Madras High Court Clarifies Trademark Law: International Reputation Alone Insufficient for Rights in India
The Madras High Court has delivered a significant ruling, emphasizing that international reputation by itself is inadequate to claim goodwill and rights over a trademark under Indian law. This decision came as the court upheld a trademark registrar's order that rejected a claim by 7-Eleven International LLP for the trademark "Big Bite" used for chocolates, biscuits, and confectionery.
Court Upholds Trademark Registrar's Decision in Favor of Ravi Foods
Justice N Anand Venkatesh confirmed the order passed by the trademark registrar, which allocated the "Big Bite" mark to Hyderabad-based Ravi Foods Pvt Ltd. The court noted that Ravi Foods has been using the mark in India since 2004, establishing a strong presence in the market. In contrast, 7-Eleven claimed international use of the mark since 1988 but failed to demonstrate any sales or use in India during critical periods.
The court pointed out that 7-Eleven did not sell its products in India from 1994, when it first applied for trademark registration, or in 2007, when opposition proceedings began before the registrar. This lack of local activity was a key factor in the decision, as the registrar's order stated that 7-Eleven could not produce any material evidence showing the use of their mark in India.
Supreme Court Precedent and Goodwill Requirements
Referencing the Supreme Court's decision in the Toyota Jidosha Kabushiki Kaisha case, the Madras High Court explained that 7-Eleven did not acquire sufficient goodwill in India to warrant protection under trademark law. The court emphasized that mere international reputation does not translate into local goodwill without actual business operations and sales within the country.
On the other hand, Ravi Foods Pvt Ltd demonstrated actual sales and widespread distribution of their products under the "Big Bite" mark across India for a considerable period. This evidence of sustained use and market penetration allowed them to generate the necessary goodwill and reputation, entitling them to protection under the law of passing off.
Legal Interpretation of Trademark Use and Intent
The court also addressed Section 18 of the Trademarks Act, which permits registration of a mark that is used or proposed to be used. However, it clarified that an applicant must show a definite and present intention to use the mark as of the application date. This requirement underscores the importance of tangible plans and actions, rather than speculative or international claims, in securing trademark rights in India.
The issue originated from orders passed by a deputy registrar of trademarks on July 18, 2014, which rejected 7-Eleven's application for the "Big Bite" mark and accepted Ravi Foods' application for the same mark. Dissatisfied with this outcome, 7-Eleven filed an appeal challenging the orders, leading to the recent high court ruling that reinforces the principles of local goodwill and actual use in trademark disputes.
