a label containing information as required hereunder unless otherwise provided, namely, pre-packaged food shall not be described or presented on any label or in any labelling manner that is false, misleading or deceptive or is likely to create an erroneous impression regarding its character in any respect;” The FSSAI reasons that the above regulation “prohibits any other information on the label other than what is otherwise provided for in the FSSR”.   The order states that it Nestle is not required to make any assertion about MSG under the above provision and that it “defies the common understanding” as to why such an assertion would be made.  It then goes on to conclude that the apparent reason for the label regarding the MSG “is driven by an undue commercial advantage/ benefit to create an erroneous impression in the minds of consumers regarding the character of the product”. The order borrows from a document on the web site of the United States Food and Drug Administration (“USFDA”).  This document (access document here ) states that in case of those products that naturally contain MSG, there is no requirement that the label also state this fact.  However, as per the USFDA, foods with any ingredient that naturally contains MSG cannot claim “No MSG” or “No Added MSG” on their packaging. Therefore, the FSSAI concludes that it is clearly established that Nestle’s label, “No added MSG” violates the FSSA and FSSR. This latest order is another blow to brand MAGGIE and Nestle must change the labelling on its packaging.  The FSSAI has come down hard on Nestle and its losses from the recall are in excess of INR 210 crore (approx. USD 32.75 million).  The lesson from the MAGGIE saga:  if you are a food company or represent a food company, you/your client must ensure that any packaging complies with the FSSA and the FSSR.

Start-up’s seem to be springing all over India. Our busy schedules combined with growth and the spread of the internet has added impetus to this growth. We know have start-up’s offering services from the delivery of furniture to the delivery of groceries. Numerous start-up’s make it big in time and the success stories are many in number. A similarity in most start-up’s are that a single individual or a group of individuals pool in their financial resources and commence the business. The most urgent requirement’s include seeking a work space, the setting up of a company, selecting a catchy name and a logo, hiring employees etc. Intellectual Property knowingly or unknowingly forms a huge part of a start-up’s life. To take an example, the name and logo of the company can be regarded as a trademark. However, start-up’s generally do not wish to invest their money in the protection of this intellectual property. They are under the mistaken notion that such protection is secondary and can be done at a later stage. It is considered as a waste of financial resources which at the stage of commencement is not in abundance. During the course of their journey, start-up’s eventually go to venture capitalists to seek an infusion of funds. Venture capitalists do make it a point to find out not only about the structure of the start-up’s, their future, their growth etc. but also about their intellectual property. We often find that start-up’s come to us at this stage to protect their Intellectual Property. However, in certain cases, it is a bit too late to protect their Intellectual Property. Therefore, the finances invested in the advertisement of the name and the brand over the last many years becomes a waste. For a start-up the most important intellectual property would be their name and logo. These form an identity as to who they are or as to where the product bearing these marks originate from. As an initial step, start-ups must as a norm consider the protection of their Intellectual Property as important as the registration of their company. Intellectual Property must be looked at as an investment just like a floor space or a computer or the hiring of employees. It plays a huge part in the success or failure of a company.  The most common types of Intellectual Property protection a start-up can go in for relate to trademarks, copyrights and designs. As the years go by, start-up’s must add on to their Intellectual Property thereby increasing the value of their company. Unlike a car, which is a depreciating asset as the years go by, intellectual property is an appreciating asset. The more years it is held and safeguarded can prove to be the difference for a start up in its growth story.

A recent judgement pronounced by the Delhi High Court on May 19, 2015, would have come as a huge relief for international fashion brand ZARA. In this case, the owners of the fashion brand ZARA filed a suit for infringement and passing of their well- known brand ZARA against the owners of a restaurant in Chennai which was using the name ZARA TAPAS BAR. [INDUSTRIA DE DISENO TEXTIL S A. V. ORIENTAL CUISINES PVT LTD & ORS (CS (OS) 1472 of 2013)]. In the suit filed in 2013, the Plaintiff contended that its trademark ZARA is an internationally well reputed trademark that was coined as early as 1975. Since 1975, the mark has been used by the Plaintiff continuously and its reputation has grown with a presence in over 86 countries and a turnover of over 10,541 million Euros. More particularly, in India, the Plaintiff has had a presence since 1986, when it started its manufacturing operations. Plaintiff’s first retail outlet opened in India in 2010 and within a period of two years its annual turnover was Rs. 384 crores. The Plaintiff also has registrations for the mark in India. The Defendant adopted the name ZARA TAPAS BAR for its restaurant sometime in 2003. It was revealed during the court proceedings that the Defendant adopted the name after a trip to Paris. In 2005, the Plaintiff became aware of an application filed by the Defendant in 2003 for the mark ZARA TAPAS BAR. Plaintiff immediately opposed the application. The opposition proceedings are still pending. Meanwhile, the Defendant approached the Plaintiff to enter into a co-existence agreement, which offer was rejected by the Plaintiff. The following issues came up for consideration in this case: Whether there is any deceptive similarity between the mark ZARA of the Plaintiff and ZARA TAPAS BAR of the Defendant – While the Defendant contended that it used the mark ZARA TAPAS BAR as a whole and not ZARA per se, evidence was to the contrary. It was found that the Defendant was using either ZARA per se to refer to its restaurant or when using the mark ZARA TAPAS BAR the mark ZARA was ten times more prominently written. In the circumstances, it was found that, there is deceptive similarity between the Plaintiff’s mark and the mark as being used by the Defendant. Whether the adoption of the mark ZARA TAPAS BAR was dishonest or fraudulent or an honest adoption such that the Defendant is entitled to concurrent user of the mark – The Defendant contended that its adoption of its mark was honest and that it had been using it for over a decade. Defendant further contended that ZARA was a common name in various countries and was also a dictionary word. However, Defendant’s contentions were dispelled by an article presented by the Plaintiff which stated that the mark was adopted by the Defendant following a trip to Paris in 2003, at which time there were 40 ZARA stores in Paris. Further, the Court found that the word ZARA was neither generic nor descriptive nor a dictionary word (as far as Spain is concerned) and the fact that the Defendant was using ZARA more prominently indicated that the Defendant was trying to ride on the reputation of the Plaintiff’s ZARA mark. Whether the mark ZARA is used by many entities and has become publici juris – Defendants relied on various third party registrations comprising the word ZARA to prove its case. None of the registrations were found to be similar to the mark ZARA and the Defendant’s claim was rejected. Whether there is a great delay in filing the suit and whether it amounts to acquiescence on the part of the Plaintiff – Defendant contended that Plaintiff chose to wait for eight and a half years from 2005 to 2013 to file the instant suit. After considering various precedents on this issue, the Court ruled that the delay neither amounts to acquiescence nor did it disentitle the Plaintiff to the relief of ad interim injunction if the Plaintiff was able to make out a case on merits. Whether there is suppression/concealment of material facts so as to disentitle the Plaintiff to the discretionary relief of injunction – Defendant contended that Plaintiff had made a false averment about its knowledge of the Defendant’s using the name ZARA TAPAS BAR. Plaintiff’s contention that it came to know of the use by the Defendant only on the basis of a letter in 2011 was contrary to the averments made by the Plaintiff in an affidavit filed by it in 2008. It was held that, a party seeking ex-parte ad interim injunction is expected to make full disclosure but when the matter is heard on merits, both the parties are before the Court. The misstatement of some facts unless it is mala fide will not disentitle the Plaintiff to the relief of injunction. Whether the Plaintiff‟s mark ZARA is a well known trademark and had trans-border reputation or in the alternative the Defendant is entitled to use the mark ZARA TAPAS BAR in relation to class 25 or for that matter hospitality restaurant business co-extensive with the Plaintiff – The Plaintiff placed on record a host of documents to show that ZARA was a well known mark and had trans-border reputation. The Court considered documents upto the year 2003 to determine trans-border reputation since Defendants were prima facie shown to have started their ZARA TAPAS BAR in 2003. The Court also took into account that the Plaintiff had a registration for the mark ZARA since 1993 in India and had manufacturing operations in India since 1986. Based on this and on consideration of the documents, the Court held that the mark ZARA was a well-known mark and had trans-border reputation.

India witnessed its first ever food recall last week when Nestle S.A.’s famed MAGGI noodles were recalled from store shelves on the ground that some packets of the noodles have a higher than permissible lead content. MAGGI, a 100-year brand, was introduced in India in 1982.  Soon it became a household name, particularly in today’s world of busy mothers!  Brand MAGGI had such a value attached to it that Nestle S.A. started using it on soups, chicken broth cubes and other products. It even came out with a new line of Maggi noodles incorporating healthy ingredients such as oats to cater to the masses who had become more health conscious in the last couple of years.  Undoubtedly, MAGGI could be termed as a well-known mark! For more than 30 years, Nestle worked hard to build a reputation for its MAGGI mark in India.  Suddenly in the last two weeks, the reputation has suffered a blow. Parents no longer wish to buy MAGGI noodles for their kids. Retail outlets no longer wish to stock MAGGI noodles on their shelves as they try to distance themselves from the crisis. Nestles S.A. has seen its shares plummet on the market and the value of its mark MAGGI decline. Additionally, the loss of faith of the consumer in the brand has resulted in a domino effect where consumers in India are rejecting other products bearing the MAGGI brand as well as Nestle S.A.’s other products such as coconut milk etc. There seems to be genuine fear in the minds of the health conscious consumer. Nestle needs to combat the dent to its brand image fast and furious!  So far it appears that Nestle hasn’t done much.  By way of example, a few years ago, Cadburys’ faced a similar crisis when worms were found in a bar of Cadbury’s chocolate. It took close to nine months and a huge advertising expense to get the brand to where it was before. With the advent of the social media apart from the print and television media, no one can rightly say how long it will take before the mark MAGGI resurrects itself. Some doomsayers are even predicting the death of the mark. One of the integral aspects of a trademark is that it assures the consumer as to the high quality of the product based on its good reputation. In this case, there has been a heavy damage to the reputation of the mark and Nestle S.A. may just decide to put an end to the mark, sad as it may seem, to resurrect sales of their ready to cook noodles. It may take two minutes to cook a packet of MAGGI noodles, but it took only two weeks to damage its reputation and it may take twenty years or more years for Nestle S.A. to resurrect the image of the mark MAGGI.

On 11 May 2015, the Delhi High Court pronounced a judgment on the relatively long drawn battle between two brothers involving use of the SHRI RAM surname in connection with educational institutions. [SRF FOUNDATION & ANR. V. RAM EDUCATION TRUST (CS (OS) 1980/2014)].  See judgment here.  The plaintiff had filed the lawsuit on 8 July 2014. The plaintiffs have long used the Shri Ram name in connection with schools in and outside India.  The first Shri Ram school was set up in 1988.  Since then the plaintiffs have opened a number of schools under the name Shri Ram. Sometime in 2011, the defendant brother opened the Shri Ram Global Play School that is located near one of the plaintiff’s schools.  Despite receiving a letter from the plaintiff, the defendant has continued to open schools under the mark SHRI RAM and have nineteen (19) schools under the mark. The plaintiffs contend that they have the prior right to use the SHRI RAM name for schools and if the defendant is allowed to continue opening schools using the name, there would be confusion and deception.  The defendant made a number of contentions, including that the parties have concurrent rights to make use of the family name SHRI RAM in relation to their schools, the defendant has a trade mark registration for the SHRI RAM mark, “other factions of the Shri Ram family are using the name SHRI RAM for schools” and the names of the defendant’s schools are not similar to the names of the plaintiff’s schools. The Delhi High Court, among other things, allowed the defendant to continue the schools under the SHRI RAM name.  However, the defendant was required to display a disclaimer on signage and stationary materials that it has no connection with the plaintiff’s school.  The defendant was, however, restrained from using the mark SHRI RAM in relation to schools currently under construction. The Court did not grant a full-fledged injunction due to a combination of multiple factors including, but not limited to a lack of apparent bad faith considering the defendant claimed that the rights to the SHRI RAM name flowed to it through the grandfather, the fact that other members of the family had used the SHRI RAM name prior to the defendant and the fact that the defendant had been allowed to use the SHRI RAM name for three years before the present lawsuit was brought. Two important concepts of law were discussed in the judgment that merit discussion: Estoppel: The defendant contented that the plaintiff had made some admissions in a reply filed in response to an Examination Report issued in relation to its application to register the mark SHRI RAM (filed on 6 June, 2008 and withdrawn on 15 April 2014).  See the Examination Report and response here.  By way of background, in the Examination Report, the Trade Marks Registry (“Registry”) had cited prior marks that incorporate SHRI RAM against the plaintiff’s application.  In response, the plaintiff had argued that ‘Shri Ram’ is a popular figure and deity in Hinduism.  Consequently, no single party can claim exclusive rights on SHRI RAM.  It had also argued that “it is the combining elements that make the conflicting marks distinguishable from each other.  The marks taken as a whole are different from each other such that there is no likelihood of confusion and deception between them by their coexistence.”   The defendant contended that in view of this admission, the plaintiff is not entitled to relief.  The Delhi High Court held that plaintiff’s response to the Examination Report would be immaterial if a court holds that SHRI RAM is a distinctive mark, entitled to be protected under the law.  Justice Manmohan Singh reasoned that admissions are usually made of some facts and not pure questions of law.  It follows that there cannot be an estoppel against the law.  In this case, therefore, the court found that if it is evident that the mark SHRI RAM is distinctive as per law and if the rival marks are similar, the admission made by the plaintiff has no consequence and cannot operate to its detriment.  In fact, Justice Singh stated that he did not understand that if the defendant took a plea of estoppel, then why did it file its own application for the same mark? Delay: In this case, the plaintiffs filed the suit against the defendant after 3 years of knowing of the defendant’s schools.  Besides delay there were other factors (stated above) that factored in the court’s decision.  Thus, although there is case law that states, very clearly, that delay may not be a factor in grant of injunctions, the judge in this case found that delay favoured the defendants in large part because of the lack of apparent bad faith in adoption of the SHRI RAM mark by the defendant.