The Trustees of Princeton University v. The Vagdevi Educational Society & ors.

The Trustees of Princeton University v. The Vagdevi Educational Society & ors.

CS(COMM) 270/2022, I.A. 6494/2022

Decided on 06/09/2023

Brief Facts of the Case

Princeton University filed a lawsuit against the Vagdevi Educational Society, which is based in Hyderabad and operates multiple educational institutions in Telangana, including the Princeton School of Education, Princeton School of Engineering and Technology, Princeton Degree and PG College, Princeton PG College of Information Technology, Princeton PG College of Management and Princeton College of Pharmacy. The university alleged that the defendant had infringed on its registered trademarks by using "Princeton" in the name of its educational institutions, in its domain name princetonschoolofeducation.com, and in the logos and emblems of its various institutions. The defendant was accused of trying to pass off its services as those of Princeton University. As a result, the university sought a permanent injunction to prevent the defendant from using any mark that includes "Princeton" in a manner that would infringe on the university's trademarks or result in the passing off of the defendant's services as those of the university.

The plaintiff's counsel emphasized that Princeton University is a prestigious institution with over 1,300 faculty members, including Nobel laureates such as Albert Einstein. The university educates over 5,200 undergraduates and over 2,900 graduate students at any given time and offers a variety of courses, which are detailed in the lawsuit. The university also provides study abroad programs to its students and has academic associations with several Indian institutions. The plaintiff presented newspaper reports to support its claim that it offers fellowships to Indian students. The defendant was accused of attempting to pass off its services as those of Princeton University.

High Court's Observation

In a recent ruling, an Indian court has determined that the multiple references made to a US-based institution in Indian newspapers cannot be considered as an infringement of the institution's trademark in India. The court observed that there is no evidence of continuous use of the "Princeton" mark by the American Ivy League college prior to 1991, which was the year of first use by the defendant institutions. As a result, the court concluded that denying the further right to use the "Princeton" mark by the defendants would not be in the public interest. The court further stated that it is highly unlikely that any consumer would confuse the services provided by the defendants with those provided by the plaintiff. It is worth noting that the defendants' institutions are located entirely within the State of Telangana and do not have any branch outside the said state. Additionally, the court highlighted that Princeton University has not placed any material on record indicating any statement by it about the availability, provision, or performance of the services provided by it accessible in India prior to 1991. Therefore, it is up to the Ivy League university to establish that they have suffered an irreparable loss due to the use of the Princeton mark by the defendant for seeking an interim order. However, no arguments were made on this point during the proceedings.

Conclusion:

The Indian court has determined that the use of the "Princeton" mark by the Vagdevi Educational Society and its affiliated institutions within the State of Telangana is not trademark infringement. The court observed that there was no evidence of continuous use of the mark by Princeton University before 1991, which is when the defendant institutions claimed to have first used it. Additionally, the court noted that there was no record of any statements by Princeton University about its services being available in India before 1991.

The court also expressed doubt that consumers would be confused regarding the services provided by the defendant and those of Princeton University, given the geographical limitation of the defendant's institutions to the State of Telangana. Based on these factors, the court concluded that preventing the defendants from using the "Princeton" mark would not be in the public interest.

To obtain an interim order, Princeton University would need to demonstrate that it has suffered irreparable loss due to the use of the mark by the defendant. However, no arguments were presented on this point during the proceedings. The court's decision highlights the importance of providing evidence of continuous use of a trademark and potential confusion in cases of alleged infringement. In summary, the court did not find sufficient grounds to grant a permanent injunction against the defendant.

Conclusion:

The Indian court's decision in "The Trustees of Princeton University v. The Vagdevi Educational Society & ors." emphasizes the need for sufficient evidence of continuous trademark use and the potential for consumer confusion in infringement cases. Despite Princeton University's esteemed reputation, the court did not find trademark infringement by the defendant. The court noted the absence of evidence regarding Princeton University's continuous use of the "Princeton" mark before 1991, the claimed first use by the defendant. The geographical limitation of the defendant's institutions to the State of Telangana also played a crucial role in the court's decision. Princeton University would need to demonstrate irreparable loss for an interim order, which was not argued during the proceedings. Overall, the case underscores the importance of robust evidence in trademark disputes and the consideration of geographical factors in determining likelihood of confusion.