The infringement battle of the ‘Brilliant’ schools

Recently, the Chhattisgarh High Court, in the case of Brilliant Public School Society v. Brilliant Public School Sitamarhi, granted an interim-injunction in favour of the plaintiff, overturning the decision of a lower court. The plaintiff, Brilliant Public School Society, had instituted a suit for infringement and passing off against the Defendant, Brilliant Public School Sitamarhi, and had sought for an injunction, restraining the defendant from using the mark ‘Brilliant Public School’ as its trade name for educational services. According to the plaintiff, the goodwill and reputation of its schools, established since the year 2000, was being adversely affected and diluted due to the Defendant’s unauthorized use of an identical and deceptively similar mark ‘Brilliant Public School’ as that of the plaintiff’s registered trademark, thus, causing immense confusion in the market and amongst the member of the trade.

Contrariwise, the Defendant’s stated that their school had been running since the year 1995, first as a coaching institute namely, ‘Brilliant Coaching Institute’ and then as ‘Brilliant Public School’, thus emanating sufficient goodwill and reputation amongst the relevant member of the trade. Moreover, the defendant argued that since both the parties’ schools were situated in two different Indian states, the chances of any confusion or deceptive association between the two marks stands mitigated. Further, the plaintiff had claimed similarity between the two marks based on the use of the words ‘Brilliant Public School’, however, when compared, the two marks couldn’t be said to be either identical or even deceptively similar as the setting of words, logos and the shape of the two trademarks are entirely different.

Based on the arguments put forth by both the parties, the trial court rejected the plaintiff’s application for an interim injunction, placing heavy reliance on the case of Skyline Education Institute (India)(P) Ltd. v. S.L. Vaswani (2010) 2 SCC 142, wherein the Supreme Court observed that the word ‘Skyline’ has acquired the status of a generic word. On the same analogy, the trial court observed that the word “Brilliant” is a generic word, commonly used in the field of education. The trial court also held that the word ‘Brilliant’ had not acquired such distinctiveness for the Plaintiff to make out a strong prima facie case of interim injunction since the term “Brilliant” is of publici juris’, the logos of both the parties were different and use of the name ‘Brilliant Public School’ by the defendant will not create confusion in the mind of the relevant member of the trade.

Subsequently, the Plaintiff filed an appeal challenging the validity and correctness of the lower court’s order. After carefully deliberating the contentions presented by both the parties, the evidence placed on record, and the judicial precedents relied upon, the High Court observed that the Appellant- Plaintiff was the registered proprietor of the prominent trademark ‘Brilliant Public School’, which incidentally happened to be the most prominent trademark of the Respondent-Defendant as well. In any case, according to the High Court, the AppellantPlaintiff, on a prima facie consideration, had prior rights over the trademark ‘Brilliant Public School’ since the year 2000 and that the defendant had failed to establish any use of the words ‘Brilliant Public School’ or the word ‘Brilliant’ before 2000, as the material placed on records only showcased the use of the mark ‘Brilliant Public School’ by the defendant since and after the year 2007.

The High Court further held that the reliance placed on the Skyline case (supra) by the lower court was completely misplaced and arbitrary, as in the earlier case, the mark “Skyline” was being used by a large number of companies as part of their name/ nomenclature, thus rendering the same a generic word. Whereas, in the present case, there was hardly any prima facie material placed before the lower court by the Respondent-Defendant to establish the use of the mark ‘Brilliant’ or ‘Brilliant Public School’ by a large number of institutions in the country or abroad. Thus, it was held that the lower Court, misdirected itself in applying the ratio of the decision in the case Skyline (supra), which was distinguishable on facts and ignoring the settled principles of deceptive similarity and the likelihood of confusion. Thus, the High Court had set aside the lower court’s order, granted a temporary injunction in favour of the AppellantPlaintiff, and restraining the Respondent-Defendant from using the trademark ‘Brilliant Public School’ with their educational institution, till the final disposal of the present suit.

The above case is an appropriate example where an appellate court had to interfere with the decision of a lower court, which in the exercise of its discretion refused to grant an injunction, where the unauthorized use of a registered mark by another trader is blatantly evident.

Case study by Manisha Singh and Keya Joshi

Article was 1st published on Lexology.