Trademarks are associated with brand identity, the purpose of which is to establish a link between the particular products or services and the company in the minds of the members of trade and public. Reputation of a trade mark is an important factor.
In today’s world of modern-day trading; where the goods and services are marketed through interactive websites, advertisements, magazines, journals, newspapers, web portals etc. which are easily accessible by customers globally, leading to worldwide reputation and goodwill of a trademark in relation to disputes in India reflects the growth of technological development globally.
Doctrine of Territoriality
Doctrine of Territoriality recognizes that a trademark has a separate existence in each country. In an action of passing off or infringement the prior use of one jurisdiction would not ipso facto entitle its owner or user to claim ‘Exclusive Rights’ on the trademark in another territory. lawmax is one of the reputed Intellectual Property Law Firms in Delhi
‘Goodwill’- is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each.
The Supreme Court, in Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited, has reiterated the settled principle of law on the issue of the trans-border reputation of trademarks. The Court, in this case, observed that a foreign entity must produce ‘sufficient evidence’ of ‘use of goods’ or ‘services’ in India to protect their trademark from an action of passing off and infringement.
The doctrine of trans-border reputation was first recognized by the Hon’ble Supreme Court in N. R Dongre V Whirlpool Corp., wherein the Court held that the knowledge and awareness of a trademark and its travel beyond the confines of the geographical area in which it is sold are to be seen. The physical presence of the business/ trademark in India was not necessary and mere advertisement of goods allowed the trader to carry its trans-border reputation or goodwill. lawmax has top Intellectual Property Lawyers in Delhi
Whilst considering the possibility of deception and confusion of Trademark seeking to expand into a new territory, the mark had to fulfill the requisites under section 11(6) & 11(9) of the Act which posit the definition of a “well known trademark” under section 2(1) (zg) of the Trademarks Act. There must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its goods or services in the Indian market.
U.K. Supreme Court in Starbucks vs. British Sky Broadcasting observed that in order to establish sufficient goodwill or reputation claimant must show that it has significant customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country.
However, Indian Court has ensured by a plethora of judgment that the interest of consumers in case of trans-border reputation are not imperilled and the trader who is first in the market and is a genuine adopter of the mark is not put to risk and thus can claim “Exclusive Rights” over the mark.
Interestingly, it would be relevant to mention the Delhi High Court view in Rolex Sa vs Alex Jewellery Pvt Ltd. – “Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years, it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well-known trademark in Section 2(zg) is qua the segment of the public which uses such goods.”
Remedies Available For Trans-border Reputation Infringement
The protection provided to unregistered trademarks is also extended to foreign marks, which have a reputation in India on the basis of extensive advertisements and publicity. The international reputation of a trade mark could enable the owner to obtain injunction in the courts of a country in which he is not even trading. Indian courts have also granted injunction in cases of trans-border reputation. In Jolen Inc. v. Shobanlal Jain, trans-border reputation was established by the fact that the plaintiff marketed goods in other countries. Considering the fact that there was copy of the plaintiff’s trade mark, interim injunction was granted.
The biggest takeaway from this discussion is that you need to be very vigilant with respect to your trademark and how/ by whom it is being used. It is suggested to get regular trademark searches and checks conducted in order to ensure that any violation can be caught at a nascent stage. If you find any such violations, it is imperative to take immediate action to minimise your losses.
Another important thing to keep in mind is that you approach your legal counsel if you feel that your Trademark is being infringed or are being violated/ misused in any way. In this manner your legal counsel can ensure that you get swift remedies within time, as per law.