Actual commercial use trumps trans-border reputation in Princeton’s trade mark dispute

December 8, 2023
Registered proprietor

By Rima Majumdar and Tanvi Bhatnagar


Whether a subsequent registered proprietor can restrain a prior user from using an identical/similar mark? Whether being featured in articles /news amounts to use in a certain region? Should confusion in the mind of the end consumer be considered while deciding infringement?

These were some of the questions that were elaborated upon and discussed in detail by the Learned Single Judge in the case of The Trustees of Princeton University v. The Vagdevi Educational Society and Ors.[1] , while adjudicating upon an ad-interim injunction concerning the use of the mark PRINCETON.

Brief facts about the Suit

The Plaintiff, established in the year 1746 as the “College of New Jersey” and later renamed as the world renowned “Princeton University” in the year 1896, is the fourth oldest institution of higher education in the United States and is also a member of the prestigious Ivy League of Schools. Over the years, Princeton University has churned out numerous personalities of higher renown such as Albert Einstein and other Nobel Laureates. The pith and marrow of the present case is the infringement of the Plaintiff’s registered trade mark PRINCETON by Defendant No. 1 (Vagdevi Educational Society) and five (5) other similarly named institutions (all run by Defendant No. 1) in Hyderabad, Telangana.

Plaintiff’s Contentions:

In a nutshell, the Plaintiff in support of its injunction application, made the following submissions:

  1. It has registrations for the mark PRINCETON in India dating back to the year 2012 in Class 16, 25 and 41.
    Registrations mark
    S. No. Mark Class Application No. Application Date User Status
    1. Registrations mark 16 2402523 September 28, 2012 April 30, 1996 Registered
    2. PRINCETON 25 2402524 September 28, 2012 April 30, 1996 Registered
    3. The Princeton University 41 2402525 September 28, 2012 April 30, 1996 Registered
  2. That the Plaintiff has actual use of the mark “PRINCETON” since the year 1911 in India. In support of such use, the Plaintiff relied on a number of articles about Princeton University published by various Indian Newspaper publishers. This submission was made instead of relying on the principle of trans-border reputation and the spillover of such reputation within India.
  3. Actual use was also sought to be made out by way of the Plaintiff’s grant of Fellowships in India in the past, number of Indian students that have been conferred with undergraduate and graduate degrees from 1970 to 1999, etc.

Defendants’ Contentions:

Rebutting the claim of the Plaintiff, the Defendants argued that:

  1. It claims user of the mark PRINCETON since July 16, 1991, on the basis of a letter sent to it by Osmania University, whereas the Plaintiff’s user only goes as far back to April 30, 1996. Therefore, the Defendant is the prior user of the mark ‘PRINCETON’.
  2. That as per Section 34 of the Trade Marks Act, 1999, the date of priority of user being claimed by the Plaintiff of its mark has to be the same date of use claimed by the Plaintiff before the Registrar of Trade Marks at the time of applying of the said mark.
  3. That the logos of the Plaintiff and the Defendants are completely different, leaving no scope for confusion or deception between them.
  4. Plaintiff and the defendants
    Plaintiff’s Logo Defendant’s Logo
    Princeton college The Defendant's
  5. That there exists no commonality between the consumers of the Plaintiff and the consumers of the Defendants.
  6. That since the Defendants have been operating and conducting its business very openly for the past 30 years with plenty of advertisements in the newspapers, the Plaintiff had essentially permitted the Defendants to build up their business and as such, the plea of the Plaintiff that it came to know about the existence of Defendants through an internet investigation only in the year 2022 seems unbelievable. In light of such acquiesce, it was argued that the Plaintiff is now precluded from seeking an action for infringement at such a later stage, and reliance was placed on the judgment of Shri Gopal Engineering & Chemical Works v. POMX .
  7. The Defendants also submitted that they are willing to restrict their activities within the State of Telangana.

Plaintiff’s counter arguments

It was reiterated that the documents filed by the Plaintiff manifested actual use by it of the mark PRINCETON in India since 1911 and, in any case, much prior to 1991, which is the earliest user of the impugned mark, pleaded by the Defendants.

It was further submitted that the facts of the present case would justify invocation of Section 29(3) of the Act, which provides that, when the marks are identical and used for identical services, the Court shall presume that it is likely to cause confusion on the part of the public.

It was finally contended that the only circumstance in which the defendants could escape the clutches of Section 29(2), or 29(3), is if the Defendants could bring its case within Section 34 of the Act, and further contended that the plaintiff is bound down by its prior plea of 1996 user, submitted to the Trade Marks Registry at the time of seeking registration of the PRINCETON mark.

It was further submitted that at the time when the Plaintiff applied for registration of the PRINCETON mark, the Act did not require the Plaintiff to provide evidence of user of the mark. The said requirement came only in 2017 when the new Trade Marks Rules came into picture.

Also, when there is evidence of actual use, by the Plaintiff, of its registered mark, from a point of time prior to the user claimed while seeking registration, that actual use would prevail over the  claim of user submitted to the Trade Marks Registry at the time of seeking registration of the asserted mark.

The Plaintiff also relied on Section 31(1) of the Trade Marks Act, which states that registration is the only prima facie evidence of validity of the registered mark.

Issues considered by the Hon’ble Court and its consequent findings

  1. Benefit of Section 34 of TM Act vis-à-vis claim of infringement- Trans-border reputation
    Taking into consideration the argument of the Defendants qua section 34 of the Trade Marks Act, it was held that although the date of user declared at the time of seeking registration would be binding upon the Plaintiff, however, if the Plaintiff is able to show that there is actual user of its mark from a point of time prior to the user claim, the Court has to take into consideration the said evidence of use. After considering such evidence, if it is established that the date of user goes even further back, then such date would be given priority over the date declared before the Registrar of Trade Marks.Section 34(a) of the Act however provides that this evidence of anterior use has to be by the proprietor, i.e. the Plaintiff in the present case (since the Defendant did not have a registration), vis-à-vis the use of the impugned mark by the Defendant. If the Defendant is the prior user (both in terms of registration and actual use), then under Section 34, the Plaintiff is estopped from taking action against the Defendant.In the present case, the Court held that the Plaintiff’s instances of use claimed through reference of its mark in news and articles, cannot constitute commercial use of a mark by the proprietor of the mark, and the Defendant’s use of the mark was prior to both the date of registration as well as the user claim made by the Plaintiff. In this scenario, the Defendant despite infringement, escapes injunction.
  2. No case of passing off could be made out against the Defendants
    The Court while analyzing the difference between infringement and passing off, observed that, although both the Plaintiff and the Defendants are engaged in the business of providing educational services, it would be very unrealistic to believe that any student or consumer would confuse the services provided by the Plaintiff, which is an Ivy league college in America, and the services provided by the Defendants, which is an University in Telangana, merely because of use of an identical mark. It was further observed that the Plaintiff provides no services outside the United States, while Defendant’s services are limited only to the state of Telangana. Therefore, no aspirant to the portals of the plaintiff’s institution is likely to mistakenly join the Defendants’ institution, nor any student, who wants to join one of the Defendants’ institutions, is likely to mistakenly approach the Plaintiff believing them to be inter-related. These factors along with the dissimilarity of logos reduce the likelihood of the Defendant passing off its services as that of the Plaintiff’s.
  3. Balance of Convenience or Irreparable loss not proved by the Plaintiff
    The Court observed that the Defendants have been using their mark, admittedly, since 1991 and the present suit has been filed by the Plaintiff only in the year 2022. The Defendants provide educational services and have been providing the said services, under the impugned marks, for close to three decades as on date. Therefore, 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.Hence, the Court observed that no substantial case of irreparable loss being suffered by the Plaintiff, as a consequence of the use by the Defendants of “PRINCETON” as a part of their trade mark, has been made out in the plaint.Further, the Defendants being the prior user in this case, in addition to being in the market for 3 decades, the balance of convenience was also in their favour. Therefore, the Defendants could not be restrained from using the mark PRINCETON.

Key Takeaways from the judgement:

  1. User Claims made in a Trademark Application should be well thought out:
    A perusal of the Plaintiff’s trade mark portfolio in India for the PRINCETON mark reveals that on June 08, 2023 i.e. two months before the order was reserved, it filed a fresh trade mark application for the word mark PRINCETON, wherein the user claim is of June 23, 1898. The details of the said mark are as under:

    1 PRINCETON (word) 41 5971147 June 8,2023 June 23,1898 Marked for Exam
  2. Parties must check all records of Trademark Registry:
    The prior trade mark registrations that the Plaintiff has for its PRINCETON mark in classes 16 and 41, both contain a consent letter from one Princeton Academy Mumbai II Pvt. Ltd., who is another prior user of the mark PRINCETON in India (user since July 07, 2000).
    This fact was not picked up in the present suit nor argued by the Defendant. The same tilts the scales against the Plaintiff since it shows that Princeton’s own rights are derived from a consent letter given to it by a prior user, and thereafter Princeton chose to restrain another prior user of the mark i.e. Vagdevi Educational Society through the present suit.
  3. Initial interest confusion and dilution of marks
    The interpretation of the Court vis-à-vis passing off to not occur if the demographic of consumers are intelligent may have adverse effects, as it may be taken as a defense by infringers and may cause the goodwill and reputation of well-known marks to dilute and eclipse thereby.
    In the case of Inter Ikea Systems BV v. Annanya Gautam & Anr.[3] Delhi High Court mentioned the principle of “Initial Interest Confusion”, which is posited on the assumption that “Infringement can be based upon confusion that creates initial customer interest, even though no actual sale is finally created as a result of the confusion. Most Courts now recognize the initial interest confusion theory as a form of likelihood of confusion which can trigger a finding of infringement’’[4] .
    In fact, the 9th Circuit Court in the US in the case of Brookfield Communications, Inc. v. West Coast Entertainment Corp.[5] had held that, “Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast’s acquired goodwill”.
  4. Trans-border reputation vs Commercial use:
    This judgment reflects that while a mark may have a trans-border reputation, such reputation will not amount to commercial use as defined under the term ‘Use’ under Sections 2(2), 28(1) and 34 of the Act, and the same has to be proved by showing actual commercial use in the country. As Princeton could not show that they are offering any services in India yet, showing newspaper articles and reports did not amount to commercial use by the Hon’ble Judge.

Tanya Sharma, Assessment Intern at S.S. Rana & Co. has assisted in the research of this Article.

[1] CS(COMM) 270/2022
[2] Shri Gopal Engineering &Chemical Works v. POMX- MANU/DE/0048/1992: 1992 (22) DRJ 504.
[3]Inter Ikea Systems Bv vs Annanya Gautam & Anr. on 28 September, 2018,CS(COMM) 1089/2018
[4][McCarthy Volume 4, 23:6]
[5]174 F.3d 1036-9th Cir. 1999

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