The Delhi High Court examined a trademark dispute concerning the mark “BLUE-JAY” and set aside an earlier order that had cancelled its Indian registration, holding that global reputation alone is insufficient to grant relief unless it is shown to have spilled over into India. The case arose from a challenge mounted by a foreign entity associated with a well-known professional baseball team, which claimed rights over the “BLUE JAYS” marks and sought cancellation of an Indian trademark registered in favour of a domestic partnership firm using the mark “BLUE-JAY” for apparel. The Single Judge had accepted the foreign entity’s plea, holding that the international recognition of the mark and its presence on websites accessible in India established trans-border reputation and amounted to use in India, thereby justifying cancellation of the Indian registration.
The Division Bench, while hearing the appeal, disagreed with this approach and undertook a detailed examination of the legal principles governing trademark use and reputation. The Court held that the Single Judge had erred in equating mere online accessibility of a foreign website with “use” of a trademark in India. It clarified that under trademark law, “use” has a specific statutory meaning and must fall within the modes recognised by the Trade Marks Act, such as use on goods, in relation to services, or through authorised visual or commercial representations. The Bench held that the availability of a website in India, without more, does not automatically satisfy these statutory requirements.
The High Court further explained that the doctrine of trans-border reputation does not dispense with the territorial nature of trademark rights. While a mark may enjoy widespread recognition in foreign jurisdictions, such reputation must be shown to have extended into the Indian market and influenced Indian consumers before it can be relied upon to invalidate a domestic trademark. The Court emphasised that goodwill and reputation are market-specific, and that reputation acquired abroad cannot be presumed to exist in India in the absence of clear and cogent evidence demonstrating such spillover.
In addressing the contention that the Indian proprietor had acted in bad faith by adopting the “BLUE-JAY” mark, the Division Bench held that allegations of dishonest adoption must be supported by material evidence. The Court observed that bad faith cannot be inferred merely because a similar or identical mark exists abroad, particularly where there is no proof that the Indian adopter intended to capitalise on the foreign entity’s reputation. The Bench noted that the Indian trademark had remained on the register for a considerable period and that statutory rights flowing from registration cannot be taken away on assumptions or conjecture.
The Court also underscored the distinction between global fame and enforceable reputation within India. It reiterated that even a well-known foreign mark must demonstrate recognition among Indian consumers or a meaningful commercial presence in India to claim protection based on trans-border reputation. Without such proof, the foreign entity cannot displace the rights of an Indian registrant who has lawfully obtained and used the mark within the country.
On the basis of these findings, the Delhi High Court restored the “BLUE-JAY” trademark registration in favour of the Indian partnership firm and set aside the cancellation order passed by the Single Judge. The judgment reaffirmed the territorial foundation of trademark law in India and clarified that relief based on global reputation can only be granted when there is credible evidence showing that such reputation has spilled over into India and has a bearing on consumer perception within the domestic market.
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