The British School Case & Trade Marks for Education Services in India
A Delhi High Court ruling yesterday in The British School Society v. The British International School has caught my interest. In it, Mr Justice Khanna restrains British International, the Chennai-based Defendants, from using their school name. The Delhi-based Claimants’ trade mark infringement claim over ‘The British School’ is upheld.
Mr Justice Khanna offers three reasons. First, the Claimants have use since 1963, which handily outstrips the Defendants’ use since 2005. Second, the trade marks — though represented distinctly differently — are similar enough when compared as a whole.
Finally, the Defendants’ challenges to the manner of the Claimants’ registration are not good enough to interfere with an interim motion for injunction.
The Skyline Rule & Exceptions
The test for similarity of trade marks involving generic words in the field of education services is currently occupied by January 2010’s Supreme Court decision in Skyline Education v. Vaswani. Skyline does not travel very far in analytical terms. However, it does apply directly to education services a broad rule excepting generic words even if the claim is secured by reasonable priority of use.
The decade or so since Skyline has seen precedent fall into its slipstream quite uniquely. Later cases have, in effect, supplied the analytical categories to which the Skyline rule does not attach. In this sense, these cases supply, in the opposite direction, the analytical heft that Skyline itself lacks. There are four such categories, for mine. (I offer these off the cuff at present; it is, of course, possible to add and delete categories from this rendition.)
Apeejay in December 2014 declared it was uncomfortable with trademarky use that suggested an association with the core field of operation of prior using Claimants. VIT in June 2015 ruled that a generic acronym would work acceptably to signal education services if the acronym was well-known. DPS in April 2016 extended trade mark protection to education service Claimants in allied classes because the later use was blatant and identical. Goenka in September 2018 came down against an identical education services trade mark by assuming confusion, both among unwary students claiming the education as well as parents purchasing that education for them. Under parallel facts, Amity in October 2018 built on this assumption further to say that education is a class of services in which “any chance of confusion should be completely avoided.”
To be clear: Within these bounds, the law presumes consumer confusion, and comes down against later users. Outside these bounds, however, it stands to reason that Skyline still applies. (It is worth saying here that these lines of exception, save for VIT, are within Mr Justice Khanna’s field of vision in British School.)
The Finding
What falls for assessment in British School, then, is interesting.
This is not a case where there is an Apeejay-style suggestion of affiliation. This is another high school in a different city. It is a direct rival, insofar as high schools in different cities can be considered rivals. This is also not a situation where the Claimants are well-known. There is no finding (or, indeed, claim) to this effect. Therefore, VIT does not attach. Further, there is no suggestion (none that passes a sniff test, anyway) that the later use is identical or blatant. As such, it does not fall inside DPS range. Finally — and this is key — the comparison of the trade marks does not match the Amity condition for “absolutely identical” trade marks. The word marks here are different, the crests are different, and the trade dress setups are completely different. In fact, it is the Claimants’ case in prosecution that ‘The British School’ as a whole — and only as a whole — ought to be exclusive because ‘British’ (and, separately, ‘School’) is a common dictionary word. Holding that exact comparison here, ‘The British International School’, plainly, is not the same as ‘The British School’ as a whole.
In other words, to make this claim stick, the Claimants’ prior use has to cover for the lack of identity with the Defendants’ trade mark, the absence of blatant copying, the absence of well-known mark status, and the absence of a factual basis to support an assumption of affiliation.
Mr Justice Khanna finds that prior use does, in fact, make good all these deficiencies. That automatically makes British School a rather more notable than it first appears. The leap from prevailing law, remarkably, is at two separate levels. One is that prior use is deployed to avoid the existing lines of exception to the Skyline rule, while also avoiding the Skyline rule. The other is that a trade mark claim over education services with these deficiencies is extended — freshly, as far as I am aware — to a similar, and not an identical, rival trade mark. This is a considerable step.
These are the legal characteristics of note.
The key talking point is simpler, and has been since Skyline: Do we trust that consumers of education can tell the difference between those offering that education?
