Delhi HC: Global fame not a win on India's cricket ground for trademarks

Delhi HC restored the 'BLUE-JAY' trademark to an Indian firm, ruling that global fame doesn't grant rights in India. The court held that domestic goodwill is paramount, using a cricket-baseball analogy to stress local market presence.

Drawing a telling comparison between baseball and cricket, the Delhi High Court observed that a team celebrated in international baseball leagues cannot automatically claim a win on India's cricket ground unless it has actually played and built a following here. The Court held that trademark disputes in India must be decided on the basis of domestic goodwill, not on global popularity alone.

Global Fame vs. Domestic Goodwill

The observation came as a Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla allowed an appeal restoring the 'BLUE-JAY' trademark registered in favour of Indian apparel manufacturers, which had earlier been cancelled on the plea of Major League Baseball Properties Inc. Setting aside the Single Judge's order, the Bench cautioned against equating international fame with enforceable rights in India.

The Court likened global trademark reputation to runs scored overseas, noting that while impressive, it does not determine the outcome of a match played on Indian soil. What matters, the judges said, is whether the mark has actually acquired recognition and goodwill among Indian consumers.

Court's Interpretation of Trademark Law

The Court held that mere accessibility of foreign websites in India, international sports broadcasts, or online availability of overseas merchandise does not amount to "use" of a trademark in India under the Trade Marks Act. Without proof that Indian consumers associated the foreign mark with a particular source before the Indian mark was adopted, allegations of passing off or bad-faith adoption cannot succeed.

Rejecting claims of dishonest intent, the Bench observed that bad faith cannot be inferred by resemblance alone. Drawing another sporting analogy, the Court noted that suspicion without proof is akin to alleging unfair play without evidence; it cannot disqualify a player from the game.

The judges further noted that when the Indian 'BLUE-JAY' mark was applied for registration in 1998, the foreign entity did not hold any subsisting trademark registration in India, nor could its mark qualify as an "earlier trademark" under Indian law. In effect, the foreign claimant had not yet "entered the Indian innings."

Ruling on Trans-Border Reputation

Reiterating settled law on trans-border reputation, the Delhi High Court clarified that while Indian courts do recognise spill-over goodwill, such reputation must be shown to have crossed borders and taken root in India. "Fame in baseball-playing countries does not automatically translate into brand recall in a cricket-loving nation," the Court noted in substance.

Allowing the appeal, the Bench restored the 'BLUE-JAY' trademark, underscoring that in trademark law, much like in sport, victory depends not on global stature, but on performance where the match is actually played. (ANI)

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