Education is not a product of consumption- test of confusion has to be different
The matter pertains to use of the mark/name CHIREC for educational institute (Higher Secondary and High School), one in Hyderabad and the other in a remote district (Madhugiri Taluk) in the state of Karnataka. CHIREC is allegedly a coined word derived from ‘Children’s Recreation Centre’. Both parties assert rights over the mark/name CHIREC. The post discusses the High Court Ruling in an appeal filed by Shakti Schools Private Limited, (Shakti Schools) against the order of the District judge dismissing their application for injunctive relief against CHIREC Public School (CPS).
Facts and contention of the Parties
The Plaintiff, Shakti Schools Private Limited, (Shakti Schools) claims that:
- They are using the mark ‘CHIREC’ since the year 1989 with distinct colours.
- The distinctive design and manner of representation has earned reputation over the years and they offer three curricula, namely (1) International Baccalaureate Diploma Programme (IBDP) (2) Cambridge International Examinations and (3) Central Board of Secondary Education (CBSE).
- The mark CHIREC is a coined word derived from ‘Children’s Recreation Centre’.
- On account of registration in Class 41 since 2016 and long extensive use, the mark/name CHIREC is exclusively associated with them.
- The Defendant, CHIREC Public School’s (CPS) adoption and use of an identical name, causes confusion and amounts to trademark infringement.
CPS in its defence contended:
- It is a registered charitable trust by name Pavan Education and Charitable Trust, which is not made a party and the suit is therefore to be rejected for mis-joinder of necessary parties.
- They are engaged in educational activities since 2005 in the State of Karnataka to impart education to rural masses and follow Karnataka State Board syllabus.
- Their adoption is bonafide and an honest concurrent user of more than 13 years. They adopted the name CHIREC in 2005 after conducting search in the Trademark Registry records.
- Shakti’s claim of using the CHIREC mark/name since 1989 is not correct. While they filed the application for registration of the mark CHIREC claiming use since 1989, however, has not filed any documents in support.
- Shakti has failed to show goodwill or reputation beyond Hyderabad.
The District Court after hearing the parties dismissed Shakti’s injunction application holding:
- Shakti’s registration is of the year 2016, however, claim of use of the mark since 1989 cannot be established without trial, whereas, Chirec is using the mark since 2007.
- Comparison of the rival marks show differences in logo, font and colour. Further, parents would not be carried away by the use of name ‘CHIREC’, more so, when the schools are located in different places and the curricula differ.
- Education is not a product of consumption unlike medicine or food and a customer would not be misled since the issue relates to an educational institution.
Aggrieved by the District court’s denying injunction, Shakti filed appeal before the Division Bench (two-Judge) of the Telangana High Court.
High Court’s findings and order
- Though Shakti has filed registration certificate of the year 2016, and documents pertaining to affiliation, curriculum, honours etc., there is no document to substantiate their claim of use since 1989.
- The documents on record evidence that Pavan Education and Charitable Trust, Madhugiri, which runs Chirec Public School, was granted permission in 2005, to start Kannada Medium pre-primary school from Classes 1 to 5. They have also filed documents such as renewal of recognition, adoption of the name ‘Chirec Public School’ by the said trust in 2007 after obtaining registration under the Karnataka Education Act, 1983, subsequent renewals granted in 2013, by Zilla Panchayath, Tumkur, etc,.
- Prima facie it appears that CPS has been using the name ‘Chirec’ from at least 2007, whereas, registration of the trade mark ‘CHIREC’ by Shakti is only in 2016. Except one newspaper advertisement published in 1989 about its nursery school, there is no document to show that Shakti has been using the word ‘CHIREC’ for imparting education from 1989.
- The rival logos are different and it is unlikely that the parents would be misled into thinking that CPS is using Shakti’s trade mark, more so, when the curricula is also different.
- Chirec Public School is confined to Madhugiri Taluk in Tumkur District of Karnataka State which is a remote place, whereas, Shakti’s school is located in the city of Hyderabad.
- The defence of prior user and honest concurrent user by CPS cannot be ignored and as Shakti’s registration is only of the year 2016, the court below was right in denying injunction.
In light of the above the High Court dismissed the appeal filed by Shakti.