The Delhi High Court’s Division Bench recently examined the issue of transnational trademark protection in The Trustees of Princeton University v. The Vagdevi Educational Society & Ors (Vagdevi) FAO(OS) (COMM) 239/2023. The case was brought by the Princeton University before the IP Division of the Delhi High Court. Princeton University alleged trademark infringement on account of Vagdevi’s use of the mark/name “PRINCETON” or “PRINCETON UNIVERSITY”. The Single Judge of the Delhi High Court refused to injunct Vagdevi from using the mark PRICETON for educational services. Princeton appealed against the refusal of injunction before the two judges Bench (Division Bench).

This note examines the arguments advanced by both parties and the Division Bench Ruling on the important question whether physical presence of business is necessary to sustain passing off action or actual use through publicity, alumni, and educational services was sufficient to establish goodwill and reputation.

Princeton’s Case

1. Princeton University, established in 1746 is a member of the Ivy League.
2. Princeton claimed extensive reputation and goodwill in India, citing historical interactions, alumni, and educational programs involving Indian students since 1911.
3. Princeton claimed that it has academic collaborations, including programs with Ashoka University (Sonipat), the Novogratz Bridge Year Program in Udaipur, and internships with the Indian Chamber of Commerce. Princeton attracts a significant number of Indian students over 160 were enrolled during 2021-2022 and operates its official website, www.princeton.edu, registered in 1987.
4. The dispute arose when Princeton discovered Vagdevi’s use of the mark “Princeton” for educational services in India, specifically through the website www.princetonschoolofeducation.com, and sought to restrain them from using the mark “PRINCETON/PRINCETON UNIVERSITY.”
5. Princeton claimed its mark PRINCETON is registered in India under various classes. On the other hand, Vagdevi argued that they had been using the “Princeton” name since 1991, much before Princeton’s registration in India.
6. Princeton argued that physical presence in India is not essential for trademark protection. Their reputation and actual use through publicity, alumni, and educational services would suffice.
7. Princeton asserted that Vagdevi’s use of the mark is likely to confuse consumers and dilute Princeton’s distinctive character and goodwill.
8. Princeton relied upon legal precedents supporting protection of trans-border reputation and argued that delay in filing suit should not bar relief, especially if the adoption of the mark was in bad faith.

Vagdevi’s Case

1. They are an educational society registered under the Societies Registration Act. They adopted the name Princeton in 1991, well before Princeton University’s trademark registration in India.
2. The name was chosen as a tribute to the “Prince of Hyderabad” and symbolised their vision of nurturing “Princes and Princesses” through education.
3. Their logo and visual identity were distinct, eliminating any likelihood of confusion. Princeton University’s trademark applications were initially objected to due to pre-existing similar marks, proving lack of exclusivity.
4. “Princeton” is a geographical term used by several institutions globally and cannot be monopolised.
5. They are bona fide adopters and continuous users of the mark since 1991, operating primarily within Telangana State.
6. The Princeton University was aware of other users of the “Princeton” mark and only acted after discovering their use in 2020.
7. They argue that delay in action and lack of actual presence of Princeton University in India should weigh against granting an injunction.
8. Princeton University has not established passing off. There is difference in logos, admission processes, and fee structures.
9. Princeton University’s claim was barred by the principle of territoriality and that there was no evidence of Princeton University’s actual use of the mark in India.

Division Bench Ruling

1. Use and Reputation: The Court held that the evidence provided by Princeton, including media references and educational collaborations, demonstrated recognition and goodwill for its services in India. The use of a mark need not be direct use by the proprietor. The use includes references by third parties that indicate the availability or performance of services also amount to “use” within the meaning of the Act.
2. Trans-Border Reputation: The Court clarified that this was not a case of mere reputation spillover. The enrolment of Indian students and ongoing collaborations showed actual performance of services in India, establishing sufficient goodwill for protection.
3. Section 34 and Prior Use: The burden to establish continuous prior use under Section 34 lies on the Defendant, not the registered proprietor. Princeton University’s claimed date of use since 1996 in its trademark application did not preclude it from claiming earlier use, if the proprietor can show actual earlier use through credible evidence.
4. Likelihood of Confusion: The Court found the marks to be identical in word form and observed that confusion may arise in multiple forms, dilution, initial interest confusion, or deception, even when logos differ.
5. Geographical Name Argument: The contention that “Princeton” is a geographical name was rejected. The Court held that extensive and long-standing use can endow even geographical terms with distinctiveness, making them eligible for protection.
6. Selective Enforcement: The Division Bench emphasized that a trademark proprietor is not required to act against every infringer; the choice of enforcement is a matter of discretion.

Court’s Decision

While recognizing Princeton University’s prima facie case, the Division Bench also considered Vagdevi’s long-standing operations since 1991, their localised presence in Telangana, and Princeton’s lack of physical presence in India.

To balance equities, the Court ordered that:

1. Vagdevi Educational Trust shall not open any new institutions under the name “Princeton” during the pendency of the suit; and
2. They must maintain and file accounts of all receipts every six months before the Single Judge.

Comment

This case decision reinforces that

1. Global reputation and historical use can be protected under Indian trademark law, even without direct commercial presence.
2. It clarifies the standards for “use” to be not limited to direct use by the proprietor.
3. The date of first use declared in a trademark registration application is not binding if earlier use can be proven with evidence.