Institut Europeen D Administration Des Affaires Insead, Association Vs. Fullstack Education Private Limited & Anr

18th July, 2023 - 9:52 am Categories: Legal Issues Trademark 0 Comments

Introduction

In the instant case a dispute arose between the two business schools, INSEAD and INSAID regarding the infringement of the Petitioner’s trade mark and confusion among consumers. The court decided in the favor of Petitioner and held that there exists a likelihood of confusion and both trademarks are phonetically similar. The court ordered to cancel the registration of Respondent’s mark” INSAID”. The court at conclusion also suggested conducting a phonetic and public search at the preliminary stage, so the possible trademarks which are similar to applied trademark can be identified.

Examining The Dispute Between Insead And Insaid Over Trademark Infringement And Phonetic Similarity:

BRIEF FACTS OF THE CASE

• The Petitioner and the Respondent are both engaged in running a business school known as Institut Europeen D Administration Des Affaires Association, which is abbreviated as INSEAD, and International School of AI and Data Science, abbreviated as INSAID, respectively. It is acknowledged that the logos of the Petitioner and the Respondent are different, with the Petitioner’s logo being   and the Respondent’s logo being
• Both parties have registered their respective trademarks. The Petitioner’s mark, INSEAD, is registered in Class 16, 35, and 41. The Respondent’s mark, /INSAID, is registered in Class 41, specifically for education, training, entertainment, sports, and cultural activities.
• The word mark INSEAD has been registered in favor of the Petitioner since August 7, 2007, on a “proposed to be used” basis. Additionally, the Petitioner holds registrations for the device mark in Classes 41, 35, and 16, effective from December 28, 2012. On the other hand, the Respondent’s mark came into effect on February 12, 2020, with claimed usage starting from December 14, 2018.
• The Petitioner argued that the Respondent’s mark, INSAID, is deceptively similar to the Petitioner’s mark, INSEAD, and asserted that the two marks are phonetically almost indistinguishable. As evidence of confusion, the Petitioner has provided an email dated December 5, 2020, from a student who mistakenly attended a program by the Respondent believing that it is provided by the Petitioner.
• In light of these circumstances, the Petitioner issued a notice to the Respondent on January 19, 2021, demanding the cessation of the use of the acronym INSAID, alleging that it was deceptively similar to the Petitioner’s acronym, INSEAD, and causing confusion. Unfortunately, the notice did not elicit a favorable response.
• Therefore, the Petitioner has filed the present rectification petition under Section 57 of the Trade Marks Act, 1999, seeking the removal of the Respondent’s registered trademark, , from the Trade Marks Register.

ISSUES BEFORE THE COURT:

1. Whether the mark “INSEAD” and “INSAID” are phonetic similar or not?
2. Whether the competing marks in the present case, characterized as device marks rather than word marks, are dissimilar to an extent that eliminates any possibility of confusion?

RATIO: TRADEMARK INFRINGEMENT AND PHONETIC SIMILARITY IN THE INSEAD VS. INSAID CASE

• The court observed that the Petitioner holds the benefit of both priority of registration and priority of use over the Respondent. The Petitioner’s word mark INSEAD has been registered since August 7th, 2007, and its device marks have been registered since December 28th, 2012. On the other hand, the Respondent claims to have used its mark starting from December 14th, 2018.
• Regarding phonetic similarity, the court stated that what matters in such cases is phonetic similarity, not phonetic identity. The assessment of phonetic similarity should be made from the perspective of the consumer, not from the viewpoint of either party involved. The court emphasized that the consumer should be an average person with imperfect recollection and average intelligence. It was made clear that the consumer should not be someone overly familiar with either of the marks.
• In this case, the court applied the “Initial Interest Confusion Test” and concluded that if there is a chance of confusion or infringement when the consumer encounters the marks for the first time, then infringement is established. The fact that the confusion may be dispelled later does not negate the infringement that has already taken place.
• After applying these tests, the court observed that (i) INSAID and INSEAD are phonetically similar, (ii) they are used for similar services involving AI-based higher education, and (iii) according to the initial interest confusion principle, there is a likelihood of confusion. Given the phonetic similarity and the fact that both marks are acronyms for institutions providing similar services, a consumer, including a student intending to enroll, may wonder if they have encountered the mark before. Therefore, the likelihood of confusion is established.
• The court also noted that INSEAD is pronounced as “in-si-yaad.” The similarity between “Ead” and “aid” in words like “dead” and “said” was highlighted. The court clarified that what matters is not phonetic identity, but rather phonetic similarity, which prima facie exists between INSEAD and INSAID.
• On the second issue, the court held that even if the surrounding features or representations of the devices used as marks are significantly different, the similarity or identity of the prominent parts or essential features of the rival marks cannot be mitigated. The court noted that INSAID and INSEAD form the prominent parts of the rival marks. It is common knowledge that when referring to acronyms of educational institutions, the average consumer tends to remember the acronym rather than the accompanying pictorial features or representations. The court provided an example of the All-India Institute of Medical Sciences (AIIMS), where the average consumer remembers the institute by the acronym AIIMS, not by the various figures accompanying the logo. Thus, the presence of distinguishing pictorial representations or other features in the overall logos of the marks does not detract from their confusingly similar nature.
• The court referred to Section 11(1)(b) of the Trade Marks Act, which prohibits the registration of a mark that, due to its similarity to an earlier trademark and the identity or similarity of goods or services covered by both marks, leads to a likelihood of confusion among the public. This provision is subject to Section 12 of the Trade Marks Act, which allows for the registration of identical or similar marks if their use is found to be honest and concurrent.
• To avoid such confusion in future cases, the court instructed that when an application for mark registration involving a word is submitted, a word mark search and a phonetic search should be conducted at the preliminary stage. This will help identify possible marks that are phonetically similar to the applied mark. The Registrar should then determine whether any of the suggested marks are indeed phonetically similar to the marks for which registration is sought, within the meaning of Section 11(1)(b) of the Trade Marks Act.
• Therefore, the court quashed and set aside the registration of the impugned device mark INSAID.

CONCLUSION AND SUGGESTIONS

The Delhi High Court, in its judgement, held that the mark “INSAID” of Fullstack Education Private Limited bears a strong phonetic similarity to the petitioner’s mark which could lead to confusion among consumers. Consequently, the court decided in the favor of INSEAD and canceled the registration of the Respondent’s Trademark “INSAID”.

The court also recommended that Applicants and Trademark Registrar conduct a public search for word and phonetic mark as well as existing registered marks, it would help in preventing the registration of deceptively similar marks and reduce the likelihood of confusion among the consumers.

Author: Rishabh Audichya, student of 4th year B.A-LL.B.(Hons.) ICFAI University, Jaipur, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.