Delhi High Court grants limited relief to Princeton University of US in trademark suit against Hyderabad institution

The Delhi High Court on Friday granted relief to Ivy League school Princeton University of United States of America in a lawsuit against a group of educational institutions based in Hyderabad (defendants) over the use of the mark 'Princeton' [The Trustees of Princeton University v The Vagadevi Education Society & Ors].

A Division Bench of Justices Navin Chawla and Renu Bhatnagar restrained the Vagdevi Educational Society from using the name Princeton or any other deceptively similar mark for starting a new institution during the pendency of Princeton's suit.

"The respondents [Vagdevi Educational Society] shall also file on affidavit, every six months during the pendency of the Suit, its receipts from the institutions being run in the name of 'PRINCETON'. The parties shall endeavour to have the Suit decided expeditiously," the Court ordered.

However, the Court did not restrain Vagdevi from using the mark for its existing institutions, given that it had been using the mark for a very long time and its operations were limited to Telangana and consequently, no irreparable harm would be caused to Princeton.

The Division Bench passed the order on an appeal filed by the trustees of Princeton against a September 6, 2023, order of a single-judge rejecting the University's interim relief application to stop the use of its trademark.

The single-judge had found that the Vagdevi Society has been using the name Princeton for its institutions since 1991, and that Princeton University had failed to show any material proving that it is providing its services in India prior to that date.

The Court had explained that the references to Princeton University in Indian newspapers or the fact that many Indians have studied there would not amount to the use of the Princeton mark in India by the University for providing its services here.

However, the Division Bench said that Princeton University was prima facie able to show that it has been the user of its mark in India since 1911.

"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," the Court said.

However, the Court also noted that the respondents have also been using the mark for a long time and are limited to Telangana and Princeton University could not establish the case for irreparable harm.

"Given the above factors, instead of granting an interim injunction against the respondents, the balance of convenience would be met by directing 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 with advocates Nancy Roy, Ananya Chug and Annanya Mehan appeared for Princeton University.

Senior Advocate J Sai Deepak with advocates Avinash Kumar Sharma, P Mohith Rao and Eugene S Philomene represented the defendants.

[Read Order]