Delhi High Court Restrains Vagdevi Educational Society from Using 'Princeton' for New Institutions
Landmark Ruling Affirms Trademark Protection for Princeton University, Recognizing Trans-Border Reputation in India
In a significant ruling, the Delhi High Court has upheld the trademark rights of Princeton University, restraining Vagdevi Educational Society from using the name 'Princeton' for any new educational institutions during the pendency of the suit. The judgment, delivered by a Division Bench comprising Justices Navin Chawla and Renu Bhatnagar, reverses the earlier order of a Single Judge which had denied interim relief to Princeton University.
The case centered around the use of the 'Princeton' mark by Vagdevi Educational Society, an educational entity established in 1991 in Telangana, India. Princeton University, one of the oldest and most prestigious institutions in the United States, contended that its trademark was being infringed upon, arguing that its reputation and goodwill had transcended borders, establishing a significant presence in India.
The High Court scrutinized extensive historical references and evidence presented by Princeton University, dating back to 1911, which demonstrated the university's long-standing reputation and engagement in India. The court found that the use of the 'Princeton' mark by third parties in various publications and the university's interactions with Indian students constituted a valid use of the trademark under Section 2(2)(c)(ii) of the Trade Marks Act, 1999.
The judgment emphasized that the concept of trademark use is not limited to acts by the proprietor alone but extends to any statement about the availability, provision, or performance of services associated with the mark. This interpretation challenges the traditional territoriality principle, recognizing that trans-border reputation can establish jurisdiction akin to a domestic trader.
While acknowledging the prima facie case in favor of Princeton University, the court noted the long-standing use of the mark by Vagdevi Educational Society since 1991 and the absence of Princeton University’s physical presence in India. As a result, the court opted for a balanced approach, permitting Vagdevi to continue using the mark for existing institutions but prohibiting its use for new establishments. Additionally, Vagdevi is required to maintain and file detailed accounts of all receipts during the litigation.
This ruling marks a pivotal moment in trademark law, reinforcing the protection of international brands within India while addressing the complexities of trans-border reputation and goodwill.
Bottom Line:
Trademark law - Use of a mark by third parties can constitute "use" under Section 2(2)(c)(ii) of the Trade Marks Act, 1999, provided it relates to the availability, provision, or performance of services associated with the mark.
Statutory provision(s): Trade Marks Act, 1999 Sections 2(2)(c)(ii), 29, 34.
