Introduction:
Trademark disputes can be intricate legal battles, often hinging on various factors such as the history of trademark usage, the likelihood of confusion, and the balance of convenience. In the case at hand, the Plaintiff, claiming to be the registered proprietor of the trademark "PRINCETON" for educational institutions, alleged infringement by Defendant.
1. However, the Hon'ble High Court of Delhi refused to grant an injunction, citing several key reasons for its decision.
1. Lack of Evidence for Prior Usage in India:
The first critical factor considered by the court was the plaintiff's inability to provide any material indicating their use of the "PRINCETON" trademark in India before 1991, the undisputed date of the defendant's usage. Under Section 34, this omission becomes significant, as it acts as an exception to Section 28(1). Section 28(1) protects registered trademarks, but Section 34 disentitles relief against infringement if the defendant's use predates the plaintiff's. In this case, the defendant's usage clearly preceded the plaintiff's, leading to the application of Section 34.
2. Application of Section 34:
Once Section 34 applied, the court reasoned that examining the infringement under Section 29 (which deals with infringement of registered trademarks) would be futile. This provision essentially renders the plaintiff unable to interfere with the defendant's use of their marks, regardless of whether they infringe upon the plaintiff's mark under Section 29.
3. Examination of Confusion from a Student's Perspective:
The court adopted a unique perspective in assessing the likelihood of confusion or deception. It noted that in the context of educational institutions, the confusion must be viewed from a student's standpoint, not that of the ordinary person on the street. The court argued that no student or person interested in the services provided by either party would be likely to confuse the two institutions merely because of the shared use of "PRINCETON" in their names. Therefore, the court found that a case of passing off was not established.
4. The Troika of Prima Facie Case, Balance of Convenience, and Irreparable Loss:
Lastly, the court emphasized that in intellectual property matters, including cases of alleged passing off, interlocutory injunctions can only be granted when a prima facie case, balance of convenience, and irreparable loss are cumulatively established. Given the defendant's use of the mark for 32 years and the delayed initiation of the lawsuit in 2022, the balance of convenience clearly favored not injuncting the defendants.
The Concluding Note:
The refusal to grant an injunction in this case illustrates the complex interplay between trademark law provisions, the necessity of establishing a prima facie case, and the importance of considering the specific context of the dispute. Ultimately, the court's decision was influenced by the defendant's long-standing use of the mark, the absence of prior usage evidence by the plaintiff, and the unique perspective from which confusion was assessed, all of which contributed to the denial of interim relief.
Case Law Discussed:
Date of Judgement:06/09/2023
Case No. C.S Comm 270 of 2022
Neutral Citation No: 2023:DHC:6420
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, H.J.
Case Title: The Trustees of Princeton Society Vs The Vagdevi Educational Society
Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Advocate Ajay Amitabh Suman,
IP Adjutor:Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com,
Mob No: 9990389539
