TIME ENOUGH AT LAST: Delhi High Court confirms injunction order in favour of Triumphant Institute of Management Education

Premise of the suit:

Triumphant Institute of Management Education Pvt. Ltd. (hereinafter referred to as the “Plaintiff”) brought an action of permanent injunction against Times Coaching Centre (hereinafter referred to as the “Defendant”) before the Hon’ble Justice Jyoti Singh of the Delhi High Court, for restraining the Defendant and others acting on its behalf, from providing any services, advertising, promoting or using the mark ‘TIMES COACHING CENTRE’, the domain name www.timescoaching.in, the mobile application ‘Times Coaching’ as well as YouTube channels operated by the Defendant which also prominently featured the element TIMES. It was argued by the Plaintiff that the mark ‘TIMES COACHING CENTRE’, containing the dominant feature ‘TIMES’ was deceptively similar to the Plaintiff’s trade marks ‘T.I.M.E. – TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION’ and ‘T.I.M.E. TUTIONS’, as well as the domain www.time4education.com owned and operated by the Plaintiff. The Plaintiff claimed that use of the Defendant’s mark would cause confusion and deception among those who availed or wished to avail of the Plaintiff’s services. Such use would thereby cause infringement of the trade marks of the Plaintiff and enable the Defendant to pass off its similar services as originating from the Plaintiff.

Background of the matter:

The Plaintiff claimed that Triumphant Institute of Management Education Pvt. Ltd. was incorporated under the laws of India in 1992 and is a renowned chain of coaching institutes and training centres, operating across India, providing training for various National and State-level Examinations including CAT, GATE, CLAT, IIT-JEE, GMAT, Bank and SSC Competitive Competitions. The institutions of the Plaintiff are operated under the trade marks and style of T.I.M.E. which is an acronym for Triumphant Institute of Management Education. The Plaintiff also claimed that presently its operations were spread over 214 offices in 109 towns across the country and it trained more than 150,000 participants.

The Plaintiff’s trade marks consisting of ‘T.I.M.E. – TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION’, ‘T.I.M.E. TUTIONS’, time4education and their variants are registered in Classes 16, 38 and 41 of the NICE Classification of Goods and Services. Previously, the Plaintiff had also adopted and used the trade mark “TIME” for its services, but pursuant to a suit proceeding between Time Inc. USA and the Plaintiff herein in 2003, and as per the terms of the settlement reached between the parties therein, the Plaintiff changed its trade mark and accompanying logos from TIME to T.I.M.E. – TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION.

In May 2020, the Plaintiff became aware of the Defendant’s deceptively similar trade mark TIMES COACHING CENTRE, visually represented as

containing the leading, prominent feature TIMES. Such mark of the Defendant had been applied for registration with the Registrar of Trade Marks on a proposed to be used basis in relation to similar services as that of the Plaintiff in Class 41. The Plaintiff also discovered that the Defendant was already providing education and coaching services to students and was claiming to be the best online coaching centre in Delhi. The Defendant was also operating the website www.timescoaching.in. Accordingly, the Plaintiff proceeded to initiate trade mark opposition proceedings against the Defendant’s mark TIMES COACHING CENTRE once it was advertised in the Trade Marks Journal and simultaneously also brought the present suit for infringement of trade mark and passing off before the Delhi High Court.

Submissions of the Parties:

It was urged by the Plaintiff that the services being offered by it under the trade mark T.I.M.E. and its variants, had come to be known and recognised in trade circles within a short span of time as originating from the Plaintiff and no one else. Therefore, the Defendant’s use of the mark TIMES COACHING CENTRE wherein TIMES was the dominant feature, was a violation of the Plaintiff’s rights. Further, the domain name of the Defendant being www.timescoaching.in was also a slavish copy of the Plaintiff’s domain name www.time4education.com.

Refuting the contentions of the Plaintiff, the Defendant contended that during the pendency of the suit, it had change its trade mark from TIMES COACHING CENTRE to FUTURE TIMES COACHING CENTRE, and therefore, no relief could be claimed by the Plaintiff against the Defendant. The Plaintiff used its trade mark as T.I.M.E., with the letters separated by dots, as opposed to the Defendant which used TIMES in its mark TIMES COACHING CENTRE, and therefore the Defendant argued that the rival marks were visually, structurally and phonetically dissimilar. The Defendant also urged that not only was the Plaintiff not allowed to use TIME as a trade mark as per the terms of its settlement with Time Inc. USA in 2003, the word TIME itself was also common to trade and several entities were using TIME/ TIMES as part of their trade marks. Therefore, TIME being non-distinctive and a generic word with a dictionary meaning, such word cannot be monopolized by the Plaintiff.

Ratio of the Hon’ble Justice Jyoti Singh

The Hon’ble Justice Jyoti Singh stated that the acronym T.I.M.E was the dominant part and essential feature of the trade marks of the Plaintiff and the Plaintiff can assert a right on the exclusive use of T.I.M.E on the strength of its registered trade marks. Upon visually comparing the rival marks, it was clear that the Defendant had copied the dominant and essential part of Plaintiff’s trade mark, being T.I.M.E. The Defendant had appropriated the Plaintiff’s trade mark and come up with TIMES, to use such mark for providing its services. Upon comparing T.I.M.E. and TIMES, the Court came to the conclusion that the rival marks are phonetically identical and that the Plaintiff was right in its contention that confusion between the two marks on account of phonetic identity was bound to happen. The fact that the Plaintiff’s trade mark used T.I.M.E. in the manner where the letters were separated by dots was a trivial dissimilarity in the Court’s opinion and did not overcome the phonetically identical nature of the two marks. Even the changed mark FUTURE TIMES COACHING CENTRE was unlikely to reduce deception and confusion as it still contained the leading feature TIMES. The Court observed that the anti-dissection rule does not impose an absolute embargo on consideration of dominant and essential parts of a whole trade mark. The principle of anti-dissection and identification of ‘dominant mark’ are not antithetical to one another and viewed holistically, they complement each other.

The Hon’ble Justice Jyoti Singh agreed that the acronym ‘T.I.M.E.’ had acquired distinctiveness in favour of the Plaintiff, and the services being offered by the Plaintiff using such acronym had come to be associated with the Plaintiff and no one else. The Plaintiff had succeeded in establishing that there had been long and continuous use of its trade marks consisting of the acronym ‘T.I.M.E.’ and even though the Plaintiff did not have trade mark registrations in TIME/ TIMES, stellar goodwill and reputation had accrued in favour of the Plaintiff with respect to the acronym ‘T.I.M.E.’

The Defendant had cited several TIME/ TIMES formative trademarks registered in other classes of the NICE Classification of Goods and Services in order to establish that such word was non-distinctive and common to trade. However, the Court stated that considering that the services of the Plaintiff and the Defendant were in Class 41 and the Plaintiff is the prior adopter and registered proprietor of the ‘T.I.M.E.’ formative trade marks in such class, citing other TIME/ TIMES formative trademarks in other classes will not inure to the benefit of the Defendant. Hence, confusion and deception was bound to occur in the minds of students who would wish to avail of the services of the Plaintiff. This was especially the case since the Defendant was promoting its services in a manner that the word TIMES was appearing very prominently and conspicuously in comparison to the other parts of mark TIMES COACHING CENTRE/  The very fact that the Defendant had chosen to prominently adopt the word TIMES as a part of its mark, without providing any cogent reason as to why it did so, that too in respect of similar educational and training programmes as that of the Plaintiff, was indicative of its intent to confuse students and encash upon the Plaintiff’s reputation. Therefore, in addition to infringement of trade marks, the Defendant was also guilty of passing off its services as those originating from the Plaintiff.

Regarding the action of contempt brought by the Plaintiff against the Defendant for changing its mark TIMES COACHING CENTRE to FUTURE TIMES COACHING CENTRE during the pendency of the suit when the Plaintiff was enjoying an order of ad-interim injunction against the Defendant, the Hon’ble Justice Jyoti Singh held that there had been no willful disobedience or voluntary act of omission by the Defendant in changing its mark, and stated that power to punish for contempt of court should only be invoked under grave circumstances when a clear case of disobedience has been made out. By changing its mark, the Defendant had no intention to violate the injunction order passed by the Court, and the Defendant had made such change under the impression that the new mark would be outside the scope of the Court’s interim order of injunction. Accordingly, the Court dismissed the contempt application.

In conclusion, the Hon’ble Justice Jyoti Singh confirmed the interim injunction order passed against the Defendant with regard to use, promotion or advertisement of its mark ‘TIMES COACHING CENTRE’, the domain name www.timescoaching.in, the mobile application ‘Times Coaching’ as well as YouTube channels operated by the Defendant, with the modification that the injunction order would also apply to the newly adopted mark FUTURE TIMES COACHING CENTRE of the Defendant. However, the Defendant was at liberty to provide its services under the mark FUTURE COACHING CENTRE, without using the word TIMES.

The domain www.timescoaching.in appears to have been taken by the Defendant at the time of writing of this article.

Key takeaways

• Even though the Plaintiff did not have trade mark registrations in TIME/ TIMES, the Court decreed that goodwill and reputation had accrued in favour of the Plaintiff through use of the acronym T.I.M.E., and that the Defendant’s mark containing the leading feature TIMES was phonetically identical to the Plaintiff’s trade mark.
• The anti-dissection rule does not impose an absolute embargo on consideration of dominant and essential parts of a whole trade mark. The principle of anti-dissection and identification of ‘dominant mark’ are not antithetical to one another and viewed holistically, they complement each other.
• The terms of settlement between Time Inc. and the Plaintiff by which the Plaintiff had to change its trade mark from TIME to T.I.M.E. – TRIUMPHANT INSTITUTE OF MANAGEMENT EDUCATION, would have no relevance in the present suit, and will not inhibit the Plaintiff’s ability to protect its rights in the trade mark T.I.M.E. by initiating action against other third parties using TIME/ TIMES in their trade marks, especially with respect to similar services.
• The power to punish for contempt of court should only be invoked in grave circumstances when a clear case of disobedience of the Court’s orders has been made out.

Soumik Chakraborty, BA., LL.B, Advocate

Having worked in capital market with one of the leading Corporate Law firms in India for a while, Soumik decided to switch and pursue a career in IP laws about 6 years back. He is currently a part of the trademarks where he advises clients in areas of fast moving consumer goods, food and beverages, healthcare, clothing and footwear, among others. He is also involved in trademark oppositions and rectification proceedings and also design cancellation actions. Additionally, he assists the litigation team on various matters relating to trademarks and designs.

Related Posts