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

In an appeal against a Single Judge’s order denying an interim injunction, the Division Bench granted partial relief to Princeton University (“Appellant”) in its suit against The Vagdevi Educational Society and others (“Respondents”) from use of the PRINCETON mark in relation to any new institution during the pendency of the suit.

The Single Judge had dismissed the Appellant’s motion for an interim injunction on the ground that the Appellant had failed to establish prior use in India and a prima facie case.

The Appellant had claimed adoption of the PRINCETON mark in 1896, and use in India since 1911, based on several newspaper articles circulated in India. The Respondent No. 1, on the other hand, asserted that it adopted the PRINCETON mark as an ode to the Prince of Hyderabad for educating and grooming thousands (denoted by the word ‘ton’) and claimed continuous use of the said mark since 1991. The Single Judge had held that to show use of a mark, such use has to be shown by the proprietor itself and not by a third-party, thereby rejecting the newspaper articles as evidence of prior use relied upon by the Appellant, and holding the Respondents as the prior user of the PRINCETON mark in India.

The Division Bench, on the contrary, held that the use of a mark need not be shown by the proprietor alone, and third-party references, such as newspaper articles in the present case, would suffice if they relate to the availability or performance of services under the Indian trade mark. Based on the aforesaid interpretation, the Division Bench held that the Appellant has established prior use in India going as far back as 1911 through Indian student engagement and media presence, placing it on par with a domestic trader.

However, due to the Respondents’ long-standing use since 1991, the Appellant’s lack of physical presence in India, and the Respondents’ limited regional footprint, the Court denied a full injunction but restrained use of the PRINCETON mark for any new institutions during the suit’s pendency to balance equities. 

The Trustees of Princeton University v. The Vagdevi Educational Society & Ors., FAO (OS) (COMM) 239/2023

Read the judgement copy here.