Lexology | India August 7 2015 | RNA, Intellectual Property Attorneys |
Vellore Institute of Technology (hereinafter ‘Vellore’), popularly known as VIT brought a trade mark infringement and passing off action against Bagaria Education Trust running two Engineering Colleges namely Vivekananda Institute of Technology and Vivekananda Institute of Technology (East) at Jaipur ( hereinafter ‘Vivekananda’) from using the mark ‘VIT university’ or ‘VIT Campus’ or ‘VIT’ or ‘VIT EAST’. Further Vellore sought a restraint order against Vivekananda from hosting deceptive websites such as VIT Jaipur, VIT J etc.
Vellore in support of its case argued:
- In 1984 North Arcot Educational and Charitable Trust started a private college in the name of Vellore Engineering College at Vellore.
- The name of the College was changed to Vellore Institute of Technology and declared as a deemed university in 2001. In 2006 Vellore Institute of Technology was renamed as VIT UNIVERSITY.
- The mark VIT is registered in classes 16 and 41 and the reputation and quality of the education imparted is equal to that of the Indian Institute of Technology and Indian Institute of Management (the two prestigious institutions in India).
- The name/ mark VIT has become a well known mark because of enormous reputation it has acquired in India as well as overseas all these years.
- In June-2011, Vellore came to know that one Vivekananda Institute of Technology and Vivekananda Institute of Technology (East) are using the mark ‘VIT CAMPUS’ on their buildings and in their printed materials and put them on notice of their rights.
- The enquiries revealed one Bagaria Education Trust had started two Engineering Colleges namely Vivekananda Institute of Technology and Vivekananda Institute of Technology (East) at Jaipur.
- Vivekananda with the object of illegally appropriating the reputation had started the engineering colleges in the name of Vivekananda Institute of Technology and mentioned the name as ‘VIT CAMPUS’ on the name board to show their institute is an associate of Vellore.
- The adoption of the above mark VIT by Vivekananda s is only to deceive the students and make them believe that they are joining the Vellore University.
- As Vivekananda failed to comply with the requisitions in the cease and desist letter addressed by Vellore, they were constrained to file this suit.
- Pursuant to filing the suit, the Board of Management of the Vivekananda had requested the State Government to change the name of the University from VIT University, Jaipur to Vivekananda Global University, Jaipur, which has been approved however, the name change has not been complied with by Vivekananda and the change remains only on paper.
Vivekananda countered by submitting the following:
- They do not use only ‘VIT’ per se, but in a composite form and as an acronym of its trade names namely, ‘Vivekanand Institute of Technology’, ‘Vivekanand Institute of Technology (East)’, ‘VIT University, Jaipur’ and is always used as a whole.
- It is customary practice in the educational field to use acronym of the names and VIT is being used by various institutions and the acronym VIT is only a descriptive and generic word and Vellore cannot claim monopoly over VIT.
- They have also filed a rectification/cancellation petition against Vellore’s registration in class 41 which is pending.
- The institutions run by them have been using the acronym VIT right from their inception in the year 2008, however, the present case has been filed in the year 2012.
- Students seeking higher education make enquiries about the credentials of the institutions and will not be deceived in assuming VIT, Jaipur as ‘Vellore Institute of Technology’.
After detailed hearing and considering the pleadings and judgments relied on by the parties the court held:
Vellore has been using the word VIT from the year 2001 and the mark is also registered in their favour. By long and continuous usage the mark VIT has become distinctive and associated with them. Thus, use of the same mark for identical services will create confusion in the mind of the public. The argument that the mark VIT is a descriptive and generic word was negated by the court considering that Vivekananda itself had filed an application for registration of the mark VIT, which was subsequently abandoned. In view of the above, the court granted injunction in favour of Vellore restraining Vivekananda from using the mark VIT in relation to their educational institutions. – Courtesy