In 2023, the Appellant had filed an application to restrain the Respondent from using the PRINCETON and PRINCETON UNIVERSITY marks for their educational institutions. The learned Single Judge held that the Appellant’s use of the PRINCETON mark in India was insufficient and the use shown was by third-parties, rather than the Appellant itself. Taking into account the Respondent’s prior use of the mark in India since 1991 coupled with the lack of evidence of the Appellant’s use of PRINCETON mark in India, the learned Single Judge ruled in favour of the Respondent. Hence, the Appellant filed an appeal before the Division Bench, challenging the Single Judge’s decision.
Upon reviewing the matter, the Division Bench held that the use of a mark under Section 2(2)(c)(ii) of the Trade Marks Act, 1999 does not require such use to be made by the proprietor alone. Based on the evidence placed on record by the Appellant, which were primarily third-party articles, the Appellant’s PRINCETON mark not only enjoys tremendous reputation and goodwill globally, but is also widely recognized in India since 1911. The Division Bench also observed that in a composite mark, the predominant part can be entitled to standalone protection depending on the facts and circumstances. Since the Respondent is providing similar educational services using an identical mark, confusion cannot be ruled out. Hence, the Division Bench set aside the learned Single Judge’s order and restrained the Respondent from using the PRINCETON mark in relation to any new educational institutions.
Source: The Trustees of Princeton University v. The Vagdevi Educational Society [FAO(OS) (COMM) 239/2023]