“Actual Use,” Necessary To Claim Trademark Protection: Delhi High Court Rules While Denying Interim Relief To Princeton University

Princeton University, an Ivy League college, sued educational societies in Hyderabad for allegedly infringing its “Princeton” trademark. However, the Delhi High Court refused to grant any relief to the Plaintiff.

Brief Facts

The Plaintiff sued the Defendants for infringing its “PRINCETON” mark in respect of the same services. The Defendants have been using the mark since 1991 in India and contended that Plaintiff did not, in fact, have actual use of the mark in India.

The Defendant also argued that Plaintiff is bound by the user claim of 1996, made at the time of obtaining registration of the PRINCETON mark. The Defendant further contended that the Plaintiff is estopped from seeking any injunctive relief against the defendants on the principle of acquiescence by conduct. However, the Defendants were willing to comprise by restricting their activities and operations to the State of Andhra Pradesh.

Plaintiff did not press on transborder reputation or its spillover into India but on the actual use of the mark. Plaintiff further stated that it cannot be bound by the user claim of 1996 as it was rectifiable under Section 58 of the Trade Marks Ac, 1999 (the Act).

Issues

• Whether Plaintiff had “actual use” of the “Princeton” mark in India prior to 1996?
• Whether the Defendant has tried to pass off its services as of the Plaintiff?

Decision

For the first issue, the Court was of the opinion that no evidence put on record by the Plaintiff shows any actual use of the mark. The evidence relied upon by the Plaintiff consisted only of news articles published by various newspapers or publications by third parties.

The Court, while dealing with the second issue, observed that to believe that any consumer would confuse the services provided by the Defendants with those provided by the Plaintiff, one would have to see the type of consumers. The possibility of confusion or deception, whether for infringement or passing off has, therefore, to be examined from the point of view of a student, and not the ordinary man on the street.

Accordingly, the Plaintiff was refused any injunctive relief from the Court.

Analysis

This judgement is an interesting read for a lot of reasons. One of them is that despite Plaintiff being a globally famous educational institute, was not granted any relief due to absence of actual use prior to that of the Defendant. This case highlights the Indian Trademarks Law favors prior use over registrations.