• Goethe-Institut sued the defendants for unauthorised use of the marks MAX MUELLER and MAX MUELLER INSTITUTE for similar educational services
• The court noted that a passing-off action will lie even against a registered trademark owner
• The plaintiff has been using MAX MUELLER BHAVAN to identify its institutes since 1957, while the defendants adopted the mark in 2018

In a recent ruling concerning use of the marks MAX MUELLER and MAX MUELLER INSTITUTE by an educational institute, the Delhi High Court has upheld Goethe-Institut EV’s prior rights and use of the name Max Mueller Bhavan and restrained use by the defendants. Interestingly, the defendants argued that they had adopted the name to honour Professor Max Mueller, a German Indologist.

Background

The plaintiff, Goethe-Institut EV, is a cultural institution headquartered in Germany. It was established in 1951 to promote the German language and culture across the world. Known officially as Goethe-Institut, the plaintiff has been operating in India since 1957 and has six institutes in India known under the name Max Mueller Bhavan. The plaintiff offers German-language courses and conducts examinations.

The plaintiff filed suit against the defendants, Abhishek Yadav and another, alleging unauthorised use of the marks MAX MUELLER, MAX MUELLER INSTITUTE and the device mark MAX MUELLER INSTITUTE (depicted below) for similar educational services, specifically German-language courses:

The plaintiff contended that such use amounted to passing off, and that the defendants intended to ride on its reputation and goodwill.

Parties’ arguments

The plaintiff contended as follows:

1. The plaintiff began operations in India in 1957 and has consistently used MAX MUELLER BHAVAN to identify its institutes, alongside the official name Goethe-Institut.
2. Applications for registration of MAX MUELLER and MAX MUELLER BHAVAN are pending in Class 41. However, during examination, the Trademark Registry raised conflicts with the defendants’ registrations.
3. Inquiries revealed that the defendants offer the same German-language training services and even require students to enrol with the plaintiff to obtain certification, raising concerns about misleading affiliations.
4. A cease-and-desist notice issued by the plaintiff was disregarded by the defendants, prompting the initiation of legal proceedings.
5. Although the defendants claimed 15 years of use on their website, their trademark applications were filed on a ‘proposed to be used’ basis with no supporting evidence of actual use. The adoption of the marks was allegedly dishonest and intended to mislead.

The defendants contended as follows:

1. The defendants’ use of the name Max Mueller Institute since 2018 was an honest homage to German Indologist Max Mueller.
2. They held registrations for MAX MUELLER INSTITUTE and MAX MUELLER in Classes 41 and 35, respectively.
3. MAX MUELLER BHAVAN is not a trademark but merely a building name, with no substantial evidence of trademark use by the plaintiff.
4. The plaintiff primarily used ‘Goethe-Institut’ as their brand identity and not MAX MUELLER BHAVAN to provide services.

Court’s findings

At the outset, the court stated that it is judicially well settled that the law recognises the rights of a prior user and that a passing-off action will lie even against a registered trademark proprietor.

Prior use

The court noted that the plaintiff has been using the mark MAX MUELLER BHAVAN since 1957, while the defendants adopted the mark only in 2018. The plaintiff’s institutes are commonly known under the name Max Mueller Bhavan in India.

Misrepresentation

The court found that the defendants’ use of the mark MAX MUELLER INSTITUTE was likely to cause confusion among the public, leading them to believe that the defendants’ services are associated with the plaintiff. The defendants’ website also created confusion by appearing in search results alongside the plaintiff’s website.

Goodwill and reputation

The court acknowledged the plaintiff’s goodwill and reputation associated with the mark MAX MUELLER BHAVAN. The plaintiff’s institutes are recognised by the Government of India and various publications.

Interim relief granted

Given the likelihood of confusion and the prima facie case made out by the plaintiff, the court granted an interim injunction restraining the defendants from using the contested marks until the final disposal of the suit.

Comment

This ruling reinforces that the common-law remedy of passing off is available for unregistered marks. It also reaffirms that prior use is given precedence over a registered mark where the latter’s adoption was in bad faith.