In 2023, the Appellant had filed an application to restrain the Respondents from using the PRINCETON and PRINCETON UNIVERSITY marks for their educational institutions. However, 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 Respondents’ 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 Single Judge ruled in favour of the Respondents. Hence, the Appellant filed the present appeal before the Division Bench, challenging the Single Judge’s order.  

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, primarily third-party articles, placed on record by the Appellant, the 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 Respondents are providing similar educational services using the identical mark PRINCETON, confusion cannot be ruled out. Hence, the Division Bench set aside the Single Judge’s order and restrained the Respondents from using the PRINCETON mark in relation to any new educational institutes.

Source: The Trustees of Princeton University v. The Vagdevi Educational Society [FAO(OS) (COMM) 239/2023]