Delhi High Court denies relief to Princeton University in trademark suit against Hyderabad-based educational institutions

The Delhi High Court recently rejected a plea by Ivy League school Princeton University to restrain a group of educational institutions run by Vagdevi Educational Society in Hyderabad from using the mark 'Princeton' [The Trustees of Princeton University v. The Vagdevi Educational Society & Ors]..Justice C Hari Shankar 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 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.“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..The Court added,“Multiplying 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 Section 2(2)(c)(ii) and, therefore, Section 34(b) of the Trade Marks Act, 1999.”.Princeton University had approached the Court arguing that it was founded in the year 1746 and has been using the mark 'Princeton' in India since 1911.The University presented several newspaper reports, while submitting that it offers fellowships to Indian students and has academic associations with several Indian institutions.It alleged that its trademark was infringed when the defendant-society named its institutions Princeton School of Education, Princeton School of Engineering and Technology, Princeton Degree and PG College, and Princeton PG College of Information Technology.By doing so, the Society had sought to pass off the services provided at its institutions as services provided by Princeton University, it was argued. .The Society countered that it has been using the mark 'Princeton' since 1991. It was also contended that the logos of the two institutions are totally different and that there is no possibility of any confusion..Justice Hari Shankar concluded that no case of passing off was made out, as it would be unrealistic to believe that any consumer would confuse the services provided by the defendants with those provided by Princeton University.“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 said..The Court was also of the view that the balance of convenience lay in favour of the Society as it has been using the mark since 1991, while Princeton University's suit was filed only in the year 2022.“The plaint seeks to aver that the plaintiff came to learn of the defendants only in 2020, on an internet search. While this may be true, it is somewhat hard to digest. Either which way, the defendants institutions have expanded and the impugned mark has, by now, been in use by the defendants for 32 years as on date. The balance of convenience would, clearly, rule against injuncting the defendants from continuing the use the impugned mark at this late stage.".It, therefore, dismissed the application for ad interim injunction filed by Princeton University against the Society..Senior Advocate Chander Lall along with Advocates Nancy Roy, J Sharanya and Ananya Chugh represented Princeton University.The Vagdevi Educational Society was represented through Senior Advocate Rajshekhar Rao and Advocates Raghav Kacker, Areeb Amanullah and Raval Shukla..[Read Judgment]