Case Name- InstitutEuropeen D Administration Des Affaires, INSEAD, Association Vs.Fullstack Education Private

Posted On - 29 June, 2023 • By - King Stubb & Kasiva

Summary

The case arose out of a Rectification Petition filed against the Respondent’s mark, (Impugned Mark) bearing Reg. No. 4438201 registered in Class 41. The Petitioner owned the mark, “INSEAD” in various Classes, including Class 41, and the Impugned Mark was challenged on grounds of Section 11(1)(b) of the Trademarks Act, 1999.

image 1

The registration of the Impugned mark could not sustain owing to its similarity to the Petitioner’s existing earlier markINSEADand the similarity of the educational services provided by both the parties. Therefore, it was held by the Delhi High Court that the registration of the Impugned Markis was liable to be canceled.

Issue Raised

The issue in the present case was whether the two marks, ‘INSEAD’ and ‘INSAID’, were similar.

Background of the Case

The Petitioner and the Respondent ran business schools under the name Institu European D Administration Des Affaires Association (‘INSEAD’) and the International School of AI and Data Science respectively. The Petitioner began its business in the year 1957 and claimed to be the world’s foremost financial institution. The Petitioner argued that the Impugned Mark was deceptively similar to its mark ‘INSEAD’.

The Petitioner also stated that both the marks were phonetic “nearly indistinguishable”. The Petitioner relied upon an e-mail received from a student, who erroneously attended a program of the Respondent’s confusing it as of the Petitioner’s.

An argument was put up by the Petitioner that the ImpugnedMark was registered in violation of Rule 33 of the Trademark Rules, 2017 because a proper phonetic search was not conducted by the Trademark Registry. It was submitted that when a phonetic search is conducted on the Trademark Registry’s website, Petitioner’s INSEAD mark comes up as a similar mark to the Impugned Mark.

The Court did not agree with the Petitioner’s argument of violation of Rule 33 of the Rules as the Petitioner was unable to draw Court’s attention to any fixed guidelines on the nature of searches that the Registry is required to conduct, and the registration of the Impugned Mark cannot be set aside merely on this ground.

Judgment

The Delhi High Court ordered the removal of the Impugned Mark from the Trade Marks Register the following grounds:

  • Both acronyms of the Petitioner and Respondent, ‘INSEAD’ and ‘INSAID’ respectively, were phonetically similar.
  • Both the parties target same set of consumers, i.e., Students aiming for higher studies, thus increasing the likelihood of confusion.
  • That the Petitioner was the prior user and had the prior registration which connotes the fact that at the time of adoption of the Impugned Mark, the Respondent was aware of the Petitioner’s mark. Accordingly, the Respondent cannot take advantage of Section 12 of the Act.
  • The Court, while citing the example of medical college AIIMS, remarked that when acronyms are used for educational institutes, consumers tend to remember the acronyms and not the pictorial features or representations which accompany them.
  • The Court also directed the Registrar of Trademark to do a phonetic search while using the Examination Report after examining the application.

Analysis of the decision

The Court observed that the Petitioner’s mark ‘INSEAD’ was registered in the year 2007 and its device mark was registered in Classes 16,35, and 41 later in the year of 2012. On the other hand, the Respondent’s user claim was from 2018.

The Court applied the classical test formulated in Pianotist Co’s Application Re[1] for determining the phonetic similarity between the marks. The Court observed that the same test was applied in the case of Amritdhara Pharmacy v. Satyadeo Gupta and held that the infringement cases had to be decided based on ‘initial request confusion’.[2]Therefore, the Court observed that if the marks were such that, when the consumers initially come across them, there is a chance of confusion, then an infringement case, ipso facto, stands made out. The fact that later the confusion might be dispelled and enlightened might dawn, did not remove the infringement which already stands committed.

As per section 11(1)(b) of the Act, a mark is disentitled to registration, if;

  • It is similar to an existing mark;
  • If it is used for identical, goods or services and;
  • Due to the progressive effect of these explanations, there was a likelihood of confusion among the public.

Thus, the Court held that marks ‘INSAID’ and ‘INSEAD’ were phonetically similar. They were used for the same services,i.e., providing higher education involving Artificial Intelligence, and upon the application of the ‘initial interest confusion’ principle, there was a chance of confusion.

The Court rejected the Respondent’s contention that in the overall logos of both the marks, there might be accompanying pictorial representations or other features which might differentiate the marks as device marks. The prima facie use of ‘INSAID’, which was phonetically similar to the Petitioner’s mark, could not be honest or concurrent because the Chief Executive officer of ‘INSAID’ was well aware that the acronym of the Petitioner’s institution was ‘INSEAD’ but still chose to adopt the acronym ‘INSAID’.

Conclusion

The Court held that the present case falls entirely within the four corners of Section 11(1)(b) of the Act, and thus the registration of the Impugned Mark could not be sustained owing to its similarity to the Petitioner’s mark ‘INSEAD’, and the similarity of the services provided under the two marks, which were both educational services.

The Court held that the registration of the Impugned Mark should be quashed and set aside.


[1]Pianotist Co’s Application Re,(1906) 23 RPC 774.

[2]Amritdhara Pharmacy v. Satyadeo Gupta,(1963) 2 SCR 484.