INDIA FOCUS: GLOBALISATION
THE GLOBALISATION QUESTION:
INTERNATIONAL TRADEMARK REPUTATION IN INDIA
A trademark may have protection in India even if the product is not sold there, if the owner is ‘fi rst in the world market’, as Anjali Valsangkar reports.
T e basic nature of trademark law is territorial. T e doctrine of protection of
transborder reputation for foreign trademarks is gaining
importance across jurisdictions due to the expansion of trade around the globe. In the era of globalisation, and with the availability of modern technological wonders as tools for promotion, IP and protecting goodwill and reputation have become very important. T is has modifi ed, to some extent, the basic nature of territoriality of trademark law, the focus now shiſt ing to ‘prior adopter of the mark in the world market’ from the earlier ‘prior user in the territorial market’.
T e courts in India have also adapted to
globalisation and have recognised the concept of transborder/spillover reputation in number of various signifi cant and landmark precedents. T e legislation has codifi ed the concept of
well-known trademarks in the Trademarks Act, 1999, to be in harmony with Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement.
Foreign marks in India
Many cases from High Courts in diff erent jurisdictions and also the Supreme Court of India have dealt with this issue. T e concept of transborder reputation was recognised in N.R. Dongre & Others v Whirlpool Corporation (1996). In this case, the plaintiff Whirlpool Corporation’s mark ‘Whirlpool’ was registered in India in 1977 but had not been renewed. T e plaintiff ’s mark had a worldwide reputation and defendant (Dongre) was using the same mark in respect of washing machines. T e plaintiff initiated the suit of passing off against the defendants.
42 World Intellectual Property Review September/October 2013
An injunction was granted by Delhi High Court and affi rmed by the Supreme Court. It was observed that “… a product and its trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or
extra-territorial reputation not
only through import of goods but also by its advertisement. T e knowledge and awareness of the goods of a foreign trader and its trademark can be available at a place where the goods are not being marketed and consequently not being used.”
It was further held that in today’s world it cannot be said that a product and the trademark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. T e knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confi nes of the geographical area in
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