June 17, 2015     

INDIA: Conflict and Ruling on Bonafide Use of Acronym as Trademark

 

USE OF ACRONYM VIT AS TRADE MARK BY THE VELLORE INSTITUTE OF TECHNOLOGY (VIT)

 

Recently, the Hon'ble Madras High Court delivered an order in the case of VIT University vs. Bagaria Education Trust and Ors. wherein the name of the famous Vellore Institute of Technology (“VIT”) was under dispute. The Hon'ble Court analyzed the issues pertaining to bonafide trademarks and also opined on the merits and demerits while granting an injunction against any party.

 

Brief Facts of the Case

  1. 'VIT UNIVERSITY' (hereinafter referred to as the Plaintiff) is a university started by the trust 'North Arcot Educational and Charitable Trust'. The Department of Education, Government of Tamil Nadu, by G.O.Ms.No.1279, dated September 27, 1984, permitted the above Trust to start a private Engineering College in the name and style of Vellore Engineering College at Vellore, North Arcot District with effect from 1984-85 which was later renamed as VIT.

  2. The Plaintiff had applied for registration of its name “VIT” vide Trade Mark Application No.1130066, dated August 30, 2002, in Class 16 in respect of paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, photographs, stationery adhesive materials (stationary), instructional and teaching materials (other than apparatus), pamphlets, visiting cards, letter heads, bill books, invoices. Further, the Plaintiff had also filed another Trade Mark Application No.1130065 dated August 30, 2002 in Class 16 for registration of marks 'VIT A PLACE TO LEARN, A CHANCE TO GROW'. Also, the Plaintiff filed Trade Mark Application No.1324167, dated December 06, 2004, in Class 41 for registration of Mark “VIT” in respect of Education, providing of training, entertainment, sporting and cultural activities. All the above trade marks are registered, valid and subsisting till date.

  3. During June 2011, the Plaintiff, through Internet, came across one Vivekananda Institute of Technology and Vivekananda Institute of Technology (East) (Part of SKIT Groups of Colleges), which are using the mark “VIT CAMPUS” on their buildings and in their other printed material in Jaipur. The Plaintiff immediately issued a cease and desist notice to the said institutions asking them not to use the Plaintiff's registered trade mark VIT in any manner. Despite receipt of the notice, the said institutes have not ceased use of the trade mark VIT nor complied with the other demands. Hence, the Plaintiff issued another legal notice through their Advocate on May 04, 2012.

  4. During May 2012, the Plaintiff conducted a search and came to know about one Bagaria Education Trust, Jaipur (hereinafter referred to as the Defendant No. 1) that started a University in the name of 'VIT University'.

 

Contentions of the Plaintiff

  1. The Plaintiff has made a mark in the global arena of education through strong integration linkage. People from abroad as well as from India identify the Plaintiff University with the above name only.

  2. That the act of the Defendants in naming their institutions as VIT University is an act of infringement of the registered trade mark of the Plaintiff.

  3. That after filing of the suit, the Board of Management of the VIT University, Jaipur, after seeking approval of the sponsoring body i.e., Bagaria Educational Trust, has changed the name from VIT University to Vivekananda Global University.

  4.  That the Defendants, during the academic year 2013-2014, had circulated a brochure under the caption/title VIT CAMPUS, JAIPUR, and the aforesaid change of name effected by the Defendants is not followed by them and it remains only on paper.

  5. That continuous use of the name VIT by the Defendants, despite passing an amendment to the VIT University Jaipur Act, 2012 only proves their malafide intention to divert the Plaintiff from proceeding with the pending litigation.

Contentions of the Defendants

  1. That the Defendants have built the institution on the eternal guidelines and thoughts as advocated by Swami Vivekananda.

  2. That the Defendants have bonefidely adopted and used VIT University, Jaipur, as it has become an essential feature of their trade name.

  3. That the Defendants do not use VIT per se, but in a composite form and as an acronym of its trade names namely, 'Vivekanand Institute of Technology', 'Vivekanand Institute of Technology (East)', 'VIT University, Jaipur', which are always used as a whole and which have been assigned to it by the Rajasthan State Legislature.

  4. That the Defendants and their institutions started using the acronym VIT in 2008, but the Plaintiff has filed the present suit only in the year 2012. Hence, there is an unexplained delay of three years in filing the suit.

  5. That the acronym VIT is only a descriptive and generic word, hence, the Plaintiff cannot claim monopoly over VIT.

CCourt's Observation and Judgment

  1. That the Plaintiff has been using the mark VIT right from the year 2001 and the said mark was also registered in the year 2005 in favour of the Plaintiff, and by continuous usage of the same, the Plaintiff has built the said mark as a 'well known mark'.

  2. That when the Plaintiff has already registered the mark VIT, the Defendant Nos. 1 to 4 cannot use the mark VIT to refer to their campus, that too particularly when the name of the Defendant No. 1’s institution has been changed from VIT University, Jaipur to Vivekananda Global University.

  3. The Defendants have claimed that there is no likelihood of confusion between the two marks, however, the Defendant No. 1 has filed a rectification application against the registered trade mark of the Plaintiff, which is pending before the Trade Marks Registry. Hence, the said contention of the Defendants fails.

  4. That mere use of the mark by third parties would not be a defense unless it is established that by such rampant use there is no exclusivity for the Plaintiff, as held in Kishore Jain vs. Navratna Khazana Jewelers.

  5. That if the Defendant Nos. 1 to 4 are allowed to use the same mark for the identical service, certainly it would cause great confusion in the minds of the general public.

In view of the aforesaid, the Hon’ble Court granted an interim injunction to the Plaintiff as prayed for.

 

Conclusion

 

The Indian Courts, in recent years, have witnessed and decided various cases where acronyms are used as trade marks by one party and infringed by the other to gain profit, goodwill and cause confusion of association. A similar issue had cropped up before the High Court of Bombay in 2014 in the case of Mahindra & Mahindra Limited & Anr vs. MnM Marketing Pvt. Ltd. & Anr. wherein the use of the trade mark M&M was disputed and the Hon'ble Court upheld the right of the Plaintiff over the acronym MnM. Likewise in the present case also, the Court, keeping in mind the reputation and goodwill of the Plaintiff, recognized the exclusive right of the Plaintiff to use the acronym VIT as its trade mark.

 

 

 

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