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The Shri Ram Schools Trade Mark Saga!

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.

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