Confusion Can’t Be Ruled Out Merely Because Of Difference In Fee Structure: Delhi High Court Restrains Use Of ‘Princeton’ Trademark For Any Institution

The Delhi High Court has restrained the Vagdevi Educational Society and others from using ‘Princeton’ trademark for any institution.

The Trustees of Princeton University filed an Appeal challenging the Judgment of the Single Judge who dismissed its Application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an ex-parte ad interim injunction.

A Division Bench comprising Justice Navin Chawla and Justice Renu Bhatnagar held, “It is now settled law that even in a composite mark, there can be a predominant part of the mark entitled to a standalone protection. There could also be more than one predominant part, each entitled to such protection. It shall depend on the facts and circumstances of each case as to whether any part of the mark can be held entitled to such protection or not. In the present case, prima facie we find that the word “PRINCETON” is a vital and important part of the mark of the appellant. It is being used by the respondents for providing similar service. Moreover, merely because there is a difference in the fee structure of the appellant and the respondents, confusion cannot be ruled out.”

Instead of granting an interim injunction, the Bench directed that during the pendency of the Suit, the Respondents would not open any new institution using the name ‘Princeton’ as part of the name of such institution.

Senior Advocate Chander M. Lall appeared for the Appellant while Senior Advocate J. Sai Deepak appeared for the Respondents.

Brief Facts

The Appellant educational institution was founded in the year 1746 as the College of New Jersey and is the fourth oldest institution of higher education in the United States. In 1896, it achieved University status and was officially renamed ‘Princeton University’. Currently it is a private research and educational University located in Princeton, New Jersey, and a member of the prestigious and world-famous Ivy League of schools. It receives applications from students around the world, including India. In 2020, the Appellant came across the website of Respondents and the use of mark for education services. After making inquiry via emails, and various legal notices addressed to the Respondents, the Appellant got to know that the Respondents have obtained affiliation from a reputed public State University, that is, Osmania University.

It was contended that the Respondents being in the identical type of services as the Appellant, ought to have prior knowledge of the Appellant and its earlier well-known trademark ‘Princeton’. It was further contended that the Appellant’s mark was also registered in India. It was the Appellant’s case that the use of the impugned mark by the Respondents is likely to confuse the consumers about the origin of the Respondents’ services and consumers are likely to mistakenly associate the services of the Respondents with those of the Appellant. As the Appellant’s Application was dismissed by the Single Judge, an Appeal was filed.

Reasoning

The High Court in view of the above facts, observed, “In the present case, from the evidence produced by the appellant, at least at this stage of the proceedings, it could not be said that the evidence produced by the appellant does not refer to the availability, provision or performance of the services being rendered by the appellant under the said mark. To the contrary, the evidence referred above shows the tremendous reputation and goodwill enjoyed by the appellant for the services being rendered by it under the mark.”

The Court said that the Single Judge erred in interpreting the ambit and scope of Section 2(2)(c)(ii) and Section 29(6) of the Trade Marks Act, 1999 (TM Act). It added that Section 2(2)(c)(ii) of the Act, is use of the trade mark as a statement about the availability, provision or performance of the service.

“… the mark can be said to be in use in India as referring to the availability, provision and performance of the service of the appellant since 1911. … In the present case, the knowledge and reputation of the services of the appellant is established from the nature of articles written about it. There is also evidence of the Indians using the services of the appellant, as a number of students travel all the way to the USA to study at the appellant’s University”, it noted.

The Court enunciated that once the claimant has established that there are customers for the claimant's services in a jurisdiction, though not necessarily in a real market but through use of its mark in a more subtle way, then the claimant stands in the same position as a domestic trader and it may bring an action by establishing its goodwill in the jurisdiction in which it claims that the Defendants are trying to pass off their goods under the brand name of the claimant's goods.

“In the present case, the very fact that Indian students are also being targeted by the appellant and are in fact going to the University of the appellant ‘in large numbers’, shows the availability, provision and performance of the services being rendered by the appellant under its mark, thereby, establishing its goodwill and reputation in India”, it further observed.

The Court was of the view that the moment it is conceded that Indian students are availing the services of the Appellant while they are still in India, it cannot be said that the services of the Appellant are not available in India.

“… for availing the protection under Section 34 of the Act, it is for the defendant, who is resisting a claim of a registered owner of a trade mark or of a proprietor of a mark, to show continuous user of the mark prior to the date of the first use of the mark by the proprietor or the date of registration, whichever is earlier. … the rights flowing from the registration of the trade mark are subject to the rights of the prior user of the said mark”, it reiterated.

The Court remarked that the Appellant cannot be expected to take action against all infringers of its rights as a pre-condition to taking such action against the Respondents.

“The respondents, as an infringer, cannot claim negative equality or immunity from legal action only on the basis that the appellant chose to settle the dispute with some party in a particular manner or chose not to proceed against the others”, it also said.

Conclusion

Moreover, the Court noted that the word mark ‘Princeton’ is identical for the Appellant and the Respondents and the Appellant by its evidence, at least prima facie, has been able to establish reputation of its mark in India since the year 1911, as against the first use of the mark claimed by the Respondents to be of 1991.

“The infraction of the rights of the appellant can take place in various shapes like dilution of its mark, initial interest confusion, and actual confusion. … It is trite law that for purposes of the interim injunction, the appellant must satisfy the trinity test of a prima facie case, balance of convenience, and irreparable harm and injury”, it added.

The Court, therefore, held that the Appellant has been able to make out a prima facie case in its favour. It directed the Respondents to maintain complete accounts of all its receipts, and file the same along with an affidavit every six months before the Single Judge.

“The respondents are restrained from using the mark 'Princeton' or any other mark deceptively similar thereto for any new institution during the pendency of the above suit”, it concluded.

Accordingly, the High Court allowed the Appeal and set aside the impugned Order.

Cause Title- The Trustees of Princeton University v. Vagdevi Educational Society & Ors. (Neutral Citation: 2025:DHC:8654-DB)

Appearance:

Appellant: Senior Advocate Chander M. Lall, Advocates Nancy Roy Ananya Chug, and Annanya Mehan.

Respondents: Senior Advocate J. Sai Deepak, Advocates Avinash Kumar Sharma, P. Mohith Rao, and Eugene S. Philomene.

Click here to read/download the Judgment