On the Delhi High Court’s recent decision restraining Vagdevi Educational Society from using ‘Princeton’ for any new educational institutions, Anushka Kanabar writes about the Court’s interpretation of ‘use of a mark’ and the application of the transborder reputation principle in this case. Anushka is a fourth-year B.A., LL.B. (Hons.) student at the National Law School of India University. Her previous posts can be accessed here.
Princeton’s Partial Win: Rethinking Use, Reputation, and Remedies in Trademark Cases
By Anushka Kanabar
The Delhi High Court’s recent judgement in The Trustees of Princeton University v. The Vagdevi Educational Society deals with many contested questions in Indian trademark law, including the territoriality principle and the nature of the “use” of a mark. In a classic David/Goliath scenario, the Court adjudicated a dispute between two “Princetons”: the Ivy League giant from New Jersey and a local educational society from Telangana.
The Vagdevi Educational Society had been operating educational institutions under the “Princeton” name in Telangana since 1991, allegedly as an ode to the prince of Hyderabad. Princeton University, claiming registration of the “Princeton” mark since 2012 and use since 1996, sought an interim injunction to restrain the Society from using it. This was dismissed by the Single Judge (for the judgement, see here) on the ground that Princeton had failed to establish prior use in India and that consumers were unlikely to be confused between the two entities.
The Division Bench set aside the single judge’s verdict and granted a partial injunction restraining the Society from further usage of the mark, in a judgement that reflects some doctrinal divergences that I will analyze in this post.
Redefining “Use of a Mark”
The most clearly articulated aspect in the Division Bench’s judgment is its interpretation of what constitutes “use of a mark” under Section 2(2)(c)(ii) of the Trade Marks Act, 1999, which defines it in the context of services as use “as or as part of any statement about the availability, provision or performance of such services.” While the single judge found that newspaper articles and publicity materials mentioning Princeton University (dating back to 1911!) did not qualify as use, since they were published by third parties, the division bench held that Section 2(2)(c)(ii) does not require the statement about services to be made exclusively by the proprietor. It also clarified that Section 29(6), which provides an illustrative list of acts constituting “use” for the purposes of defining infringement, does not restrict the broader definition in Section 2(2)(c).
The test, according to the Court, is merely that there is a statement made about the availability, provision or performance of the service in relation to which the mark is used. The question of whether the statement was made by the proprietor itself or by a third party is then irrelevant. This interpretation rescues Section 2(2)(c)(ii) from being used to artificially deny protection to renowned marks where the proprietor does not directly advertise them.
On the Burden of Proving Prior Use
The doctrinal divergence also plays in the Court’s analysis of Section 34 of the Trade Marks Act. Section 34, a savings clause, protects prior users from interference by later registrants. The single judge rejected Princeton University’s reliance on this provision by stating that it had not proved its continuous use of the mark prior to the Society’s adoption of the same. Correcting this misinterpretation, the Division Bench held that Section 34 requires a defendant (who is resisting a claim by a registered trademark owner) to prove continuous prior use to the plaintiff’s first use or registration, whichever is earlier.
This is simply an extension of the overarching logic governing the burden of proof in civil proceedings – that the party claiming the benefit of a provision must prove that its elements are met; it also follows as a natural consequence of the Court’s holding that Princeton University had proved prior use as far back as 1911: as a result, the Society could not rely on judgements to the effect that prior users’ rights override restraints’ rights: here, Princeton University was held to be both the prior user and the first registrant of the “Princeton” trademark.
Transborder Reputation v. Domestic Presence
The Court applied the principle of transborder reputation to confer protection on Princeton University’s mark in India, even though the University does not have an actual presence in the Indian market. As I will explain in this section, it did so on the basis of the spillover of its global reputation into India, manifest in the utilization of its services by a segment of Indian consumers.
Transborder reputation has been a subject of significant judicial attention, and has been discussed on the blog here. The brief doctrinal backdrop to Princeton University is this: the Supreme Court in Toyota v. Prius (discussed by Prof. Basheer here) established that the territoriality principle underlying Indian trademark law requires a spillover of a mark’s reputation and goodwill into India to receive protection. However, High Courts in subsequent cases have diluted its stringency in several ways (something Eashan Ghosh also argues here), an example of which is the Delhi High Court decision in Bolt Technologies v. Ujoy Technologies.
In Bolt Technologies, the Court noted the obsolescence of the strict distinction between “reputation” and “goodwill” in light of the growing interconnectivity of global trade. It noted that Toyota v. Prius does not completely shut out the application of the principle of transborder reputation, wherein international trademark owners with substantial reputation and goodwill amongst a class of consumers could receive protection in India.
While Princeton University seems to have shifted from an argument based on transborder reputation to an argument based on actual use in India since 1911, this did not materially affect the Court’s analysis. For the Court, the fact that Indian students travel to study at Princeton and there is extensive media coverage of the university was sufficient to establish that the “Princeton” mark had a real presence in the Indian market. Relying on Bolt Technologies, the Court recognized that substantial reputation among a “sizeable and noteworthy number of the concerned segment” of the population would suffice.
The Court therefore categorically held that if the plaintiff establishes that there are customers for a services in India “though not necessarily in a real market but through use of its mark in a more subtle way,” then he “stands in the same position as a domestic trader” in respect of bringing an action. This is an extension of the liberal approach to the territoriality principle taken in Bolt Technologies amongst other judgements, and seems correctly informed by commercial considerations – when Indian students specifically seek out and travel to access education at Princeton, it would be unrealistic to deny that Princeton’s mark has acquired significance in the Indian market.
Princeton’s Unclean Hands?
The Society raised several arguments regarding Princeton University’s conduct. First, they highlighted its delay in bringing the action, allegedly discovering the respondents’ use in 2020 but only filing suit in 2022, despite the Society’s use of the marks since 1991. Second, they pointed to the inconsistency in its positions before the Court and the trademark registry: in its trademark application, Princeton had declared use in India only since April 30, 1996, yet in the litigation, it claimed use since 1911. Moreover, in its response to objections from the trademark registry, Princeton had argued that its mark was distinguishable due to its unique logo, yet before the Court its claim was premised on the word “Princeton” alone causing confusion.
The single judge viewed this conduct very charitably, stating that the ordinary rule regarding the bindingness of declarations in trademark applications can be overridden by a case of earlier use that is “so substantial and impenetrable” that the court cannot but hold in the plaintiff’s favour. The delay, too, was held to be outweighed by the interest in preventing the bad faith adoption of trademarks. Both of these holdings were curiously upheld by the Division Bench and not treated as factors weighing against the grant of interim relief to Princeton, even though the ultimate outcome was not in its favour. This may have been a missed opportunity to call out the tactical opportunism inherent in arguing distinctiveness to seek trademark registrations but claiming confusion over bare word marks when pursuing infringement actions – a tactic for which even successful plaintiffs have been penalized before with costs (see here).
A Partial Injunction
The Court’s ultimate decision – though following on the heels of a nearly 50 page analysis of how Princeton University had made out a prima facie case for relief – was not to grant a full injunction against the Society’s use of the “Princeton” mark. Rather, the Court merely restrained it from opening new institutions using “Princeton” while allowing existing institutions to continue operating, coupled with requirements for maintaining accounts and regular reporting.
This was a result of the “balance of convenience” not lying in Princeton University’s favour: the Court correctly recognized that the Society, that had operated for over three decades, building its own reputation and serving students who had no connection to the American university, would face significant disruption if a complete injunction were to be granted. At the same time, allowing unrestricted expansion would have further diluted Princeton University’s mark. The judgement therefore exemplifies how courts can be more attuned to commercial realities in assessing market presence and brand awareness, configuring the dynamics between international brands and local enterprises, and granting the least disruptive remedies.