Madras High Court
Respectively By Nssj) vs The Deputy Registrar Of Trade Marks
Author: N.Anand Venkatesh
Bench: N. Anand Venkatesh
2026:MHC:542
(T)CMA(TM) Nos.110 & 157 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on Delivered on:
22.1.2026 11.2.2026
CORAM:
THE HON’BLE MR. JUSTICE N. ANAND VENKATESH
(T) CMA (TM) Nos.110 & 157 of 2023
7 – Eleven International LLC
(a Delware Limited Liability
Company), USA, having address
for service in India
Archer & Angel, #5B, 5th Floor,
Commercial Towers,
Hotel JW Marriott, Aerocity,
New Delhi-110037.
(Substituted as per order dated
22.1.2024 in CMP(TM) No.18 of
2023 in (T)CMA(TM) No.110 of 2023
& CMP(TM) No.16 of 2023 in
(T)CMA(TM) No.157 of 2023
Respectively by NSSJ) ...Appellant in
both appeals
Vs
1.The Deputy Registrar of Trade Marks,
Trade Marks Registry, Intellectual
Property Building, GST Road,
Guindy, Chennai-32.
2.The Registrar of Trade Marks,
Trade Marks Registry, Intellectual
Property Building, GST Road,
Guindy, Chennai-32.
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(T)CMA(TM) Nos.110 & 157 of 2023
3.Ravi Foods Private Limited,
7-4-112/1, Madhuban Colony Road,
Kattedan, Hyderabad-500077.
(R3 substituted vide order of court
dated 31.7.2025 made in CMP(TM).Nos.
1 & 2 of 2025 respectively in both
(T)CMA(TM) Nos.110 & 157 of 2023
by SKRJ) ...Respondents in
both appeals
APPEALS under Section 91 of the Trade Marks Act, 1999 praying
that
(T)CMA(TM) No.110 of 2023:
(i) the impugned order dated 18.7.2014 passed by the Deputy
Registrar of Trade Marks in respect of Opposition No.MAS – 211161 to
Application No.1297871 in Class 30 be set aside;
(ii) the Trade Mark Application under No.1297871 in Class 30 in
the name of respondent No.3 be rejected;
(iii) the Opposition filed by the appellant under No.MAS –
211161 to Application No.1297871 in Class 30 be allowed; and
(iv) respondent No.3 to pay costs of and incidental to these
appeals; and
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(T)CMA(TM) Nos.110 & 157 of 2023
(T)CMA(TM) No.157 of 2023:
(i) The judgment and order passed by the Deputy Registrar of
Trade Marks dated 18.7.2014 in respondent No.3’s Opposition No.MAS
- 720132 against the appellant’s Application No.636986 in Class 03 be
set aside;
(ii) the said Application No.636986 in Class 30 be allowed and
Opposition No.MAS - 720132 be refused and/or dismissed;
(iii) respondent Nos.1 and 2 to transmit and certify to the
Tribunal the entire records of the proceedings including all exhibits
thereto before them in the matter of Application No.636986 in Class
30 and the opposition there to being Opposition No.MAS – 720132;
and
(iv) respondent No.3 to pay the costs of and incidentals to this
appeal to the appellant.
For Appellant in
both appeals : Mr.K.Harishankar for
M/s.Archer & Angel
For R1 & R2 in
(T)CMA(TM) No.110
of 2023 : Mr.S.Diwakar, SPC
For R1 & R2 in
(T)CMA(TM) No.157
of 2023 : Mr.K.Subbu Ranga Bharathi, CGSC
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(T)CMA(TM) Nos.110 & 157 of 2023
For R3 in
both the appeals : Ms.Aanchal M.Nichani
COMMON JUDGMENT
These appeals, filed under Section 91 of the Trademarks Act,
1999 (for short, the Act), are directed against a common order dated
18.7.2014 passed by the Deputy Registrar of Trademarks in (i)
Trademark Opposition No.MAS – 211161 to Application No.1297871 in
Class 30 and (ii) Trademark Opposition No.MAS – 720132 to
Application No.636986 in Class 30, respectively.
2. Vide the impugned order, Application No.636986 filed by the
appellant seeking registration of their mark “Big Bite” in Class 30 has
been rejected on the basis of the opposition lodged by the 3 rd
respondent and Application No.1297871 filed by the 3 rd respondent in
seeking registration of their mark “Big Bite” in Class 30 has been
accepted thereby rejecting the opposition lodged by the appellant
herein.
3. The case of the appellant is as follows:
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(T)CMA(TM) Nos.110 & 157 of 2023
(i) The appellant operates convenience store chain, owning/
operating/franchising nearly 80,000 stores in 22 countries around the
world under the 7 – Eleven mark and brand. The appellant also has a
store chain in India. The appellant intended to make use of their “Big
Bite” trademark with respect to savoury food items and more
specifically hot dogs, pizzas and potato chips.
(ii) The appellant claims that the “Big Bite” formative mark has
been continuously used by them since August 1988 in respect of their
goods and services and hence, the appellant is the original, genuine
and bona fide adopter of “Big Bite” formative marks for more than
three decades. In order to statutorily protect their rights, the appellant
along with their affiliated/related companies, secured registration of
“Big Bite” marks in numerous jurisdiction across the world in
numerous classes namely Classes 29, 30 and 43.
(iii) By virtue of continuous and extensive use and promotion,
which includes various global registrations, the appellant earned a
reputation for the “Big Bite” mark, which transcends geographical
boundaries including India. The appellant also submitted their earliest
trademark application for the mark “Big Bite” on 16.8.1994 under No.
636986 in Class 30. The mark was advertised for registration under
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(T)CMA(TM) Nos.110 & 157 of 2023the Proviso to Section 20(1) of the Act in the trade marks journal
dated 16.9.2007.
(iv) On 18.2.2008, the original third respondent – one M/s.Dukes
Consumer Care Limited gave opposition and notice objecting to the
registration of the mark. The appellant filed their counter statement
for the opposition.
(v) The said M/s.Dukes Consumer Care Limited had, on
19.7.2004, submitted Application No.1297871 in Class 30 for the trade
mark “Big Bite” in respect of chocolates, biscuits, bread, pastry,
confectionery, ice creams, spices and all goods included in Class 30.
The mark was advertised on 15.5.2005 and the appellant submitted
their objections to the registration of the trade mark. A counter
statement was filed for the opposition made by the appellant.
(vi) The said M/s.Dukes Consumer Care Limited was
rechristened on 09.8.2023 as one M/s.SWG Consumer Care Limited,
which, later assigned the mark to one M/s.Ravi Foods Private Limited
with effect from 21.1.2025. Accordingly, the said M/s.Ravi Foods
Private Limited was substituted as the third respondent in these
appeals and subsequentlh, the cause title was amended in the appeals.
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(T)CMA(TM) Nos.110 & 157 of 2023
(vii) The first respondent, by the impugned order dated
18.7.2014, refused the application filed by the appellant on the basis
of the opposition made by the third respondent and instead, allowed
the application submitted by the third respondent by rejecting the
opposition made by the appellant. These appeals are directed against
the aforesaid common order.
4. The learned counsel appearing on behalf of the appellant
submitted as follows:
(a) The first respondent passed the impugned order solely on the
basis of the judgment of the Hon’ble Supreme Court in Milmet Oftho
Industries Vs. Allergan Inc. [reported in 2004 (12) SCC 624].
The said judgment does not, in any way, support the reasoning given
by the first respondent to the effect that only the prior user in India
would be considered favourably for the grant of the trademark. But,
the first respondent failed to consider the fact that the appellant had
adopted the mark “Big Bite” even in 1988 itself and had the prior
international adoption and use of the “Big Bite” marks as well as prior
Indian application for the said mark.
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(T)CMA(TM) Nos.110 & 157 of 2023
(b) The third respondent adopted the very same mark only from
the year 2004 and such adoption of an identical mark was done with a
mala fide intention to siphon off the international reputation and
goodwill of the appellant’s “Big Bite” marks. The registration of the
mark was sought for by the third respondent with respect to allied
goods in the food industry, which is also the industry of operation of
the appellant with the well-known international “Big Bite” marks.
Hence, if the third respondent is permitted to use the identical mark, it
is bound to cause confusion in the minds of the consumers including a
likelihood of association with the appellant’s “Big Bite” brand.
(c) The first respondent committed a fundamental mistake while
passing the impugned order by assuming that the prior user test had
to be applied only with respect to the usage in India and that the
international usage could not be taken into consideration.
(d) In order to substantiate his submissions, he relied upon the
following judgments:
(1) of the Hon’ble Supreme Court in
S.Syed Mohideen Vs. P.Sulochana Bai
[reported in 2016 (2) SCC 683];
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(T)CMA(TM) Nos.110 & 157 of 2023(2) of the Hon’ble Supreme Court in
N.R.Dongre Vs. Whirlpool Corporation
[reported in 1996 (5) SCC 714];
(3) of the Hon’ble Supreme Court in
Milmet Oftho Industries;
(4) of a learned Single Judge of the Delhi
High Court in Jolen Inc. Vs. Doctor &
Company [reported in ILR (2002) I Delhi
550];
(5) of another learned Single Judge of
the Delhi High Court in Cadbury UK Limited
Vs. Lotte India Corporation Ltd. [reported
in 2014 SCC OnLine Delhi 367];
(6) of a Division Bench of the Delhi High
Court in Dalip Chand Aggarwal Vs. M/s.
Escorts Ltd. [reported in 1980 SCC OnLine
Delhi 342];
(7) of a learned Single Judge of the
Bombay High Court in Drums Food
International Pvt. Ltd. Vs. Euro Ice Cream
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[reported in 2011 (5) Mh.L.J. 166 : 2011
SCC OnLine Bombay 817];
(8) of one more learned Single Judge of
the Delhi High Court in Tata Sons Ltd. Vs.
Manoj Dodia [reported in 2011 SCC
OnLine Delhi 1520];
(9) of another learned Single Judge of
the Delhi High Court in Kia Wang Vs.
Registrar of Trademarks [reported in
2023 SCC OnLine Delhi 5844];
(10) of a learned Single Judge of the
Delhi High Court in Suzuki Motor Vs. Suzuki
(India) Ltd. [reported in 2019 SCC OnLine
Delhi 9241];
(11) of another learned Single Judge of
the Delhi High Court in Somany Ceramics
Ltd. Vs. Shri Ganesh Electric Co. [reported
in 2022 SCC OnLine Delhi 3270]; and
(12) of another Division Bench of the
Delhi High Court in Raman Kwatra Vs. KEI
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(T)CMA(TM) Nos.110 & 157 of 2023
Industries Ltd. [reported in 2023 SCC
OnLine Delhi 38].
5. On the other hand, the learned counsel appearing for the third
respondent submitted as follows:
(a) The original third respondent – the said M/s.Dukes Consumer
Care Limited has been using the trade mark “Big Bite” since
05.10.2004 continuously, openly and extensively for their products.
The appellant, at no point of time, used this mark in India and was
proposing to get into the Indian market. While considering the
applications submitted by both sides, the territoriality principle would
apply and the Authority has rightly taken into consideration the fact
that the third respondent was the prior user of the trade mark, that at
no point of time, the appellant had used this trade mark in India and
that the appellant was only proposing to use the trade mark.
(b) Therefore, the mere fact that this trade mark is available in
the website of the appellant, by itself, would not result in the appellant
establishing the actual usage of the impugned mark in India in trade
and commerce and the appellant has not gained any substantial
goodwill and reputation within the Indian market. The first respondent
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took into consideration this vital fact in line with the provisions of the
Act, considered the effect of the judgment of the Hon’ble Supreme
Court in Milmet Oftho Industries and rightly accepted the
application filed by the third respondent and rejected the application
filed by the appellant. There is absolutely no ground to interfere with
the impugned common order.
(c) In order to substantiate her submissions, the learned counsel
appearing for the third respondent relied upon the following decisions:
(1) of the Hon’ble Supreme Court in
Milmet Oftho Industries;
(2) of the Hon’ble Supreme Court in
S.Syed Mohideen;
(3) of the Hon’ble Supreme Court in Neo
Laboratories Ltd. Vs. Medical Technologies
Ltd. [reported in 2016 (2) SCC 672];
(4) of a Division Bench of the Delhi High
Court in Intex Technologies (India) Ltd.
Vs. AZ Tech (India) [reported in 2017 DHC
1450 – DB : MANU/DE/0625/2017];
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(5) of the Hon’ble Supreme Court in
Toyota Jidosha Kabushiki Kaisha Vs. Prius
Auto Industries Ltd. [reported in 2018 (2)
SCC 1];
(6) of a learned Single Judge of the Delhi
High Court in Keller Williams Realty Inc. Vs.
Dingle Buildcons Pvt. Ltd. [reported in
MANU/DE/0951/2020];
(7) of another Division Bench of the Delhi
High Court in Bolt Technology OU Vs. Ujoy
Technology Pvt. Ltd. [reported in 2023
DHC 8509-DB : MANU/DE/7956/2023];
(8) of a Division Bench of the Delhi High
Court in Arvi Lights Vs. Big Deeper
Industries LLP [reported in MANU/DEOR/
132322/2024];
(9) of a Division Bench of the Delhi High
Court in VIP Industries Ltd. Vs. Carlton
Shoes Ltd. [FAO(OS) (COMM) Nos.151 &
152 of 2023 dated 01.7.2025]; and
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(10) of a Division Bench of the Delhi High
Court in Sumit Vijay Vs. Major League
Baseball Properties Inc. [reported in
MANU/DE/0021/2026].”
6. This Court has carefully considered the submissions of the
learned counsel on either side and perused the materials available on
record and more particularly the impugned order.
7. The main thrust of arguments on the side of the appellant is
as follows :
The appellant has been using the mark “Big Bite” internationally
since 1988 and has filed an application for registration way back in
1994. While considering the application, which was opposed by the
third respondent, the first respondent completely lost sight of the
scope of Section 11 of the Act and was swayed by the judgment of the
Hon’ble Supreme Court in Milmet Oftho Industries. The appellant
has built a reputation at an international level with respect to the “Big
Bite” marks and they are clearly international prior users. This mark is
known across India since it is exhibited in the website of the appellant
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(T)CMA(TM) Nos.110 & 157 of 2023and therefore, the first respondent ought to have given preference to
the claim made by the appellant over the mark “Big Bite”.
8. On the contrary, the stand taken by the third respondent is as
follows:
The international reputation of the appellant is immaterial and
the appellant ought to have proved that they are the prior users of the
mark “Big Bite” in India. In the absence of the same, they cannot
prevent the third respondent from getting the registration of the trade
mark since, admittedly, the third respondent (previously M/s.Dukes
Consumer Care Limited) was using the mark from 2004. The mere
launch of a website and promotion of the impugned mark by the
appellant, by itself, will not tantamount to the appellant being
considered as a prior user of the trade mark in India. The appellant,
which had no intention of coming to India or introducing their product
in India, should not be allowed to throttle an Indian company to sell
their products in the market chosen by it on the ground that they are
used for a substantial period since 2004 and that the appellant has
earned reputation.
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9. Before entering into the merits of the controversy, it is
necessary to first notice the scope of the appellate powers of this
Court in an appeal against an order of the Registrar.
10. Section 91(1) of the Act, as it originally stood, was as
follows:
“(1) Any person aggrieved by an order or
decision of the Registrar under this Act, or the rules
made thereunder may prefer an appeal to the
Appellate Board within three months from the date
on which the order or decision sought to be
appealed against is communicated to such person
preferring the appeal.”
11. The Act was extensively amended by the Tribunals Reforms
Act, 2021, which abolished the Intellectual Property Appellate Board
and substituted the High Court as the Appellate Body under the Act.
Thus, the appeals from an order of the Registrar of Trade Marks now
lie to the High Court. It is also important to note that the Tribunals
Reforms Act, 2021 omitted Section 92 of the Act, which dealt with the
procedure and powers of the Appellate Board.
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12. Pursuant to the aforesaid amendment and in exercise of
powers under Clauses 37 & 38 of the Letters Patent and Section 129 of
the Code of Civil Procedure, 1908, the Madras High Court has framed
the Madras High Court Intellectual Property Division Rules, 2022.
13. Rule 7 sets out the procedure for appeals and Sub-Rule (9)
reads as follows:
“The Provisions of Order XLI Code of Civil
Procedure Code, 1908, Limitation Act, 1963, the
Madras High Court Appellate Side Rules, Civil Rules
of Practice and Circular Order and the practice
notes/directions issued by the High Court from time
to time, as far they are not inconsistent to these
rules, shall apply to appeals filed under these
Rules.”
14. It is, therefore, clear that the Commercial Division, while
hearing an appeal from an order of the Registrar, is required to follow
the procedure set out in Order XLI of the Code for appeals against
original decree, which, in this Court, is numbered as an Appeal Suit
(A.S). However, Schedule I of the Madras High Court Intellectual
Property Division Rules prescribe the nomenclature of CMA (TM) IPD.
Civil Miscellaneous Appeals under the Code are governed by Section
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104 and Order XLIII whereas an appeal against an original decree is
governed by Section 96 & Order XLI. The order of the Registrar does
not amount to a “decree” in any sense of the term. Be that as it may.
15. Turning to the scope of such appeals, it is necessary to bear
in mind that in this case, an appeal under Section 91, unlike an appeal
under Order XLIII, emanates from a final order of the Registrar.
Consequently, considerations, which may properly be applied while
testing discretionary orders passed by the trial courts, must not be
mechanically imported into Section 91 under the garb of Order XLI.
Order XLI merely prescribes the procedure, by which, an appeal is to
be heard and has nothing to do with the scope of appellate jurisdiction,
which is an entirely different matter altogether.
16. The proper approach to appeals of this kind has been
explained in an instructive decision of the Court of Appeal, United
Kingdom in Procter & Gamble Limited’s Trade Mark Application
[reported in 1999 RPC 673] wherein it was held thus:
“The judge recognized that he was not
bound by the findings of the hearing officer, but
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(T)CMA(TM) Nos.110 & 157 of 2023hearing officer on a question which was largely one
of impression and on which the hearing officer
would be likely to have far wider experience. Mr
Morcom [counsel for the appellants] has directed
some mild criticism at that approach but I see no
force in the criticism. The judge was right to pay
respect to the view of the hearing officer,
nevertheless he had to form his own view and he
did so, though he reached the same conclusion as
the hearing officer”.
17. In the decision of the House of Lords in Yorkshire Copper
Works Limited, TM Application [reported in (1954) 71 RPC
150], Lord Simmonds said as follows:
“And if it were a border-line case, which it is
not, I think that a Court, to which an appeal is
brought from the Registrar, though, no doubt, it
would exercise its own discretion in the matter,
should be slow to differ from the experienced
official whose constant duty it is to protect the
interests of the public not only of today but of
tomorrow and the day after.”
18. In the considered view of this Court, the proper approach is
that the Appellate Court, while reassessing the material before the
Registrar, would be entitled to form its own view of the matter.
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However, in doing so, the Court would be slow to interfere with the
findings and conclusions of the Registrar, who is an expert body under
the Act, unless it is demonstrated that the view taken is perverse or is
one, which could not be arrived at on the evidence before it.
19. Turning to the issues raised in these appeals, it is first
necessary to set out the relevant provisions of the Trade Marks Act,
1999. The expression “mark” has been defined in Section 2(1)(m) as
under:
“mark includes a device, brand, heading,
label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination
of colours or any combination thereof;”
20. Section 2(1)(zb) defines a trademark to mean as under:
“trade mark means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person
from those of others and may include shape of
goods, their packaging and combination of colours;
and—
(i) in relation to Chapter XII (other than
section 107), a registered trade mark or a mark
used in relation to goods or services for the20/62
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(T)CMA(TM) Nos.110 & 157 of 2023purpose of indicating or so as to indicate a
connection in the course of trade between the
goods or services, as the case may be, and some
person having the right as proprietor to use the
mark; and
(ii) in relation to other provisions of this Act,
a mark used or proposed to be used in relation to
goods or services for the purpose of indicating or
so as to indicate a connection in the course of trade
between the goods or services, as the case may
be, and some person having the right, either as
proprietor or by way of permitted user, to use the
mark whether with or without any indication of the
identity of that person, and includes a certification
trade mark or collective mark;”
21. Registration of a trademark can be refused if it falls within
any of the grounds contained in Section 9 (absolute grounds) or
Section 11 (relative grounds). Section 9 permits refusal on the ground
of lack of distinctiveness etc. Further discussion on this aspect may not
be necessary as this Court is not concerned with the application of this
provision in this case. Section 11, on the other hand, provides for
relative grounds ie., on the ground of conflict with other trademarks/
marks.
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22. Section 11 of the Act reads as follows:
“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.
(2) A trade mark which –
(a) is identical with or similar to an earlier
trade mark; and
(b) is to be registered for goods or services
which are not similar to those for which the earlier
trade mark is registered in the name of a different
proprietor,
shall not be registered if or to the extent, the
earlier trade mark is a well-known trade mark in
India and the use of the later mark without due
cause would take unfair advantage of or be
detrimental to the distinctive character or repute of
the earlier trade mark.
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(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.
(4) Nothing in this Section shall prevent the
registration of a trade mark where the proprietor of
the earlier trade mark or other earlier right
consents to the registration, and in such case the
Registrar may register the mark under special
circumstances under Section 12.
Explanation: For the purposes of this
Section, earlier trade mark means –
(a) a registered trade mark or an application
under Section 18 bearing the earlier date of filing
or an international registration referred to in
Section 36E or convention application referred to in
Section 154 which has a date of application earlier
than that of the trade mark in question, taking
account, where appropriate, of the priorities
claimed in respect of the trade marks;
(b) a trade mark which, on the date of the
application for registration of the trade mark in
question, or where appropriate, of the priority
claimed in respect of the application, was entitled
to protection as a well-known trade mark.
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(5) A trade mark shall not be refused
registration on the grounds specified in Sub-
Sections (2) and (3), unless objection on any one
or more of those grounds is raised in opposition
proceedings by the proprietor of the earlier trade
mark.
(6) The Registrar shall, while determining
whether a trade mark is a well-known trade mark,
take into account any fact which he considers
relevant for determining a trade mark as a well-
known trade mark including –
(i) the knowledge or recognition of that trade
mark in the relevant section of the public including
knowledge in India obtained as a result of
promotion of the trade mark;
(ii) the duration, extent and geographical
area of any use of that trade mark;
(iii) the duration, extent and geographical
area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the
trade mark applies;
(iv) the duration and geographical area of
any registration of or any publication for
registration of that trade mark under this Act to the
extent they reflect the use or recognition of the
trade mark;
(v) the record of successful enforcement of
the rights in that trade mark, in particular, the
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extent to which the trade mark has been
recognised as a well-known trade mark by any
court or Registrar under that record.
(7) The Registrar shall, while determining as
to whether a trade mark is known or recognised in
a relevant section of the public for the purposes of
Sub-Section (6), take into account –
(i) the number of actual or potential
consumers of the goods or services;
(ii) the number of persons involved in the
channels of distribution of the goods or services;
(iii) the business circles dealing with the
goods or services,
to which that trade mark applies.
(8) Where a trade mark has been
determined to be well-known in at least one
relevant section of the public in India by any court
or Registrar, the Registrar shall consider that trade
mark as a well-known trade mark for registration
under this Act.
(9) The Registrar shall not require as a
condition, for determining whether a trade mark is
a well-known trade mark, any of the following,
namely: –
(i) that the trade mark has been used in
India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of
the trade mark has been filed in India;
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(iv) that the trade mark –
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for
registration has been filed in, any jurisdiction other
than India; or
(v) that the trade mark is well-known to the
public at large in India.
(10) While considering an application for
registration of a trade mark and opposition filed in
respect thereof, the Registrar shall –
(i) protect a well-known trade mark against
the identical or similar trade marks;
(ii) take into consideration the bad faith
involved either of the applicant or the opponent
affecting the right relating to the trade mark.
(11) Where a trade mark has been
registered in good faith disclosing the material
informations to the Registrar or where right to a
trade mark has been acquired through use in goods
faith before the commencement of this Act, then,
nothing in this Act shall prejudice the validity of the
registration of that trade mark or right to use that
trade mark on the ground that such trade mark is
identical with or similar to a well known trade
mark.”26/62
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23. Section 11(1) begins with the phrase “Save as otherwise
provided in Section 12, a trademark shall not be registered….”, which
is because Section 12 recognizes honest concurrent use or other
special circumstances, by which, registration is permissible though the
mark is identical or similar. Section 12 is, thus, an exception to Section
11. Coming to Section 11(1), it provides for refusal on the ground of
likelihood of confusion on the part of the public because of the identity
with an earlier trade mark or similarity of goods and services. Section
11(2) deals with a case where the goods and services are not similar
and the use of the trademark, which is identical with or similar to an
earlier trademark without due cause would amount to unfair advantage
or be detrimental to the distinctive character or reputation of an earlier
trademark.
24. It should be mentioned that the expression “earlier trade
mark” occurring in Section 11(1) is defined in Explanation (a) that
follows Section 11(3). This explanation at the relevant point of time
defined an earlier trade mark to mean a registered trade mark or a
convention application under Section 154, which has a date of
application earlier than the date of trade mark in question. Vide the
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Trade Marks (Amendment) Act, 2010 (Act 40 of 2010), Explanation (a)
was substituted as under:
“a registered trade mark or an application
under section 18 bearing an earlier date of filing or
an international registration referred to in section
36E or convention application referred to in section
154 which has a date of application earlier than
that of the trade mark in question, taking account,
where appropriate, of the priorities claimed in
respect of the trade marks.”
25. The amendment to Explanation (a) came into force only on
08.7.2013, which is much after the opposition proceedings had
commenced in this case. The explanation expands the scope of the
expression “earlier trade mark”. The amendment is clearly
substantive in character and cannot be applied retrospectively. In any
event, Section 11(1) was not seriously pursued by the appellant as
their main focus was on Section 11(3).
26. There is no material to show that the appellant is a well-
known trademark within the meaning of Section 2(1)(zg) and Section
11(8) of the Act. No Court or Registrar has recognized the mark as a
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well-known trademark nor is the appellant recognized as such by the
Registrar in the list maintained by him on the official website.
27. Section 11(8) reads as follows:
“Where a trade mark has been determined
to be well known in at least one relevant section of
the public in India by any court or Registrar, the
Registrar shall consider that trade mark as a well-
known trade mark for registration under this Act.”
28. Hence, as the trademark of the appellant does not fall within
the aforesaid criteria, it does not qualify as a well-known trademark
and the question of applying Section 11(2) or Section 11(6) does not
arise.
29. Section 11(3), which directly applies to this case, deals with
a scenario where the trademark is refused registration on the ground
that its use will be prevented by the law of passing off or copyright
unless the proprietor of the said mark consents to its registration
under Section 11(4). This is a case where both parties are at
loggerheads and hence, the question of consent does not arise. The
question really boils down as to whether the use of the trademark will
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be prevented by the law of passing off in this country. This test must
be applied with reference to both marks as it must not be overlooked
that these are cases of cross oppositions.
30. The tort of passing off is a sub-species of the tort of deceit.
The classic formulation of what constitutes passing off is set out in the
decision of the Privy Council of UK in Star Industrial Co. Ltd. Vs.
Yap Kwee Kor [reported in 1976 F.S.R. 256] wherein Lord
Diplock observed thus:
“A passing off action is a remedy for the
invasion of a right of property not in the mark,
name or get-up improperly used, but in the
business or goodwill likely to be injured by the
misrepresentation made by passing off one
person’s goods as the goods of another. Goodwill,
as the subject of proprietary rights, is incapable of
subsisting by itself. It has no independent
existence apart from the business to which it is
attached.”
31. In the decision in Ruston & Hornsby Ltd. Vs. Zamindara
Engineering Co. [reported in 1969 (2) SCC 727], the Hon’ble
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Supreme Court of India pointed out the distinction between an
infringement action and an action for passing off by holding as under:
“Apart from the question as to the nature of
trade mark the issue in an infringement action is
quite different from the issue in a passing off
action.
In a passing off action the issue is as
follows:
“Is the defendant selling goods so marked as
to be designed or calculated to lead purchasers to
believe that they are the plaintiff’s goods?”But in an infringement action the issue is as
follows:
“Is the defendant using a mark which is the
same as or which is a colourable imitation of the
plaintiff’s registered trade mark.”
32. In the decision in S.Syed Mohideen, the Hon’ble Supreme
Court approved the following test laid down by Lord Oliver in Reckitt
& Colman Products Ltd. Vs. Borden Inc. [reported in (1990) 1
WLR 491], popularly called the ‘Jif Lemon case’ wherein the
following three ingredients were spelt out:
“In a case such as the present where what is
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must establish
(1) that his goods have acquired a particular
reputation among the public,
(2) that persons wishing to buy his goods
are likely to be misled into buying the goods of the
defendant and
(3) that he is likely to suffer damage
thereby.”
33. From the above, it is discernible that the tort of passing off
is actually a wrong against the goodwill acquired by a business.
Goodwill was famously explained by Lord MacNaughten in the decision
in Inland Revenue Commissioners Vs. Muller & Co’s Margarine
[reported in 1901 AC 217] as constituting:
“… the benefit and advantage of the good
name, reputation, and connection of a business. It
is the attractive force which brings in custom….
The goodwill of a business must emanate from a
particular centre or source. However widely
extended or diffused its influence may be, goodwill
is worth nothing unless it has power of attraction
sufficient to bring customers home to the source
from which it emanates… I think that if there is
one attribute common to all cases of good will it is
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It must be attached to a business. Destroy the
business, and the goodwill perishes with it, though
elements remain which may perhaps be gathered
up and be revived again.”
34. Thus, the essence of passing off is that it is an injury against
goodwill, which, in turn, is inextricably linked to a business for
goodwill, cannot exist independently of a business. This has given rise
to two competing schools of thought, one taking the view that it is
essential for business to exist within the jurisdiction and the other view
in cases where the business has an international reputation and is able
to demonstrate that it attracts customers from the concerned country.
In other words, there is a spillover of goodwill gained internationally
into the local market.
35. As is common with this branch of law, there is no dearth of
precedents, both Indian and foreign, on the issue of transborder
rights. However, on a closer look, it will be seen that a majority of
these decisions emanate from appeals against interlocutory orders in
suits for infringement/passing off. Thus, the precedents cited on either
side will have to be examined keeping in mind the aforesaid aspect.
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36. As noticed supra, the case of the appellant is that they have
built a reputation at an international level with respect to the “Big
Bite” marks and that they are clearly international prior users.
37. Admittedly, there is no material to show that the appellant
has done business on Indian soil, with the aforesaid mark, on the date
of the application or at any subsequent point of time prior to the
commencement of opposition proceedings.
38. On the other hand, it is the case of the contesting third
respondent that they are doing business in India with the mark “Big
Bite” since 2004 and that the application of the appellant must fail
since they were not doing business in India and consequently, can
have no goodwill in India.
39. The issue before the Hon’ble Supreme Court in N.R.Dongre
arose out of an application for injunction in a passing off action. On
facts, it was found that material had been placed before the learned
Single Judge of the Delhi High Court (R.C.Lahoti,J as he then was) to
demonstrate that Whirlpool washing machines had been sold in India,
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though in a limited way, to the U.S. Embassy and U.S. AID in India. It
was also demonstrated that their products were advertised in
magazines having international circulation including in India. More
importantly, the name was registered in favour of the plaintiff from
1955-1977, which would have generated goodwill. On this basis, the
order of injunction granted by the learned Single Judge and affirmed
on appeal by the Division Bench was upheld by the Hon’ble Supreme
Court with the following observations:
“It has also to be borne in mind that a mark
in the form of a word which is not a derivative of
the product, points to the source of the product.
The mark/name ‘Whirlpool’ is associated for long,
much prior to the defendants’ application in 1986
with the Whirlpool Corporation, Plaintiff 1. In view
of the prior user of the mark by Plaintiff 1 and its
trans-border reputation extending to India, the
trade mark ‘Whirlpool’ gives an indication of the
origin of the goods as emanating from or relating
to the Whirlpool Corporation, Plaintiff 1.”
40. In the decision of the Hon’ble Supreme Court in Milmet
Oftho Industries, a suit was filed for passing off in respect of the
mark “ocuflex” used on a medicinal preparation manufactured and
marketed by the respondents therein. This decision also arose out of
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an appeal against an order granting ad-interim injunction. The Hon’ble
Supreme Court held thus:
“It must also be remembered that nowadays
goods are widely advertised in newspapers,
periodicals, magazines and other media which is
available in the country. This results in a product
acquiring a worldwide reputation. Thus, if a mark in
respect of a drug is associated with the
respondents worldwide it would lead to an
anomalous situation if an identical mark in respect
of a similar drug is allowed to be sold in India.”
The Court added the following caveat:
“Multinational corporations, which have no
intention of coming to India or introducing their
product in India should not be allowed to throttle
an Indian company by not permitting it to sell a
product in India, if the Indian company has
genuinely adopted the mark and developed the
product and is first in the market. Thus, the
ultimate test should be, who is first in the market.”
41. The Court also emphasized that in respect of pharmaceutical
products, a more exacting judicial scrutiny was necessary in view of
the larger public interest that was at stake. In fact, a similar view had
been expressed earlier in the decision of the Hon’ble Supreme Court in
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Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.
[reported in 2001 (5) SCC 73] wherein it was held thus:
“The drugs have a marked difference in the
compositions with completely different side effects,
the test should be applied strictly as the possibility
of harm resulting from any kind of confusion by the
consumer can have unpleasant if not disastrous
results. The courts need to be particularly vigilant
where the defendant’s drug, of which passing-off is
alleged, is meant for curing the same ailment as
the plaintiff’s medicine but the compositions are
different. The confusion is more likely in such cases
and the incorrect intake of medicine may even
result in loss of life or other serious health
problems.”
42. In the decision in Milmet Otfho Industries, the Hon’ble
Supreme Court ultimately upheld the order of interim injunction
leaving it open to the respondents therein to agitate the issue of prior
use after conclusion of trial.
43. The learned counsel appearing on behalf of the appellant is
perhaps correct in his criticism of the impugned order of the Registrar,
which purported to apply the principles laid down in the decision of the
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Hon’ble Supreme Court in Milmet Oftho Industries without
appreciating the fact that it concerned a pharmaceutical product where
slightly different standards would apply.
44. However, what must also be taken into account is the fact
that the impugned order was passed on 18.7.2014 when the law as
regards transboundary reputation was still hazy. The decision of the
Hon’ble Supreme Court in Toyota Jidosha Kabushiki Kaisha has
now settled the issue once and for all. However, it is necessary to take
a brief detour to see as to how this change had really come about.
45. In the decision in Starbucks (HK) Ltd. Vs. British Sky
Broadcasting Group PLC [reported in 2012 EWHC 3074 (Ch)],
Arnold,J held that although advance advertising could create
protectable goodwill, the activities relied on by the foreign plaintiff to
establish goodwill in the UK “did not take the form of advertising
or promotion for a forthcoming product or service”. Instead, the
advertisements were primarily aimed at promoting its home business
in Hong Kong.
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46. The matter was carried on appeal and finally reached the UK
Supreme Court in the decision in Starbucks (HK) Limited Vs.
British Sky Broadcasting Group PLC [reported in (2015) UKSC
31]. The Supreme Court reaffirmed the requirement in a passing off
action of showing goodwill within the local market. The position at
common law was stated by Lord Neuberger as follows:
“I consider that we should reaffirm that the
law is that a claimant in a passing off claim must
establish that it has actual goodwill in this
jurisdiction, and that such goodwill involves the
presence of clients or customers in the jurisdiction
for the products or services in question. And, where
the claimant’s business is abroad, people who are
in the jurisdiction, but who are not customers of
the claimant in the jurisdiction, will not do, even if
they are customers of the claimant when they go
abroad.
It seems to have been the consistent view of
the House of Lords and Privy Council from 1915 to
1990 that a plaintiff who seeks passing off relief in
an English court must show that he has goodwill, in
the form of customers, in the jurisdiction of the
court. While it can be said that, in none of the
cases discussed in paras 21-25 above was that
point the main focus of attention, it nonetheless
seems clear that that is what a succession of39/62
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experience in this area, considered to be the law.”
47. Finally, as to what constituted sufficient goodwill for the
purposes of protection, in Starbucks (HK) Limited, it was held thus
by the UK Supreme Court:
“The claimant must show that it has a
significant goodwill, in the form of customers, in
the jurisdiction, but it is not necessary that the
claimant actually has an establishment or office in
this country. In order to establish goodwill, the
claimant must have customers within the
jurisdiction, as opposed to people in the jurisdiction
who happen to be customers elsewhere. Thus,
where the claimant’s business is carried on abroad,
it is not enough for a claimant to show that there
are people in this jurisdiction who happen to be its
customers when they are abroad. However, it could
be enough if the claimant could show that there
were people in this jurisdiction who, by booking
with, or purchasing from, an entity in this country,
obtained the right to receive the claimant’s service
abroad. And, in such a case, the entity need not be
a part or branch of the claimant : it can be
someone acting for or on behalf of the claimant.”40/62
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48. Shortly prior to the aforesaid decision of the UK Supreme
Court in Starbucks (HK) Limited, the Singapore Court of Appeal
delivered an important decision in Staywell Hospitality Group Pty
Ltd Vs. Starwood Hotels & Resorts Worldwide, Inc., [reported
in (2014) 1 SLR 911], in which, the law was summarized by
Sundaresh Menon,CJ as under:
“Our courts have since largely followed Star
Industrial, holding that a foreign trader which does
not conduct any business activity in Singapore
cannot maintain an action in passing off here (see
Tan Gek Neo Jessie v Minister for Finance [1991] 2
MLJ 301, Jumbo Seafood Pte Ltd v Hong Kong
Jumbo Seafood Restaurant Pte Ltd [1997] 3 SLR(R)
878 and CDL Hotels ([102] supra)). The “hard-line”
approach, as currently applied in Singapore, draws
a clear distinction between goodwill and reputation:
“[a] desire to become a customer of the plaintiff
without the ability to actually be one, cannot
ordinarily form the basis of goodwill.”
49. A close reading of the decision of the UK Supreme Court in
Starbucks (HK) Limited and the decision of the Singapore Court of
Appeal in Staywell Hospitality Group Pty Ltd., reveals a common
concern. Both the Courts have expressed their concerns about
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balancing the rights of a foreign business and those of a local
competitor and have taken a position that tips the law slightly in
favour of the local player.
50. In the decision of the UK Supreme Court in Starbucks (HK)
Limited, it was further held thus:
“If it was enough for a claimant merely to
establish reputation within the jurisdiction to
maintain a passing off action, it appears to me that
it would tip the balance too much in favour of
protection. It would mean that, without having any
business or any consumers for its product or
service in this jurisdiction, a claimant could prevent
another person using a mark, such as an ordinary
English word, “now”, for a potentially indefinite
period in relation to a similar product or service. In
my view, a claimant who has simply obtained a
reputation for its mark in this jurisdiction in respect
of his products or services outside this jurisdiction
has not done enough to justify granting him an
effective monopoly in respect of that mark within
the jurisdiction.”42/62
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51. In a similar vein, in the decision of the Singapore Court of
Appeal in Staywell Hospitality Group Pty Ltd., Sundaresh
Menon,CJ further said as under:
“In softening the “hard-line” approach so as
to consider pre-trading activity as capable of
generating goodwill, our courts must strike a
considered balance between the interests of foreign
or aspiring entrants to the Singapore market, and
existing local enterprises. Where the foreign trader
has no interest in the local market, the concern of
stifling local enterprises prevails. Where the foreign
trader has unequivocally evinced his intention to
enter the local market, the concern of preventing
local traders from “freeriding” on the efforts and
expenditure of the foreign trader prevails. It will be
a rare case, if ever, that spill-over advertising
meant primarily for a foreign audience or to
increase brand reputation in general, or early
stages of negotiation and sourcing without any
serious commitment to investment, will displace
the interests of local enterprise in favour of
proprietary protection for the foreign trader.
Finally, the unequivocal intention to enter
the local market is a necessary factor qualifying
pre-trade activity for consideration in the goodwill
inquiry, but it is not sufficient. It must be
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will bring in custom when the business eventually
materialises. If a trader has taken steps evincing
his intention to trade in Singapore, such as
securing premises or employees here, but has done
nothing to put the business in the awareness of the
public so as to create demand, then there clearly is
no Singapore goodwill to be protected.”
52. Reverting to the Indian position, in the decision in Trans
Tyres India Pvt. Ltd. Vs. Double Coin Holdings Limited
[reported in (2012) 49 PTC 209], a Division Bench of the Delhi
High Court opined that in trademark law, the doctrine of territoriality
must be preferred to the doctrine of universality. The Division Bench
had held thus:
“Trademark, as we all know is territorial in
nature. Thus, under the Territoriality Doctrine, a
trademark is recognized as having a separate
existence in each sovereign territory in which it is
registered or legally recognized as a mark. The
Universality Doctrine, which posits that a mark
signifies the same source wherever the mark is
used in the world has been rejected by Courts all
over the world. Thus, the registered proprietor of a
trademark would be entitled to the protections44/62
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territorial limits as conferred by a Municipal Law.
Prior use of a trademark in a dominion would ipso
facto not entitle its owner to claim exclusive
trademark rights in another dominion.
The conventional theory that a trademark
connects, in the mind of the consumer, the goods
to the source of manufacturer is inapplicable in
today’s environment because modern global
trading has assumed multi-channel modes of sale
of goods in the market. Thus, in today’s global
environment, the theory pertaining to a trademark
would be that a trademark connects, in the mind of
the consumer, the source wherefrom the goods
enter the market, whatever may be the
nomenclature of that source. It could be the agent,
the distributor or even a person who purchases
goods from a manufacturer and sells them in the
market.”
53. The aforesaid view was reiterated by another Division Bench
of the Delhi High Court in Prius Auto Industries Ltd Vs. Toyota
Jidosha Kabushiki Kaisha [reported in (2017) 236 DLT 343].
The defendants had obtained registration of the mark ‘Prius’ in 2002
and had been using the same since 2001. Toyota Jidosha Kabushiki
Kaisha contended that the mark ‘Prius’ was a well known trade mark
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and that its first hybrid car “Prius” was launched in Japan in 1990 and
was also sold in various parts of the globe. The car was released in
India in 2010. The defendants, on the other hand, took the defence
that they had been selling car accessories under the name “Prius”
since 2001 and that Toyota Jidosha Kabushiki Kaisha had not sold
any cars in the Indian market so as to claim goodwill locally. The
Division Bench upheld the defence and held that the mark ‘Prius’ was
not entitled to protection.
54. In the latter decision, the Division Bench of the Delhi High
Court took note of the earlier decisions of the Hon’ble Supreme Court
and observed that they were rendered at the ad-interim stage where
the only test was whether the products were likely to result in
confusion. It was observed thus:
“Issues of trans-border reputation or
likelihood of confusion decided in various cases
cited before us and even in cases not cited arose
before the Court either in quia timet actions or
when the defendants had just entered the market.
At that point of time, the issue could obviously be
decided on the test of likelihood of confusion and
we find that most of the judgments are dealing
with the issue at the stage of injunction where
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documents filed by the parties had yet to translate
into evidence and witnesses were yet to be
examined. In such situation, the only way in which
the issue of an injunction pending adjudication in
the suit can be decided is on the touchstone of
likelihood of confusion. But in a case of the kind at
hand where the appellants had been selling the
goods under the offending trade mark for nearly
ten years when the suit for injunction was filed,
there must be evidence of actual confusion. Toyota
is a big company. It has had a presence in India for
over two decades when the suit was filed. It was
well entrenched in the Indian market in the year
2001. Obviously no consumer of Toyota car or
buyer of an auto part sold by Toyota was ever
confused by the appellants selling their products
under the trade mark Prius, for if this was so, in
ten years somebody would have complained to
Toyota or at least would have made known said
fact to Toyota.”
55. In this case, admittedly, the third respondent has been
selling their products under the mark “Big Bite” since 2004 and there
is no evidence of any kind to show that the consumers were confused
or deceived in the past two decades.
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56. The decision of the Division Bench of the Delhi High Court
was taken on appeal to the Hon’ble Supreme Court in Toyota Jidosha
Kabushiki Kaisha Vs. Prius Auto Industries Ltd. [reported in
(2018) 2 SCC 1]. Dismissing the appeals, the Hon’ble Supreme Court
affirmed the applicability of the territoriality doctrine in trademarks.
The Hon’ble Supreme Court referred to and approved the following
observations in Athletes’ Foot Marketing Associates Inc. Vs.
Cobra Sports Ltd. [reported in 1980 RPC 343] to the following
effect:
“… no trader can complain of passing-off as
against him in any territory … in which he has no
customers, nobody who is in trade relation with
him. This will normally shortly be expressed by
stating that he does not carry on any trade in that
particular country … but the inwardness of it will be
that he has no customers in that country …”
57. In said decision in Toyota Jidosha Kabushiki Kaisha,
certain exceptions were also noticed by the Hon’ble Supreme Court as,
for instance, protection was granted where the cars were imported and
sold in England thereby creating a market within the United Kingdom
{LA Societe Anonyme Des Anciens Etablissements Panhard Vs.
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Panhard Levassor Motor Co. Ltd. [reported in (1901) 2 Ch
513]} and where the customers travelled to another jurisdiction to
purchase the products as in the case of C&A Modes Vs. C&A
(Waterford) Ltd. [reported in 1976 IR 198 (Irish)]. The Hon’ble
Supreme Court finally rejected the contention raised by Toyota
Jidosha Kabushiki Kaisha premised on transborder reputation and
goodwill by observing as under:
“Indeed, the trade mark “Prius” had
undoubtedly acquired a great deal of goodwill in
several other jurisdictions in the world and that too
much earlier to the use and registration of the
same by the defendants in India. But if the
territoriality principle is to govern the matter, and
we have already held it should, there must be
adequate evidence to show that the plaintiff had
acquired a substantial goodwill for its car under the
brand name “Prius” in the Indian market also. The
car itself was introduced in the Indian market in
the year 2009-2010. The advertisements in
automobile magazines, international business
magazines; availability of data in information-
disseminating portals like Wikipedia and online
Britannica Dictionary and the information on the
internet, even if accepted, will not be a safe basis
to hold the existence of the necessary goodwill and
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reputation of the product in the Indian market at
the relevant point of time, particularly having
regard to the limited online exposure at that point
of time i.e. in the year 2001. The news items
relating to the launching of the product in Japan
isolatedly and singularly in The Economic Times
(issues dated 27-3-1997 and 15-12-1997) also do
not firmly establish the acquisition and existence of
goodwill and reputation of the brand name in the
Indian market. Coupled with the above, the
evidence of the plaintiff’s witnesses themselves
would be suggestive of a very limited sale of the
product in the Indian market and virtually the
absence of any advertisement of the product in
India prior to April 2001. This, in turn, would show
either lack of goodwill in the domestic market or
lack of knowledge and information of the product
amongst a significant section of the Indian
population. While it may be correct that the
population to whom such knowledge or information
of the product should be available would be the
section of the public dealing with the product as
distinguished from the general population, even
proof of such knowledge and information within the
limited segment of the population is not
prominent.”
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58. The aforesaid view has since been consistently followed by
the Courts in India. Among the cases cited on either side, the decisions
in Keller Williams Realty Inc., Bolt Technology OU, KEI
Industries, Somany Ceramics Limited and Kia Wang arose out of
interlocutory applications. In the last-mentioned decision, it was
factually found that the claimant had been selling its products in India
through Amazon for quite some time. In the decision of the Delhi High
Court in Suzuki Motor, it was found on facts that the defendant
claimed to have adopted the name Suzuki because they had friend
named Suzuki. Quite obviously, the defence was rightly found to be a
sham and the use of the mark was found to be in bad faith. This
decision, therefore, turned on its own facts.
59. The decision of the Division Bench of the Delhi High Court in
VIP Industries Ltd. also emanates from interlocutory proceedings.
But, it contains two important passages on transborder reputation,
which deserve to be set out and noticed and which run thus:
“118. The concept is actually elementary,
when one keeps in mind the basic principle of
passing off. Passing off takes place when a
defendant, by using the mark or name of the51/62
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the goods, or services, of the plaintiff. The issue of
trans-border reputation arises where the plaintiff is
situated outside the territorial jurisdiction in which
the defendant is located. Even in such a case, if the
reputation and goodwill which is commanded by
the plaintiff’s mark is of such a degree that it has
percolated into the territory of the defendant, and
is “well-known” in that territory, the defendant is
still seeking to capitalise on the reputation of the
mark or name. This is because, if consumers within
the defendant’s territory are consciously aware of
the reputation of the mark or name in question,
even though it is exclusively, or even essentially,
used outside the territory, they may presume,
when such mark or name is used by the defendant,
that the plaintiff has now established a presence in
that territory. When dealing with India, for
example, many reputed brands, and names, which
earlier had no presence in India, though they
commanded a global reputation, have now
established a presence within India.
119. One may, for example, consider a mark
such as Burger King. Till a decade or so ago,
Burger King had no presence in India. Even so, it
had a global reputation, and many consumers in
India, who were fond of burgers, were aware of the
existence of the Burger King franchise. If,
therefore, some adventurous entrepreneur, in
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India, decided to set up a Burger King outlet,
before Burger King officially established a presence
in this country, it might have amounted to passing
off, given the fact that Burger King had a global
reputation, and that reputation had percolated into
India, through promotional material, literature,
advertisements, and the like, even if there was no
physical Burger King outlet within this country. Of
course, if Burger King were to bring a passing off
action against such entrepreneur, the onus would
be on Burger King to prove that its global
reputation had percolated into India so that it could
be said to enjoy trans-border reputation within this
country.”
60. From the aforesaid, it would be clear that it must be
demonstrable that the mark used extensively outside India is so well
known that they may presume, when such mark or name is used by
the respondent and that the claimant has now established a presence
in that territory.
61. That, however, is not the case here. Admittedly, before the
Registrar, no evidence worth its name was ever produced by the
appellant to show that they have been selling their products in India.
There was, therefore, no question of confusion or deception.
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62. On the contrary, the third respondent was able to show
through Ex.D.1 to Ex.D.58 that they had sales across the country since
2004 and invested money in advertisements, etc., which was
evidenced through Ex.A.1 to Ex.A14.
63. The learned counsel for the third respondent cited the recent
decision of the Division Bench of the Delhi High Court in Sumit Vijay.
64. The decision in Sumit Vijay was on an appeal from the
order of the Registrar where the application of Section 11(3) of the Act
was directly in issue and answers the contention raised by
Mr.Harishankar, learned counsel on behalf of the appellant that the
mark of the appellant was available on their website, which was
accessible in India thereby leading to the conclusion that it was known
throughout this country.
65. This contention cannot be accepted and it is not necessary to
repeat what was said in the decision in Toyota Jidosha Kabushiki
Kaisha, except to refer to the following passages from the decision of
the Division Bench of the Delhi High Court in Sumit Vijay:
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having used the BLUE JAYS mark, in India, in any
of the modes envisaged in the Trade Marks Act.
The mere fact that the BLUE JAYS mark figured on
websites which are accessible in India, or figured
on merchandise which could be purchased in India,
cannot amount to use of the mark, by the
respondent, within India. At least, prior to 1998,
there is little or no evidence of such use.
Toyota, thus, holds that facts such as (i) the
accessibility of Toyota’s websites in India, (ii)
several visits to Toyota’s websites by many Indians
seeking information about Prius’ products, (iii)
exhibitions of the Prius product in India and other
countries, (iv) advertisements and cover stories in
magazines and availability of information regarding
the “Prius” mark and products in various internet
portals, even seen cumulatively, did not make out
a case of trans border reputation and goodwill.
Secondly, the availability of a mark on
websites can again be no indicator of trans-border
goodwill or reputation percolating into a particular
country such as India. Websites are globally
accessible. If the principle that accessibility of a
mark on a website is to be treated as an indicator
of trans-border reputation, every mark of every
entity would have trans border reputation in every
country in the world. It is not enough, therefore, to
aver that a particular mark is available on a
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website which is accessible within India, to
substantiate a contention that the mark enjoys
trans-border reputation in India. Positive assertions
regarding the number of times the websites has
been accessed in India would have also to be
pleaded.
Similarly, the availability of goods bearing a
particular mark, for sale on websites, whether they
belong to the owner of the mark or are e-
commerce websites, can also be no evidence of
percolation of the reputation of the mark into India.
As in the case of websites in general, e-commerce
websites may be accessible within India, even if
they are not hosted from within the country.
Similarly, there is no necessity that every product
which is available on an e-commerce website
commands reputation or goodwill within India.
Mere availability of products bearing a mark for
sale on an e-commerce website, or on the website
of the owner of the mark, would not, however,
suffice as proof of trans-border goodwill or
reputation. It would further have to be shown that
orders were actually placed or purchases effected,
to a considerable existent, of the goods bearing the
mark, from within India.”
66. The older cases, prior to the decision in Toyota Jidosha
Kabushiki Kaisha, cited on the side of the appellant, will now have to
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be read in the light of the law laid down by the Hon’ble Supreme Court
in the decision in Toyota Jidosha Kabushiki Kaisha.
Mr.Harishankar, learned counsel appearing on behalf of the appellant
also referred to the decision of the Hon’ble Supreme Court in S.Syed
Mohideen wherein the question was as to whether the holder of
registered trade mark could sue for infringement of his registered
trade mark if the opponent also has the trade mark, which is
registered. The other issue was as to whether such a respondent could
bring an action against the appellant for passing off invoking the
provisions of Section 27(2) of the Act. The decision is, therefore,
inapplicable to the facts of this case although there is a wealth of
precedent cited for the general principles concerning passing off.
67. If the aforesaid principles are applied to the facts of this
case, the admitted position is that the appellant did not sell their
products in this country at any time from 1994, when they purportedly
made an application for registration or in 2007 when the opposition
proceedings commenced before the Registrar. The impugned order
also states that the appellant was not selling any products in India and
was not able to produce any material to show the use of their mark in
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Classes 29 & 30. Consequently, in view of the decision of the Hon’ble
Supreme Court in Toyota Jidosha Kabushiki Kaisha, it cannot be
said that the appellant has acquired sufficient goodwill in this country
so as to entitle them to protection. On the other hand, the third
respondent has been able to demonstrate actual sale and percolation
of their products throughout the country with the mark “Big Bite” for
a sufficiently long period so as to generate goodwill and reputation
entitling them to protection under the law of passing off.
68. Before concluding, it must also be pointed out that though
Section 18 does permit registration of a mark, which is “used or
proposed to be used”, it must be remembered that the applicant
must show that it has a definite and present intention to use the mark
as on the date of the application. In the decision in Ducker’s Trade
Mark [reported in (1928) 45 RPC 397], it was held thus:
“I think the words ‘proposed to be used’
mean a real intention to use, not a mere
problematic intention, not an uncertain or
indeterminate possibility, but it means a resolve or
settled purpose which has been reached at the time
when the mark is to be registered.”58/62
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69. In yet another case in Batt’s Trade Mark [reported in
(1898) 15 RPC 534], which was quoted in the aforesaid decision, it
was held thus:
“Can a man properly register a trade mark
for goods in which he does not deal or intend to
deal; meaning by ‘ intending to ” deal’ having at
the time of registration some definite and present
intention to deal in certain goods or descriptions of
goods, and not a mere general “intention of
extending his business at some future time to
anything which he “might think desirable. This
question we answer in the negative. To answer it
otherwise would be unduly to strain the language
of the Acts relating to trade marks and to render
those Acts extremely mischievous instead of
beneficial to trade or commerce.”
70. The fact that the appellant had applied for registration in
1994, but had not commenced business or sale in this country either
on the said date or on the date of commencement of opposition
proceedings almost over a decade later in 2007, is also an additional
(though not decisive) factor that weighs in the balance while testing
the order of the Registrar declining registration of the appellant’s
mark. In the final analysis, this Court is of the considered view that
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the conclusion arrived at by the Registrar must be upheld, though for
different reasons. This Court is not convinced that the appellant has
made out a case for interference in these appeals.
71. In the result, these civil miscellaneous appeals fail and are
dismissed. In the facts and circumstances of the case, there shall be
no order as to costs.
11.2.2026
Index : Yes
Neutral Citation : Yes
To
1.The Deputy Registrar of Trademarks,
Trade Marks Registry, Intellectual
Property Building, GST Road,
Guindy, Chennai-32.
2.The Registrar of Trademarks,
Trade Marks Registry, Intellectual
Property Building, GST Road,
Guindy, Chennai-32.
RS
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N.ANAND VENKATESH,J
RS
(T)CMA(TM) Nos.110 & 157 of 2023
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11.2.2026
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