Summary
This post examines the legal question of whether a name can function as a trademark, particularly in the context of educational institutions in India. Using the VIT v. VIT case as an example, it analyses the Madras High Court's approach to trademark infringement and passing off, especially when institutions use similar or identical names to benefit from established reputations. The discussion highlights the role of distinctiveness, reputation, and the concept of a "well known mark" under Indian trademark law. The post also considers the broader ethical implications of institutions adopting names that may mislead the public. Ultimately, it questions the value and impact of names in the competitive educational sector.
The question of whether the name of an educational institution can attract trademark protection has significant practical consequences in India, where it is commonplace to find schools and colleges borrowing names associated with prestigious domestic or foreign institutions. On June 1, 2015, the Madras High Court considered one such instance in a dispute styled VIT v. VIT.
Background
Vellore College of Engineering was formally renamed Vellore Institute of Technology in 2001, following its recognition as a Deemed University. A subsequent Board Resolution dated October 10, 2006, pursuant to a communication from the University Grants Commission, further renamed the institution VIT University. The university had acquired substantial goodwill both in India and abroad through the consistent quality of education it provides, and its abbreviation “VIT” had come to be identified with that institution by students, parents, and the general public. Its popular slogan — “VIT – A place to learn; a chance to grow” — reinforced the connection. VIT University held a registered trademark for the mark “VIT” under Class 41 of the Trade Marks Act, 1999.
In June 2011, VIT University became aware that an institution named Vivekananda Institute of Technology (the Defendant) was using the mark “VIT Campus” on its buildings and printed materials. VIT issued a Cease and Desist Notice, which was disregarded. In May 2012, VIT received enquiries from prospective students and parents in North India who had understood that VIT had opened a campus in Jaipur. Investigation revealed that Bagaria Education Trust, Jaipur had established a university under the name “VIT University” at Jaipur, operating a website at www.vitjaipur.ac.in. The Defendant had applied for trademark registration under TM Application No. 2167415 dated December 8, 2013, in Class 41, before the Trade Mark Registry, Ahmedabad; that application was abandoned by operation of Section 21(2) of the Trade Marks Act, 1999, by order dated April 17, 2014.
Arguments
The Plaintiff contended that the Defendant had deliberately adopted the name Vivekananda Institute of Technology in 2008 to appropriate the Plaintiff’s reputation and goodwill, abbreviated the name to “VIT”, and further used the description “VIT Campus” to suggest an association with the Plaintiff’s university. The Defendant countered that more than twenty-six institutions used the acronym “VIT”, making the mark non-distinctive, and that the Plaintiff had not come to court with clean hands.
Findings
The Madras High Court found that the Defendant had acted with mala fide intent, concluding in its own words that “The Defendants, with the mala fide intention of securing students, who would have only joined the applicant’s Deemed University, is attempting to cause confusion as if they were a part of the Plaintiff’s university and get students admitted and thereby unjustly enriched.”
The Court further held that the abandonment of TM Application No. 2167415 by operation of Section 21(2) negated the Defendant’s claim that “VIT” was a descriptive or generic term. The long and continuous use of the mark had elevated it to the status of a “well known mark” for the purposes of the Trade Marks Act, 1999. As the Plaintiff’s registration carried no geographical limitation, the territorial location of the Defendant’s institution in Jaipur — as opposed to Vellore — was held to be of no legal significance. The Plaintiff was accordingly entitled to the interim injunctions sought.
Significance
The case confirms that names of educational institutions are capable of acquiring trademark distinctiveness through long and continuous use, and that abbreviations functioning as well-known marks attract protection against use by third parties who seek to ride on the reputation of the established institution. The decision highlights the moral as well as legal dimensions of such disputes: institutions that trade on borrowed names undermine the very reputation they seek to exploit.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.