Delhi High Court Holds “Actual and Continuous Use” Necessary to Claim Trademark Protection

The Bench led by Justice Hari Shankar of the Hon’ble Delhi High Court recently rejected a plea for ex-parte ad-interim injunction by the plaintiff, i.e., Princeton University, which is part of the prestigious Ivy League of American Colleges, against Defendants, a group of educational institutions run by Vagdevi Educational Society based at Hyderabad, restraining Defendants from using its registered mark 'PRINCETON.'[1] 

The Delhi High Court, rejecting the plea, held that the plaintiff had failed to establish continuous use of the “Princeton” mark prior to the date of “first use” by the defendant. The Court, repudiating the materials placed on record by the plaintiff, in support of its user claim, held that “reference to plaintiff, or even to the services rendered by it, in articles published in newspapers which are not printed or published by the plaintiff, cannot constitute use, by the plaintiff, of the PRINCETON mark, as envisaged by Section 34(a) of The Trademarks Act”.

The Court further observed that “a 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." 

BRIEF BACKGROUND:

The plaintiff, i.e., Princeton University, instituted a Suit through its trustees, against the Vagdevi Educational Society, 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, seeking a decree of permanent injunction, restraining Defendants from using any mark which includes “PRINCETON” for the services provided in its institutions or any other manner as would infringe plaintiff's registered trademarks or result in passing off of Defendants’ services as those of plaintiff.

Plaintiff is a member of the prestigious Ivy League Schools of Higher Education in the United States, having close to 1300 faculty members, including personages of higher renown and repute, some of whom are Nobel laureates. The plaintiff is educating over 5,200 undergraduate and over 2,900 graduate students.

Plaintiff alleged that by using the mark “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, Defendants have infringed the registered trademarks of plaintiff and has also sought to pass off the services provided in its institutions as services provided by plaintiff or associated with it.

Plaintiff claimed actual use of the "Princeton" mark since 1911 in India, as opposed to the user claimed by Defendants, i.e., 1991. and backed its contention with several newspaper articles mentioning their name. It also contended that it had offered various fellowships to Indian students and has tied up with many Indian educational institutions.

On the other hand, Defendants argued that logos of Plaintiff-   and Defendants-  . Defendants posited that the logos of Plaintiff and Defendants are distinct and that there is no commonality between the consumers of plaintiff and those of defendant's, thus, rendering any confusion impossible.

The defendants further argued that the plaintiff is estopped from seeking any injunctive relief against the Defendants on the principle of acquiescence by conduct as, despite knowledge of the defendants’ institutions, the plaintiff permitted the Defendants to build up their activities to the point where the Defendants have been using the impugned PRINCETON mark for 30 years. 

As regards the user claimed by the plaintiff, i.e., since the year 1911, Defendants argued that the plaintiff, in its affidavit of user filed along with the Trademark Application dated September 28, 2012, seeking registration of the mark “PRINCETON” has pleaded user since April 30, 1996. Plaintiff, relying upon Section 34 of The Trademarks Act[2], contended that the plaintiff must restrict its earliest claim of the user to the declaration of the user filed along with its Trademark Application, i.e., April 30, 1996. Further, the documents relied upon by the plaintiff for demonstrating the use of the PRINCETON mark do not constitute commercial use of the mark by it in India.

In rebuttal, the plaintiff argued that the claim of the user could not be regarded as sanctified or final, as it was rectifiable under Section 58 of the Act[3]. He further argued that the expression “use” in Section 34 must be interpreted in the light of Section 2(2)(c)(ii) of the Act[4], which envisages actual use.

DECISION:

The Hon’ble Court rejected the plea of the plaintiff for the grant of ex-parte ad-interim injunction against the defendants for the following reasons-

Defendants Established User Prior to Both Plaintiff’s Registration Date and First Date of Use of PRINCETON Mark

The Court observed that Section 34 immunises an infringing Defendant from interference by the plaintiff, with his use of the infringing mark, if the defendant can establish that he has continuously used the infringing mark from a date prior both to the (i) date of registration of plaintiff's mark as well as to the (ii) use of plaintiff's mark, in relation to those goods or services, by the plaintiff or his predecessor in title. The Court observed that undisputedly, Defendants’ use of the impugned mark PRINCETON is prior, in point of time, to the date of registration of the plaintiff's marks, which is September 28 2012.

As regards the second condition envisaged under Section 34, the Court agreed with the submissions of the plaintiff that when examining Section 34 of the Act, the use of the mark must be in terms of Section 2(2)(c) of the Act. However, the Court noted that the plaintiff 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 before 1991", which was the year when Defendants started using the PRINCETON mark. The Court observed that all the material relied upon by the plaintiff in support of its user claim is entirely in the form of newspaper articles, which does not constitute the use of the mark.

Thus, the Court further observed that there is no evidence of continuous use by the plaintiff of the "Princeton" mark before the year 1991, which was the date of "first use" by the defendant of the "Princeton" mark.

No Case of Passing off Made Out:

The Court held that the plaintiff has failed to establish a case of passing off. The Court held that in the present case, the possibility of confusion or deception, whether for infringement or passing off, has, therefore, to be examined from the point of view of a student and not the average person. The Court observed that the plaintiff is, today, arguably the foremost higher educational institution in the world and provides no services outside the USA; on the other hand, the defendants' institutions are situated entirely within the State of Telangana and do not even have any branch outside the said state. No student or person interested in the services provided either by the plaintiff or defendants is likely to be confused between the two merely because of the use, by the defendants, of PRINCETON as part of the name of the defendants' institutions.

No Case for Irreparable Loss and Balance of Convenience Made Out

The Court, while rejecting the plea of the plaintiff, observed that Defendants have been using their mark, admittedly, since 1991, and 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. Further, the Court noted that the plaintiff failed to put forth any argument 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.