In India, trademark protection often requires courts to balance territorial legal principles with the realities of global reputation. As international institutions gain visibility in India through media, academic collaborations, and public engagement, the question of whether such entities can establish trademark rights despite not operating locally becomes increasingly relevant. The case involving Princeton University illustrates how Indian courts interpret “use”, trans-border reputation, and prior-use protection in the modern era.
The main legal issue in The Trustees of Princeton University vs The Vagdevi Educational Society & Ors. was whether a globally renowned institution that does not maintain a physical presence in India can nevertheless obtain trademark protection in India. This question becomes particularly important in a world where services, reputation, and goodwill transcend borders through media, academic engagement, and public discourse. The associated law that guides this question is primarily Section 2(2)(c)(ii) of the Trademarks Act, 1999, which defines “use” of a mark in relation to services to include any statement made about the availability, provision, or performance of such services.
The law does not limit the definition of “use” to actions directly performed by the proprietor; references by third parties, publications, reports, and historical accounts may also qualify as use, if they show a public association between the mark and the services provided under it. Additionally, doctrines relating to trans-border reputation and the statutory defence of prior use under Section 34 further frame the legal assessment of whether a foreign entity may assert enforceable rights in India.
These legal principles came into sharp focus in the present matter, where Princeton University sought to restrain the respondents from using the name “Princeton” for educational services. The question before the Delhi High Court was whether Princeton’s long-standing global reputation, historical engagement with Indian academia, and frequent references in Indian publications amounted to trademark use in India even in the absence of an Indian campus. The Court held that the broad statutory definition of “use” accommodates such historical and public references, thereby recognising Princeton’s longstanding trademark presence. On the issue of trans-border reputation, the Court clarified that physical presence is not a mandatory precondition for protection; reputation may spill over into India through academic links, press coverage, and public awareness.
Regarding prior use under Section 34, the Court placed the burden on the respondents to prove continuous prior use and found that Princeton’s historical reputation clearly pre-dated the respondents’ adoption of the mark. The identical use of the word “Princeton” for educational services also created a likelihood of confusion, a central test for infringement, irrespective of differences in logos or the respondents’ regional operations. Finally, the Court held that a delay in filing the suit could not defeat the claim, especially when the adoption of the mark was likely to be in bad faith or when it involved a globally renowned name.
In conclusion, this case shows that trademark protection in India can extend to foreign institutions with a strong reputation and goodwill in the country, even if they lack a local commercial presence. It affirms that “use” under trademark law is broad and inclusive, that trans-border reputation remains a strong and valid basis for asserting rights, that the prior-use defence must be strictly established by the party asserting it, and that identical word marks used in the same field are inherently likely to cause confusion. The judgment strengthens the protection afforded to globally recognised educational institutions and solidifies their ability to prevent unauthorised use of their marks within India.
Authors: Manisha Singh and Kratika Patel
First Published by: Mondaq here