Apex Court rules on use of generic word 'Skyline'

Lex Orbis

Manisha Singh Nair

[email protected]

The use of generic marks often gives rise to litigation, especially when the said marks acquire an international presence in terms of use.

The Apex Court recently ruled on an appeal to use of a generic mark. The appeal was against an order pronounced in respect of a plea to restrain use of the name 'Skyline' in the case of Skyline Education Institution (I) Pvt. Ltd. v. S.L. Vaswani and Anr. 2010 (42) PTC 217 (SC).

The brand 'Skyline' was in use in relation to activities in the field of education. Having been examined in earlier cases, the issue was revisited in view of the mark 'Skyline'.

Prior to invoking the jurisdiction of the Supreme Court, the Single Judge had directed respondents not to start any new course similar to the one run by Skyline – namely, graduate and post-graduate courses in management, travel and tourism. The Single Judge further directed respondents to insert a note in marketing materials such as advertisements that their institute is in no way related to the appellant. However, the Division Bench dismissed this order on appeal, against which the jurisdiction of the Supreme Court was invoked.

In addressing this appeal, the Apex Court noted that Skyline was engaged in the business of imparting and training in all areas, subjects, fields and disciplines of education. This included hospitality, tourism and business management. And the Court noted that Skyline acted as representative of various foreign educational institutions. Closer examination of Skyline's Memorandum of Association also revealed that it engaged in multifarious business activities.

Claimed to be part of the Skyline group, Satilila Charitable Society's main purpose was the establishment of colleges for higher technical education for various sections of the community. Satilila averred that due permission from the respondents – who themselves had obtained permission from the All India Council for Technical Education (AICTE) – was procured. It therefore established an institution with the name Skyline Institute of Engineering and Technology, recruited a teaching faculty, made admissions and began operations in September 2002.

Prior to September 2002, and following issuance of an advertisement for the recruitment of a faculty, a notice was served on Satilila to prevent use of the word 'Skyline'. Those issuing the notice did so on the grounds that the advertisement affected their goodwill. They requested: an award of damages to the tune of Rs.501,600 (US$11,158); an order to give details of profits earned through the alleged wrongful use of the name 'Skyline'; and delivery of all printed material bearing the name 'Skyline'.

Skyline detailed facts regarding its inception as well as its affiliations with foreign universities and asserted that Satilila had caused deception and confusion in the mind of the public. In response to this, Satilila stated that the Skyline institutions were founded illegally without obtaining permission from statutory bodies such as AICTE and UGC, and that Skyline did not have affiliations with any universities.

In addition, Satilila stated that the word 'Skyline' was widely in use as part of the name of several organisations. And it stated that no trade mark could be granted in respect of educational services and, as such, the appellant did not have the locus standi to seek an order of injunction against them.

In light of the findings of the Single Judge and the Division Bench of the High Court, the Supreme Court agreed with their view on crucial factors such as prima facie case, balance of convenience and equity. Opining the same, the Supreme Court stated that a case for restraining use of the word 'Skyline' in the name of the institute established by them had not been established. This was especially the case given the fact that organisations and institutions were using the same the world over. In light of this, the Court finally ruled and denied injunction on the basis that 'Skyline' was a generic word and not a specific word.