Institut Europeen D Administration Des Affaires Association v. Fullstack Education Private Limited & Anr.

2. Another reason for declining interest (among the best applicant pool) in LBS‘s MBA is the rapid emergence of its close rival INSEAD over the past few years. With a new campus in Abu Dhabi besides the existing campuses in France and Singapore, INSEAD‘s MBA programme is aggressively delivering a consistent message that it is a highly international school that helps its students launch a global career in whatever field they choose. Apart from being a consulting juggernaut, INSEAD has one of the best entrepreneurship programmes and is strong in luxury goods and retail, too. Since many students enter MBA programmes to explore new careers, they feel that they should rather be at INSEAD where they have access to diverse career opportunities, than at LBS where they will be primarily restricted to finance.

3. The third reason is the emergence of Indian School of Business, Hyderabad, as a strong choice for Indians who form the largest pool of MBA applicants outside the United States. A lot of Indian students are staying back to join ISB even when they get through to LBS. Since ISB is a partner school of LBS, many professors from LBS come to teach here and applicants think it doesn‘t make much sense for them to go to LBS and spend around $130,000 doing an MBA there, especially when the EU and the UK visa rules have made it even more difficult for non-EU students to secure jobs in Europe. In spite of all this, I‘m still very bullish on LBS for two reasons. I believe that the programme is next to none and its problems are more related to its stereotypical image of a finance school, rather than any fundamental problem with the school itself. I also believe that the biggest parameter for a top school is how successful the school‘s alumni have been. LBS boasts some formidable and highly successful alumni. Thirdly, LBS is one of the most recognised brands globally. It takes decades for business schools to build a strong global brand and the fact is that most in Asia or the rest of the world would not recognise what INSEAD or HEC Paris is, but most would know what LBS is. In short, the LBS brand is here to stay. The question is – can it change its stereotypical image? I believe it definitely can. The school can take cue from HBS, Stanford and Wharton, which in recent years, have revamped their websites and changed their value propositions to prospective students to reflect changing market dynamics and student aspirations. LBS‘s website is minimalistic right now and I believe it could do much better by highlighting its strengths in areas other than finance. For example, LBS has one of the best programmes for entrepreneurship and the faculty has absolutely stellar credentials. But the website doesn‘t do much to highlight this. I also think LBS has a strong brand and it is not going anywhere. But then, if it doesn‘t evolve with the changing times, it may soon find itself losing better quality students to its rivals such as INSEAD. Having said that, I believe that LBS will soon follow the footsteps of its American counterparts to position itself as a programme where students do amazing things and a programme that is in sync with the changing aspirants of students. Manvender is the Co-founder & Managing Director of Aristotle Prep, a test prep company that provides popular test prep products and publishes books for the GMAT & GRE across seven global locations for students in more than 60 countries.‖

9. The petitioner, in these circumstances, issued a notice to the respondent on 19th January 2021, calling on the respondent to cease and desist from using the acronym INSAID, alleging that it was deceptively similar to the petitioner‘s acronym INSEAD and was creating confusion. Needless to say, the notice did not result in any favourable response.

10. It is in these circumstances, that the petitioner has moved the present rectification petition under Section 57 of the Trade Marks Act, 1999, for rectification of the Trade Marks Register by removal, from the register, of the respondent‘s registered trademark INSAID.

11. The rectification petition has been seriously opposed by the respondent.

12. I have heard Mr. Anirudh Bakhru, learned Counsel for the petitioner and Mr. Kunal Tandon, learned Counsel for the respondent at considerable length. Rival Contentions

13. Mr. Bakhru submits that the petitioner enjoys, over the respondent, priority both of registration and of use. The petitioner‘s word mark INSEAD stands registered with effect from 7th August 2007 and the petitioner‘s device marks stand registered with effect from 28th December 2012. As against this, the respondent‘s device mark stands registered with effect from 12th February 2020. The petitioner has been using its mark in India prior in point of time to the respondent.

14. On merits, Mr Bakhru submits that the acronyms INSEAD and INSAID are, phonetically, confusingly similar and that, therefore, the respondent‘s INSAID mark was not entitled to registration, in view of Section 11(1)(b)1 of the Trade Marks Act, 1999. The likelihood of confusion, resulting from the similarity in the marks and the services provided, he submits, was manifested from the e-mail dated 5th December 2020 received from the student. Mr Bakhru emphasises, in this context that confusion has to be examined from the initial interest point of view. The fact that the persons who would be using the said marks happen to be students, asserts Mr. Bakhru, does not lessen or mitigate, in any manner, the possibility of confusion. To support these submissions, Mr. Bakhru has placed reliance on the judgment of this Bench in Bacardi & Co. Ltd v. Bahety Overseas Pvt Ltd[2] and Bulgari SPA v. Notandas Gems Pvt Ltd[3].

15. In anticipation of an objection from the defendant on that score, Mr. Bakhru further submits that the nature of the consumer to whom the services of the petitioner and respondent cater would not be a relevant consideration. He cites, for this purpose, Baker Hughes Ltd

11. Relative grounds for refusal of registration. – (1) Save as provided in Section 12, a trade mark shall not be registered if, because of – (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. (2021) 284 DLT 529 2022 (90) PTC 171 v. Hiroo Khushalani[4] and certain passages from Mc Carthy on Trademarks and Unfair Competition, to which I would allude later in this judgment.

16. Inasmuch as the marks in question are deceptively similar, both pertain to educational institutions and, therefore, both cater to students who seek higher education, it is submitted that, even on the anvil of the triple identity test, the petitioner is entitled to injunction.

(i) Mr. Bakhru has drawn my attention to certain statements made by Mr. Manvender Singh, Chief Executive Officer of the respondent, much prior to the application, for registration of its INSAID mark, which indicates that Mr. Singh was aware of the petitioner, its mark, and the reputation that it commanded among business schools. This, he submits, is relevant as it indicates that the adoption of the impugned INSAID mark is not innocent but purposefully done so as to approach as close to the petitioner‘s INSEAD mark as possible.

(ii) Mr. Bakhru further submits that, having been in the knowledge of the petitioner‘s INSEAD mark, the respondent when it chose an acronym for the name of its institution, ought to have adopted an acronym which was dissimilar to INSEAD, instead of one which came as close to INSEAD as possible.

(iii) The registration of the respondent‘s INSAID mark is in violation of the Rule 33(1)5 of the Trade Marks Rules, 2017 (1998) 74 DLT 745 read with Section 11(3)(a)6 and 57(2)7 of the Trade Marks Act,

1999. Mr. Bakhru has relied for this purpose, on the judgment in DCM Shriram Consolidated v. Sree Ram Agro Ltd.[8]

(iv) No proper notice was given to the public before registering the respondent‘s mark, as, in the notice extended to the public on the website of the respondent, the petitioner‘s mark did not figure.

(v) As the very initial adoption, by the respondent, of the impugned INSAID mark was dishonest, the respondent was not entitled to the benefit of Section 12 of the Trade Marks Act, for which purpose Mr. Bakhru relies on para 30 of the judgment in Mac Personal Care Pvt. Ltd. v. Laverana GMBH and Co. KG[9].

17. Responding to the aforesaid submissions of Mr. Bakhru, Mr. Kunal Tandon, learned Counsel for the respondent disagrees, in the first instance, with Mr. Bakhru‘s submission that the rival marks of the petitioner and respondent are phonetically similar. He submits that

33. Examination, Objection to acceptance, hearing. – (1) The Registrar shall cause the application to be examined as per provisions of the Act, wherein a search shall also be conducted amongst the earlier trade marks, registered or applied for registration, for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any trade mark identical with or deceptively similar to the trade mark applied for. The Registrar may cause the re-examination of the application including research of earlier trade marks at any time before the acceptance of the application but shall not be bound to do so. (3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented – (a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or (b) by virtue of law of copyright. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the expunging or varying the entry as it may think fit. MANU/DE/0526/2012 petitioner‘s mark is a three-syllable mark with IN, SE and AD consisting of being distinct syllables whereas the respondents mark INSAID is a two syllable mark consisting of the two syllables IN and SAID. He submits that, while examining aspect of likelihood of confusion, the Court is also required to take into consideration the nature of the consumers who would be dealing with the rival marks. The consumers who would be the persons interested in the marks of the petitioner and the respondent, he submits, would be students who seek entrance into such educational institutions. Such students, he points out, are enlightened and there is little or no chance for a student taking or securing admission in one institution instead of the other. Moreover, he submits, the courses provided by the petitioner are degree courses, whereas the courses provided by the respondent is only a certificate course. Mr. Tandon reiterates that, therefore, there is no chance of any person confusing between the petitioner‘s and the respondent‘s institutions because of the rival marks.

18. Apropos the allegation of violation of Rule 33 of the Trade Marks Rules, Mr. Tandon submits that failure to conduct a phonetic search, at the initial stage of examination of the application for registration of the marks, does not fatally imperil the registration once granted. Such failure, even if it took place, he submits, cannot constitute a ground to seek removal of the mark from the register either under Section 47 or under Section 57 of the Trade Marks Act. In this context, Mr. Tandon has placed reliance on the judgment of the Supreme Court in Khoday Distillaries Ltd. v. Scotch Whisky 2016(65) PTC 357 Association10, which specifically recognises the fact that the Registrar of Trade Marks may, in a given case, even register a confusing mark.

19. Mr. Tandon further disputes Mr. Bakhru‘s contention that no proper notice in this regard had been given to the public, of the advertisement of the impugned mark, as the mark was not reflected in the advertisement. He has drawn my attention to Section 2011 of the Trade Marks Act read with Rule 2(l)12, 3913 and 4114 of the Trade Marks Rules, to contend that the mark was required to be placed in the physical trademark journal, in which it was always available. The mere fact that the respondent‘s mark may not had been reflected in the virtual advertisement on the respondent‘s website, he submits, cannot be a ground to allege violation of the mandatory provisions relating to registration of a mark.

20. Mr. Tandon has also pointed out that, in the present case, in fact, the two marks were both device marks. As such, the aspect of confusion, if at all, would have to be decided by comparing the two device marks, and not by not comparing the words INSAID and

20. Advertisement of application.—(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of Section 9 and sub-sections (1) and (2) of Section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

2. Definitions. – (1) In these rules, unless the context otherwise requires, - ***** (l) ―Journal‖ means the trade marks Journal made available at official website of Controller General of Patents, Designs and Trade Marks;

39. Manner of Advertisement. – (1) Every application for the registration of a trade mark required to be advertised by subsection (1) of Section 20 or to be re-advertised by sub-section (2) of that section shall be advertised in the Journal.

41. Request to Registrar for particulars of advertisement of a trade mark. – Any person may request the Registrar in Form TM-M to be informed of the number, and date of the Journal in which a trade mark which is sought to be registered specified in the Form was advertised and the Registrar shall furnish such particulars to the person making the request. INSEAD. When the two device marks are compared, Mr. Tandon submits that the distinction between the two becomes starkly apparent as they are written in entirely different styles and are accompanied by logos which are completely distinct from each other. In fact, submits Mr. Tandon, the two logos, when compared, belie any possibility of confusion between them.

21. On the aspect of phonetic dissimilarity, Mr. Tandon has also sought to contend that, even on the petitioner‘s website, the petitioner‘s mark is pronounced as in-si-yaad, with three syllables, which is completely different and distinct from the manner in which the respondent‘s INSAID mark would be pronounced, with two syllables. The plea of phonetic similarity is also, therefore, he submits, bereft of merit.

22. I have heard learned Counsel for both sides and perused the material on record. Analysis

23. There is no dispute about the fact that the petitioner has, over the respondent, the benefit of priority of registration as well as priority of use. The petitioner‘s word mark INSEAD stands registered with effect from 7th August 2007 and its device marks stand registered, in all the three Classes 16, 35 and 41 with effect from 28th December

2012. The respondent claims user, at the earliest, since 14th December

2018. As such, the user of the petitioner‘s INSEAD mark is prior in point of time to the user claimed by the respondent in respect of the impugned INSAID mark.

24. On the aspect of phonetic similarity, I am unable to accept the submission of Mr. Tandon, learned Counsel for the respondent, that the marks INSEAD and INSAID are not phonetically similar. What is required, in such cases, is phonetic similarity, not phonetic identity. The reliance, by Mr. Tandon, on the website of the petitioner, to contend that the petitioner‘s mark is pronounced as in-si-yad, to my mind, cannot advance the respondent‘s case. The aspect of phonetic similarity has to be assessed from the point of view of the consumer, and not from the point of view of either of the parties. A consumer, again, is a consumer of average intelligence and imperfect recollection. The consumer in question cannot be treated as one who is over familiar with either of the marks.

25. The classical test to apply, in the matter of phonetic similarity, is that postulated by Parker, J., in Pianotist Co. Application15: ―You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.‖ The Pianotist test has been applied, over the years, by Courts on numerous occasions, including, inter alia, by the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta16, Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd17 and Khoday Distilleries Ltd10.

26. Mr Tandon has stressed the fact that the rival marks, in the (1906) 23 RPC 774 AIR 1963 SC 449 present case, were used for educational institutes, and that students who desired to study at such institutes were an enlightened lot, who know where to go. That may be an argument which is available to defend a charge of passing off; but not a charge of infringement. Infringement, in such cases, is to be decided on the basis of initial interest confusion. In other words, if the marks are such that, when they are initially encountered by the consumer, there is a chance of confusion, infringement, ipso facto, stands made out. The fact that, later, the confusion may be dispelled, and enlightenment may dawn, does not wipe out the infringement which already stands committed.

27. A Division Bench of this Court identified four categories of confusion, all of which attracted Section 29(1) and (2) of the Trade Marks Act and resulted in infringement, thus, in Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd18: ―5. Confusion can be of the following categories: • Point of sale confusion – this refers to confusion that takes place at the time of purchase. • Post sale confusion – this includes confusion of those other than the purchaser. • Initial interest confusion – this refers to confusion that may be caused initially, i.e. prior to purchase, but at the time of purchase of the alleged infringer/tortfeasor's product or using its service, the consumer is not confused. • Reverse confusion – this occurs when consumers purchase the goods or use services of the senior user thinking them to originate from the junior user.‖ (Emphasis Supplied) In the same decision, the Division Bench distinguished ―confusion‖ from ―deception‖: 221 (2015) DLT 359 (DB) ―6. When a person knows that the mark in question does not originate from the senior user but the senior user is called to mind, then it's a step before confusion. If on the other hand, the consumer is in a state of wonderment if there's a connection, this is confusion. Further, if this consumer then purchases the junior users product, this is then deception.‖ (Emphasis Supplied)

28. Reverting, again, to Section 11(b)(2) of the Trade Marks Act, a mark is disentitled to registration, thereunder, if,

(i) the mark is similar to an existing mark,

(ii) the marks are used for identical, or similar, goods or services, and

(iii) because of the cumulative effect of these factors, there is ―likelihood of confusion among the public‖.

29. Applying these tests, it is seen that

(i) INSAID and INSEAD are phonetically similar,

(ii) they are used for similar services, of providing higher education involving AI, and

(iii) applying the initial interest confusion principle, there is likelihood of confusion, as, given the phonetic similarity of the marks and the fact that they are acronyms for institutions providig similar services, there is likelihood of a consumer, even a student intending to take admission, on encoutering INSAID after INSEAD, being placed in a state of wonderment as to whether he had seen, or heard, the mark before. Likelihood of confusion would, ipso facto, stand made out.

30. It cannot be definitively said that one would pronounce INSEAD as in-si-yaad. ―-Ead‖ and ―-aid‖ are, for example, identically pronounced in ―dead‖ and ―said‖. What is needed is not phonetic identity, but phonetic similarity and, between INSEAD and INSAID, prima facie, phonetic similarity exists.

31. The submission that there is no phonetic similarity between the INSEAD and INSAID, therefore, fails to impress.

32. One of the contentions advanced by Mr. Tandon was that the competing marks in the present case are device marks, and not word marks, and that, if the two marks are regarded as device marks, they are dissimilar with no chance of confusion.

33. Section 11(1)(b) proscribes registration of a trademark which, owing to its similarity of an earlier trademark, and identity or similarity of the goods or services covered by the trademark, results in a likelihood of confusion on the part of the public. As already noted, confusion, in such cases, is required to be seen from the point of view of the impression conveyed to the consumer at the stage of initial interest. Further, it is also well settled that, when examining the aspect of confusion, one is not to place the two marks side by side to examine whether they are confusingly similar. The aspect of confusion has to be examined when from the point of view of a consumer of average intelligence and imperfect recollection who comes across the mark of the petitioner in one point of time and sometime later, comes across the mark of the respondent. If such a consumer is likely to be placed in a state of wonderment, on seeing the second mark, as to whether he has seen the same mark at an earlier point of time, likelihood of confusion, within the meaning of Section 11(1)(b) of the Trade Marks Act, would exist.

34. Again, I am not persuaded to accept the contention of Mr. Tandon, predicated on the fact that the marks in question are device marks. The law on this issue stands settled as far back as in Amritdhara Pharmacy and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co.19. The Supreme Court has clearly held in both these decisions, that, if the words, constituting the prominent parts, or essential features, of both of the rival marks are similar or identical, the mere fact that when, used as devices, the surrounding features of the devices may by markedly different, cannot lessen or mitigate the possibility or likelihood of confusion between the marks. In the present case, the acronyms INSAID and INSEAD form the prominent parts of the rival marks. Even otherwise, it is a matter of common knowledge that, when referring to such acronyms of educational institutions, the man on the street, i.e. the average consumer, would remember the acronym, rather than the various pictorial features or representations which accompany it. When, today, one refers to the All India Institute of Medical Sciences, the average consumer remembers the institute by the acronym AIIMS, and not by the various figures which accompany the AIIMS acronym when used as a logo.

35. Where, therefore, there is marked phonetic similarity between INSEAD and INSAID, mere fact that, in the overall logos of the two marks, there may be accompanying pictorial representations or other features which may distinguish the marks as device marks, cannot detract from the confusingly similar nature of the two marks.

36. The contention of Mr. Tandon, predicated on the nature of the MANU/SC/0303/1969 consumer in question, i.e., in the present case, students, can also fail to impress. On this aspect, it is well settled that the mere fact that, especially in the matter of infringement, as compared to passing off, the nature of the consumer who is dealing with the marks is a relevant consideration only thus far and no further. One may refer, in this context, to the following passages from Baker Hughes[4], which enuntiate the legal position in this regard: ―53. Learned counsel for the defendants pointed out that in this country only three customers, namely, ONGC, Oil India and Essar are buying oil field equipment and there is no likelihood of their being deceived into buying the products manufactured by the second defendant by mistaking them to be manufactured by the plaintiffs. He emphasised that the purchasers have sophisticated knowledge of the oil field equipment and the companies manufacturing the same, and in such circumstances the action for passing off is not maintainable. The learned counsel for the defendants contended that in ascertaining the possibility of deception or confusion it is important to identify the class of likely consumers in each case and in a specialised limited market consumers are not likely to be confused especially where they buy goods directly from the manufacturer. The learned counsel referred to passages from ‗Passing Off Law and Practice‘ by John Drysdale and Michael Silverleaf, Second Edition (Butterworths, 1995), para 4.03; Law of passing Off by Christopher Wadlow, Second Edition 1995, and the decision rendered in John Hayter Motor Undertaking Agencies Ltd. v. RBHS Agencies Limited20: [1977] Fleet Street Patent Law Reports 285.

54. I have given my anxious consideration to the submissions of the learned counsel for the defendants on this aspect of the matter. There can be an informed class of purchasers who have a degree of knowledge and a sense of discrimination more substantial than that of an ordinary purchaser, but the mere fact that the customers are sophisticated, knowledgeable and discriminating does not rule out the element of confusion if the trade marks/trade names/corporate names of two companies are identical or if the similarity between them is profound. In several cases it has been held that initial confusion is likely to arise even amongst sophisticated and knowledgeable purchasers under a mistaken belief that the two companies using the same corporate name, trading name or style are inter-related. It is the awakened consumers who are more aware of the modern business trends such [1977] 2 Lloyds Rep. 105 as trade mark licensing, mergers, franchising, etc. It is this class of buyers who are likely to think that there is some sort of association between the products of two different companies when they come across common or similar trade names or corporate names or trading styles used by them. The sophistication of a buyer is no guarantee against likely confusion. In some case, however, it is also possible that such a purchaser after having been misled into an initial interest in a product manufactured by an imitator discovers his folly, but this initial interest being based on confusion and deception can give rise to a cause of action for the tort of passing off as the purchaser has been made to think that there is some connection or nexus between the products and business of two disparate companies. This view finds support from various decisions gathered in Section 20.12 of the Filing Instructions 1988, Fall Cumulative Supplement from Callmann ‗Unfair Competition, Trademarks and Monopolies‘. This Section reads as under:— ―But even apart from the doctrine of greater care, if the manner of purchasing becomes routine, the possibility of confusion can arise notwithstanding the expertise of the purchasers (Layne-Western Co. v. Fry.21 ). The mere fact that all the customers are discriminating technicians does not by itself insure against confusion; being skilled in the relevant art does not necessarily preclude confusion if the similarity between the marks is great (Wincharger Corpn. v. Rinco. Inc.22 ). ―The words ‗sophisticated‘ and ‗knowledgeable‘ are not talismans which, when invoked, act magically to dissipate a likelihood of confusion. It must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over such a long period of time that even subtle differences are likely to result in a recognition that different marks are involved before an irrevocable decision is made ―(Refreshment Mach., Inc. v. Read Industries. Inc.23 ‖. *** ―In some cases it has been held that a different type of confusion, referred to as ―initial confusion‖, is likely to arise even among sophisticated purchasers. As one court has said; by intentionally copying the trademark of another more established company, one company attempts to attract potential customers based on the reputation and name built up by the first user; the older company. The danger here is not that the sophisticated purchaser [in the oil trading market] will actually purchase from Pegasus Petroleum believing that he has purchased from Mobil [Oil Co.], the 174 FSupp 621 (CCPA 1960) 297 F2d 261 (CCPA 1962) 196 USPQ 840 (TTAB 1977 danger is that the purchaser will be misled into an initial interest in Pegasus Petroleum based on a mistaken belief as to the two companies' inter-relationships [Mobil Oil Corp. v. Pegasus Petroleum Corp.24 ] (Emphasis supplied). It has also been suggested that sophisticated consumers, being more aware of such modem business trends as trademark licensing and conglomerate mergers, are more rather than less likely to suspect some association between disparate companies or products when they see what appears to be one company's mark on another's product [Lois Sportswear, USA Inc. v. Levi Straus & Co.25 ]‖.

55. In John Hayter’s case (supra) the court failed to notice the principle that even the informed, sophisticated and knowledgeable customers suffer from initial confusion where the corporate names trade names or trade marks of two different companies are the same or similar to each other. Therefore, the view expressed in the case does not commend to me and compels me to respectfully depart from the same.

56. In Mobil Oil Corp. v. Pegasus Petroleum Corp.24, the court while dealing with the question of ‗initial confusion‘ held as follows:— ―……. In short, the harm to Mobil is the likelihood that potential purchasers will think that there is some connection or nexus between the products and business of Pegasus Petroleum and that of Mobil. ―Such initial confusion works and injury to (Mobil)‖. See Grotrian-Steinweg26, supra‖.

57. In Lois Sportswear, USA. Inc. et al v. Levi Straus & Co.25, the Court of Appeal, Second Circuit, held as follows:— ―The eighth and final factor—the sophistication of relevant buyers—does not, under the circumstances of this case, favour appellants. The district court found, and the parties do not dispute, that the typical buyer of ―designer‖ jeans is sophisticated with respect to jeans buying. Appellants argue that this sophistication prevents these consumers from becoming confused by nearly identical back packet stitching patterns. On the contrary, we believe that it is a sophisticated jeans consumer who is most likely to assume that the presence of appellant's trademark stitching pattern on appellants' jeans indicates some sort of 229 USPQ 890 230 USPQ 831, 837 (CA[2], 1986) 523 F. 2dat 1342: 186 UPSQ at 445 association between the two manufacturers. Presumably it is these sophisticated jeans buyers who pay the most attention to back pocket stitching patterns and their ―meanings‖. Cf. Steinway27, supra, (buyers of quality pianos, being sophisticated, are more likely mistakenly to associate piano manufacturers using similar trade names). Likewise, in the post-sale context, the sophisticated buyer is more likely to be affected by the sight of appellant's stitching pattern on appellants' jeans and, consequently, to transfer goodwill. Finally, to the extent the sophisticated buyer is attracted to appellant's jeans because of the exclusiveness of its stitching pattern, appellant's sales will be affected adversely by these buyer ultimatem realization that the pattern is no longer exclusive‖.

58. In Wincharger Corporation v. Rinco, Inc, 297 F2d 261 (1962), it was observed as follows:— ―It is true that in most instances technicians would use the products of either party and they are a discriminating group of people but that does not eliminate the likelihood of purchaser confusion here. Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when marks are as similar as those here in issue, and cover merchandise in the same general field‖.

59. Again in Grotrian, helfferich, Schulz. Th. Steinweg Machf, a corporation v. Steinway & Sons28, a corporation, striking a similar note the court held as under:— Plaintiff argues that purchaser will not be confused because of the degree of their sophistication and the price (B & L Sales Associates v. H. Daroff & Sons29, Inc, supra). It is true that deliberate buyers of expensive pianos are not as vulnerable to confusion as to prodcts as hasty buyers of inexpensive merchandise at a newsstand or drug store [Callmann, Unfair Competition-Trademarks and Monopolies, (3rd ed. 1971]. The sophistication of buyers, however, does not always assure the absence of confusion [Communication Satellite Corp. v. Comcet. Inc.30 ]. It is the subliminal confusion apparent in the record as to the relationship, past and present, between the corporate entities and the products that can transcend the competence of even the most sophisticated consumer. 523 F. 2d at 1341-42: 186 USPQ at 444-45 365 F.Supp. 707 (1973), 421 F.2d at 354 429 F.2d at 1252 Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian- Steinweg is at least as good, if not better, than a Steinway, Deception and confusion thus work to appropriate defendant's goodwill. This confusion, or mistaken beliefs as to the companies' inter-relationships, can destroy the value of the trademark which is intended to point to only one company [American Drill Busing Co. v. Rockwell Mfg. Co.31 ]. Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. ―Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field‖ [Id]. ‖

37. The mere fact that the consumers who would seek to take admission in the institutions of the petitioner and the respondent are students, therefore, is no guarantee against the likelihood of confusion between the two marks. It is necessary to reiterate, in this regard, that one is concerned with initial interest confusion. If, therefore, at an initial interest stage, the student has a chance of confusing the respondent‘s mark for that the petitioner, the tort of infringement stands committed ipso facto. The mere fact that, later, the student may be enlightened and come to realise that the two institutions does not take away the effect of the initial interest confusion that has already occurred.

38. Section 11(1)(b) of the Trade Marks Act prohibits registration of a mark which, owing to its similarity to an earlier trademark, combined with identity or similarity of the goods or services covered by the two marks, results in a likelihood of confusion on the part of the public. This provision is made only subject to Section 12 of the Trade Marks Act, which permits registration of identical or similar 342 F.2d 1992: 52 CCPA 1173 (1965) marks, where the use of the latter mark is found to be honest and concurrent.

39. Prima facie, it is not possible to accept the use of the INSAID, by the respondent, is honest and concurrent with the petitioner‘s mark INSEAD. Mr. Bakhru has drawn my attention to the material, already referred to hereinabove, which indicates that Mr. Manvender Singh, Chief Executive Officer of INSAID, was well aware of the reputation of the respondent as well as of the fact that the acronym of the petitioner‘s institution was INSEAD. In fact, even in the interview of Mr. Manvender Singh, which figured on the website of the respondent, he is referred to as Chief Executive Officer at INSAID. Mr. Manvender Singh, the CEO of the respondent, therefore, chose to adopt the acronym INSAID in full awareness of the petitioner‘s acronym INSEAD and later in point of time. It cannot, therefore, be held, prima facie, that the use of the acronym INSAID which is phonetically similar to the acronym of the petitioner is honest or concurrent. At the very least, that would be an aspect which would have to be decided consequent to trial.

40. Mr. Bakhru has also questioned the registration of the respondent‘s mark as being violative of Rule 33 of the Trade Marks Rules, 2017. He has pointed out that, when a phonetic search of the mark of INSAID is given, the petitioner‘s mark INSEAD turns as one of the suggested similar marks. This Court had, therefore, vide order dated 27th January 2023 directed the Registrar of Trade Marks to place, on affidavit, the result of the preliminary search which had been conducted when the respondent applied for registration of the mark INSAID. The affidavit which has been placed on record indicates that no phonetic search was conducted and that a mere word mark search was conducted, which did not throw up the petitioner‘s INSEAD mark as a suggested similar mark.

41. As neither Counsel is able to draw my attention to any fixed guideline which envisages the nature of the searches which are required to be conducted when an application is submitted for registration of a mark, it is not possible for me to invalidate the registration of the respondents‘ INSAID mark on the sole ground that the initial search under Rule 33 of the Trade Marks Rules, was not properly conducted, as no phonetic search was carried out. The plea of Mr. Bakhru that, on that ground, the registration of the impugned mark should be set aside cannot, therefore, be accepted. However, in order to avoid such confusion in future cases, I deem it appropriate to direct that, where an application is submitted for registration of a mark which involves a word, then,even at the preliminary stage, a word mark search as well as a phonetic search should be conducted, so that the possible marks which are phonetically similar to the mark applied for, are thrown up as suggested results. Needless to say, it would be for the Registrar to take a view as to whether any of the suggested marks are actually phonetically similar to the marks for which the registration is applied, within the meaning of Section 11(1)(b) of the Trade Marks Act.

42. For the aforesaid reasons, I am unable to sustain the registration of the respondent‘s mark, as, owing to its similarity to the petitioner‘s existing earlier trademark INSEAD, and the similarity of the services provided under the two marks, which are both educational services, there exists a likelihood of confusion, on the part of the public, between the two marks. The case, therefore, falls entirely with in the four corners of Section 11(1)(b) of the Trade Marks Act.

43. For the aforesaid reasons, the petition succeeds. The impugned registration no. 4438201 of the impugned device mark INSAID shall stand quashed and set aside.

44. Let a copy of this order may be communicated to the Registrar of Trade Marks for appropriate action.

C. HARI SHANKAR, J.