Recently, the Delhi High Court directed the cancellation of the registration for the INSAID mark based on its phonetic similarity with the mark INSEAD, and similarities between the Petitioner (Institut Europeen D Administration Des Affaires, Insead, Association) and Respondent’s (Fullstack Education Pvt. Ltd.) services.
The Petitioner and Respondent both run business schools, under the names Institut Europeen D Administration Des Affaires Association (INSEAD), and International School of AI and Data Science (INSAID), respectively. It was the Petitioner’s case that it owns registrations for the INSEAD marks going back to 2007, and has been using the marks in India since 2010. On the other hand, the Respondent’s registration for the INSAID mark is dated February 2020 and records a use claim of December 2018. The Petitioner argued that the deceptive similarity between the rival marks is apparent from actual instances of confusion, and relied on an email it had received from a student who claimed to have erroneously attended one of the Respondent’s courses instead of the Petitioner’s.
The Respondent argued that the rival marks are phonetically dissimilar on account of the differences in the number of syllables in each mark (IN-SAID v. IN-SE-AD) and the way they are pronounced (In-sed v. In-si-yaad). The Respondent also submitted that the consumers being students, there is little to no chance that they would be confused while securing admission in either institution.
The court noted that it is indisputable that the petitioner has the benefit of priority of registration as well as priority of use. Further, the court observed that the rival marks are clearly phonetically similar and phonetic similarity has to be assessed from the point of view of the consumer, and not from the point of view of the parties. Accordingly, the court ordered cancellation of the Respondent’s registration for the INSAID mark.
Institut Europeen D Administration Des Affaires, Insead, Association v. Fullstack Education Private Limited & Anr.., C.O. (COMM.IPD-TM) 1/2021, Order dt. May 17, 2023