Two education societies based in Pune are up in arms over use of the mark ORCHID in relation to providing education services/ running of a school. The present post discusses Appeal preferred by Sipra Education Society (Sipra) against the order of Pune District Court restraining them from using the mark “Spring Orchid”. Both Sipra and Pradnya Niketan Education Society (PNES) are running schools in Pune under the marks “Spring Orchid” and “The Orchid” respectively. PNES filed the suit before the District Court, Pune, for infringement and passing off to restrain Sipra from using the mark ‘Orchid’. The injunction order passed by the District Judge in favour of PNES is assailed by Sipra before the Mumbai High Court.
The gist of the contentions in the suit filed by PNES:
1. They are a trust running a secondary school under the name "The Orchid School" at Baner, Pune. It was established in the year 2004 and over the years has attained goodwill and reputation. They also have obtained registration for the mark “The Orchid School’.
2. Sipra filed application for registration of the mark “Spring Orchid” in October, 2008, claiming use since November, 2007. Sipra’s adoption and use of the word ‘Orchid’ in relation to identical services will cause confusion and deception among the trade and public and also amounts to infringement and passing off.
3. The cease and desist notice was not acted upon by Sipra and thus, they brought the suit.
Sipra in its defence stated:
A. Orchid is a flower, generic in nature and no case of infringement and passing off is made out. PNES has obtained registration in the year 2008, whereas, Sipra has started operating the school from December, 2007, and thus prior in use. Moreover, the curriculum of the school differs and there is no chance for confusion. There is delay, laches and acquiescence in the matter.
B. The District court after hearing the parties held that ‘Orchid and Spring Orchid are similar and restrained Sipra from using the mark “Spring Orchid’ in relation to providing education services/running of school.
Appeal before Bombay High Court
Sipra challenged the order by way of an appeal before the Bombay High Court and submitted that:
a) Orchid is name of flower, therefore, generic. Addition of the word ‘Spring’ makes it different from PNES mark. Students and parents will be able to distinguish between ‘Spring Orchid School’ and ‘The Orchid School’
b) Curriculum of two schools differs. There is delay, laches and acquiescence as Sipra has been using the name Spring Orchid since 2007 and notice has been issued only in 2012, suit filed in 2014 and the injunction passed in 2017.
Order passed by the trial court is a well-considered one. Suit is not merely for passing off but for infringement as well and PNES is prior user of ‘The Orchid School’ mark. As the parties are dealing in an identical line of business. i.e., education, confusion is imminent.
After hearing the parties the High Court held:
- The documents on record evidence the fact that PNES is prior adopter, user and registered proprietor of the mark ‘The Orchid School’. Moreover, Orchid is common in both the names, and the parties are admittedly dealing in education and training for school children. Thus, chances of children and parents assuming that Spring Orchid is yet another branch of Orchid School dealing in different curriculum cannot be completely ruled out. Addition of the word ‘Spring’ does not distract the deceptive similarity of the two marks.
- The argument that ‘Orchid’ is a generic word derived from name of the flower and the case laws relied on by Sipra in this regard does not help, primarily, as Orchid is a registered mark and the instant suit is not one for passing off simplicitor but infringement of trademark as well. The court further observed that though ‘Orchid’ may be a name of the flower, however, when it is used in the context of the school, it will cause confusion in the minds of the parents and students that “Spring Orchid” is a branch of ‘The Orchid School’.
- The argument regarding delay, laches and acquiescence was also negated by the court as PNES has issued notice in the year 2012, filed suit in 2104 and if there has been a delay on the part of the court in taking up the matter the party should not suffer.
In view of the above the High Court refused to interfere with the order passed by the District Court and accordingly dismissed the appeal.