The Delhi High Court has rejected the Trademark Infringement Suit filed by Ivy League School, Princeton University against group of Indian educational institutions using 'Princeton' in their names.
The single-judge bench of Justice C Hari Shankar has dismissed the petition filed against Hyderabad-based Vagdevi Educational Society observing that references made in India do not indicate to the US-based institution.
“Reference to Indian students studying at Princeton, howsoever large the number, cannot amount to the plaintiff providing services, in India, under the PRINCETON mark. Opening of centres in the plaintiff-institution in the US, dealing with Indian subjects, Indian studies, or Indian cultural activities, too, does not reflect use, by the plaintiff, of the PRINCETON mark in India prior to 1991,” the order stated.
Brief Facts of the Case
Princeton University instituted the present suit through its trustees, against the Vagdevi Educational Society (Defendant 1), headquartered in Hyderabad, which runs the Princeton School of Education, Princeton School of Engineering and Technology, Princeton Degree and PG College, Princeton PG College of Information Technology, Princeton PG College of Management and Princeton College of Pharmacy in Telangana.
It was alleged by using PRINCETON as part of the name of the educational institutions run by it, as part of its domain name princetonschoolofeducation.com, and as part of the logos/emblems of its various institutions, Defendant 1 has infringed the registered trademarks of the plaintiff and has also sought to pass off the services provided in its institutions as services provided by the plaintiff or associated with it.
It was in this backdrop, a decree of permanent injunction, restraining the defendants from using any mark which includes PRINCETON for the services provided in its institutions or in any other manner as would infringe the plaintiff’s registered trademarks or result in the passing off of the defendants’ services as those of the plaintiff was sought.
The Counsel for the plaintiff submitted that it has close to 1300 faculty members, including personages of higher renown and repute, some of whom are Nobel laureates. Albert Einstein is one of them. At any time, the plaintiff is educating over 5,200 undergraduate and over 2,900 graduate students. The plaintiff provides several courses, the details of which are provided in the plaint. It also offers study abroad programs to its students.
The Ivy League institution presented several newspaper reports while submitting that it offers fellowships to Indian students and has academic associations with several Indian institutions.
He claimed that the defendant society had sought to “pass off” the services provided at its institutions as services provided by Princeton University.
High Court's Observation
The Court observed that the referrence made here in India and those in US cannot be mistaken to be same.
“Multiple references of newspaper articles published in India, which make reference to the plaintiff-institution located in the US cannot, viewed any which way, constitute “use” by the plaintiff of the PRINCETON mark in India, within the meaning of Trade Marks Act,” the court said.
The Court said that there is no evidence of continuous use by the American Ivy League college of the “Princeton” mark prior to the year 1991 which was the date of “first use” by the defendant institutions of the “Princeton” mark.
“The defendants have been using their mark, admittedly, since 1991. The present suit has been instituted by the plaintiff only in 2022. The defendants provide educational services and have been providing the said services, under the impugned marks, for close to three decades as of date. No element of public interest can be said to exist in denying, to the defendants, the further right to use PRINCETON as part of the names of their institutions,” the court said.
The Court was further of the view that though the marks used by both parties were in the context of providing “educational services”, it would be “unrealistic to believe that any consumer would confuse the services provided by the defendants with those provided by the plaintiff".
“The plaintiff is, today, arguably the foremost higher educational institution in the world, and provides no services outside the US. The defendants’ institutions are situated entirely within the State of Telangana and do not even have any branch outside the said state. No aspirant to the portals of the plaintiff-institution is likely to mistakenly join the defendants; equally, no student, who wants to join one of the defendants’ institutions, is likely to mistakenly approach the plaintiff, believing them to be inter-related,” the court Shankar observed.
The court further noted that Princeton University had not placed on record any material indicating any statement by it about the “availability, provision or performance of the services provided by it accessible in India prior to 1991” which was the year when the defendants started using the PRINCETON mark.
It was also of the view that since the defendants’ institutions have been functioning since 1991, it would be on the Ivy League university to establish that they have suffered an irreparable loss due to the use of the Princeton mark by the defendant for seeking an interim order, however, no arguments were made on this point.
Case Title: The Trustees of Princeton University v. The Vagdevi Educational Society & ors.
Case Details: CS(COMM) 270/2022, I.A. 6494/2022
Coram: Hon'ble Mr. Justice C Hari Shankar
Advocates for Petitioner: Mr. Chander Lall, Senior Advocate with Ms. Nancy Roy, Ms. J. Sharanya and Ms. Ananya Chugh, Advocates.
Advocates for Respondent: Mr. Rajshekhar Rao, Sr. Adv. with Mr. Raghav Kacker, Mr. Areeb Amanullah, Mr. Raval and Mr. Shukla, Advs.
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