The issue of whether a party can claim use of a trademark prior to what has been
declared in a trademark application is a matter of significance in trademark
law. This article delves into a notable case involving the trademark "PRINCETON"
in the context of educational institutions and services in India.
The case presents a dispute between the plaintiff and the defendant regarding
the claimed user dates of the trademark. The plaintiff asserts use since 1911,
while the defendant's claimed use in India dates back to 1991. The core question
is whether a party can assert use prior to what has been declared in their
Background of the Case:
In this case, the defendant raised an argument that the plaintiff must restrict
its earliest claim of using the "PRINCETON" mark to 1996. This contention was
based on the fact that, in the plaintiff's affidavit of user filed with its
trademark application in 2012, the plaintiff stated use of the mark starting
from 1996. The defendant asserted that this declaration should be binding on the
The plaintiff, on the other hand, contended that even if they declared use of
the mark from 1996 during the trademark registration process, they should still
be entitled to claim use from an earlier date if they could provide irrefutable
evidence of such prior use. Essentially, the plaintiff argued that the
declaration made during the registration process should not override actual use.
The case was brought before the Hon'ble High Court of Delhi, which issued a
noteworthy judgment providing valuable insights into this legal conundrum. The
court's ruling emphasizes several key principles:
Declaration of User:
The court recognized that the declaration of user made at the time of applying
for trademark registration is significant. In most cases, it would ordinarily
bind the applicant. This declaration is vital for establishing the timeline of
use and securing exclusive rights.
Approbate and Reprobate:
The court cited the principles of approbate and reprobate, indicating that a
party cannot simultaneously assert use from a particular date during the
registration process and claim earlier use if it suits their interests.
Ordinarily, the declaration should be consistent with the asserted use date.
Actual Use Prevails:
However, the court emphasized that if the party can indisputably demonstrate
actual use of the asserted mark from a point in time earlier than what was
declared during registration, this evidence would prevail. In such cases, the
court cannot ignore the material presented by the party regarding prior use.
To illustrate this principle, the court provided a practical example. If the
trademark relates to an educational institution's name and the plaintiff
declared use from 2010 during registration but could prove that the institution
prominently displayed the mark on its premises since 2000, then the use of the
mark would be reckoned from 2000, not 2010.
The Concluding Note:
In conclusion, the case involving the trademark "PRINCETON" in the context of
educational services highlights the nuanced approach taken by the Hon'ble High
Court of Delhi regarding claims of use prior to what has been declared in a
trademark application. While the declaration of user is important and should
ordinarily be consistent with actual use, the court recognized that evidence of
prior use can override the declared date if presented convincingly.
Case Law Discussed:
Case Title: The Trustee of Princeton University Vs The Vagdevi Educational
Date of Judgement:06/09/2023
Case No. CS(COMM) 270/2022
Neutral Citation No: 2023:DHC:6420
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539