Office Location

Delhi:

E-5, 2nd Floor, Defence Colony
New Delhi - 110024
Tel : 011-24336744

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Mumbai:

Office No. 1410, 14th Floor, Maker Chamber V, Nariman Point, Mumbai
Tel : +91 22-22873499

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Gurgaon:

Level 18, One Horizon Center, Golf Course Road, DLF Phase 5, Sector 43, Gurgaon 122002, India
Tel : +91 124 668 8146 / +91 124 668 8147

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Mumbai (Entertainment and Media Practice)

Office No. 213, 2nd Floor, A-wing, Crystal Plaza, Andheri Link Road, Andheri (W), Mumbai.
Tel : 022-62360762

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Mumbai (Corporate and Transactional Practice)

909/A, Capital Building, Bandra Kurla Complex, East Mumbai- 400098

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Bangalore:

21/2, 1st Main Road,
Opp Indian overseas Bank,
Gandhinagar,
Bengaluru - 560009

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Kanpur:

77A, Cantt., Kanpur - 208004

Trans-border Reputation of Trademark

A Trademark is a representation attached to goods for the purpose of indicating the trade origin of those goods. Trademarks are associated with brand identity, the purpose of which is to establish a link between the particular products or services and the company in the minds of the members of trade and public.

Reputation of a trade mark is an important factor in case of a passing off action. Reputation is the knowledge and awareness among the public about a product of particular trade source or trade mark. It is the means by which a trade mark is recognized.

Traditionally, reputation of a trade mark used to exist within territory of the concerned country which makes it hard to control infringement of trademarks on an international scale and puts the carefully and hard gained reputation of organizations at stake and the threat of infringement always looms large. Considering all this, the Indian Courts have taken due cognizance of the fact that in this age of global trade no organization must be allowed to unfairly benefit from the duly earned reputation of another organization, which might not have ventured into the domestic trade of a country, but possesses substantial international repute.

Therefore with the opening of the economy and expansion of the concept of globalisation the Indian law and Indian courts have recognised action by foreign plaintiff on the basis of reputation of his goods or services on the foreign soil and have departed from the traditional concept of requirement of use of the trade mark or registration in India for the success in the Passing Off action.

The essence of concept is enshrined in Section 35 of the Indian Trade Mark Act, 1999 which restrains a person from using a name which is likely to cause confusion and divert the business of someone else to him or likely to cause confusion in the mind of the person likely to deal with such competing business. It is well settled principle that no company or person or business is allowed to carry on business in any manner so as to generate a belief in the minds of the public that is connected with the business of a reputed company.

The growth and development in international market makes it important that trans-border reputation of a trade mark is properly recognised and protected in different countries. The Indian courts have given due importance and protection to trans-border reputation of a trade mark.

In Kamal Trading Company, Bombay v. Gillette U.K. Limited Middle Sex, England, the hon’ble Bombay High court held that

“…It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other Medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation”

It is always suggested that the foreign traders should get their marks registered in as many countries as possible in order to avoid any kind of a conflict. The present scenario in India is that recognition and protection is extended to unregistered and foreign trade marks on the basis of their trans-border reputation.

The Delhi High Court, in its judgment in Prius Auto Industries ltd. & odrs versus Toyots Jidosha Kabushiki , inter alia considered the aspect of trans-border reputation in fairly well-detailed terms and the judgement was as follows:

Trademark protects the goodwill of a firm. Trademark law prevents one firm from trading on another firm’s reputation. The Court observed that “Concerning trans-border reputation, the judgments were to the effect that if the product is not sold in India but information relatable thereto is available in the print media and especially magazines purchased by consumers having an interest in the particular category of goods, it would be good evidence of trans-border reputation having entered in the municipal jurisdiction of India. Post-internet era the law of trans-border reputation expanded because the internet virtually broke down the domestic walls in areas of trade and business. On the internet, through search engines one can access information put on the website, be it by the manufacturer of the goods or in e-journals and e-magazines.”

Thus, it can be most conclusively said that the doctrine of Trans border reputation has been duly recognized by the Indian courts and international corporations upon establishment of the fact that the Indian consumer base has been sufficiently acquainted of the reputation it and is aware of the brand value. However, there is still a need for establishing clear cut principles for a crystallized conception of the doctrine by the Courts. The recognition at least gives hopes to international corporations to be saved from trademark infringement and also protects the Indian consumers from being duped by similar and inferior trademarks.