Facts in brief

The Plaintiff claims they are running four schools under the name ‘Brilliant Public School’ in the state of Chhattisgarh. By use since 2000, they have acquired fame and reputation over the mark. The mark ‘Brilliant Public School’ is registered in class 41 since 2015. The Plaintiff has objected to the Defendant’s adoption and use of the mark/name “BRILLIANT PUBLIC SCHOOL.” The Plaintiff has alleged that the use amounts to trademark infringement and passing off. The use will confuse the students and parents who would wrongly assume an association/affiliation with the Plaintiff. Thus, Plaintiff seeks an interim injunction against the Defendant.

The Defendant contends that their school is not situated in Chhattisgarh state but the neighbouring state of Bihar. They are running the school since 1995, initially in the name of ‘Brilliant Coaching Institute’ and then as “Brilliant Public School, Sitamarhi”. They registered the domain www.brilliantpublicschool.com in the year 2011 prior to Plaintiff and their trademark application for “Brilliant Public School, Dumra Road, Rajopatti, Nahar Chowk, Sitamarhi, Bihar” is pending registration. The rival marks and logo, when compared as a whole, are not similar. Plaintiff has no prima facie case, and balance of convenience is not in their favour.

The trial court dismissed the injunction application holding that (1) “Brilliant” is a generic word commonly used in the education field (2) students and parents are not laymen and are expected to make an informed choice and (3) the logos compared as a whole are not similar.

The Plaintiff aggrieved by the trial court’s denying injunction filed an appeal before the Division Bench (two-Judge) of the Chhattisgarh High Court. The post discusses the decision in Appeal.

Main grounds in Appeal

1. The District Court’s finding that the word ‘Brilliant’ is generic is not correct as there are no materials on record to substantiate this contention.  
2. The District Court erred in not granting injunction considering that Plaintiff has obtained registration and is entitled to statutory protection. 
3. The defence that ‘Brilliant’ is a generic word is not sustainable as the Defendant has also applied for registration of the mark containing the word ‘Brilliant’.

Defendant argues:

1. The District Court has meticulously considered the pleadings and facts and rejected the application and, thus, requires no interference. 
2. The Defendant was using the name “Brilliant” since 1995 and had set up Brilliant Coaching Institute and is prior user and, therefore, cannot be restrained at this stage.
3. The rival logos, when compared side by side, there is no similarity. “Brilliant” is publici juris, and none can claim monopoly and claim based on infringement of a trademark is not made out. Moreover, the parties are operating in different states.

The High Court after considering the pleadings, arguments and case laws held:

• The Plaintiff has a registration for the mark “BRILLIANT PUBLIC SCHOOL”, which is the most prominent part of the Defendants’ trademark used for their institution. The Defendant has applied for registration of trademark but not registered as yet so as to say that their trademark with variation in description and details only incidentally carries the name “BRILLIANT PUBLIC SCHOOL”.
• The Defendant’s contention that though both the parties use the word “BRILLIANT PUBLIC SCHOOL”, the rival logos, if kept side by side is not identical and give a different pictorial impression is not sustainable. It is well settled that while judging whether there is infringement, the Court has to consider the overall impression of the mark and not by comparing the dissimilarities in the two marks.
• The District Court’s finding that the word ‘Brilliant’ is generic will not hold good as there is no material on record to substantiate user of “Brilliant” or “BRILLIANT PUBLIC SCHOOL” by a large number of institutions in the country or abroad.
• Though the scope of interference in appeal is limited, the appellate Court can interfere where the lower Court acts arbitrarily, capriciously, or perversely in the exercise of its discretion.
• In the instant case, Plaintiff has established operating their school under the trademark “BRILLIANT PUBLIC SCHOOL” since 2000, whereas, materials on record show Defendant started school in the name of “BRILLIANT PUBLIC SCHOOL” only in the year 2007 and not before that. 

In light of the above, the High Court allowed the appeal set aside the order of the trial court, and restrained the Defendant from using the trademark “BRILLIANT PUBLIC SCHOOL” till the disposal of the suit.