INDIA FOCUS: TRANSBORDER REPUTATION
Te principle of ‘one mark, one source, and one proprietor’ has caught the fancy of the Indian courts over past few years and, more oſten than not, many foreign brands are protected on Indian soil without having an actual physical presence in India against the defence of ‘prior use in India’ by certain entities in passing off actions. Te Indian courts have recognised that it is very easy for Indian entities to run faster than the first owners of trademarks in commencing use of the trademark in India and then to claim the defence of prior use in India.
Tese attempts are now being thwarted without any favouritism towards Indian entities. Aſter the opening up of the economy and markets in India, the legal principle of transborder reputation has been developing and has now reached a decent stage wherein the thresholds for the owner of trademark to seek protection despite not having a presence in India have been considerably lowered in recent years. Tis is a welcome step.
The principle
One of the first Indian judgments to recognise the principle of
transborder reputation was
delivered almost 25 years ago when a division bench of the Bombay High Court held in Kamal Trading Co v Gillette UK Ltd that goodwill and reputation could not be limited to one particular country and that they do not depend only upon the availability of goods in a particular country. With this judgment
the seed of the principle
of transborder reputation being recognised in India was sown, which grew into a plant and has developed slowly to become a strong tree.
Te principle of transborder reputation again found support in the early 1990s when the Delhi High Court in the matter of Apple Computers Inc v Apple Leasing and Industries echoed the same sentiment aſter discussing the law prevalent in various foreign jurisdictions.
Te principle attained new heights by virtue of judgment(s) rendered by the Delhi High Court and the Supreme Court of India in 1996 in N R Dongre & Ors v Whirlpool Corporation, wherein a large Indian corporation was restrained from using the trademark ‘Whirlpool’ despite being the registered proprietor of it on the Indian trademark register and despite Whirlpool Corporation’s having never sold its goods on a commercial scale in India. Te supply of goods in Indian embassies was held sufficient to satisfy the requirement of reputation and use in India. Further, advertisement in foreign magazines with circulation in India was held to be sufficient to acquire reputation.
Then, in 1999, a division bench of the Madras High Court followed suit while passing a
www.worldipreview.com
significant judgment in Caesar Park Hotels and Resorts Inc v Westinn Hospitality Services Ltd wherein the reputation was held to have reached India through thousands of travellers who returned to India after business visits to countries where the plaintiff operated its hotels. Falling in the same line, in the year 2001, the Delhi High Court protected the famous trademark ‘Rainforest Café’ against the use of the same mark by an Indian entity by restraining such use despite the plaintiff ’s having not yet operated any restaurant in the Indian territory.
Te journey of the principle of transborder reputation reached its next big milestone in the year 2004 when the Supreme Court of India in Milment Oſtho v Allergan Inc held that the ultimate test to decide priority in adoption should be to see who is first in the world market: non-use in Indian markets was irrelevant.
Tis principle was carried forward by the Delhi High Court in 2006 while delivering the judgment in Austin Nichols & Co & Anr v Arvind Behl & Anr wherein it was authoritatively held that in view of huge advances made in information and technology over the years, it would be too late for the defendant to urge that regular sales of goods in foreign countries would be unknown to persons living in India. Te court beautifully used the phrase ‘first past the post’ to conclude that prior use in international markets would be superior to first use in India.
Te law has been constantly catching up with the principles of transborder reputation, and in 2012 in a matter titled Icrave, LLC v Icrave Designs Pvt Ltd argued by the author of article,
the present the Delhi High Court restrained the
“THE COURT BEAUTIFULLY USED THE PHRASE ‘FIRST PAST THE POST’ TO CONCLUDE THAT PRIOR USE IN INTERNATIONAL MARKETS WOULD BE SUPERIOR TO FIRST USE IN INDIA.”
use of the corporate name Icrave by an Indian entity upon an action initiated by the US-based Design Studio engaged in the area of interior and architectural design, despite the US entity’s not having undertaken any project in India.
One of the major factors relied upon by the
plaintiff to claim transborder reputation in India was one of its prime lounges developed at JF Kennedy Airport in New York and the fact that millions of travellers including Indian citizens visit and appreciate the interior of the lounge. Te court also disbelieved an attempt by the defendant to claim ignorance about the plaintiff and presumed such knowledge to conclude the dishonesty of the defendant.
The way forward
In view of the continued development of the law on transborder reputation in India, it should be very comforting for the international business community to know that their prior adopted marks are more likely be protected against unlawful prior use in Indian markets by people who anticipated the launch of these foreign businesses in India. Indian courts have over the years caught up with robust principles of trademark law to protect the genuine owners and avoid any harassment by unscrupulous entities aiming to pass off their goods and businesses as those of the original owners.
Neeraj Grover is a partner and head of IP (litigation) at Kochhar & Co. He can be contacted at:
neeraj.grover@
kochhar.com
Neeraj Grover is an Indian lawyer and registered patent agent with more than 14 years of experience in IP law. Kochhar & Co has offices in all major cities of India including New Delhi, Mumbai, Chennai, Bangalore and Hyderabad.
World Intellectual Property Review September/October 2013 39
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173 |
Page 174 |
Page 175 |
Page 176 |
Page 177 |
Page 178 |
Page 179 |
Page 180 |
Page 181 |
Page 182 |
Page 183 |
Page 184 |
Page 185 |
Page 186 |
Page 187 |
Page 188 |
Page 189 |
Page 190 |
Page 191 |
Page 192 |
Page 193 |
Page 194 |
Page 195 |
Page 196