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INTRODUCTION

This case involves a trademark dispute between The Trustees of Princeton University, a globally recognized academic institution based in the United States, and The Vagdevi Educational Society, an Indian entity operating college under the name “Princeton” in Telangana. The matter reached the Delhi High Court in appeal (FAO(OS)(COMM) 239/2023) after the Single Judge declined to grant an interim injunction restraining the respondents from using the marks “PRINCETON” and “PRINCETON UNIVERSITY.” The appellate court was called upon to determine whether the appellant had established trademark rights in India, whether the respondents qualified as prior users under Indian law, and whether interim relief was appropriate.

FACT OF THE CASE

Princeton University was founded in 1746 as the College of New Jersey and was renamed Princeton University in 1896. It is one of the oldest and most prestigious institutions of higher education in the United States. Historical records indicate that Princeton had a presence in India as early as 1911, including alumni activities and academic collaborations. For instance, the January 1911 edition of The Indian Tiger was published from the office of the Acting Secretary of Princeton University alumni residing in India and neighboring regions. A 1936 article in The Times of India documented the appointment of an Indian chemist to Princeton’s research department.

The Vagdevi Educational Society was registered on 31 January 1991 under the Societies Registration Act, 1860. It began operating educational institutions under the name “Princeton,” claiming the name was inspired by the Prince of Hyderabad and the vision to educate “tons” of princes and princesses. The society established colleges in Telangana and obtained affiliation from Osmania University.

Princeton University applied for trademark registration in India on 28 September 2012 under Classes 16, 25, and 41. Certificates were issued in 2016 and 2018. In January 2020, the University discovered the respondents’ use of the mark “Princeton” through the website princetonschoolofeducation(dot)com. Legal notices were sent, and the University initiated legal proceedings in 2022.

On 6 September 2023, the Single Judge of the Delhi High Court dismissed the University’s application for interim injunction. The Judge held that the University failed to show use of the mark in India by itself, and that the respondents were entitled to protection under Section 34 of the Trade Marks Act, 1999 as prior users. The University appealed this decision.

ARGUMENT IN FAVOUR

The appellant submitted that physical presence in India is not essential for establishing trademark rights. It relied on the doctrine of trans-border reputation, asserting that its mark had been used and recognized in India since 1911. Historical publications, alumni activities, and educational programs involving Indian students were cited as evidence of use. The following decisions were relied upon: N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714, which upheld protection based on trans-border reputation; Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, which recognized global reputation as a basis for trademark protection in India; and Century Traders v. Roshan Lal Duggar, 1977 SCC OnLine Del 50, which emphasized the importance of goodwill and reputation.

The appellant interpreted Section 2(2)(c)(ii) of the Trade Marks Act to include references to services made by third parties. It argued that the section does not require the proprietor to operate services in India. The University also challenged the reliance on the user date declared in its trademark application (1996), arguing that it should not act as estoppel if earlier use (since 1911) can be demonstrated. It cited Intellectual Property Attorneys Association v. Union of India, 2014 SCC OnLine Del 1912, to support this interpretation.

Regarding Section 34 of the Act, the appellant asserted that it is the defendant who must prove continuous prior use to claim protection. The University claimed to have shown prima facie use since 1911, which should defeat the respondents’ claim. It also argued that the identical marks used for similar services could cause confusion, even if logos differ. The concept of initial interest confusion was invoked, supported by Baker Hughes Ltd. v. Hiroo Khushlani, (2004) 12 SCC 628.

Finally, the appellant addressed the issue of delay, stating that it only discovered the respondents’ use in 2020 and acted promptly thereafter. The delay was attributed to the COVID-19 pandemic. It argued that delay should not defeat an injunction when the adoption of the mark is in bad faith, citing Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90.

ARGUMENT AGAINST

The respondents contended that the appellant had conceded before the Single Judge that it was not relying on trans-border reputation and could not revive that claim on appeal. They cited State of Maharashtra v. R.S. Nayak, (1982) 2 SCC 463, to emphasize the finality of concessions made in court.

They maintained that trademark law is territorial and that the appellant failed to show actual use in India. Reputation in the USA was deemed insufficient. The respondents relied on Toyota Jidosha v. Prius Auto, (2018) 2 SCC 1, which held that foreign reputation alone does not justify protection in India, and Bolt Technology OU v. Ujoy Technology, 2023 SCC OnLine Del 7565, which reiterated the territoriality principle.

The respondents claimed use of the mark since 1991, predating the appellant’s claimed use (1996). They argued that they were the prior users entitled to protection under Section 34. They cited S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, and Neon Laboratories v. Medical Technologies, (2016) 2 SCC 672, to support their claim.

They also contended that the appellant’s evidence showed use by unrelated third parties, not by the proprietor itself. Section 34 requires use by the proprietor. The respondents accused the appellant of taking contradictory stands, having earlier claimed its mark was distinct due to its logo, and now asserting that use of “Princeton” alone was infringing. They cited Raman Kwatra v. KEI Industries, 2023 SCC OnLine Del 38, and Modern Snacks v. Modern Foods, 2023 SCC OnLine Del 3972, to argue estoppel.

The respondents further argued that “Princeton” is a geographical name used by multiple entities worldwide. The appellant cannot claim exclusivity. They cited Manipal Housing Finance v. Manipal Stock & Share Brokers, 1996 SCC OnLine Mad 736, to support this point. They also maintained that differences in logos, fee structures, and geographical scope made confusion unlikely.

COURT’S DECISION

The Delhi High Court allowed the appeal in part and set aside the Single Judge’s order. However, it granted only limited interim relief.

The Court held that “use” under Section 2(2)(c)(ii) includes references to services made by third parties. The section does not require the proprietor to operate services in India. The appellant’s historical presence through publications and alumni activities constituted use.

The Court reaffirmed the territoriality principle from Toyota Jidosha but clarified that presence through reputation and service availability to Indian students can establish goodwill. It relied on Bolt Technology OU v. Ujoy Technology, 2023 SCC OnLine Del 7565, to support a broader interpretation of territorial presence.

Regarding Section 34, the Court held that it is the defendant who must prove continuous prior use. The appellant showed prima facie use since 1911, defeating the respondents’ claim. The Court rejected the estoppel argument, stating that actual prior use can override the date declared in the registration application. Earlier cases on estoppel were found inapplicable.

The Court found that the appellant had established a prima facie case. The identical word mark “Princeton” used for similar services could cause confusion, even if logos differ. However, the Court held that the respondents had been using the mark since 1991, and the appellant lacked an actual educational institution presence in India. The respondents’ geographical scope was limited to Telangana. Therefore, the balance of convenience and irreparable harm did not favor granting a full injunction.

The Court granted limited interim relief, restraining the respondents from using the mark “Princeton” or any deceptively similar mark for any new institution during the pendency of the suit. The respondents were directed to file an affidavit every six months detailing receipts from institutions currently operating under the name “Princeton.” The Court clarified that its observations were tentative and would not influence the final decision on merits.

CONCLUSION

This case analyses the trans-border reputation, interpretation of “use,” and the burden of proof under Section 34 of the Trademarks Act 1999. The Delhi High Court recognized that the global institutions could establish trademark rights in India through reputation and service availability, even without physical presence. It also emphasized that prior users must show continuous use to claim protection. While Princeton University succeeded in establishing a prima facie case, the Court balanced the equities and granted only limited relief. The final outcome will depend on the full trial, but the judgment sets a significant precedent for foreign institutions seeking to protect their marks in India.