Evidentiary Requirements For Establishing Trans-border Reputation Of Trademarks

Author: Pranay Bali

Introduction

In India, trademarks are protected both under statutory law and common law. Even in the absence of a trademark registration, a trademark can be protected against similar marks if the reputation and goodwill vesting in it (owing to its use) result in consumers and public associating it exclusively with the proprietor. This is a well-established principle of trademark law and has evolved over the years to enable protection of trademarks which have acquired a reputation in the domestic market through their use in other jurisdictions. Such reputation, which has spilled over to a territory where the mark is not being commercially used, is called “trans-border reputation”. In the present digital age, the world is more connected than ever, and information flows freely from one country to the other. This means that recognition and reputation of a trademark is no longer restricted to its place of origin and commercial use. Accordingly, trans-border reputation is becoming an increasingly important aspect of trademark law. 

In any trademark dispute, while determining whether a trademark has acquired trans-border reputation in India, the courts primarily take into consideration the nature and extent of evidence submitted in support of it. This article explores and discusses the types of evidence taken into consideration by the courts for establishing trans-border reputation in India.

Early judicial decisions

In one of the earliest Indian judgments dealing comprehensively with trans-border reputation of trademarks – William Grant & Sons Ltd. v. Mcdowell & Company Ltd., [55 (1994) DLT 80], a Single Judge Bench (Mahinder Narain, J.) of the High Court of Delhi (“Delhi High Court”), while determining whether the plaintiff’s GLENFIDDICH whiskey had acquired trans-border reputation in India, considered evidence of sale through duty-free shops, advertisement in magazines and references in books to be sufficient and observed that, “Trans-border reputation of the plaintiff, has been…established sufficiently in this country by means of the fact that the sales of Glenfiddich takes place on duty free shops in India, by the fact that advertise-ment of Glenfiddich whisky are to be found in various magazines, like the In house magazine of Air India, and other foreign publications which are freely available in india, (some of which have been placed on record of this case), as a result of which, in my view, Glenfiddich whisky has a live reputation in India.

…not only Glenfiddich is carrying on business internationally, even books like Michael Jackson’s “Malt Whisky Companion”, regard it as the biggest selling Single MaltWhisky in the world. Another Book: “The Scotch Whisky Book” by Mark Skipworth, referred to by the defendant, at page 39, refers to Glenfiddich Whisky by saying “GLENFIDDICH is the world’s biggest selling Single Malt Whisky”.”

While the Delhi High Court did not lay down the evidentiary standards to be met for establishing trans-border reputation, its reliance on specific types of evidence acted as a useful guide.

The similar type of evidence was again considered sufficient by the Delhi High Court in Alfred Dunhill Limited v. Kartar Singh Makkar & Ors., [1999 PTC (19) 294 (Del)], wherein a Single Judge Bench (M.S.A Siddiqui, J.) ruled that mark DUNHILL has acquired sufficient trans-border reputation and observed that, “Transborder reputation of the trade mark and trade name DUNHILL has been… established in this country by means of the fact that plaintiff products are available on duty free shops in India, by the fact that advertisement of plaintiff’s goods under the trademark and trade name ‘DUNHILL’ are to be found in various magazines like the Newsweek, Time and the Asia Magazine, which are freely available in India. In this view of the matter, it can safely be inferred that plaintiff’s trademark and trade name DUNHILL has a live reputation in this country.”

Notably, in N.R. Dongre and others v. Whirlpool Corporation and Anr., [1996 AIR SCW 3514] a Division Bench (J. S. Verma and K. Venkataswami, JJ.) of the Supreme Court of India (“Supreme Court”) affirmed the Delhi High Court’s ruling with respect to trans-border reputation, that it is not necessary that the association of the plaintiff’s marks with his goods should be known all over the country or to every person in the area where it is known best. Accordingly, the trans-border reputation among the public need not be ubiquitous.

Evidentiary threshold for prima facie determination of trans-border reputation

The evidentiary threshold for establishing prima facie trans-border reputation for obtaining an interim injunction was elaborated upon by the Delhi High Court in Mac Personal Care Pvt. Ltd. and Ors. v. Laverana Gmbh & Co. KG. and Ors.,[2016 (65) PTC 357 (Del)]. A Division Bench (Pradeep Nandrajog and Mukta Gupta , JJ.) of the Delhi High Court held that in order to prove that a trademark has acquired trans-border reputation, it must be shown that – (i) there is international reputation inuring in the trademark in favour of the plaintiff on account of use made overseas; and (ii) that the reputation spills over to India. The court further stated that for a prima facie satisfaction of the first condition, anything done at a commercial level should suffice unless it can be called de minimis or trivial. The factors to be considered for a prima facie determination of trans-border reputation were then laid down by the court as follows:

“…the trademark is registered in favour of the plaintiff in a jurisdiction abroad…as against a single registration, registrations in multiple jurisdictions create an even stronger presumption that reputation inures in favour of the trademark.

If international magazines, journals and publications including books have referred to the trademark, then such publications, depending upon their renown can be taken as valuable of reputation, even if they are few.

Volume of sales is also valuable evidence of reputation to form a prima-facie opinion.

This is not an exhaustive enumeration of the factors which a Court can take into account, but are a few factors which are certainly relevant as showing the probability of the reputation existing internationally and thereby guiding the Court in forming a prima facie view.”

The Prius judgment

The Supreme Court comprehensively dealt with issues related to trans-border reputation in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., [AIR 2018 SC 167]. Toyota had obtained an injunction at the High Court, based on the trans-border reputation of its mark PRIUS in India. In the appeal, the Supreme Court had to determine if the mark PRIUS had acquired a trans-border reputation in India at the relevant time, viz. year 2001. A Division Bench (Ranjan Gogoi and Navin Sinha, JJ.) of the Supreme Court held that Toyota failed to establish reputation/goodwill of its mark PRIUS in India and in respect of which it observed that, “…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 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 27.03.1997 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.” (emphasis supplied).

This is an important ruling on the requirements for establishing trans-border reputation as it also highlights the importance of evaluating the evidence in the context of the relevant time at which the reputation has been claimed to have been acquired. Since Toyota’s evidence was primarily based on online materials, the Supreme Court did not consider it to be sufficient owing to limited accessibility of the internet in India in the year 2001. Isolated references in Indian publications prior to the year 2001 were also held to be insufficient.

Conclusion

From an analysis of the cases discussed above, it can be seen that the concept of trans-border reputation has evolved considerably in India. Courts have, to a great degree, clarified the nature and extent of evidence required to establish the trans-border reputation of a trademark in India. Advertisements, mentions and references in publications circulated or accessible in India; figures of international sales and advertising expenditure; online presence of the trademark and the goods or services provided thereunder; trademark registrations across various jurisdictions, etc. have all been held to be useful types of evidence for establishing trans-border reputation in India.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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