Recently, the Madras High Court granted an interim injunction restraining Vivekananda Institute of Technology from using the acronym ‘VIT’ in relation to its engineering colleges. Since Vellore Institute of Technology, Vellore, was the prior registered owner of the mark VIT for education, training, sports etc, and the mark was held to be a well known mark, the question the court had to decide was whether the defendant could be allowed to ‘VIT’ for their educational institutions set up in Jaipur.
Background
The Vellore Engineering College at Vellore was established in 1984 by the North Arcot Educational and Charitable Trust. The name of this institute was then changed to Vellore Institute of Technology and it was declared as a deemed university on 19.06.2001. In 2006, after a Board Resolution and communication with the University Grants Commission, ‘Vellore Institute of Technology’ was renamed as VIT UNIVERSITY. VIT has two campuses, the main one at Vellore and another at Chennai.
The plaintiff argued and the court held that the VIT mark has gained reputation all over India and even at the international level. The university is one of India’s top colleges. It conducts is own entrance exam called the VITEEE, offers various scholarships and has also entered into several MoUs with foreign universities. Rankings, advertisements and other articles related to the university have been published in various newspapers, periodicals etc.
In 2002 the plaintiff applied for registration of the mark VIT in Class 16 (paper and paper articles, cardboard and cardboard articles etc). In 2004, another application was filed under Class 41 for the registration of ‘VIT’ in respect of education, providing of training, entertainment, sporting and cultural activities. This mark was registered in favour of the plaintiff in 2005.
In 2011, the plaintiff came to know about the ‘Vivekananda Institute of Technology’ and the ‘Vivekananda Institute of Technology (East)’. These institutes, located in Jaipur, used the words ‘VIT CAMPUS’ on their buildings and on printed materials. Though a cease and desist notice was sent, the defendants continue to use the VIT mark.
Plaintiff’s contentions
Identical marks and confusion: The plaintiff argued that it was the prior registered owner of the trademark VIT. The defendants had adopted a mark identical to their registered trademark and since both are engaged in providing education, this was likely to cause confusion as per Section 29(2)(c) of the Trade Mark Act. This was more so because the plaintiff had received queries from prospective students and parents asking whether the plaintiff had opened a campus in Jaipur too.
Mala fide intention: It was argued that the defendants used the VIT mark even after a resolution to change the name of the university to Vivekananda Global University, Jaipur, so as to avoid any litigation.
Counters and court
Common to the trade: The defendants argued that VIT was only an acronym and not a distinctive mark. Moreover, several other institutions used the mark VIT showing that it was publici juris.
However, the plaintiff countered these arguments by contending that once the defendants chose to register a trademark (the defendants had also sought to register VIT), they cannot challenge the plaintiff’s mark as not distinctive. Also, it was argued that even if a mark is descriptive it can become distinctive and capable of registration by extensive usage and goodwill generation. VIT had become distinctive due to the continuous and long use of the word VIT by the plaintiff. On the last point, the plaintiff argued that even though there were several other institutions using the mark VIT, whenever such unauthorized use came to the knowledge of the plaintiff, the plaintiff had initiated action. Therefore, the use of the mark VIT by third parties cannot be a defense for the defendants.
All of the arguments of the plaintiff were upheld by the court. The court also held that VIT, in relation to the plaintiff, had become a well known mark.
No likelihood of confusion (Location and level of discretion): the defendants argued that the two marks were not likely to cause confusion due to two main reasons. First, students who were interest in applying to these colleges make substantial amount of investment for higher education and are bound to inquire into the credentials of the institutes. Second, the defendants are imparting education only in Rajasthan, whereas, the plaintiff has its universities in Vellore and Chennai therefore, there is no likelihood of confusion.
The court did not go into this argument as it held that since the plaintiff was the prior registered user and since the marks were identical and related to the same service, the plaintiff was entitled to statutory protection. The court also held that since the registration of the plaintiff was not limited to any geographical location, the fact that the defendant operated only in Rajasthan could not be used as a defense.
Observations
Likelihood of confusion: Section 29(2)(c) provides that a registered trademark is infringed by unauthorized use of a) an identical mark, b) in relation to an identical good/service and c) which is likely to cause confusion. It reads
“(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark.
is likely to cause confusion on the part of the pubic , or which is likely to have an association with the registered trade mark.”
The court was influenced by the first two factors but did not reason out the third factor which is essential to establish infringement. The people most affected by the potential confusion in relation to educational institutions are students, prospective employers, persons who want to enter into MoUs in relation to training, education etc. However, since education is a service, unlike buying a product off a shelf, none of these persons would be ‘likely to be confused’ as they would exercise more discretion and make informed decisions. This aspect of infringement was not well explained by the court, maybe because it was a prima facie holding.
Dilution: If it has been held that VIT is a well known mark, then the bigger question to address is that of trademark dilution. The test of trademark dilution does not hinge on likelihood of confusion. Instead if it can be shown that the infringing mark either takes unfair advantage of or is detrimental to the repute of the registered trademark then a case for trademark dilution exists. However, dilution is generally assumed to be a remedy for unauthorized use of a mark in relation to dissimilar goods. This also becomes evident from the language of Section 29(4) which states that “in relation to goods or services which are not similar to those for which the trade mark is registered”. However, the same provision in the EU has been interpreted to provide a remedy against dilution even for goods/services that are similar, by the ECJ (see Dev Gangjee’s paper here). Given that VIT is a well known mark, dilution could be a potential argument which was not brought up at this stage.
Some similar trademark cases related to educational institutions are the Goenka v. Goenka case and the more recent Shri Ram School case.
