Is There a Trademark in a Name?
“What’s in a name? that which we call a rose, by any other name, would smell as sweet.” William Shakespeare famously quoted these lines in his creation of the romantic tragedy, Romeo and Juliet. Enter 21st century and these famous lines could be debated to the ends of time. In today’s world, where there are fakes of fakes and more fakes than actual products, Shakespeare might have thought differently.
Trademark Infringement and Passing off is something that we are all too familiar with. All of us have come across enough and more cases dealing with this subject. All of us, at some point of time, have passed off our personal belongings as belonging to a particular brand (wink wink) where, in reality it might have been a product from the vendor down the street (I don’t know about you guys, but I definitely have done that!). Moving onto the real issue, imagine a situation where you met a college going kid and asked him which college he studied at? And he proudly proclaims to you that he is a student of IIT Bangalore! There could be two reactions in such a situation – one, where you walk away scratching your head, surprised to know that Bangalore had an IIT that you were oblivious of until now!?; and two, where you seek to know more about this prestigious IIT in Bangalore! In case of the latter, the possible reaction from the kid would involve a sheepish grin and the revelation that IIT, in this context, stands for Indushekhar Institute of Technology – Bangalore. (Fictional name – Google verified!)
It is not uncommon in India to find names of educational institutes which one would normally associate with other prestigious institutions offshore or prestigious institutions within the country. For instance, every city in the country is likely to have a school with names like Oxford Public School, Cambridge School of Excellence, Harvard Public School, to name a few.
On June 1, 2015, the Madras High Court came across one such instance involving two institutes, this was the battle between VIT v. VIT! The case brief is as follows:
In 2001, Vellore College of Engineering was formally renamed “Vellore Institute of Technology,” following the attainment of the status of a Deemed University. By virtue of University Grants Commission’s communication and consequent Board Resolution dated October 10, 2006, Vellore Institute of Technology was renamed “VIT University”. VIT enjoys a reputation for a quality of the education imparted which it claims as being equal to that of the ‘Indian Institute of Technology’s, the ‘Indian Institute of Management’s, etc. These institutes, also called IIT, and IIM, in short and likewise, the Vellore Institute of technology is also called VIT. General public and the students and others identify the institute as VIT University. Its popular slogan being “VIT – A place to learn; a chance to grow.” The university by virtue of its quality in education has acquired enormous reputation in India as well as overseas and thus the “VIT University” mark has become a well known mark for the institute. VIT, thus has a trademark ‘VIT’ registered under class 41 of the TM Act. In June 2011, VIT came across another institute by the name of Vivekananda Institute of Technology (hereinafter referred to as “Defendant”) which was using the mark “VIT Campus” on their buildings and other printed materials. VIT immediately issued a Cease and Desist Notice but the Defendant continued to use this mark.
In May, 2012, VIT received queries from prospective students and parents from North India asking them if the institute had started any campus at Jaipur like the one in Chennai. On probing, it came to light that one Bagaria Education Trust, Jaipur had started an university under the name ‘VIT University’ at Jaipur, they university even hosted the website www.vitjaipur.ac.in. It was submitted before the Court that the Defendant had intentionally started the engineering colleges in the name of Vivekananda Institute of Technology only during 2008 with the object of illegally appropriating the reputation, by abbreviating the name and imitating the same name as that of the Plaintiff. Further, to show their institute as a campus of the Plaintiff, the Defendant had mentioned their name boards as “VIT Campus,” only to show it was an associate institution. The Defendant argued this contention of the Plaintiff and cited several facts including the fact that there were over 26 institutes using the acronym VIT and the mark VIT was not distinctive. The Court took note of both sides of the argument and concluded 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 also noted that since the Defendants had applied for a trademark registration in TM Application No. 2167415 dated December 8, 2013 in Class 41 for the mark VIT before the Trade Mark Registry, Ahmedabad and the same had been abandoned by the Registry by operation of Section 21(2) of the Trade Mark Act, 1999, vide order dated April 17, 2014, the claim that the mark ‘VIT’ is a descriptive and generic word falls flat. It was also established that by long and continuous usage of the mark VIT, the Plaintiff had built the mark VIT as a “well known mark”.
The Court also took note of the fact that since the registration certificate did not contain any geographical limitation, the Plaintiff is entitled to sue an infringer anywhere in India. In the instant case, since the mark VIT had been registered in favour of the Plaintiff, the Defence put forth that the Defendant University was situated at Jaipur; whereas the Plaintiff University was situated at Vellore, had no significance. Hence, for these reasons, the Plaintiff was entitled for the grant of interim injunctions as sought.
This case is only one among many cases that have dealt with this aspect of TM’s, what is of significance is the fact that there are umpteen number of such educational institutions which ride on the names of well established and reputed institutions. Beyond the legalities involved, it is a question of morality. It is ironic that so many institutions which boast of individuality and quality unfortunately ride on borrowed names and the ultimate question that begs answering is “What’s in a name?”.