November 03, 2011
Ex students of St. Stephens College may form an alumnus association but may not use Name of St. Stephens: Delhi High Court
In St. Stephens College, Delhi (“Plaintiff”) v St. Stephens College Alumni Association and Others (“Defendant”) (CS(OS) 2364/2011), the Delhi High Court has issued an injunction restraining the Defendants (who are members of the St. Stephens College Alumni Association) from naming their organization with a name that may show association with the college and also from using the official crest, logo, motto and domain name of the Plaintiff. However, the Delhi High Court did allow the Defendants to use the name “Association of Old Stephanians” along with the requirement that they would to display on their website an appropriate disclaimer to expressly clarify that they are not the official alumni association of the Plaintiff and have no affiliation with the Plaintiff.
The Plaintiff is a leading and well renowned educational institution. The Defendants who are former students of the Plaintiff, formed the Defendant association and subsequently registered it as a society under the Societies Registration Act, 1860. The Defendants at the time of such registration submitted an affidavit stating therein that there are no other societies with identical or resembling names.
The Plaintiff, whilst alleging this to be a mala fide act on the part of the Defendants (committed on account of the fact that the Plaintiff had withdrawn its earlier invitation extended to one of the Defendants to represent the alumni on the governing body of the Plaintiff) filed an action for passing off, seeking an injunction restraining the Defendant from using its current name, the Plaintiff’s crest, motto and logo and representing themselves as the alumni association of the Plaintiff or from operating their website (http://ststephensalumni.co.in) wherein the Plaintiff’s name was used. Further, the Plaintiff also sought to restrain the Defendants from interfering in the association, management and affairs of the Plaintiff.
Arguments before the High Court:
Arguments of the Plaintiff
The Plaintiff contended that:
Arguments of the Defendant
The Defendant contented that:
However, the Plaintiffs refused to accept this and maintained that the Defendants, despite being former students of the Plaintiff had no right to use the words “St. Stephens College”, St. Stephens” or “Stephanians”.
The Plaintiff had not registered the name of the college as their trademark. The High Court noted that there exists no exclusive right in a name unless such name has been granted statuary protection. However, the courts do have power to restrain an organization from adopting a name which is similar to the name of an existing organization if:
The Delhi High Court accepted that prima facie the use of the name “Association of Old Stephanians” by the Defendants coupled with a disclaimer (similar to the one proposed by the Defendants in their submissions) is sufficient to ensure that no former student of the Plaintiff is confused or mistaken with regards to the identity of the official alumni association of the Plaintiff. The court also made the following observations in support of the above conclusion:
During the course of the arguments the court considered various precedents in which the courts had stepped in to restrain actions of passing off. For instance in the case of International Association of Lions Clubs vs. National Association of Indian Lions & Ors (2006(33)PTC79(Bom)) the defendant were making use of the words ‘Lion’, ‘Lioness’ and ‘Leo’ in its name and emblem without any due justification. The court restrained the defendant from such use as the words were synonymous with the Lions Club which is an internationally reputed organization.
However, the court distinguished the instant case from the abovementioned decision as in the present case the Defendants have a just and valid association with the Plaintiff and (assuming they form an association named “Association of Old Stephanians”) are neither using the name of the Plaintiff nor seeking to exploit it for any commercial purpose. Since they are an association of former students of the Plaintiff, it is essential for them to use a name which will indicate that membership is only open to former students.
Therefore, whilst the court passed an injunction restraining the Defendants from using the current name of the association and also from using the official crest, logo, motto and domain name containing the name of the Plaintiff, it allowed them to use the name “Association of Old Stephanians” with the requirement that they include an appropriately worded disclaimer on their website.
The main purpose of the common law right of passing off is to ensure that one is not able to pass off its business or goods as those of another more known organisation and thus exploit the goodwill and reputation built by such other organisation over a period time. In order to determine whether an injunction is warranted in the interest of the public who may likely to be deceived or confused on account of similarity of two names, the court will generally merely see if there lies any probability of confusion even if no case of actual deception or damage is proved.
However, in this instant decision it is clear that in an action of passing off it also becomes important to consider the purpose for which a particular name (even if relatively similar to any other existing name) is being used by a person as a part of its name.