Court’s Decision
The Delhi High Court decreed a suit for trademark infringement and passing off in favour of the plaintiff, a globally renowned academic institution, against the defendants using deceptively similar marks. The Court restrained the defendants from using the mark PRINCTON or any mark deceptively similar to PRINCETON. It awarded damages of ₹5,00,000 and costs, while emphasizing that “well-known marks deserve the highest degree of protection against misappropriation” .
Facts
The plaintiff, a prestigious educational and publishing institution with a legacy spanning over a century, owns registered trademarks in India for the word PRINCETON and operates globally in education, research, and publishing. Its reputation extends to India, where it is recognized as a leading academic name.
In 2018, the plaintiff discovered that the defendants had registered and were using the mark PRINCTON for educational consultancy services, particularly in coaching and overseas education facilitation. Despite receiving cease-and-desist notices, the defendants continued using the infringing mark.
In 2019, the plaintiff instituted the present suit for infringement and passing off, asserting that the defendants’ adoption was mala fide, dishonest, and intended to ride upon the immense goodwill and reputation of the PRINCETON name. The defendants were served but failed to appear; they were eventually proceeded ex parte .
Issues
- Whether the mark PRINCTON was deceptively similar to PRINCETON so as to constitute infringement under Section 29 of the Trade Marks Act, 1999.
- Whether the plaintiff’s reputation as a well-known mark entitled it to the highest protection in India.
- Whether damages and costs could be awarded in ex parte proceedings when the defendants deliberately abstained from contesting the suit.
Petitioner’s Arguments
The plaintiff argued that PRINCETON is a well-known mark globally, including in India, and enjoys statutory protection through multiple registrations. Its reputation was so strong that even use on unrelated services would create a likelihood of confusion and dilution.
The plaintiff further contended that the defendants’ mark PRINCTON was phonetically, visually, and structurally almost identical to PRINCETON, differing only by omission of one letter. The similarity was likely to mislead students and parents into believing an association with the plaintiff’s reputed institution.
The plaintiff relied on precedents protecting well-known marks from dilution, including Daimler Benz v. Hybo Hindustan (1994) and Whirlpool v. Registrar of Trademarks (1998), and argued that the defendants’ mala fide intent was evident from their persistence despite opposition and notices.
Respondent’s Arguments
The defendants failed to appear or contest despite service of summons and notices. Their right to file a written statement was closed, and they were proceeded ex parte. Hence, the Court treated the plaintiff’s evidence as unrebutted .
Analysis of the Law
The Court reiterated that under Section 29 of the Trade Marks Act, 1999, infringement is established where the impugned mark is identical or deceptively similar to the registered mark and used in the course of trade. Here, PRINCTON and PRINCETON were nearly indistinguishable to the average consumer, especially given phonetic similarity.
The Court emphasized that well-known marks under Section 2(1)(zg) enjoy protection beyond identical goods/services. Their reputation and goodwill, once established, must be safeguarded against dilution or unfair advantage.
Further, under Section 135 of the Act, damages and costs can be awarded in infringement actions. Where defendants abstain from proceedings, courts can pass ex parte decrees, relying on unrebutted evidence.
Precedent Analysis
- Daimler Benz v. Hybo Hindustan (1994) – Recognized higher protection for prestigious global marks; applied here to extend strong protection to PRINCETON.
- Whirlpool v. Registrar of Trademarks (1998) 8 SCC 1 – Held that trans-border reputation of well-known marks must be protected in India; cited in support of Princeton’s goodwill.
- Rolex SA v. Alex Jewellery (2009) – Protected ROLEX against unrelated goods/services; applied to show that even non-competing services cannot dilute a well-known mark.
- Cartier International A.G. v. Gaurav Bhatia (2016) – Held that damages can be awarded even in ex parte proceedings when defendants evade litigation.
These authorities fortified the Court’s finding that PRINCETON deserved the highest protection .
Court’s Reasoning
The Court reasoned that the defendants’ adoption of PRINCTON was dishonest, given the global fame of PRINCETON. The phonetic, visual, and structural similarities were bound to create confusion among students and parents, especially in the education sector where trust and reputation are paramount.
The Court further reasoned that ex parte decrees are justified where defendants deliberately abstain, as permitting them to benefit from non-participation would encourage evasion of justice.
Thus, the Court decreed the suit in favour of the plaintiff, restraining the defendants and awarding damages.
Conclusion
The Delhi High Court decreed the suit in favour of the plaintiff, granting a permanent injunction restraining use of PRINCTON or any deceptively similar variant of PRINCETON. It awarded ₹5,00,000 as damages and costs. The decision reaffirmed the principle that well-known marks must be afforded the highest protection to prevent misappropriation of their goodwill.
Implications
This judgment strengthens trademark protection for global academic and institutional brands in India. It demonstrates that well-known marks enjoy cross-sectoral protection, ensuring that dishonest adopters cannot exploit their reputation even in unrelated services. It also underscores that courts will not hesitate to award damages in ex parte proceedings to deter willful infringement.
FAQs
Q1: What is the significance of a “well-known” trademark under Indian law?
Well-known marks receive expanded protection across all classes of goods/services, preventing dilution and unauthorized use even in unrelated sectors.
Q2: Can damages be awarded in ex parte trademark cases?
Yes. Courts have consistently awarded damages where defendants abstain, to ensure accountability and deter misuse.
Q3: Why was PRINCTON found deceptively similar to PRINCETON?
Because the marks are nearly identical phonetically and visually, and the defendants’ services in education created a strong likelihood of confusion.
