Appeal granted in ‘Goenka’ trademark case

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An interesting issue arose before Delhi High Court in Goenka Institute of Education & Research (GIER) v Anjani Kumar Goenka & Anr (AKG) – the use of the expression “Goenka” as a trademark or trade name. In the judgment under challenge, AKG claimed exclusive ownership over the word Goenka, whether used alone or with other words or initials, as its trademark or trade name with respect to its educational institutions.

Since 1994 AKG has operated GD Goenka Public School, the word Goenka being a prominent and distinctive part of the institution’s name. Further, in 2003 AKG claimed ownership of the word Goenka by registering it in different classes under the Trademark Act, 1999. AKG also claimed to be a prior user of the trademark from 2000 by virtue of operating Goenka Public School in Rajasthan.

A single judge on 24 February restrained GIER from using the names “Goenka Public School” and “Goenka College of Pharmacy” for its institutions, and ordered that GIER discontinue the use of those names within four months. The order was challenged by GIER.

In its appeal GIER contended that since Goenka is a common surname it can neither be distinctive nor acquire distinctiveness. GIER further contended that the word Goenka was in prior common use by other people and institutions, including in the field of education, before its use by the respondents from 1995.

Examining the concept of honest concurrent use of trademark, the court held that AKG cannot successfully contend the infringement of its trademark Goenka because, although the trademark was registered by AKG in 2003, GIER had previously used the trademark Goenka from 2000 (when it began running Goenka Public School). Moreover, mere registration cannot afford AKG any rights, since registration without use is ineffectual.

Further, no scope for confusion and no deceptive similarity exist, because GIER is based in Sikar in Rajasthan, while AKG is based in Delhi. Both parties began using the word Goenka as part of the name of their institutions around the same time, so it can be argued that GIER is an honest concurrent user of the word Goenka. (In 1995 Goenka was used in the name of GIER’s Mohini Devi Goenka Public School, named after its trustees.)

Allowing the appeal, the court directed GIER to provide a disclaimer distinguishing its Goenka Public School from the one run by AKG, to avoid any confusion between the two. The court also directed that GIER should put the name of its trust in parentheses below the name of the school to clarify that the trust is based in Rajasthan. The court also ordered GIER to mention the name of its trust in any public advertisements, literature or brochures, and directed the institution to state that it is not affiliated to any other institution using Goenka as a trademark or trade name.

The update of court judgments is compiled by Bhasin & Co, Advocates, a corporate law firm based in New Delhi. The authors can be contacted at [email protected], [email protected] or [email protected] Readers should not act on the basis of this information without seeking professional legal advice.