Delhi High Court Grants Ex-Parte Injunction To Vajirao & Reddy Institute; Restrains ‘Bajirao IAS Academy’ From Using Deceptively Similar Mark In Civil Services Coaching

Delhi High Court Grants Ex-Parte Injunction To Vajirao & Reddy Institute; Restrains ‘Bajirao IAS Academy’ From Using Deceptively Similar Mark In Civil Services Coaching

Introduction

The present commercial suit has been instituted by the Plaintiffs seeking protection of their registered trademark VAJIRAO & REDDY INSTITUTE against alleged infringement and passing off by the Defendants, who are stated to be operating under the mark BAJIRAO IAS ACADEMY and allied variations. The Plaintiffs also sought urgent ex-parte interim relief to restrain the Defendants from using the impugned mark and from operating websites and social media handles under the deceptively similar name.

Factual Background

Plaintiff No. 2, Mr. S.S. Chaudhary, established a coaching institute under the name “Vajirao & Reddy Institute” in 1995 at Agra for imparting coaching to aspirants of Civil Services Examinations at all three levels—Preliminary, Main and Personality Test. The name “VAJIRAO” was adopted in honour of the historical figure Bajirao, with a deliberate modification of the initial letter, and the addition of “Reddy” was in tribute to a mentor of Plaintiff No. 2. The Plaintiffs claim continuous and extensive use of the mark since its adoption.

The Plaintiffs shifted operations to Delhi in 2000 and continued to operate coaching centres under the mark VAJIRAO & REDDY INSTITUTE/VAJIRAO INSTITUTE, with “VAJIRAO” as the dominant feature. The Plaintiffs secured registration of the trademark VAJIRAO & REDDY INSTITUTE in Class 41 on 07.09.2009. They also registered multiple domain names incorporating “Vajirao” and claim to have invested substantial sums in advertising and promotion, including digital platforms and social media. The Plaintiffs assert a significant presence on YouTube with lakhs of subscribers and crores of views

To demonstrate goodwill and reputation, the Plaintiffs placed on record detailed data regarding student selections and top ranks secured in Civil Services Examinations over the years, including multiple All India Rank 1 holders in recent years. The Plaintiffs contend that the mark VAJIRAO has become distinctive and is strongly associated with their coaching services.

The grievance of the Plaintiffs is that the Defendants are operating under the name BAJIRAO IAS INSTITUTE/BAJIRAO IAS ACADEMY and using a deceptively similar logo and trade dress. The Defendants are allegedly using the impugned mark on websites and social media platforms including YouTube, Facebook, LinkedIn and a Google Play application. It is alleged that Defendant No. 3 is a former employee of the Plaintiffs and that the adoption of the impugned mark is dishonest and intended to trade upon the Plaintiffs’ reputation.

Procedural Background

The Plaintiffs filed the present commercial suit along with applications seeking exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, exemption from filing certain documents in English translation, and an application under Order XXXIX Rules 1 and 2 CPC for grant of ex-parte interim injunction.

The Court, relying on the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815, granted exemption from pre-institution mediation in view of the urgent interim relief sought. Exemption from filing English translations and clearer copies of documents was also granted, subject to filing the same within four weeks.

Upon hearing learned Senior Counsel for the Plaintiffs and perusing the pleadings and documents, the Court proceeded to consider the prayer for interim injunction.

Issues

1. Whether the Defendants’ mark BAJIRAO IAS ACADEMY and related variations are identical or deceptively similar to the Plaintiffs’ registered trademark VAJIRAO & REDDY INSTITUTE.

2. Whether the Defendants’ use of the impugned mark amounts to trademark infringement and passing off.

3. Whether the Plaintiffs have made out a prima facie case for grant of ex-parte interim injunction.

4. Whether the balance of convenience and irreparable injury lie in favour of the Plaintiffs.

Contentions of the Parties

The Plaintiffs contended that the mark VAJIRAO & REDDY INSTITUTE is registered, extensively used and has acquired substantial goodwill and distinctiveness over nearly three decades. It was submitted that “VAJIRAO” is the essential and dominant feature of the registered mark and that the Defendants’ adoption of “BAJIRAO” in the same field of civil services coaching is phonetically and visually similar, likely to cause confusion among aspirants.

The Plaintiffs further contended that both parties operate in identical trade and cater to the same class of consumers, namely civil services aspirants, who may be misled into believing an association between the two institutions. It was argued that the Defendants’ adoption is dishonest, particularly in view of the alleged association of one of the Defendants with the Plaintiffs in the past. Despite issuance of a cease and desist notice, the Defendants allegedly continued the infringing activities. None appeared on behalf of the Defendants at the stage of consideration of the interim relief.

Reasoning and Analysis

Upon consideration of the plaint and documents, the Court observed that the Plaintiffs are the registered proprietors of the trademark VAJIRAO & REDDY INSTITUTE and have demonstrated long-standing use and substantial goodwill in the field of civil services coaching. The bench of Justice Tushar Rao Gedela noted that both parties operate in the same line of business with an identical consumer base.

Prima facie, the Court found that the marks VAJIRAO and BAJIRAO are phonetically similar and capable of causing confusion to an unwary consumer of average intelligence. Given the identical nature of services, such similarity was likely to deceive or confuse students seeking civil services coaching. The Court observed that continued use of the impugned mark would cause irreparable injury to the Plaintiffs’ goodwill and reputation.

The balance of convenience was held to be in favour of the Plaintiffs as registered proprietors of the mark. In view of the prima facie case, likelihood of confusion and potential irreparable harm, the Court found it appropriate to grant ex-parte ad interim injunction.

Decision

The Court restrained the Defendants, their directors, franchisees, licensees, distributors and agents from using the mark BAJIRAO IAS ACADEMY or any other mark identical or deceptively/phonetically similar to VAJIRAO & REDDY INSTITUTE in relation to coaching and training services for Civil Services Examinations. The Defendants were further restrained from using the impugned mark on study material, websites, social media handles and digital platforms.

The Defendants were directed to take down and remove the offending website and social media handles, including YouTube, Facebook, LinkedIn and the Google Play application bearing the impugned name.

Notice was issued in the application, with directions for filing of reply and rejoinder within stipulated timelines. The plaint was directed to be registered as a suit and summons were ordered to be issued. The matter was listed before the Joint Registrar (Judicial) for completion of service and pleadings and thereafter before the Court for further proceedings.

In this case the plaintiff was represented by Mr. Yash Raj Singh Deora, Senior Advocate alongwith Mr. Sameer Abyankar, Mr. Rahul Kumar, Mr. Aakash Thakur and Mr. Priyesh Srivastava, Advocates.