IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NOS.1360-1361 OF 2005

Skyline Education Institute (India) ...Appellant    Private Ltd.

Versus

S.L. Vaswani and another         ...Respondents

With

CIVIL APPEAL NO. 1362 OF 2005.

J  U  D  G  M  E  N  T

G.S. SINGHVI, J.

1. These appeals are directed against order dated 6.10.2004  

passed  by  the  Division  Bench  of  Delhi  High  Court  whereby  it  

dismissed FAO(OS)  No.212 of 2003 preferred by Skyline Education  

Institute (India) Private Limited (hereinafter referred to as ‘the  

appellant’) against the order of the learned Single Judge who  

refused to restrain Satilila Charitable Society and S.L. Vaswani  

(hereinafter referred to as ‘the respondents’) from using the name

‘Skyline’ as a part of their trading name in relation to their  

activities in the field of education and/or as a trademark in  

relation to any printed matter, including the course material,  

literature, syllabus etc. and partly allowed FAO(OS) No.213 of  

2003 preferred by the respondents insofar as the learned Single  

Judge directed them not to start any new course similar to the  

course run by the appellant, namely, graduate and post-graduate  

courses in Management, Travel and Tourism and further directed  

them  to  insert  a  note  in  the  advertisement  etc.  that  their  

institute is in no way related to the appellant.   

2. The appellant is incorporated under the Companies Act.  

Although, the appellant’s main objects, as specified in para ‘A’  

of the Memorandum of Association, are to impart and train in all  

areas, subjects, fields and disciplines of education, including  

hospitality,  tourism  and  business  management;  to  act  as  

representative  of  various  foreign  educational  institutions,  

universities,  organizations,  bodies  or  any  other  type  of  

institutions for recruiting students and rendering other related  

services; to establish and run in any part of India, colleges or

schools to impart education on such terms and conditions as may be  

laid down by the Company from time to time but a closer look at  

the incidental or ancillary objects enumerated in para ‘B’ and  

other  objects  enumerated  in  para  ‘C’  of  the  Memorandum  of  

Association shows that the appellant can engage itself in all  

types of possible business activities.   

3. Respondent  No.1,  Satilila  Charitable  Society  is  

registered under the Societies Registration Act. It is said to be  

part of Skyline group of companies/concerns, the details of which  

are given below:

i) M/s. S.K. Contracts (P) Ltd. (a company started in 1986)

ii) M/s.  Skyline  Construction  Co.  (a  partnership  firm  

started in 1990)

iii) M/s. Skyline Constructions (a partnership firm started in  

1993)

iv) M/s. Skyline Construction Engineers & Builders Co. (a  

partnership firm started in 1999)

v) M/s. Skyline Contractors (P) Ltd. (a company started in  

1999)

vi) M/s. Skyline Software (P) Ltd. (a company for imparting  

education in software started in 2001)

4. The  main  object  of  respondent  No.1  is  to  establish  

colleges for higher technical education for various sections of  

the community.  In November, 2001, respondent No.1 acquired 13  

acres of land in the Institutional complex, Greater NOIDA, U.P. at  

a cost of Rs.5.25 crores for establishing a multi disciplinary  

college.  Thereafter, the respondents obtained permission from All  

India Council for Technical Education (AICTE) and established an  

institution with the name Skyline Institute of Engineering and  

Technology.  They also recruited teaching faculty, made admissions  

in 4 disciplines and started five-year engineering course with  

effect from 9.9.2002.

5. As soon as respondent No.1 issued an advertisement for  

recruiting  teachers,  the  appellant  got  served  notice  dated  

31.1.2002 upon the respondents and called upon them to stop using  

the word ‘Skyline’ in the name of their institute by alleging that  

the same was affecting its goodwill.  Some dialogue appears to

have taken place between the functionaries of the appellant and  

respondent No.1 but without any tangible result.  Therefore, the  

appellant filed Suit No.1553 of 2002 in Delhi High Court for grant  

of permanent injunction restraining the respondents herein, their  

officers, servants, agents, representatives, franchisees or any of  

them from using the name ‘Skyline’ as part of their trading name  

in relation to the activities in the field of education and/or as  

a  trademark  in  relation  to  any  printed  matter,  literature,  

syllabus, etc. or in any other manner whatsoever.  The appellant  

further prayed for award of damages to the tune of Rs.5,01,600/-  

and for issue of a direction to the respondents to give details of  

the profits earned by them by the alleged wrongful use of the name  

‘Skyline’  and  deliver  all  printed  material  including  syllabi,  

course materials, stationery, blocks, dies, etc. bearing the name  

‘Skyline’.  

6. In  the  plaint,  the  appellant  averred  that  it  was  

established in 1996 on the lines of the previously existing and  

highly successful Skyline College, Sharjaha, which was brain child  

of  Mr.  Kamal  Puri,  an  eminent  educationist,  who  set  up  first

Skyline  Institute  in  1990  with  the  object  of  providing  high  

quality graduate and post-graduate level professional education  

and training to the students.  The appellant further averred that  

Skyline Business School was established in 1997 as its division  

with the object of imparting high quality education in the field  

of management at under-graduate and post-graduate levels and in a  

period of one decade it has acquired a substantial reputation and  

good will on account of highly qualified and dedicated faculty,  

the internationally competitive courses and scientific methodology  

of  imparting  education.   The  appellant  claimed  that  it  has  

affiliation  with  the  University  of  Oxford,  University  of  

Lincolnshire and Humberside, U.K., National American University,  

USA and other bodies like International Air Transport Association,  

Travel  Agents  Association  of  India,  Confederation  of  Indian  

Industry, Universal Federation of Travel Agents Association, etc.  

and that these bodies have collaborated with the Skyline Business  

School for their requirement of trained personnel in the travel  

business.  The appellant then averred that its four months diploma  

course and the Skyline Business School’s three years’ bachelor  

degree course in business administration have been advertised ever

since their inception and the applications submitted by it in 1997  

and  1998  for  registration  of  trademarks,  Skyline  Institute,  

Skyline Medalist, Skyline Business School and Skyline Lead Faculty  

in class 16 inter alia for printed matter, literature, stationery,  

etc. are pending before the competent authority.  The appellant  

referred  to  an  advertisement  issued  by  Skyline  Institute  of  

Engineering and Technology and pleaded that adoption of the name  

‘Skyline’ by the respondents has caused deception and confusion in  

the  mind  of  the  public  necessitating  filing  of  the  suit  for  

permanent  injunction.  The  appellant  also  filed  an  application  

under Order 39 Rules 1 and 2 read with Section 151 of Code of  

Civil  Procedure  (C.P.C.)  for  grant  of  temporary  injunction  

restraining  the  respondents,  their  officers,  etc.  from  using  

‘Skyline’  as  a  part  of  their  trademark  in  relation  to  their  

activities in the field of education, etc.

7. In the written statement filed by them, the respondents  

pleaded  that  the  appellant  is  running  its  institute  illegally  

without obtaining permission from statutory bodies like AICTE,  

UGC,  etc.  and  that  it  does  not  have  affiliation  with  any

University.  According to the respondents, there is no connection  

between Skyline College based in UAE and the appellant’s Skyline  

Business School and that the courses conducted by Skyline Business  

School are not approved by any competent body.  The respondents  

gave the details of their activities and averred that Skyline  

Institute of Engineering and Technology was established to provide  

high quality education to the students in the field of technical  

education.  The respondents asserted that the appellant cannot  

claim monopoly over the word ‘Skyline’ which is a general word and  

is being used by as many as 32 companies operating in Delhi, 117  

companies operating all over the country and worldwide there are  

thousands  of   institutes/institutions,  companies,  firms,  etc.  

which are using that word as part of their name.  The respondents  

further  pleaded  that  they  were  already  running  several  

companies/firms with the name Skyline and there is no possibility  

of deception and confusion among the students due to establishment  

of Skyline Institute of Engineering and Technology. Another plea  

taken by the respondents is that as per existing law no trademark  

can be granted in respect of educational services and, as such,  

the appellant does not have the locus standi to seek an order of

injunction  against  them  more  so  because  Skyline  Institute  of  

Engineering and Technology was established in 2002 by spending  

more  than  Rs.20  crores  and  the  students  have  already  taken  

admission against 240 seats sanctioned by AICTE.  The respondents  

also alleged that the appellant was operating from the premises of  

Laxman Public School, Hauz Khas pursuant to an agreement entered  

into by Shri  Kamal Puri in the name of Skyline Express.  The  

respondents also filed reply on similar lines to the application  

for temporary injunction.   

Findings of the Learned Single Judge

8. After  considering  the  pleadings  of  the  parties  and  

arguments of their counsel, the learned Single Judge opined that  

the word ‘Skyline’ being neither an invented nor specific word,  

has  to  be  considered  a  generic  word  more  particularly  when  

thousands of persons and institutions are using the same as a part  

of their trading name or business activities.  The learned Single  

Judge held that even a prior user of the name ‘Skyline’ by the  

plaintiff would not confer upon it an exclusive right to use that  

name to the exclusion of others and pendency of the applications

for  registration  under  the  Trade  Marks  Act,  1999   is  

inconsequential.  The learned Single Judge then took cognizance of  

the fact that while the appellant is neither approved by AICTE nor  

affiliated  with  any  university,  the  respondents  have  already  

obtained  the  recognition/permission  and  affiliation  from  the  

concerned  statutory  bodies  and  have  spent  huge  amount  for  

establishing the institute and further that the first batch of the  

students is already undergoing five-years course and held that the  

appellant is not entitled to equitable and discretionary relief by  

way of temporary injunction. While rejecting the argument that use  

of the word ‘Skyline’ by the respondents for the Institute of  

Engineering  and  Technology  established  by  them  will  create  

confusion in the mind of the general public and the prospective  

students  who  want  to  pursue  their  studies  in  the  field  of  

engineering and technology, the learned Single Judge observed:

“In the opinion of this Court, merely by the use of the word  “Skyline” as a prefix in the name of the two institutes, there is  no likelihood of such a confusion because the full name of the  plaintiff institute is “Skyline Education Institute (India) Pvt.  Ltd.”  while  that  of  the  defendant  is  “Skyline  Institute  of  Engineering  and  Technology”  used  in  defendant’s  name  are  sufficient to indicate to all concerned that the defendant is not  the same institute as the plaintiff.  In any case, care can be

taken to clarify such a confusion, even if there is any likelihood  of such a confusion.”

9. Notwithstanding the above conclusion, the learned Single  

Judge partly allowed the application filed by the appellant.  The  

operative portion of order dated 6.5.2003 passed by the learned  

Single Judge reads thus:-

“In  the result,  the application  is partly  allowed and  till the disposal of the suit, the defendants are hereby  restrained from starting any new courses similar to the  courses  run  by  the  Plaintiff  viz.  graduate  and  post- graduate  education  in  management,  travel  and  tourism.  The  ex-parte  ad-interim  order  dated  01.10.2002  is  modified to the extent that the defendants will be free  to  make  publicity/issue  advertisements  etc.  in  their  existing  name  for  any  courses  in  technical/Engineering  education provided the said advertisements contain a note  to the effect that the institute of the defendants is not  related to the Plaintiff’s institute being run under the  name  of  “Skyline  Educational  Institute  (India)  Pvt.  Ltd.”, in any way.”  

10. The appellant and respondents challenged the order of  

the learned Single Judge by filing separate appeals.  The Division  

Bench expressed its agreement with the learned Single Judge that  

the word ‘Skyline’ is not a generic word but was an adoptive word  

and observed:

“We also find no force in the argument of the counsel for  the respondent that the word ‘skyline’ was not a generic  word  and  was  an  adoptive  word  as  far  as  education  is  concerned.   A  student  who  would  like  to  go  to  an  educational institution, he is not a lay customer.  If a  student likes to go to St. Stephens College in Delhi or  want  to  go  to  Sri  Ram  College  of  Commerce  or  Hindu  College, he will go to these colleges and not to other  although  there  may  be  similarity  of  names  of  other  colleges.   When  the  learned  single  Judge  came  to  the  conclusion that there is no similarity in the name of two  parties, appellant using the name ‘skyline’ as a prefix  with the institute of technology and engineering and the  respondent  using  ‘skyline’  business  school’,  a  student  would not get any deception by both names.  A very large  number of institutes, firms and companies etc. are using  the word ‘Skyline’ as part of their name which fact has  not been categorically denied by the respondent.”   

The Division Bench then observed that after having found  

that the appellant has failed to make out a prima facie case and  

that balance of convenience was not in its favour, the learned  

Single Judge was not justified in directing the respondents not to  

go ahead with the courses of BBA management and MBA management.  

This is evinced from the following extracts of the order of the  

Division Bench:

“Normally once all the ingredients like prima facie case,  balance of convenience, equity if not found in favour of  grant of injunction, injunction in any form ought not to  have been granted.  At the same time, that does not mean

that Court in order to do justice cannot mould the relief  or can grant an injunction in terms not prayed for to do  justice between the parties.  The concept of grant of  injunction also have to be seen in the light as to what  would be the loss suffered on account of an injury by  non-grant of such an injunction.  The argument, which has  been raised before us that it was basically respondents  suit  for  grant  of  an  injunction  against  the  appellant  from  using  the  word  Skyline.   Having  come  to  the  conclusion that Skyline was a word which was used by a  very large number of people in India and abroad and it  was a generic word, we cannot appreciate as to how the  learned Single Judge has granted an injunction against  the appellant not to start courses in management. To say  the  least,  the  present  litigation  is  to  have  more  commerce  in  education  and  less  education  in  commerce.  Private commercial houses by advertising fancy name of  foreign universities lure students in this country.  All  this exercise is not in realm of imparting education but  knowing fully well that in India the name of a foreign  university  is  lucrative  enough  to  get  larger  chunk  of  money from the pockets of the parents.  What is the value  of these degrees, whether they are permitted to do so or  not, we will advert later.  Here is a classic case of the  respondent  who  got  letters  from  the  University  of  Lincolnshire and Humberside, UK both dated 17th October,  1996 which too was for a period of five years only with  effect from 1st May, 1997.  It as a certificate which the  respondent was to given in travel and tourism.  However,  respondent started giving advertisements for education in  BBA (Hons.) with specialization in marketing or tourism.  One such advertisement is at page 516 of the paper book.  It  was  contended  before  us  by  Mr.  Singh  that  on  11th  

March, 1998 they had also an arrangement of BBA Marketing  programme from the said university.  At this stage, we  would  not  like  to  go  to  the  question  whether  the  respondent could have represented that they could offer  courses in BBA Marketing or not, what is of relevant is  even if we accept the argument of learned counsel for the

respondent,  they  are  ‘study  centre’  of  a  deemed  university, Manipal Academy of Higher Education, that is  also  from  the  year  2003.   The  authorization  to  start  courses came in the year 2003, although it was contended  by  the  respondent  that  they  have  started  courses  from  2001.  Was it justifiable on their part?  Whether they  could do so?  Was there any legal bar?  All are these  issues which would be taken care of in the trial.  Both  the  parties  would  be  at  liberty  to  lead  evidence  and  argue the matter.  At this stage, when the learned trial  Judge has not entertained the plea of the respondent from  prima facie case, balance of convenience and irreparable  injury to respondent, restraining the appellant not to go  ahead  with  their  courses  of  BBA  Management  and  MBA  Management after due approval from AICTE in comparison to  respondent being a ‘Study Center’ only was without any  basis.”   

11. Shri Sudhir Chandra, learned senior counsel appearing  

for the appellant argued that even though the word ‘Skyline’ is  

being used by several companies, institutions and organizations,  

the  same  cannot  be  treated  as  a  generic  word  and  the  contra  

concurrent finding recorded by the learned Single Judge and the  

Division Bench is legally unsustainable.  Learned senior counsel  

submitted that though the appellant has not got registration under  

the Trade Marks Act, being prior user of the word ‘Skyline’, it is  

entitled to an order of injunction against the use of that word by  

respondent No.1 as part of their educational activities and the

learned Single Judge and Division Bench committed serious error by  

refusing  to  protect  the  appellant  from  illegal,  unlawful  and  

unauthorised use of the word ‘Skyline’ by the respondents.  Shri  

Sudhir Chandra pointed that the appellant is an affiliate of the  

University of Lincolnshire and Humberside, U.K. and an approved  

study center of Manipal University and argued that the High Court  

committed an error by declining the appellant’s prayer to restrain  

the respondents from using the word ‘Skyline’ with the Institute  

of Engineering and Technology established by them.  Learned senior  

counsel emphasized that even an unregistered prior user can file  

an action for passing off and the High Court committed serious  

error by refusing relief to the appellant ignoring the fact that  

the  respondents  established  the  Institute  of  Engineering  and  

Technology by prefixing the word ‘Skyline’ with the sole object of  

encashing the goodwill generated by the appellant and its sister  

concern which is operating in UAE.  In support of his arguments,  

the learned senior counsel relied upon the judgments of this Court  

in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical  

Laboratories  1965  (1)  SCR  737,  Ruston  &  Hornsby  Ltd.  v.  The  

Zaminidara  Engineering  Co.  1969  (2)  SCC  727,  N.R.  Dongre  and

others v. Whirlpool Corporation and another 1996 (5) SCC 714 and  

Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd. 2004 (6) SCC  

145.

12. Shri  L.N.  Rao,  learned  senior  counsel  for  the  

respondents  supported  the  impugned  order  to  the  extent  the  

Division Bench rejected the appellant’s prayer for restraining the  

respondents from prefixing the word ‘Skyline’ with the Institute  

of Engineering and Technology established by them and argued that  

this Court may nullify the effect of the direction given by the  

learned  Single  Judge  in  its  entirety.   He  submitted  that  the  

discretion  exercised  by  the  High  Court  in  declining  the  

appellant’s prayer for injunction does not suffer from any legal  

error and this Court may not interfere with the impugned orders  

because  the  concurrent  finding  recorded  by  the  learned  Single  

Judge and Division Bench on the issue of prima facie case is based  

on correct appreciation of the factual matrix of the case and in  

any case, equity is not in favour of the grant of injunction in  

terms of the prayer made by the appellant.

13. We  have  thoughtfully  considered  the  entire  matter.  

Before  pronouncing  upon  the  tenability  or  otherwise  of  the  

appellant’s prayer for restraining the respondents from using the  

word ‘Skyline’ for the Institute of Engineering and Technology  

established by them, we consider it necessary to observe that as  

the suit filed by the appellant is pending trial and issues raised  

by the parties are yet to be decided, the High Court rightly  

considered  and  decided  the  appellant’s  prayer  for  temporary  

injunction  only  on  the  basis  of  the  undisputed  facts  and  the  

material placed before the learned Single Judge and unless this  

Court comes to the conclusion that the discretion exercised by the  

High Court in refusing to entertain the appellant’s prayer for  

temporary  injunction  is  vitiated  by  an  error  apparent  or  

perversity and manifest injustice has been done to it, there will  

be no warrant for exercise of power under Article 136 of the  

Constitution.   In Wander Ltd. v. Antox India (P) Ltd 1990 (Supp.)  

SCC 727, this Court was called upon to determine the scope of  

appellate court’s power to interfere with the discretion exercised  

by the court of first instance in granting or refusing the prayer  

for temporary injunction.  The facts of that case were that in the

suit filed by it, respondent-Antox India (P) Ltd. had prayed for  

restraining the appellant from using registered trade mark ‘Cal-

De-Ce’. The learned Single Judge of the High Court refused to  

entertain the respondent’s prayer but on  reconsideration of the  

matter the Division Bench passed an order of injunction.  This  

Court reversed the order of the Division Bench and observed:

“...  In  such  appeals,  the  appellate  court  will  not  interfere with the exercise of discretion of the court of  first instance and substitute its own discretion except  where the discretion has been shown to have been exercised  arbitrarily, or capriciously or perversely or where the  court had ignored the settled principles of law regulating  grant or refusal of interlocutory injunctions. An appeal  against exercise of discretion is said to be an appeal on  principle. Appellate court will not reassess the material  and seek to reach a conclusion different from the one  reached by the court below if the one reached by that  court  was  reasonably  possible  on  the  material.  The  appellate  court  would  normally  not  be  justified  in  interfering with the exercise of discretion under appeal  solely on the ground that if it had considered the matter  at  the  trial  stage  it  would  have  come  to  a  contrary  conclusion.  If the discretion has been exercised by the  trial court reasonably and in a judicial manner the fact  that the appellate court would have taken a different view  may  not  justify  interference  with  the  trial  court’s  exercise of discretion.”  

14. The proposition of law laid down in Wander Ltd. v. Antox  

India (P) Ltd (supra) was reiterated in N.R. Dongre v. Whirlpool

Corporation (supra) in which this Court considered the correctness  

of an order of temporary injunction passed by the learned Single  

Judge of the Delhi High Court in a suit filed by the respondents  

to restrain defendants from manufacturing, selling, advertising or  

in any way using the trade mark ‘Whirlpool’ or any other trade  

mark  deceptively  or  confusingly  similar  to  the  trade  mark  

‘Whirlpool’  in  respect  of  their  goods.   The  claim  of  the  

plaintiffs-respondents  was  based  on  prior  user  of  the  mark  

‘Whirlpool’.  After considering the rival pleadings and material  

placed  before  him,  the  learned  Single  Judge  granted  temporary  

injunction.  The Division Bench confirmed that order and dismissed  

the appeal preferred by the appellant.  This Court, declined to  

interfere  with  the  discretion  exercised  by  the  learned  Single  

Judge and Division Bench of the High Court and held:

“Injunction  is  a  relief  in  equity  and  is  based  on  equitable principles. On the above concurrent findings,  the weight of equity at this stage is in favour of the  plaintiffs and against the defendants. It has also to be  borne in mind that a mark in the form of a word which is  not a derivative of the product, points to the source of  the product. The mark/name ‘WHIRLPOOL’ is associated for  long, much prior to the defendants’ application in 1986  with the Whirlpool Corporation, Plaintiff 1. In view of  the prior user of the mark by Plaintiff 1 and its trans- border  reputation  extending  to  India,  the  trade  mark

‘WHIRLPOOL’ gives an indication of the origin of the goods  as  emanating  from  or  relating  to  the  Whirlpool  Corporation, Plaintiff 1. The High Court has recorded its  satisfaction  that  use  of  the  ‘WHIRLPOOL’  mark  by  the  defendants indicates prima facie an intention to pass off  the  defendants’  washing  machines  as  those  of  the  plaintiffs or at least the likelihood of the buyers being  confused or misled into that belief.”

15. A somewhat similar view was expressed in Cadila Health  

Care Ltd. v. Cadila Pharmaceuticals 2001 (5) SCC 73.

16. The ratio of the above noted judgments is that once the  

court  of  first  instance  exercises  its  discretion  to  grant  or  

refuse  to  grant  relief  of  temporary  injunction  and  the  said  

exercise of discretion is based upon objective consideration of  

the material placed before the court and is supported by cogent  

reasons, the appellate court will be loath to interfere simply  

because on a de novo consideration of the matter it is possible  

for the appellate court to form a different opinion on the issues  

of prima facie case, balance of convenience, irreparable injury  

and equity.

17. In the light of the above, we shall now consider whether  

the impugned order is vitiated by an error of law apparent on the  

face  of  the  record  or  refusal  of  the  High  Court  to  grant  

injunction  in  terms  of  the  prayer  made  by  the  appellant  has  

resulted in manifest injustice.  A little journey in the backdrop  

of the case shows that the only ground on which the appellant  

sought temporary injunction against the respondents was that the  

word ‘Skyline’ is a specific/distinct word and being a prior user,  

it was entitled to seek a restraint against the respondents from  

using that word in the name of the Institute of Engineering and  

Technology established by them.  The learned Single Judge, after  

examining  the  rival  pleadings  and  material  placed  before  him  

recorded a well reasoned finding that the appellant has failed to  

make out a prima facie case.  The learned Single Judge opined that  

the word ‘Skyline’ is a generic word because the same is being  

used by thousands of persons and institutions as part of their  

trading  name  or  business  activities.  The  learned  Single  Judge  

noted that while the plaintiff is neither approved by AICTE nor  

affiliated with any university, the respondents have obtained the  

requisite recognition and affiliation from the concerned statutory

bodies and 240 students have already been admitted in the five  

years course and held that grant of injunction in terms of the  

prayer made by the appellant will be inequitable. The Division  

Bench independently considered the entire matter and expressed its  

agreement with the learned Single Judge that the appellant has  

failed to make out a prima facie case for grant of injunction.  

The Division Bench also agreed with the learned Single Judge that  

the word ‘Skyline’ was a generic word because it was being used by  

a large number of people in India and abroad.  The Division Bench  

then held that after recording adverse findings on the issues of  

prima facie case, balance of convenience and equity, the learned  

Single Judge was not justified in directing the respondents not to  

undertake in courses in management, tour and travels, etc. and  

append a note in the advertisements that their institute has no  

concern,  whatsoever  with  the  appellant’s  institution.  

Accordingly, the Division Bench substantially vacated the modified  

injunction order passed by the learned Single Judge.

18. In our opinion, the findings recorded by the learned  

Single Judge and Division Bench on the crucial factors like prima

facie  case,  balance  of  convenience  and  equity  are  based  on  a  

correct and balanced consideration of various facets of the case  

and it is not possible to find any fault with the conclusions  

recorded by them that it is not a fit case for restraining the  

respondents  from  using  the  word  ‘Skyline’  in  the  name  of  the  

institute established by them.  It has not been disputed on behalf  

of the appellant that the word ‘Skyline’ is being used as trade  

name by various companies / organizations / business concerns and  

also  for  describing  different  types  of  institute/institutions.  

The  voluminous  record  produced  by  the  respondents  before  this  

Court  shows  that  in  India  as  many  as  117  companies  including  

computer and software companies and institutions are operating by  

using  word  ‘Skyline’  as  part  of  their  name/nomenclature.   In  

United  States  of  America,  at  least  10  educational/training  

institutions are operating with different names using ‘Skyline’ as  

the first word.  In United Kingdom also two such institutions are  

operating.  In view of this, it is not possible to agree with the  

learned  counsel  for  the  appellant  that  the  Skyline  is  not  a  

generic word but is a specific word and his client has right to  

use that word to the exclusion of others.

19. There is another reason for declining the appellant’s  

prayer for grant of temporary injunction.  The appellant is shown  

to have started Skyline Business School in 1997 as one of its  

division but has conveniently not mentioned that it had started  

another institution under the aegis of Asian Educational Society  

housed in the same building where the appellant claims to have its  

registered office.  After three years of starting Skyline Business  

School,  the  Director  of  the  appellant  vide  his  letter  dated  

January 4, 2000 permitted the President, Asian Educational Society  

to use the trade mark Skyline Business School, name and the logo  

albeit without disclosing as to when Skyline Business School was  

registered under the Trademarks Act, 1999.  Thereafter, Skyline  

Group’s  Asian  Educational  Society  through  its  President,  Shri  

Kamal Puri entered into an agreement dated 9.12.2001 with Manipal  

Academy of Higher Education (deemed university) for establishing a  

branch campus at Skyline Business School, Delhi.  Sikkim Manipal  

University also approved Skyline Business School as a University  

Study  Center  for  taking  management  programme  under  distance  

education despite the fact that the Skyline Business School is not

recognized  or  approved  by  AICTE/UGC.   In  1996,  University  of  

Oxford approved the appointment of a center in the premises of the  

appellant at Laxman Public School, Hauz  Khas Enclave, New Delhi  

for Certification in Leisure Studies and in Travel and Tourism.  

In 1997, Skyline Business School entered into a Memorandum of  

Cooperation with University of Lincolnshire and Humberside, U.K.  

whereby the latter agreed to offer its BBA (Hons.) Tourism course  

through a center established at the appellant’s campus.  In large  

number of advertisements issued in the name of the appellant or  

Skyline Business School, it has not been made clear that they are  

neither approved nor recognized by any of the statutory bodies  

like, AICTE, UGC, etc.  Of course, in some of advertisements, it  

has  been  mentioned  that  the  degrees/diplomas  purported  to  be  

awarded  by  the  Skyline  Business  School  are  not  recognized  by  

Government of India, State Government, UGC/AICTE.  All this lends  

sufficient credibility to the observations made by the Division  

Bench of the High Court that the present litigation is to have  

more commerce in education and less education in commerce and  

gives an impression that functioning of the appellant is shrouded  

in mystery and those seeking admission in the courses organised by

it may find themselves in serious trouble at any given point of  

time  because  the  degrees  and  diplomas  awarded  in  the  name  of  

foreign  universities  are  not  recognised  by  statutory  

bodies/authorities in India.   

20. Shri Sudhir Chandra may be right in his submission that  

even an unregistered prior user of a name can institute action for  

passing off and seek injunction against the subsequent user of the  

same name by proving that misrepresentation by the defendant to  

the public that the goods/services offered by him are that of the  

plaintiff  and  such  misrepresentation  has  caused  harm  to  the  

goodwill  and  reputation  of  the  plaintiff  or  the  plaintiff  

demonstrates that it has suffered loss due to such representation,  

but, in view of our conclusion that the appellant has failed to  

make out a case for interference with the discretion exercised by  

the  High  Court  not  to  entertain  its  prayer  for  temporary  

injunction,  we  do  not  find  any  valid  ground  to  entertain  and  

accept the argument of the learned senior counsel.  For the same  

reason, we do not consider it necessary to discuss the judgments  

on which reliance has been placed by Shri Sudhir Chandra.  

21. Although, during the pendency of the suit, the appellant got  

registration of trade marks `Skyline MEDALLIST’ under No. 795085  

and  `Skyline  Institute’  under  No.  795086  in  class  16  and  its  

prayer for amendment of the plaint was granted by the High Court  

on  24.8.2006,  but,  that  by  itself,  is  not  sufficient  for  

entertaining the appellant’s prayer for temporary injunction to  

restrain the respondents from using the word `Skyline’ as part of  

the Institute of Engineering and Technology established by them.   

22. We  may  now  advert  to  C.A.  No.  1362/2005.   The  

respondents’ grievance is that after having reached the conclusion  

that the learned Single Judge was not justified in restraining the  

respondents from starting new courses in business management, etc.  

and directing them to append a note in the advertisement that they  

are in no way related to the appellant, the Division Bench should  

have set aside all the directions impugned before it.  We find  

merit in the contention of the respondents.  When the Division  

Bench found that the learned Single Judge ought not to have given  

direction restraining the respondents from starting new courses in

business management etc. and directed them to append a note in the  

advertisement that they are not related to the appellant, then it  

should have set aside the order of the learned Single Judge in its  

entirety.  The omission on the part of the Division Bench of the  

High Court to do so calls for a corrective action by this Court.

23. In the result, Civil Appeal Nos.1360-1361 of 2005 are  

dismissed and Civil Appeal No.1362 of 2005 is allowed and the  

modified injunction granted by the learned Single Judge is vacated  

in its entirety.  The appellant shall pay Rs.50,000/- as cost of  

unwarranted litigation thrust upon the respondents.  

……………………..J.

    [ Tarun Chatterjee ]   

……………………..J.   [ G.S. Singhvi ]

……………………..J.      [ Dr. B.S. Chauhan ]

New Delhi, January 05, 2010

ITEM NO.1A               COURT NO.13             SECTION XIV (FOR JUDGMENT)

           S U P R E M E   C O U R T   O F   I N D I A                          RECORD OF PROCEEDINGS

                CIVIL APPEAL NO(s). 1360-1361 OF 2005

SKYLINE EDUCATION INSTITUTE (PVT) LTD.            Appellant (s)

                VERSUS

S.L.VASWANI & ANR.                                Respondent(s)

WITH Civil Appeal NO. 1362 of 2005

Date: 05/01/2010  These Appeals were called on for judgment today.

For Appellant in   Mr. Hari Shankar K,Adv. C.A. Nos.1360-1361/2009 & for Respondent in  C.A. No.1362/2005   

For Respondent in C.A. Nos.1360-1361/2009 & for Appellant in C.A.  No.1362/2005               Ms. Hetu Arora,Adv.                          UPON hearing counsel the Court made the following                                O R D E R  

Hon'ble Mr. Justice G. S. Singhvi pronounced  the  judgment  of  the  Bench  comprising  Hon'ble  Mr.  Justice  Tarun  Chatterje, His Lordship and Hon'ble Dr. Justice B. S. Chauhan.  

Civil Appeal Nos.1360-1361 of 2005 are dismissed and  Civil  Appeal  No.1362  of  2005  is  allowed  and  the  modified  injunction granted by the learned Single Judge is vacated in  its entirety.  The appellant shall pay Rs.50,000/- as cost of  unwarranted litigation thrust upon the respondents.  

(Neetu Sachdeva) Sr.P.A  

(Mithlesh Gupta) Court Master

  (Signed non-reportable Judgment is placed on the file)