The Srinagar Bench of the Jammu and Kashmir High Court recently dismissed an appeal filed by the Appellant/Defendant, Emerge Classes Private Limited (“Emerge Classes”) against the trial court’s order in a trademark passing off case. The order temporarily restrained Emerge Classes from using trade mark (device and logo) of the Respondents/Plaintiffs. In this case the Court emphasized that difference of a few words between two trademarks do not necessarily make them distinct.
Background:
Kashmir Institute of Excellence and others (“Kashmir Institute”), has been offering coaching to students from Class 8th to Class 12th and those preparing for competitive exams like NEET and JEE. Kashmir Institute has been the registered proprietor and user of the trademark ‘KIE’ since 2013, Plaintiff no.2 (“MISSION-E”) operated under the brand name ‘MissionE coaching classes’, and Plaintiff no.3 (“HOPE CLASSES”) operated under the brand name ‘HOPE Classes’. Plaintiff no.4, formed by the amalgamation of the three Plaintiffs in November 2023, started to operate under the brand name, ‘EMERGE – KIE HOPE MISSIONe – Infinity and beyond / 
’ in January 2024. The Respondents registered the company as ‘EMERGE KIE HOPE MISSION-E PVT. LIMITED’ in April 2024 and applied for registration of the trademark.
The Respondents discovered that Emerge Classes had begun using the identical trademark, ‘EMERGE Infinity & beyond – powered by KIE / 
’ from April 2024 for similar services in Srinagar. They alleged this created confusion and exploited their reputation. The trial court, after noting that the Emerge Classes had blatantly copied the marks of the Respondents, temporarily restrained Emerge Classes from using the Respondents’ trade mark. Thus, they filed an appeal against the order before the High Court.
Grounds of Appeal:
Emerge Classes filed the Appeal on the following grounds:
- As per the Respondents, they amalgamated the company, EMERGE KIE HOPE MISSION-E PVT. LIMITED and registered it in April 2024. Hence, the Respondents could not claim goodwill or prior use.
- The two trademarks were distinct from each other.
- Even if it is assumed that the two marks were similar, since the services were meant for the student community, who are educated, there was hardly any scope for deception.
Court’s Analysis:
The Court analysed each of the aforementioned grounds in the following manner:
- Goodwill and Prior Use: the Court noted that despite the recent amalgamation, the Respondents were running reputed coaching institutions under different brand names, at least since 2013. Therefore, the amalgamation brought together the goodwill attached to each of their businesses. Additionally, the turnout of around 4000 students for the Respondents’ scholarship test demonstrated the reputation they enjoyed.
- Distinctiveness: The Court referred to the case of Parle Products (P) Ltd. Vs. J. P. & Co. Mysore, (1972) 1 SCC 618. It was noted that the deceptive similarity had to be assessed based on the overall similarity between the marks that could mislead a person into accepting one when offered by the other. By applying this principle, the Court concluded that Emerge Classes’ mark was deceptively similar to the Respondents’ mark.
- Confusion: The Court stated that the student community would likely get confused as both the coaching centres were being operated, directly or indirectly, under the brand ‘KIE’ which is a registered trademark of Kashmir Institute. It was noted that the mere difference in a few words in the two logos, did not make the two trademarks marks distinct from each other. Therefore, similarity in the marks would lead to confusion and deception.
Decision:
The Court observed that all the ingredients necessary for the grant of an injunction in an action of passing off were satisfied. Therefore, the Appellate Court upheld the decision of the trial court and dismissed the appeal. Additionally the Court also added that an Appellate Court would interfere only if the trial court has acted arbitrarily or, erred in application law or appreciation of facts.
Relevant Paragraphs:
“24) At the stage of considering the question of grant of injunction, the trial court has only to consider the pleadings of the parties and it is only after the trial of the case that it can be decided whether the aforesaid assertions of the plaintiffs are substantiated by the evidence which they may lead during trial of the case. Therefore, at this stage, on the basis of the pleadings of the plaintiffs and the documents placed on record by them, it can be, prima-facie, concluded that they did possess the good-will in the field of coaching.
25) The next question that needs to be determined is as to whether the trade mark that is being used by the appellant/defendant is deceptively similar to the trade mark that is being used by the plaintiffs. In order to determine as to whether one mark is deceptively similar to the another, the broad and essential features of the two are to be considered. The Supreme Court while elaborating on this aspect of the matter has in the case of Parle Products (P) Ltd. Vs. J. P. & Co. Mysore, (1972) 1 SCC 618, observed as under:
“9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word “Gluco Biscuits” in one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants’ wrapper is deceptively similar to the plaintiffs’ which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.”
26) From the analysis of aforesaid legal position, it becomes manifest that for determining as to whether one mark is deceptively similar to another, it is to be assessed whether there is any overall similarity between the two which is likely to mislead a person dealing with one to accept the other if offered to him.
29) As already stated, the brand name ‘KIE’ is the registered brand name of plaintiff No.1 and this brand name has been used by the defendant/appellant in its logo. By doing so, the student community is likely to get confused that both the coaching centres, one being run by the plaintiffs and the other being run by the appellant/defendant, are being operated, directly or indirectly, by the brand ‘KIE’ which stands registered in the name of plaintiff No.1. This will certainly create confusion and deception in the minds of the student community. Thus, merely because some of the words appearing in the two logos do not match with each other, does not mean that these two logos are distinct from each other. Even a cursory look on both these logos would reveal that the defendant has used the design and logo which is deceptively similar to the design and logo which is under the use of plaintiffs.
30) In addition to the above, a perusal of the brand name/logo that is being used by the plaintiffs reveals that it is an amalgamation of the brand names/trade marks that were being used by plaintiffs No.1 to 3 while they were running coaching institutes individually prior to their amalgamation. The word ‘KIE’ is the registered trade mark of plaintiff No.1 whereas the word ‘Mission-E’ was owned by plaintiff No.2 and the brand name ‘Hope Classes’ was owned by plaintiff No.3. After the amalgamation, plaintiffs No.1 to 3 have given up these brand names and assigned the same to the new entity which has come into existence. Once these trade marks/brands have been assigned by the plaintiffs No.1 to 3 to the new entity, the plaintiffs cannot only claim prior user of it but they can also claim the transfer of good- will of their brand names to the new entity. In this context, I am supported by the judgement of the Supreme Court in the case of Dhariwal Industries Ltd. & Anr. v. M. S. S. Food Products, (2005) 3 SCC 63. The relevant observations of the Supreme Corut are reproduced as under:
“7. Section 27 of the Trade Marks Act, 1999 provides that nothing in that Act shall be deemed to affect the right of action against any person for passing off goods or services as the goods of another person or as services by another person or the remedies in respect thereof. Therefore, the fact that neither party has a registered trade mark as on the date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting the plaintiff an injunction in case the plaintiff is in a position to show prima facie that it was the prior user of its mark, that it had a prima facie case and that the balance of convenience was in favour of the grant of an interim injunction. It is provided in Section 39 of the Act that an unregistered trade mark may be assigned or transmitted with or without goodwill of the business concerned. It is, therefore, possible for a plaintiff or a defendant to show that an unregistered trade mark that was being used by another person earlier had been assigned to it and that it can tack on the prior user of its predecessor.”
31) Thus, not only has the new entity come into existence prior to the defendant/appellant thereby holding prior user of the brand name ‘EMERGE KIE HOPE MISSIONE’ ‘but it also has acquired the good-will of the business of plaintiffs No.1 to 3 along with prior user of their brand names.
Therefore, all the ingredients for grant of an injunction in an action of passing off are fulfilled in the present case. The view taken by the learned trial court is perfectly in accordance with law.
32) It is a settled law that if the trial court has exercised its discretion in granting injunction, then jurisdiction of the Appellate Court to interfere is very limited. Interference can be made by the Appellate Court only in situations where it is satisfied that the trial court has acted arbitrarily or contrary to law or that findings of the trial court are perverse, capricious and palpably incorrect and are wholly untenable. If the view taken by the trial court is a possible view, the same cannot be interfered with by the Appellate Court.
33) In the light of the aforesaid legal position and the discussion made hereinbefore, there is no scope for this Court to interfere in the well-reasoned and lucid judgment passed by the learned trial court. The same, therefore, deserves to be upheld and is, accordingly, upheld. Resultantly, the appeal is dismissed.”
Citation: Emerge Classes Private Limited vs Kashmir Institute Of Excellence & Ors., Jammu & Kashmir High Court – Srinagar Bench, 7th June 2024, (FAO No.18/2024 & CM No.3278/2024).
Authored by Ms. Anjana Gopinath, Consulting & Strategy Team.
Reviewed and confirmed by Ms. Benita Alphonsa Basil, Trademark Team
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