In a significant judgment concerning trademark protection in the education sector, the Delhi High Court Division Bench (DB) upheld the order of the learned Single Judge refusing to grant an interim injunction in a dispute between two well-known civil services coaching institutes, Vajiram and Ravi Isa Study Centre LLP and Vajirao and Reddy Institute Pvt. Ltd.

The decision reiterates several well-established principles governing passing off actions, including the necessity of proving goodwill in the mark relied upon, the importance of assessing composite marks as a whole, the effect of delay and acquiescence, and the limited scope of appellate interference with discretionary orders granting or refusing interim injunctions.

Background

The Plaintiff, Vajiram and Ravi Isa Study Centre LLP, traces its origins to an institute established under the name “VAJIRAM & RAO”, which was renamed “VAJIRAM & RAVI” in 1976. The Plaintiff owns registered trademarks for both “VAJIRAM & RAO” and “VAJIRAM & RAVI”, including registrations for their respective word and device marks.

The Defendant, Vajirao and Reddy Institute Pvt. Ltd., has been imparting coaching and training for the Civil Services Examination since at least 2007 under the mark “VAJIRAO & REDDY INSTITUTE” and is the registered proprietor of a device mark incorporating the said expression.

Although the Plaintiff did not object to the Defendant conducting a similar coaching business, it contended that the Defendant’s use of the word “VAJIRAO” was deceptively similar to the Plaintiff’s marks “VAJIRAM”, “VAJIRAM & RAO”, and “VAJIRAM & RAVI”. According to the Plaintiff, the Defendant had dishonestly adopted the impugned mark to exploit the goodwill and reputation associated with its long-standing coaching institute. The Plaintiff, therefore, instituted a suit for passing off, dilution and unfair competition, seeking an interim injunction restraining the Defendant from using the impugned mark.

The learned Single Judge declined to grant interim relief, holding that the rival marks, when viewed as a whole, were sufficiently distinct and that the Plaintiff had failed to establish a prima facie case of consumer confusion. Aggrieved by the refusal of interim relief, the Plaintiff preferred an appeal before the Division Bench.

Plaintiff’s Case

The Plaintiff contended that the rival marks were phonetically, structurally and visually similar, and that the Defendant’s use of “VAJIRAO” in its advertisements, study materials, website and domain name was likely to confuse students, as both parties operated in the same civil services coaching market.

The Plaintiff argued that it became aware of the Defendant’s use only in December 2018 and that the learned Single Judge erred in relying on delay and acquiescence, since delay cannot defeat an injunction where the Defendant’s adoption is dishonest.

The Plaintiff further argued that the Defendant’s standalone use of “VAJIRAO”, particularly in its domain name, reflected a dishonest attempt to exploit the Plaintiff’s goodwill, and that the Defendant’s registration of a composite device mark did not confer exclusive rights over the individual word elements.

Defendant’s Defence

The Defendant supported the findings of the learned Single Judge and argued that the rival composite marks were visually, structurally and phonetically distinct when compared in their entirety.

The Defendant argued that the Plaintiff had failed to establish “VAJIRAM” as the dominant element of its marks and, having been aware of the Defendant’s use since at least 2009 through common advertisements, had acquiesced to such use under Section 33 of the Trademarks Act.

The Defendant maintained that “VAJIRAO & REDDY INSTITUTE”, together with its logo and overall presentation, was sufficiently distinctive and incapable of misleading aspirants preparing for the Civil Services Examination.

Findings of the Division Bench

Plaintiff’s Conduct During the Suit

Before examining the merits of the appeal, the Division Bench expressed concern regarding the Plaintiff’s conduct in prosecuting the suit. Although the suit had been instituted in 2019 and issues were framed in 2020, the Plaintiff had failed to commence recording of evidence despite filing witness affidavits and despite the appointment of a Local Commissioner.

The Court noted that despite the suit being pending since 2019, the Plaintiff had failed to examine any witness by 2026, reflecting a lack of diligence and an absence of evidence to establish goodwill in “VAJIRAM” or likelihood of confusion.

Composite Marks Must Be Compared as a Whole

The Division Bench agreed with the learned Single Judge that the Defendant’s mark could not be dissected by isolating the word “VAJIRAO” from the composite mark “VAJIRAO & REDDY INSTITUTE.”

Applying the anti-dissection principle, the Court held that the rival composite marks were visually, structurally and phonetically distinct when considered as a whole, making confusion unlikely. It also noted that the Plaintiff had not seriously challenged this finding in the appeal.

Failure to Establish Goodwill in “VAJIRAM”

The Division Bench held that the Plaintiff failed to establish prima facie goodwill or reputation in the standalone mark “VAJIRAM”, observing that no evidence of sales, advertising or market recognition had been produced. Reiterating settled law, the Court held that goodwill in a passing off action cannot be presumed and must be proved through cogent evidence.

No Likelihood of Consumer Confusion

The Division Bench held that the Plaintiff failed to establish any prima facie misrepresentation or likelihood of confusion. It agreed that UPSC aspirants were discerning consumers who recognized the two coaching institutes as distinct entities, making consumer confusion unlikely.

Delay and Acquiescence

The Division Bench upheld the learned Single Judge’s findings on delay and acquiescence, holding that the Plaintiff’s claim of first becoming aware of the Defendant in 2018 was implausible given the Defendant’s continuous use since 2007 and both parties’ concurrent advertisements since 2009. The Court observed that the Plaintiff’s prolonged inaction allowed the Defendant to build its own goodwill, weighing against the grant of interim relief.

Essential Ingredients of Passing Off Not Established

The Division Bench held that the Plaintiff failed to establish the essential ingredients of passing off, including goodwill, deceptive similarity, likelihood of confusion and resulting damage. Consequently, it found no case for granting interim protection.

Limited Scope of Appellate Interference

The Division Bench also reaffirmed the settled principle that appellate courts ordinarily do not interfere with discretionary orders granting or refusing interim injunctions unless the exercise of discretion is shown to be arbitrary, perverse or contrary to settled legal principles.

Finding no such infirmity in the order of the learned Single Judge, the Division Bench declined to interfere.

Directions for Expeditious Trial

While dismissing the appeal, the Division Bench criticized the Plaintiff’s lack of diligence in prosecuting the suit, observing that it appeared more interested in obtaining interim relief than pursuing a final decision on merits. It directed the Plaintiff to complete its evidence within a fixed timeline, failing which the suit could be dismissed for non-prosecution.

Conclusion

The decision is a reminder that passing off actions are founded on evidence rather than assertion. A plaintiff seeking interim protection must establish goodwill in the mark relied upon, demonstrate a real likelihood of consumer confusion, and act promptly upon becoming aware of the alleged infringement. The judgment reinforces the anti-dissection principle by emphasizing that composite marks must be assessed as a whole.