ITM TRUST Vs. EDUCATE INDIA SOCIETY

JUDGEMENT

(1.) The Plaintiffs claim to have a trade mark, ITM, registered under Class 41 (educational services) since 2004. They allege infringement of and passing off in respect of this mark by the Defendant, and seek suitable injunctions. The suit is an action in trademark infringement combined with a cause of action in passing off. The petition under Cl. XIV of the Letters Patent for leave to combine the cause of action in passing off with the cause of action in infringement was contested. Leave was granted by a reasoned order and judgment of Mr. Justice Kathawalla on 22nd February 2012.

(2.) This is the present Notice of Motion's second lease of life. It was earlier dismissed on 20th July 2012, on a finding that the contesting marks were dissimilar. The Defendant's plea of honest and concurrent user was not considered. The matter was carried in appeal. The order of the learned single Judge was set aside by consent in the Appeal Court, and the matter remitted, but only for a consideration of the plea of honest and concurrent user. The question of deceptive similarity was concluded, both sides agreeing that the marks in question were identical. This was by an order dated 8th May 2013. Paragraphs 5 and 6(iii) of the appeal court order read:

(3.) With this, the controversy is now narrowed. There is a single defence to consider, that of honest and concurrent user. The question of testing the rival marks for deceptive similarity no longer survives: that stands concluded by consent and, in any event, by the order of the Division Bench in appeal.