2026:MHC:542(T)CMA(TM) Nos.110 & 157 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Reserved on

22.1.2026

Delivered on:

11.2.2026

CORAM:

THE HON’BLE MR. JUSTICE N. ANAND VENKATESH

(T) CMA (TM) Nos.110 & 157 of 2023

7 – Eleven International LLC

(a Delware Limited Liability

Company), USA, having address

for service in India

Archer & Angel, #5B, 5

th

Floor,

Commercial Towers,

Hotel JW Marriott, Aerocity,

New Delhi-110037.

(Substituted as per order dated

22.1.2024 in CMP(TM) No.18 of

2023 in (T)CMA(TM) No.110 of 2023

& CMP(TM) No.16 of 2023 in

(T)CMA(TM) No.157 of 2023

Respectively by NSSJ) ...Appellant in

both appeals

Vs

1.The Deputy Registrar of Trade Marks,

Trade Marks Registry, Intellectual

Property Building, GST Road,

Guindy, Chennai-32.

2.The Registrar of Trade Marks,

Trade Marks Registry, Intellectual

Property Building, GST Road,

Guindy, Chennai-32.

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(T)CMA(TM) Nos.110 & 157 of 2023

3.Ravi Foods Private Limited,

7-4-112/1, Madhuban Colony Road,

Kattedan, Hyderabad-500077.

(R3 substituted vide order of court

dated 31.7.2025 made in CMP(TM).Nos.

1 & 2 of 2025 respectively in both

(T)CMA(TM) Nos.110 & 157 of 2023

by SKRJ) ...Respondents in

both appeals

APPEALS under Section 91 of the Trade Marks Act, 1999 praying

that

(T)CMA(TM) No.110 of 2023:

(i) the impugned order dated 18.7.2014 passed by the Deputy

Registrar of Trade Marks in respect of Opposition No.MAS – 211161 to

Application No.1297871 in Class 30 be set aside;

(ii) the Trade Mark Application under No.1297871 in Class 30 in

the name of respondent No.3 be rejected;

(iii) the Opposition filed by the appellant under No.MAS –

211161 to Application No.1297871 in Class 30 be allowed; and

(iv) respondent No.3 to pay costs of and incidental to these

appeals; and

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(T)CMA(TM) Nos.110 & 157 of 2023

(T)CMA(TM) No.157 of 2023:

(i) The judgment and order passed by the Deputy Registrar of

Trade Marks dated 18.7.2014 in respondent No.3’s Opposition No.MAS

- 720132 against the appellant’s Application No.636986 in Class 03 be

set aside;

(ii) the said Application No.636986 in Class 30 be allowed and

Opposition No.MAS - 720132 be refused and/or dismissed;

(iii) respondent Nos.1 and 2 to transmit and certify to the

Tribunal the entire records of the proceedings including all exhibits

thereto before them in the matter of Application No.636986 in Class

30 and the opposition there to being Opposition No.MAS – 720132;

and

(iv) respondent No.3 to pay the costs of and incidentals to this

appeal to the appellant.

For Appellant in

both appeals : Mr.K.Harishankar for

M/s.Archer & Angel

For R1 & R2 in

(T)CMA(TM) No.110

of 2023 : Mr.S.Diwakar, SPC

For R1 & R2 in

(T)CMA(TM) No.157

of 2023 : Mr.K.Subbu Ranga Bharathi, CGSC

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(T)CMA(TM) Nos.110 & 157 of 2023

For R3 in

both the appeals : Ms.Aanchal M.Nichani

COMMON JUDGMENT

These appeals, filed under Section 91 of the Trademarks Act,

1999 (for short, the Act), are directed against a common order dated

18.7.2014 passed by the Deputy Registrar of Trademarks in (i)

Trademark Opposition No.MAS - 211161 to Application No.1297871 in

Class 30 and (ii) Trademark Opposition No.MAS - 720132 to

Application No.636986 in Class 30, respectively.

2. Vide the impugned order, Application No.636986 filed by the

appellant seeking registration of their mark “Big Bite” in Class 30 has

been rejected on the basis of the opposition lodged by the 3

rd

respondent and Application No.1297871 filed by the 3

rd

respondent in

seeking registration of their mark “Big Bite” in Class 30 has been

accepted thereby rejecting the opposition lodged by the appellant

herein.

3. The case of the appellant is as follows:

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(i) The appellant operates convenience store chain, owning/

operating/franchising nearly 80,000 stores in 22 countries around the

world under the 7 – Eleven mark and brand. The appellant also has a

store chain in India. The appellant intended to make use of their “Big

Bite” trademark with respect to savoury food items and more

specifically hot dogs, pizzas and potato chips.

(ii) The appellant claims that the “Big Bite” formative mark has

been continuously used by them since August 1988 in respect of their

goods and services and hence, the appellant is the original, genuine

and bona fide adopter of “Big Bite” formative marks for more than

three decades. In order to statutorily protect their rights, the appellant

along with their affiliated/related companies, secured registration of

“Big Bite” marks in numerous jurisdiction across the world in

numerous classes namely Classes 29, 30 and 43.

(iii) By virtue of continuous and extensive use and promotion,

which includes various global registrations, the appellant earned a

reputation for the “Big Bite” mark, which transcends geographical

boundaries including India. The appellant also submitted their earliest

trademark application for the mark “Big Bite” on 16.8.1994 under No.

636986 in Class 30. The mark was advertised for registration under

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the Proviso to Section 20(1) of the Act in the trade marks journal

dated 16.9.2007.

(iv) On 18.2.2008, the original third respondent - one M/s.Dukes

Consumer Care Limited gave opposition and notice objecting to the

registration of the mark. The appellant filed their counter statement

for the opposition.

(v) The said M/s.Dukes Consumer Care Limited had, on

19.7.2004, submitted Application No.1297871 in Class 30 for the trade

mark “Big Bite” in respect of chocolates, biscuits, bread, pastry,

confectionery, ice creams, spices and all goods included in Class 30.

The mark was advertised on 15.5.2005 and the appellant submitted

their objections to the registration of the trade mark. A counter

statement was filed for the opposition made by the appellant.

(vi) The said M/s.Dukes Consumer Care Limited was

rechristened on 09.8.2023 as one M/s.SWG Consumer Care Limited,

which, later assigned the mark to one M/s.Ravi Foods Private Limited

with effect from 21.1.2025. Accordingly, the said M/s.Ravi Foods

Private Limited was substituted as the third respondent in these

appeals and subsequentlh, the cause title was amended in the appeals.

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(vii) The first respondent, by the impugned order dated

18.7.2014, refused the application filed by the appellant on the basis

of the opposition made by the third respondent and instead, allowed

the application submitted by the third respondent by rejecting the

opposition made by the appellant. These appeals are directed against

the aforesaid common order.

4. The learned counsel appearing on behalf of the appellant

submitted as follows:

(a) The first respondent passed the impugned order solely on the

basis of the judgment of the Hon’ble Supreme Court in Milmet Oftho

Industries Vs. Allergan Inc. [reported in 2004 (12) SCC 624].

The said judgment does not, in any way, support the reasoning given

by the first respondent to the effect that only the prior user in India

would be considered favourably for the grant of the trademark. But,

the first respondent failed to consider the fact that the appellant had

adopted the mark “Big Bite” even in 1988 itself and had the prior

international adoption and use of the “Big Bite” marks as well as prior

Indian application for the said mark.

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(b) The third respondent adopted the very same mark only from

the year 2004 and such adoption of an identical mark was done with a

mala fide intention to siphon off the international reputation and

goodwill of the appellant’s “Big Bite” marks. The registration of the

mark was sought for by the third respondent with respect to allied

goods in the food industry, which is also the industry of operation of

the appellant with the well-known international “ Big Bite” marks.

Hence, if the third respondent is permitted to use the identical mark, it

is bound to cause confusion in the minds of the consumers including a

likelihood of association with the appellant’s “Big Bite” brand.

(c) The first respondent committed a fundamental mistake while

passing the impugned order by assuming that the prior user test had

to be applied only with respect to the usage in India and that the

international usage could not be taken into consideration.

(d) In order to substantiate his submissions, he relied upon the

following judgments:

(1) of the Hon’ble Supreme Court in

S.Syed Mohideen Vs. P.Sulochana Bai

[reported in 2016 (2) SCC 683];

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(2) of the Hon’ble Supreme Court in

N.R.Dongre Vs. Whirlpool Corporation

[reported in 1996 (5) SCC 714];

(3) of the Hon’ble Supreme Court in

Milmet Oftho Industries;

(4) of a learned Single Judge of the Delhi

High Court in Jolen Inc. Vs. Doctor &

Company [reported in ILR (2002) I Delhi

550];

(5) of another learned Single Judge of

the Delhi High Court in Cadbury UK Limited

Vs. Lotte India Corporation Ltd. [reported

in 2014 SCC OnLine Delhi 367];

(6) of a Division Bench of the Delhi High

Court in Dalip Chand Aggarwal Vs. M/s.

Escorts Ltd. [reported in 1980 SCC OnLine

Delhi 342];

(7) of a learned Single Judge of the

Bombay High Court in Drums Food

International Pvt. Ltd. Vs. Euro Ice Cream

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[reported in 2011 (5) Mh.L.J. 166 : 2011

SCC OnLine Bombay 817];

(8) of one more learned Single Judge of

the Delhi High Court in Tata Sons Ltd. Vs.

Manoj Dodia [reported in 2011 SCC

OnLine Delhi 1520];

(9) of another learned Single Judge of

the Delhi High Court in Kia Wang Vs.

Registrar of Trademarks [reported in

2023 SCC OnLine Delhi 5844];

(10) of a learned Single Judge of the

Delhi High Court in Suzuki Motor Vs. Suzuki

(India) Ltd. [reported in 2019 SCC OnLine

Delhi 9241];

(11) of another learned Single Judge of

the Delhi High Court in Somany Ceramics

Ltd. Vs. Shri Ganesh Electric Co. [reported

in 2022 SCC OnLine Delhi 3270]; and

(12) of another Division Bench of the

Delhi High Court in Raman Kwatra Vs. KEI

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Industries Ltd. [reported in 2023 SCC

OnLine Delhi 38].

5. On the other hand, the learned counsel appearing for the third

respondent submitted as follows:

(a) The original third respondent - the said M/s.Dukes Consumer

Care Limited has been using the trade mark “ Big Bite” since

05.10.2004 continuously, openly and extensively for their products.

The appellant, at no point of time, used this mark in India and was

proposing to get into the Indian market. While considering the

applications submitted by both sides, the territoriality principle would

apply and the Authority has rightly taken into consideration the fact

that the third respondent was the prior user of the trade mark, that at

no point of time, the appellant had used this trade mark in India and

that the appellant was only proposing to use the trade mark.

(b) Therefore, the mere fact that this trade mark is available in

the website of the appellant, by itself, would not result in the appellant

establishing the actual usage of the impugned mark in India in trade

and commerce and the appellant has not gained any substantial

goodwill and reputation within the Indian market. The first respondent

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took into consideration this vital fact in line with the provisions of the

Act, considered the effect of the judgment of the Hon’ble Supreme

Court in Milmet Oftho Industries and rightly accepted the

application filed by the third respondent and rejected the application

filed by the appellant. There is absolutely no ground to interfere with

the impugned common order.

(c) In order to substantiate her submissions, the learned counsel

appearing for the third respondent relied upon the following decisions:

(1) of the Hon’ble Supreme Court in

Milmet Oftho Industries;

(2) of the Hon’ble Supreme Court in

S.Syed Mohideen;

(3) of the Hon’ble Supreme Court in Neo

Laboratories Ltd. Vs. Medical Technologies

Ltd. [reported in 2016 (2) SCC 672];

(4) of a Division Bench of the Delhi High

Court in Intex Technologies (India) Ltd.

Vs. AZ Tech (India) [reported in 2017 DHC

1450 – DB : MANU/DE/0625/2017];

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(5) of the Hon’ble Supreme Court in

Toyota Jidosha Kabushiki Kaisha Vs. Prius

Auto Industries Ltd. [reported in 2018 (2)

SCC 1];

(6) of a learned Single Judge of the Delhi

High Court in Keller Williams Realty Inc. Vs.

Dingle Buildcons Pvt. Ltd. [reported in

MANU/DE/0951/2020];

(7) of another Division Bench of the Delhi

High Court in Bolt Technology OU Vs. Ujoy

Technology Pvt. Ltd. [reported in 2023

DHC 8509-DB : MANU/DE/7956/2023];

(8) of a Division Bench of the Delhi High

Court in Arvi Lights Vs. Big Deeper

Industries LLP [reported in MANU/DEOR/

132322/2024];

(9) of a Division Bench of the Delhi High

Court in VIP Industries Ltd. Vs. Carlton

Shoes Ltd. [FAO(OS) (COMM) Nos.151 &

152 of 2023 dated 01.7.2025]; and

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(10) of a Division Bench of the Delhi High

Court in Sumit Vijay Vs. Major League

Baseball Properties Inc. [reported in

MANU/DE/0021/2026].”

6. This Court has carefully considered the submissions of the

learned counsel on either side and perused the materials available on

record and more particularly the impugned order.

7. The main thrust of arguments on the side of the appellant is

as follows :

The appellant has been using the mark “Big Bite” internationally

since 1988 and has filed an application for registration way back in

1994. While considering the application, which was opposed by the

third respondent, the first respondent completely lost sight of the

scope of Section 11 of the Act and was swayed by the judgment of the

Hon’ble Supreme Court in Milmet Oftho Industries. The appellant

has built a reputation at an international level with respect to the “Big

Bite” marks and they are clearly international prior users. This mark is

known across India since it is exhibited in the website of the appellant

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and therefore, the first respondent ought to have given preference to

the claim made by the appellant over the mark “Big Bite”.

8. On the contrary, the stand taken by the third respondent is as

follows:

The international reputation of the appellant is immaterial and

the appellant ought to have proved that they are the prior users of the

mark “Big Bite” in India. In the absence of the same, they cannot

prevent the third respondent from getting the registration of the trade

mark since, admittedly, the third respondent (previously M/s.Dukes

Consumer Care Limited) was using the mark from 2004. The mere

launch of a website and promotion of the impugned mark by the

appellant, by itself, will not tantamount to the appellant being

considered as a prior user of the trade mark in India. The appellant,

which had no intention of coming to India or introducing their product

in India, should not be allowed to throttle an Indian company to sell

their products in the market chosen by it on the ground that they are

used for a substantial period since 2004 and that the appellant has

earned reputation.

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9. Before entering into the merits of the controversy, it is

necessary to first notice the scope of the appellate powers of this

Court in an appeal against an order of the Registrar.

10. Section 91(1) of the Act, as it originally stood, was as

follows:

“(1) Any person aggrieved by an order or

decision of the Registrar under this Act, or the rules

made thereunder may prefer an appeal to the

Appellate Board within three months from the date

on which the order or decision sought to be

appealed against is communicated to such person

preferring the appeal.”

11. The Act was extensively amended by the Tribunals Reforms

Act, 2021, which abolished the Intellectual Property Appellate Board

and substituted the High Court as the Appellate Body under the Act.

Thus, the appeals from an order of the Registrar of Trade Marks now

lie to the High Court. It is also important to note that the Tribunals

Reforms Act, 2021 omitted Section 92 of the Act, which dealt with the

procedure and powers of the Appellate Board.

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12. Pursuant to the aforesaid amendment and in exercise of

powers under Clauses 37 & 38 of the Letters Patent and Section 129 of

the Code of Civil Procedure, 1908, the Madras High Court has framed

the Madras High Court Intellectual Property Division Rules, 2022.

13. Rule 7 sets out the procedure for appeals and Sub-Rule (9)

reads as follows:

“The Provisions of Order XLI Code of Civil

Procedure Code, 1908, Limitation Act, 1963, the

Madras High Court Appellate Side Rules, Civil Rules

of Practice and Circular Order and the practice

notes/directions issued by the High Court from time

to time, as far they are not inconsistent to these

rules, shall apply to appeals filed under these

Rules.”

14. It is, therefore, clear that the Commercial Division, while

hearing an appeal from an order of the Registrar, is required to follow

the procedure set out in Order XLI of the Code for appeals against

original decree, which, in this Court, is numbered as an Appeal Suit

(A.S). However, Schedule I of the Madras High Court Intellectual

Property Division Rules prescribe the nomenclature of CMA (TM) IPD.

Civil Miscellaneous Appeals under the Code are governed by Section

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104 and Order XLIII whereas an appeal against an original decree is

governed by Section 96 & Order XLI. The order of the Registrar does

not amount to a “decree” in any sense of the term. Be that as it may.

15. Turning to the scope of such appeals, it is necessary to bear

in mind that in this case, an appeal under Section 91, unlike an appeal

under Order XLIII, emanates from a final order of the Registrar.

Consequently, considerations, which may properly be applied while

testing discretionary orders passed by the trial courts, must not be

mechanically imported into Section 91 under the garb of Order XLI.

Order XLI merely prescribes the procedure, by which, an appeal is to

be heard and has nothing to do with the scope of appellate jurisdiction,

which is an entirely different matter altogether.

16. The proper approach to appeals of this kind has been

explained in an instructive decision of the Court of Appeal, United

Kingdom in Procter & Gamble Limited’s Trade Mark Application

[reported in 1999 RPC 673] wherein it was held thus:

“The judge recognized that he was not

bound by the findings of the hearing officer, but

said that he would be slow to differ from the

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hearing officer on a question which was largely one

of impression and on which the hearing officer

would be likely to have far wider experience. Mr

Morcom [counsel for the appellants] has directed

some mild criticism at that approach but I see no

force in the criticism. The judge was right to pay

respect to the view of the hearing officer,

nevertheless he had to form his own view and he

did so, though he reached the same conclusion as

the hearing officer”.

17. In the decision of the House of Lords in Yorkshire Copper

Works Limited, TM Application [reported in (1954) 71 RPC

150], Lord Simmonds said as follows:

“And if it were a border-line case, which it is

not, I think that a Court, to which an appeal is

brought from the Registrar, though, no doubt, it

would exercise its own discretion in the matter,

should be slow to differ from the experienced

official whose constant duty it is to protect the

interests of the public not only of today but of

tomorrow and the day after.”

18. In the considered view of this Court, the proper approach is

that the Appellate Court, while reassessing the material before the

Registrar, would be entitled to form its own view of the matter.

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However, in doing so, the Court would be slow to interfere with the

findings and conclusions of the Registrar, who is an expert body under

the Act, unless it is demonstrated that the view taken is perverse or is

one, which could not be arrived at on the evidence before it.

19. Turning to the issues raised in these appeals, it is first

necessary to set out the relevant provisions of the Trade Marks Act,

1999. The expression “mark” has been defined in Section 2(1)(m) as

under:

“mark includes a device, brand, heading,

label, ticket, name, signature, word, letter,

numeral, shape of goods, packaging or combination

of colours or any combination thereof;”

20. Section 2(1)(zb) defines a trademark to mean as under:

“trade mark means a mark capable of being

represented graphically and which is capable of

distinguishing the goods or services of one person

from those of others and may include shape of

goods, their packaging and combination of colours;

and—

(i) in relation to Chapter XII (other than

section 107), a registered trade mark or a mark

used in relation to goods or services for the

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purpose of indicating or so as to indicate a

connection in the course of trade between the

goods or services, as the case may be, and some

person having the right as proprietor to use the

mark; and

(ii) in relation to other provisions of this Act,

a mark used or proposed to be used in relation to

goods or services for the purpose of indicating or

so as to indicate a connection in the course of trade

between the goods or services, as the case may

be, and some person having the right, either as

proprietor or by way of permitted user, to use the

mark whether with or without any indication of the

identity of that person, and includes a certification

trade mark or collective mark;”

21. Registration of a trademark can be refused if it falls within

any of the grounds contained in Section 9 (absolute grounds) or

Section 11 (relative grounds). Section 9 permits refusal on the ground

of lack of distinctiveness etc. Further discussion on this aspect may not

be necessary as this Court is not concerned with the application of this

provision in this case. Section 11, on the other hand, provides for

relative grounds ie., on the ground of conflict with other trademarks/

marks.

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22. Section 11 of the Act reads as follows:

“11. Relative grounds for refusal of

registration:

(1) Save as provided in Section 12, a trade

mark shall not be registered if, because of -

(a) its identity with an earlier trade mark

and similarity of goods or services covered by the

trade mark; or

(b) its similarity to an earlier trade mark and

the identity or similarity of the goods or services

covered by the trade mark,

there exists a likelihood of confusion on the part of

the public, which includes the likelihood of

association with the earlier trade mark.

(2) A trade mark which -

(a) is identical with or similar to an earlier

trade mark; and

(b) is to be registered for goods or services

which are not similar to those for which the earlier

trade mark is registered in the name of a different

proprietor,

shall not be registered if or to the extent, the

earlier trade mark is a well-known trade mark in

India and the use of the later mark without due

cause would take unfair advantage of or be

detrimental to the distinctive character or repute of

the earlier trade mark.

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(3) A trade mark shall not be registered if, or

to the extent that, its use in India is liable to be

prevented -

(a) by virtue of any law in particular the law

of passing off protecting an unregistered trade

mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) Nothing in this Section shall prevent the

registration of a trade mark where the proprietor of

the earlier trade mark or other earlier right

consents to the registration, and in such case the

Registrar may register the mark under special

circumstances under Section 12.

Explanation: For the purposes of this

Section, earlier trade mark means -

(a) a registered trade mark or an application

under Section 18 bearing the earlier date of filing

or an international registration referred to in

Section 36E or convention application referred to in

Section 154 which has a date of application earlier

than that of the trade mark in question, taking

account, where appropriate, of the priorities

claimed in respect of the trade marks;

(b) a trade mark which, on the date of the

application for registration of the trade mark in

question, or where appropriate, of the priority

claimed in respect of the application, was entitled

to protection as a well-known trade mark.

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(5) A trade mark shall not be refused

registration on the grounds specified in Sub-

Sections (2) and (3), unless objection on any one

or more of those grounds is raised in opposition

proceedings by the proprietor of the earlier trade

mark.

(6) The Registrar shall, while determining

whether a trade mark is a well-known trade mark,

take into account any fact which he considers

relevant for determining a trade mark as a well-

known trade mark including -

(i) the knowledge or recognition of that trade

mark in the relevant section of the public including

knowledge in India obtained as a result of

promotion of the trade mark;

(ii) the duration, extent and geographical

area of any use of that trade mark;

(iii) the duration, extent and geographical

area of any promotion of the trade mark, including

advertising or publicity and presentation, at fairs or

exhibition of the goods or services to which the

trade mark applies;

(iv) the duration and geographical area of

any registration of or any publication for

registration of that trade mark under this Act to the

extent they reflect the use or recognition of the

trade mark;

(v) the record of successful enforcement of

the rights in that trade mark, in particular, the

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extent to which the trade mark has been

recognised as a well-known trade mark by any

court or Registrar under that record.

(7) The Registrar shall, while determining as

to whether a trade mark is known or recognised in

a relevant section of the public for the purposes of

Sub-Section (6), take into account -

(i) the number of actual or potential

consumers of the goods or services;

(ii) the number of persons involved in the

channels of distribution of the goods or services;

(iii) the business circles dealing with the

goods or services,

to which that trade mark applies.

(8) Where a trade mark has been

determined to be well-known in at least one

relevant section of the public in India by any court

or Registrar, the Registrar shall consider that trade

mark as a well-known trade mark for registration

under this Act.

(9) The Registrar shall not require as a

condition, for determining whether a trade mark is

a well-known trade mark, any of the following,

namely: -

(i) that the trade mark has been used in

India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of

the trade mark has been filed in India;

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(iv) that the trade mark -

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for

registration has been filed in, any jurisdiction other

than India; or

(v) that the trade mark is well-known to the

public at large in India.

(10) While considering an application for

registration of a trade mark and opposition filed in

respect thereof, the Registrar shall -

(i) protect a well-known trade mark against

the identical or similar trade marks;

(ii) take into consideration the bad faith

involved either of the applicant or the opponent

affecting the right relating to the trade mark.

(11) Where a trade mark has been

registered in good faith disclosing the material

informations to the Registrar or where right to a

trade mark has been acquired through use in goods

faith before the commencement of this Act, then,

nothing in this Act shall prejudice the validity of the

registration of that trade mark or right to use that

trade mark on the ground that such trade mark is

identical with or similar to a well known trade

mark.”

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23. Section 11(1) begins with the phrase “ Save as otherwise

provided in Section 12, a trademark shall not be registered….”, which

is because Section 12 recognizes honest concurrent use or other

special circumstances, by which, registration is permissible though the

mark is identical or similar. Section 12 is, thus, an exception to Section

11. Coming to Section 11(1), it provides for refusal on the ground of

likelihood of confusion on the part of the public because of the identity

with an earlier trade mark or similarity of goods and services. Section

11(2) deals with a case where the goods and services are not similar

and the use of the trademark, which is identical with or similar to an

earlier trademark without due cause would amount to unfair advantage

or be detrimental to the distinctive character or reputation of an earlier

trademark.

24. It should be mentioned that the expression “earlier trade

mark” occurring in Section 11(1) is defined in Explanation (a) that

follows Section 11(3). This explanation at the relevant point of time

defined an earlier trade mark to mean a registered trade mark or a

convention application under Section 154, which has a date of

application earlier than the date of trade mark in question. Vide the

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Trade Marks (Amendment) Act, 2010 (Act 40 of 2010), Explanation (a)

was substituted as under:

“a registered trade mark or an application

under section 18 bearing an earlier date of filing or

an international registration referred to in section

36E or convention application referred to in section

154 which has a date of application earlier than

that of the trade mark in question, taking account,

where appropriate, of the priorities claimed in

respect of the trade marks.”

25. The amendment to Explanation (a) came into force only on

08.7.2013, which is much after the opposition proceedings had

commenced in this case. The explanation expands the scope of the

expression “earlier trade mark” . The amendment is clearly

substantive in character and cannot be applied retrospectively. In any

event, Section 11(1) was not seriously pursued by the appellant as

their main focus was on Section 11(3).

26. There is no material to show that the appellant is a well-

known trademark within the meaning of Section 2(1)(zg) and Section

11(8) of the Act. No Court or Registrar has recognized the mark as a

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well-known trademark nor is the appellant recognized as such by the

Registrar in the list maintained by him on the official website.

27. Section 11(8) reads as follows:

“Where a trade mark has been determined

to be well known in at least one relevant section of

the public in India by any court or Registrar, the

Registrar shall consider that trade mark as a well-

known trade mark for registration under this Act.”

28. Hence, as the trademark of the appellant does not fall within

the aforesaid criteria, it does not qualify as a well-known trademark

and the question of applying Section 11(2) or Section 11(6) does not

arise.

29. Section 11(3), which directly applies to this case, deals with

a scenario where the trademark is refused registration on the ground

that its use will be prevented by the law of passing off or copyright

unless the proprietor of the said mark consents to its registration

under Section 11(4). This is a case where both parties are at

loggerheads and hence, the question of consent does not arise. The

question really boils down as to whether the use of the trademark will

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be prevented by the law of passing off in this country. This test must

be applied with reference to both marks as it must not be overlooked

that these are cases of cross oppositions.

30. The tort of passing off is a sub-species of the tort of deceit.

The classic formulation of what constitutes passing off is set out in the

decision of the Privy Council of UK in Star Industrial Co. Ltd. Vs.

Yap Kwee Kor [reported in 1976 F.S.R. 256] wherein Lord

Diplock observed thus:

“A passing off action is a remedy for the

invasion of a right of property not in the mark,

name or get-up improperly used, but in the

business or goodwill likely to be injured by the

misrepresentation made by passing off one

person's goods as the goods of another. Goodwill,

as the subject of proprietary rights, is incapable of

subsisting by itself. It has no independent

existence apart from the business to which it is

attached.”

31. In the decision in Ruston & Hornsby Ltd. Vs. Zamindara

Engineering Co. [reported in 1969 (2) SCC 727] , the Hon’ble

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Supreme Court of India pointed out the distinction between an

infringement action and an action for passing off by holding as under:

“Apart from the question as to the nature of

trade mark the issue in an infringement action is

quite different from the issue in a passing off

action.

In a passing off action the issue is as

follows:

“Is the defendant selling goods so marked as

to be designed or calculated to lead purchasers to

believe that they are the plaintiff's goods?”

But in an infringement action the issue is as

follows:

“Is the defendant using a mark which is the

same as or which is a colourable imitation of the

plaintiff's registered trade mark.”

32. In the decision in S.Syed Mohideen, the Hon’ble Supreme

Court approved the following test laid down by Lord Oliver in Reckitt

& Colman Products Ltd. Vs. Borden Inc. [reported in (1990) 1

WLR 491] , popularly called the ‘Jif Lemon case’ wherein the

following three ingredients were spelt out:

“In a case such as the present where what is

in issue is whether the goods of A are likely to be

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passed off as those of B, a plaintiff, to succeed,

must establish

(1) that his goods have acquired a particular

reputation among the public,

(2) that persons wishing to buy his goods

are likely to be misled into buying the goods of the

defendant and

(3) that he is likely to suffer damage

thereby.”

33. From the above, it is discernible that the tort of passing off

is actually a wrong against the goodwill acquired by a business.

Goodwill was famously explained by Lord MacNaughten in the decision

in Inland Revenue Commissioners Vs. Muller & Co’s Margarine

[reported in 1901 AC 217] as constituting:

“… the benefit and advantage of the good

name, reputation, and connection of a business. It

is the attractive force which brings in custom….

The goodwill of a business must emanate from a

particular centre or source. However widely

extended or diffused its influence may be, goodwill

is worth nothing unless it has power of attraction

sufficient to bring customers home to the source

from which it emanates… I think that if there is

one attribute common to all cases of good will it is

the attribute of locality. For goodwill has no

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independent existence. It cannot subsist by itself.

It must be attached to a business. Destroy the

business, and the goodwill perishes with it, though

elements remain which may perhaps be gathered

up and be revived again.”

34. Thus, the essence of passing off is that it is an injury against

goodwill, which, in turn, is inextricably linked to a business for

goodwill, cannot exist independently of a business. This has given rise

to two competing schools of thought, one taking the view that it is

essential for business to exist within the jurisdiction and the other view

in cases where the business has an international reputation and is able

to demonstrate that it attracts customers from the concerned country.

In other words, there is a spillover of goodwill gained internationally

into the local market.

35. As is common with this branch of law, there is no dearth of

precedents, both Indian and foreign, on the issue of transborder

rights. However, on a closer look, it will be seen that a majority of

these decisions emanate from appeals against interlocutory orders in

suits for infringement/passing off. Thus, the precedents cited on either

side will have to be examined keeping in mind the aforesaid aspect.

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36. As noticed supra, the case of the appellant is that they have

built a reputation at an international level with respect to the “Big

Bite” marks and that they are clearly international prior users.

37. Admittedly, there is no material to show that the appellant

has done business on Indian soil, with the aforesaid mark, on the date

of the application or at any subsequent point of time prior to the

commencement of opposition proceedings.

38. On the other hand, it is the case of the contesting third

respondent that they are doing business in India with the mark “Big

Bite” since 2004 and that the application of the appellant must fail

since they were not doing business in India and consequently, can

have no goodwill in India.

39. The issue before the Hon’ble Supreme Court in N.R.Dongre

arose out of an application for injunction in a passing off action. On

facts, it was found that material had been placed before the learned

Single Judge of the Delhi High Court (R.C.Lahoti,J as he then was) to

demonstrate that Whirlpool washing machines had been sold in India,

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though in a limited way, to the U.S. Embassy and U.S. AID in India. It

was also demonstrated that their products were advertised in

magazines having international circulation including in India. More

importantly, the name was registered in favour of the plaintiff from

1955-1977, which would have generated goodwill. On this basis, the

order of injunction granted by the learned Single Judge and affirmed

on appeal by the Division Bench was upheld by the Hon’ble Supreme

Court with the following observations:

“It has also to be borne in mind that a mark

in the form of a word which is not a derivative of

the product, points to the source of the product.

The mark/name ‘Whirlpool’ is associated for long,

much prior to the defendants' application in 1986

with the Whirlpool Corporation, Plaintiff 1. In view

of the prior user of the mark by Plaintiff 1 and its

trans-border reputation extending to India, the

trade mark ‘Whirlpool’ gives an indication of the

origin of the goods as emanating from or relating

to the Whirlpool Corporation, Plaintiff 1.”

40. In the decision of the Hon’ble Supreme Court in Milmet

Oftho Industries, a suit was filed for passing off in respect of the

mark “ocuflex” used on a medicinal preparation manufactured and

marketed by the respondents therein. This decision also arose out of

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an appeal against an order granting ad-interim injunction. The Hon’ble

Supreme Court held thus:

“It must also be remembered that nowadays

goods are widely advertised in newspapers,

periodicals, magazines and other media which is

available in the country. This results in a product

acquiring a worldwide reputation. Thus, if a mark in

respect of a drug is associated with the

respondents worldwide it would lead to an

anomalous situation if an identical mark in respect

of a similar drug is allowed to be sold in India.”

The Court added the following caveat:

“Multinational corporations, which have no

intention of coming to India or introducing their

product in India should not be allowed to throttle

an Indian company by not permitting it to sell a

product in India, if the Indian company has

genuinely adopted the mark and developed the

product and is first in the market. Thus, the

ultimate test should be, who is first in the market.”

41. The Court also emphasized that in respect of pharmaceutical

products, a more exacting judicial scrutiny was necessary in view of

the larger public interest that was at stake. In fact, a similar view had

been expressed earlier in the decision of the Hon’ble Supreme Court in

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Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd .

[reported in 2001 (5) SCC 73] wherein it was held thus:

“The drugs have a marked difference in the

compositions with completely different side effects,

the test should be applied strictly as the possibility

of harm resulting from any kind of confusion by the

consumer can have unpleasant if not disastrous

results. The courts need to be particularly vigilant

where the defendant's drug, of which passing-off is

alleged, is meant for curing the same ailment as

the plaintiff's medicine but the compositions are

different. The confusion is more likely in such cases

and the incorrect intake of medicine may even

result in loss of life or other serious health

problems.”

42. In the decision in Milmet Otfho Industries, the Hon’ble

Supreme Court ultimately upheld the order of interim injunction

leaving it open to the respondents therein to agitate the issue of prior

use after conclusion of trial.

43. The learned counsel appearing on behalf of the appellant is

perhaps correct in his criticism of the impugned order of the Registrar,

which purported to apply the principles laid down in the decision of the

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Hon’ble Supreme Court in Milmet Oftho Industries without

appreciating the fact that it concerned a pharmaceutical product where

slightly different standards would apply.

44. However, what must also be taken into account is the fact

that the impugned order was passed on 18.7.2014 when the law as

regards transboundary reputation was still hazy. The decision of the

Hon’ble Supreme Court in Toyota Jidosha Kabushiki Kaisha has

now settled the issue once and for all. However, it is necessary to take

a brief detour to see as to how this change had really come about.

45. In the decision in Starbucks (HK) Ltd. Vs. British Sky

Broadcasting Group PLC [reported in 2012 EWHC 3074 (Ch)] ,

Arnold,J held that although advance advertising could create

protectable goodwill, the activities relied on by the foreign plaintiff to

establish goodwill in the UK “did not take the form of advertising

or promotion for a forthcoming product or service” . Instead, the

advertisements were primarily aimed at promoting its home business

in Hong Kong.

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46. The matter was carried on appeal and finally reached the UK

Supreme Court in the decision in Starbucks (HK) Limited Vs.

British Sky Broadcasting Group PLC [reported in (2015) UKSC

31]. The Supreme Court reaffirmed the requirement in a passing off

action of showing goodwill within the local market. The position at

common law was stated by Lord Neuberger as follows:

“I consider that we should reaffirm that the

law is that a claimant in a passing off claim must

establish that it has actual goodwill in this

jurisdiction, and that such goodwill involves the

presence of clients or customers in the jurisdiction

for the products or services in question. And, where

the claimant's business is abroad, people who are

in the jurisdiction, but who are not customers of

the claimant in the jurisdiction, will not do, even if

they are customers of the claimant when they go

abroad.

It seems to have been the consistent view of

the House of Lords and Privy Council from 1915 to

1990 that a plaintiff who seeks passing off relief in

an English court must show that he has goodwill, in

the form of customers, in the jurisdiction of the

court. While it can be said that, in none of the

cases discussed in paras 21-25 above was that

point the main focus of attention, it nonetheless

seems clear that that is what a succession of

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respected judges, many of whom had substantial

experience in this area, considered to be the law.”

47. Finally, as to what constituted sufficient goodwill for the

purposes of protection, in Starbucks (HK) Limited, it was held thus

by the UK Supreme Court:

“The claimant must show that it has a

significant goodwill, in the form of customers, in

the jurisdiction, but it is not necessary that the

claimant actually has an establishment or office in

this country. In order to establish goodwill, the

claimant must have customers within the

jurisdiction, as opposed to people in the jurisdiction

who happen to be customers elsewhere . Thus,

where the claimant's business is carried on abroad,

it is not enough for a claimant to show that there

are people in this jurisdiction who happen to be its

customers when they are abroad. However, it could

be enough if the claimant could show that there

were people in this jurisdiction who, by booking

with, or purchasing from, an entity in this country,

obtained the right to receive the claimant's service

abroad. And, in such a case, the entity need not be

a part or branch of the claimant : it can be

someone acting for or on behalf of the claimant.”

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48. Shortly prior to the aforesaid decision of the UK Supreme

Court in Starbucks (HK) Limited, the Singapore Court of Appeal

delivered an important decision in Staywell Hospitality Group Pty

Ltd Vs. Starwood Hotels & Resorts Worldwide, Inc., [reported

in (2014) 1 SLR 911], in which, the law was summarized by

Sundaresh Menon,CJ as under:

“Our courts have since largely followed Star

Industrial, holding that a foreign trader which does

not conduct any business activity in Singapore

cannot maintain an action in passing off here (see

Tan Gek Neo Jessie v Minister for Finance [1991] 2

MLJ 301, Jumbo Seafood Pte Ltd v Hong Kong

Jumbo Seafood Restaurant Pte Ltd [1997] 3 SLR(R)

878 and CDL Hotels ([102] supra)). The “hard-line”

approach, as currently applied in Singapore, draws

a clear distinction between goodwill and reputation:

“[a] desire to become a customer of the plaintiff

without the ability to actually be one, cannot

ordinarily form the basis of goodwill.”

49. A close reading of the decision of the UK Supreme Court in

Starbucks (HK) Limited and the decision of the Singapore Court of

Appeal in Staywell Hospitality Group Pty Ltd., reveals a common

concern. Both the Courts have expressed their concerns about

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balancing the rights of a foreign business and those of a local

competitor and have taken a position that tips the law slightly in

favour of the local player.

50. In the decision of the UK Supreme Court in Starbucks (HK)

Limited, it was further held thus:

“If it was enough for a claimant merely to

establish reputation within the jurisdiction to

maintain a passing off action, it appears to me that

it would tip the balance too much in favour of

protection. It would mean that, without having any

business or any consumers for its product or

service in this jurisdiction, a claimant could prevent

another person using a mark, such as an ordinary

English word, “now”, for a potentially indefinite

period in relation to a similar product or service. In

my view, a claimant who has simply obtained a

reputation for its mark in this jurisdiction in respect

of his products or services outside this jurisdiction

has not done enough to justify granting him an

effective monopoly in respect of that mark within

the jurisdiction.”

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51. In a similar vein, in the decision of the Singapore Court of

Appeal in Staywell Hospitality Group Pty Ltd., Sundaresh

Menon,CJ further said as under:

“In softening the “hard-line” approach so as

to consider pre-trading activity as capable of

generating goodwill, our courts must strike a

considered balance between the interests of foreign

or aspiring entrants to the Singapore market, and

existing local enterprises. Where the foreign trader

has no interest in the local market, the concern of

stifling local enterprises prevails. Where the foreign

trader has unequivocally evinced his intention to

enter the local market, the concern of preventing

local traders from “freeriding” on the efforts and

expenditure of the foreign trader prevails. It will be

a rare case, if ever, that spill-over advertising

meant primarily for a foreign audience or to

increase brand reputation in general, or early

stages of negotiation and sourcing without any

serious commitment to investment, will displace

the interests of local enterprise in favour of

proprietary protection for the foreign trader.

Finally, the unequivocal intention to enter

the local market is a necessary factor qualifying

pre-trade activity for consideration in the goodwill

inquiry, but it is not sufficient. It must be

remembered that the ultimate question is whether

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the activity has generated an attractive force that

will bring in custom when the business eventually

materialises. If a trader has taken steps evincing

his intention to trade in Singapore, such as

securing premises or employees here, but has done

nothing to put the business in the awareness of the

public so as to create demand, then there clearly is

no Singapore goodwill to be protected.”

52. Reverting to the Indian position, in the decision in Trans

Tyres India Pvt. Ltd. Vs. Double Coin Holdings Limited

[reported in (2012) 49 PTC 209] , a Division Bench of the Delhi

High Court opined that in trademark law, the doctrine of territoriality

must be preferred to the doctrine of universality. The Division Bench

had held thus:

“Trademark, as we all know is territorial in

nature. Thus, under the Territoriality Doctrine, a

trademark is recognized as having a separate

existence in each sovereign territory in which it is

registered or legally recognized as a mark. The

Universality Doctrine, which posits that a mark

signifies the same source wherever the mark is

used in the world has been rejected by Courts all

over the world. Thus, the registered proprietor of a

trademark would be entitled to the protections

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conferred by law and exclusivity vested within the

territorial limits as conferred by a Municipal Law.

Prior use of a trademark in a dominion would ipso

facto not entitle its owner to claim exclusive

trademark rights in another dominion.

The conventional theory that a trademark

connects, in the mind of the consumer, the goods

to the source of manufacturer is inapplicable in

today's environment because modern global

trading has assumed multi-channel modes of sale

of goods in the market. Thus, in today's global

environment, the theory pertaining to a trademark

would be that a trademark connects, in the mind of

the consumer, the source wherefrom the goods

enter the market, whatever may be the

nomenclature of that source. It could be the agent,

the distributor or even a person who purchases

goods from a manufacturer and sells them in the

market.”

53. The aforesaid view was reiterated by another Division Bench

of the Delhi High Court in Prius Auto Industries Ltd Vs. Toyota

Jidosha Kabushiki Kaisha [reported in (2017) 236 DLT 343] .

The defendants had obtained registration of the mark ‘Prius’ in 2002

and had been using the same since 2001. Toyota Jidosha Kabushiki

Kaisha contended that the mark ‘Prius’ was a well known trade mark

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and that its first hybrid car “Prius” was launched in Japan in 1990 and

was also sold in various parts of the globe. The car was released in

India in 2010. The defendants, on the other hand, took the defence

that they had been selling car accessories under the name “Prius”

since 2001 and that Toyota Jidosha Kabushiki Kaisha had not sold

any cars in the Indian market so as to claim goodwill locally. The

Division Bench upheld the defence and held that the mark ‘Prius’ was

not entitled to protection.

54. In the latter decision, the Division Bench of the Delhi High

Court took note of the earlier decisions of the Hon’ble Supreme Court

and observed that they were rendered at the ad-interim stage where

the only test was whether the products were likely to result in

confusion. It was observed thus:

“Issues of trans-border reputation or

likelihood of confusion decided in various cases

cited before us and even in cases not cited arose

before the Court either in quia timet actions or

when the defendants had just entered the market.

At that point of time, the issue could obviously be

decided on the test of likelihood of confusion and

we find that most of the judgments are dealing

with the issue at the stage of injunction where

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documents filed by the parties had yet to translate

into evidence and witnesses were yet to be

examined. In such situation, the only way in which

the issue of an injunction pending adjudication in

the suit can be decided is on the touchstone of

likelihood of confusion. But in a case of the kind at

hand where the appellants had been selling the

goods under the offending trade mark for nearly

ten years when the suit for injunction was filed,

there must be evidence of actual confusion. Toyota

is a big company. It has had a presence in India for

over two decades when the suit was filed. It was

well entrenched in the Indian market in the year

2001. Obviously no consumer of Toyota car or

buyer of an auto part sold by Toyota was ever

confused by the appellants selling their products

under the trade mark Prius, for if this was so, in

ten years somebody would have complained to

Toyota or at least would have made known said

fact to Toyota.”

55. In this case, admittedly, the third respondent has been

selling their products under the mark “Big Bite” since 2004 and there

is no evidence of any kind to show that the consumers were confused

or deceived in the past two decades.

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56. The decision of the Division Bench of the Delhi High Court

was taken on appeal to the Hon’ble Supreme Court in Toyota Jidosha

Kabushiki Kaisha Vs. Prius Auto Industries Ltd. [reported in

(2018) 2 SCC 1]. Dismissing the appeals, the Hon’ble Supreme Court

affirmed the applicability of the territoriality doctrine in trademarks.

The Hon’ble Supreme Court referred to and approved the following

observations in Athletes' Foot Marketing Associates Inc. Vs.

Cobra Sports Ltd. [reported in 1980 RPC 343] to the following

effect:

“… no trader can complain of passing-off as

against him in any territory … in which he has no

customers, nobody who is in trade relation with

him. This will normally shortly be expressed by

stating that he does not carry on any trade in that

particular country … but the inwardness of it will be

that he has no customers in that country …”

57. In said decision in Toyota Jidosha Kabushiki Kaisha,

certain exceptions were also noticed by the Hon’ble Supreme Court as,

for instance, protection was granted where the cars were imported and

sold in England thereby creating a market within the United Kingdom

{LA Societe Anonyme Des Anciens Etablissements Panhard Vs.

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Panhard Levassor Motor Co. Ltd. [reported in (1901) 2 Ch

513]} and where the customers travelled to another jurisdiction to

purchase the products as in the case of C&A Modes Vs. C&A

(Waterford) Ltd. [reported in 1976 IR 198 (Irish)]. The Hon’ble

Supreme Court finally rejected the contention raised by Toyota

Jidosha Kabushiki Kaisha premised on transborder reputation and

goodwill by observing as under:

“Indeed, the trade mark “Prius” had

undoubtedly acquired a great deal of goodwill in

several other jurisdictions in the world and that too

much earlier to the use and registration of the

same by the defendants in India. But if the

territoriality principle is to govern the matter, and

we have already held it should, 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

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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 27-3-1997 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. Coupled with the above, the

evidence of the plaintiff's witnesses themselves

would be suggestive of a very limited sale of the

product in the Indian market and virtually the

absence of any advertisement of the product in

India prior to April 2001. This, in turn, would show

either lack of goodwill in the domestic market or

lack of knowledge and information of the product

amongst a significant section of the Indian

population. While it may be correct that the

population to whom such knowledge or information

of the product should be available would be the

section of the public dealing with the product as

distinguished from the general population, even

proof of such knowledge and information within the

limited segment of the population is not

prominent.”

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58. The aforesaid view has since been consistently followed by

the Courts in India. Among the cases cited on either side, the decisions

in Keller Williams Realty Inc. , Bolt Technology OU , KEI

Industries, Somany Ceramics Limited and Kia Wang arose out of

interlocutory applications. In the last-mentioned decision, it was

factually found that the claimant had been selling its products in India

through Amazon for quite some time. In the decision of the Delhi High

Court in Suzuki Motor, it was found on facts that the defendant

claimed to have adopted the name Suzuki because they had friend

named Suzuki. Quite obviously, the defence was rightly found to be a

sham and the use of the mark was found to be in bad faith. This

decision, therefore, turned on its own facts.

59. The decision of the Division Bench of the Delhi High Court in

VIP Industries Ltd. also emanates from interlocutory proceedings.

But, it contains two important passages on transborder reputation,

which deserve to be set out and noticed and which run thus:

“118. The concept is actually elementary,

when one keeps in mind the basic principle of

passing off. Passing off takes place when a

defendant, by using the mark or name of the

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plaintiff, seeks to pass of his goods, or services as

the goods, or services, of the plaintiff. The issue of

trans-border reputation arises where the plaintiff is

situated outside the territorial jurisdiction in which

the defendant is located. Even in such a case, if the

reputation and goodwill which is commanded by

the plaintiff’s mark is of such a degree that it has

percolated into the territory of the defendant, and

is “well-known” in that territory, the defendant is

still seeking to capitalise on the reputation of the

mark or name. This is because, if consumers within

the defendant’s territory are consciously aware of

the reputation of the mark or name in question,

even though it is exclusively, or even essentially,

used outside the territory, they may presume,

when such mark or name is used by the defendant,

that the plaintiff has now established a presence in

that territory. When dealing with India, for

example, many reputed brands, and names, which

earlier had no presence in India, though they

commanded a global reputation, have now

established a presence within India.

119. One may, for example, consider a mark

such as Burger King. Till a decade or so ago,

Burger King had no presence in India. Even so, it

had a global reputation, and many consumers in

India, who were fond of burgers, were aware of the

existence of the Burger King franchise. If,

therefore, some adventurous entrepreneur, in

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India, decided to set up a Burger King outlet,

before Burger King officially established a presence

in this country, it might have amounted to passing

off, given the fact that Burger King had a global

reputation, and that reputation had percolated into

India, through promotional material, literature,

advertisements, and the like, even if there was no

physical Burger King outlet within this country. Of

course, if Burger King were to bring a passing off

action against such entrepreneur, the onus would

be on Burger King to prove that its global

reputation had percolated into India so that it could

be said to enjoy trans-border reputation within this

country.”

60. From the aforesaid, it would be clear that it must be

demonstrable that the mark used extensively outside India is so well

known that they may presume, when such mark or name is used by

the respondent and that the claimant has now established a presence

in that territory.

61. That, however, is not the case here. Admittedly, before the

Registrar, no evidence worth its name was ever produced by the

appellant to show that they have been selling their products in India.

There was, therefore, no question of confusion or deception.

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62. On the contrary, the third respondent was able to show

through Ex.D.1 to Ex.D.58 that they had sales across the country since

2004 and invested money in advertisements, etc., which was

evidenced through Ex.A.1 to Ex.A14.

63. The learned counsel for the third respondent cited the recent

decision of the Division Bench of the Delhi High Court in Sumit Vijay.

64. The decision in Sumit Vijay was on an appeal from the

order of the Registrar where the application of Section 11(3) of the Act

was directly in issue and answers the contention raised by

Mr.Harishankar, learned counsel on behalf of the appellant that the

mark of the appellant was available on their website, which was

accessible in India thereby leading to the conclusion that it was known

throughout this country.

65. This contention cannot be accepted and it is not necessary to

repeat what was said in the decision in Toyota Jidosha Kabushiki

Kaisha, except to refer to the following passages from the decision of

the Division Bench of the Delhi High Court in Sumit Vijay:

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“There is no evidence of the respondent's

having used the BLUE JAYS mark, in India, in any

of the modes envisaged in the Trade Marks Act.

The mere fact that the BLUE JAYS mark figured on

websites which are accessible in India, or figured

on merchandise which could be purchased in India,

cannot amount to use of the mark, by the

respondent, within India. At least, prior to 1998,

there is little or no evidence of such use.

Toyota, thus, holds that facts such as (i) the

accessibility of Toyota's websites in India, (ii)

several visits to Toyota's websites by many Indians

seeking information about Prius' products, (iii)

exhibitions of the Prius product in India and other

countries, (iv) advertisements and cover stories in

magazines and availability of information regarding

the “Prius” mark and products in various internet

portals, even seen cumulatively, did not make out

a case of trans border reputation and goodwill.

Secondly, the availability of a mark on

websites can again be no indicator of trans-border

goodwill or reputation percolating into a particular

country such as India. Websites are globally

accessible. If the principle that accessibility of a

mark on a website is to be treated as an indicator

of trans-border reputation, every mark of every

entity would have trans border reputation in every

country in the world. It is not enough, therefore, to

aver that a particular mark is available on a

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website which is accessible within India, to

substantiate a contention that the mark enjoys

trans-border reputation in India. Positive assertions

regarding the number of times the websites has

been accessed in India would have also to be

pleaded.

Similarly, the availability of goods bearing a

particular mark, for sale on websites, whether they

belong to the owner of the mark or are e-

commerce websites, can also be no evidence of

percolation of the reputation of the mark into India.

As in the case of websites in general, e-commerce

websites may be accessible within India, even if

they are not hosted from within the country.

Similarly, there is no necessity that every product

which is available on an e-commerce website

commands reputation or goodwill within India.

Mere availability of products bearing a mark for

sale on an e-commerce website, or on the website

of the owner of the mark, would not, however,

suffice as proof of trans-border goodwill or

reputation. It would further have to be shown that

orders were actually placed or purchases effected,

to a considerable existent, of the goods bearing the

mark, from within India.”

66. The older cases, prior to the decision in Toyota Jidosha

Kabushiki Kaisha, cited on the side of the appellant, will now have to

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be read in the light of the law laid down by the Hon’ble Supreme Court

in the decision in Toyota Jidosha Kabushiki Kaisha.

Mr.Harishankar, learned counsel appearing on behalf of the appellant

also referred to the decision of the Hon’ble Supreme Court in S.Syed

Mohideen wherein the question was as to whether the holder of

registered trade mark could sue for infringement of his registered

trade mark if the opponent also has the trade mark, which is

registered. The other issue was as to whether such a respondent could

bring an action against the appellant for passing off invoking the

provisions of Section 27(2) of the Act. The decision is, therefore,

inapplicable to the facts of this case although there is a wealth of

precedent cited for the general principles concerning passing off.

67. If the aforesaid principles are applied to the facts of this

case, the admitted position is that the appellant did not sell their

products in this country at any time from 1994, when they purportedly

made an application for registration or in 2007 when the opposition

proceedings commenced before the Registrar. The impugned order

also states that the appellant was not selling any products in India and

was not able to produce any material to show the use of their mark in

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Classes 29 & 30. Consequently, in view of the decision of the Hon’ble

Supreme Court in Toyota Jidosha Kabushiki Kaisha , it cannot be

said that the appellant has acquired sufficient goodwill in this country

so as to entitle them to protection. On the other hand, the third

respondent has been able to demonstrate actual sale and percolation

of their products throughout the country with the mark “Big Bite” for

a sufficiently long period so as to generate goodwill and reputation

entitling them to protection under the law of passing off.

68. Before concluding, it must also be pointed out that though

Section 18 does permit registration of a mark, which is “used or

proposed to be used”, it must be remembered that the applicant

must show that it has a definite and present intention to use the mark

as on the date of the application. In the decision in Ducker’s Trade

Mark [reported in (1928) 45 RPC 397] , it was held thus:

“I think the words ‘proposed to be used’

mean a real intention to use, not a mere

problematic intention, not an uncertain or

indeterminate possibility, but it means a resolve or

settled purpose which has been reached at the time

when the mark is to be registered.”

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69. In yet another case in Batt’s Trade Mark [reported in

(1898) 15 RPC 534], which was quoted in the aforesaid decision, it

was held thus:

“Can a man properly register a trade mark

for goods in which he does not deal or intend to

deal; meaning by ' intending to " deal' having at

the time of registration some definite and present

intention to deal in certain goods or descriptions of

goods, and not a mere general "intention of

extending his business at some future time to

anything which he "might think desirable. This

question we answer in the negative. To answer it

otherwise would be unduly to strain the language

of the Acts relating to trade marks and to render

those Acts extremely mischievous instead of

beneficial to trade or commerce."

70. The fact that the appellant had applied for registration in

1994, but had not commenced business or sale in this country either

on the said date or on the date of commencement of opposition

proceedings almost over a decade later in 2007, is also an additional

(though not decisive) factor that weighs in the balance while testing

the order of the Registrar declining registration of the appellant’s

mark. In the final analysis, this Court is of the considered view that

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the conclusion arrived at by the Registrar must be upheld, though for

different reasons. This Court is not convinced that the appellant has

made out a case for interference in these appeals.

71. In the result, these civil miscellaneous appeals fail and are

dismissed. In the facts and circumstances of the case, there shall be

no order as to costs.

11.2.2026

Index : Yes

Neutral Citation : Yes

To

1.The Deputy Registrar of Trademarks,

Trade Marks Registry, Intellectual

Property Building, GST Road,

Guindy, Chennai-32.

2.The Registrar of Trademarks,

Trade Marks Registry, Intellectual

Property Building, GST Road,

Guindy, Chennai-32.

RS

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N.ANAND VENKATESH,J

RS

(T)CMA(TM) Nos.110 & 157 of 2023

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11.2.2026

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