LPA 475/2025 Page 1 of 67
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 17 September 2025
Pronounced on: 5 January 2026
+ LPA 475/2025, CM APPLs. 45526/2025 & 45579/2025
MR. SUMIT VIJAY & ANR. .....Appellants
Through: Mr. C.M. Lall, Sr. Adv and Mr.
J. Sai Deepak, Sr. Adv. with Mr. Rupin
Bahl, Mr. Karan Bajaj, Ms. Aastha Arora,
Mr. Avinash and Ms. Annanya Mehan,
Advs.
versus
MAJOR LEAGUE BASEBALL
PROPERTIES INC. & ANR. .....Respondents
Through: Mr. Urfi Roomi, Ms. Janaki
Arun, Mr. Jaskaran Singh, Ms. Angela
Arora, Advs. for R-1
Mr. Nidhi Raman, CGSC with Mr. Akash
Mishra, Mr. Arnav Mittal and Mr. Mayank
Sansanwal, Advs. for R-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE OM PRAKASH SHUKLA
JUDGMENT
% 05.01.2026
C. HARI SHANKAR, J.
1. The blue jay, a truly beautiful bird, is native to eastern North
America. Though the appellants before us have sought to contend that
the blue jay is also known as the Indian Roller and is the State bird of
Karnataka, Andhra Pradesh and Odisha, this is incorrect. The blue jay
and the Indian roller belong, in fact, to different avian families, with
LPA 475/2025 Page 2 of 67
the former belonging to the Corvidae and the latter to the Coraciidae
family. The illusion seems to have originated in the description, by the
famous naturalist Carl Linnaeus, in 1758, of the Indian Roller as the
“Jay from Bengal”.
2. Enough, however, of ornithology. The blue jay occupies our
attention, in this appeal, not in its natural avian avatar, but as the
much more suburban subject matter of a trade mark. And thus we
descend, from the skies above to the earth below.
The lis
3. By a judgment dated 1 July 2025, a learned Single Judge of this
Court has, in CO (Comm IPD-TM) 279/2023
1
instituted by the
respondent under Section 57(2)
2
of the Trade Marks Act, 1999, struck
the registered BLUE-JAY trade mark of the appellants off, from the
Register of Trade Marks.
4. Aggrieved thereby, the respondents before the learned Single
Judge are in appeal before us.
5. The statutory scheme
5.1 Sections 47 and 57 are the only provisions, in the Trade Marks
1
Major League Baseball Properties Inc v Manish Vijay & Ors.
2
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry
made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any
error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the
Registrar, and the Registrar or the High Court, as the case may be, may make such order for making,
expunging or varying the entry as it may think fit.
LPA 475/2025 Page 3 of 67
Act, under which a registered trade mark of one person can be
removed from the Register of Trade Marks at the instance of another.
Section 47 allows the mark to be removed on the ground of
continuous disuse. Section 57(1) allows removal of a registered trade
mark if any condition, in relation to the mark and entered in the
Register, is contravened or not observed.
5.2 These provisions do not concern us. We are concerned with
Section 57(2).
5.3 Section 57(2) can be invoked by any person who is aggrieved
(i) by the absence from the Register of any entry, or
(ii) by any entry made without sufficient cause, or
(iii) by any entry which wrongly remains on the Register, or
(iv) by any error or defect in any entry in the Register,
and empowers the Registrar, or the High Court, to make, expunge or
vary the entry. Circumstances (ii) and (iii), if accepted, would
naturally result in expunction of the entry, as has happened here.
5.4 The circumstances in which a trade mark can be said to be
“wrongly remaining” on the Register are not elucidated in Section 57.
Nor are they to be found elsewhere in the Trade Marks Act. In the
circumstances, one has to refer, for the purpose, to Sections 9 and 11,
which set out the grounds on which registration of a trade mark can be
refused. If a mark ought not to have been registered in the first place,
as it breached the proscriptions contained in Section 9 or Section 11,
the sequitur is, naturally, that it ought not to remain on the Register
either.
LPA 475/2025 Page 4 of 67
5.5 The circumstances in which the Registrar can refuse to register
a trade mark, as envisaged in Sections 9 and 11, are many and varied.
Of these, Section 9 contains “absolute” grounds of refusal, whereas
Section 11 contains “relative” grounds of refusal. Section 9 does not
concern us, as the respondent has not invoked any clause thereof.
5.6 The impugned judgment has removed the appellants’ BLUE-
JAY trade mark from the Register under Section 11(10)(ii)
3
.
However, the grounds urged by the respondent in its Section 57
petition would also require us to address Section 11(3)(a)
4
.
5.7 In order to avoid any confusion, we may observe, here, that
though the main grievance of the respondent, against the appellants’
BLUE-JAY trade mark, was its similarity to the respondent’s BLUE
JAYS trade mark, neither Section 11(1)
5
nor Section 11(2)
6
would
apply in the present case, in view of the definition of “earlier trade
3
(10) While considering an application for registration of a trade mark and opposition filed in respect
thereof, the Registrar shall—
*****
(ii) take into consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.
4
(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;
5
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.
6
(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.
LPA 475/2025 Page 5 of 67
mark” provided in the Explanation following Section 11(4)
7
, which
covers only marks which are registered, or in respect of which an
application for registration is pending. Neither on 19 August 1998,
when the appellants applied for registration of the BLUE-JAY mark,
nor even at any later point of time till the date of institution of CO
(Comm IPD-TM) 279/2023, was the respondent the proprietor of any
registered trade mark, nor was any application for registration of any
trade mark, filed by it, pending. We refer, of course, to India.
5.8 Of the various circumstances outlined in para 5.3 supra, CO
(Comm IPD-TM) 279/2023 was instituted by the respondent invoking
circumstance (iii). The respondent’s contention, which the learned
Single Judge has accepted, is that the appellants’ BLUE-JAY mark
ought not to be permitted to remain on the Register. This contention
has found favour with the learned Single Judge, to the chagrin of the
appellants.
5.9 Ergo, the present appeal.
Facts
6. Proceedings before the learned Single Judge
6.1 Case of the respondent, as petitioner in CO (Comm IPD-TM)
7
Explanation.- For the purposes of this section, earlier trade mark means—
(a) a registered trade mark or an application under Section 18 bearing an earlier date of filing
or an international registration referred to in Section 36-E 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.
LPA 475/2025 Page 6 of 67
279/2023
6.1.1 The factual averments in CO (Comm IPD-TM) 279/2023,
insofar as they are relevant for the purposes of the present appeal, may
be set out thus:
(i) Major League Baseball
8
is a world renowned professional
baseball league operating out of USA and Canada. The
respondent holds all intellectual property rights of MLB, and
controls licensing and merchandising for all MLB clubs. MLB
is the highest form of professional baseball in the world, with a
history which can be traced back to 1876. Baseball is played by
more than one million players worldwide, in more than 108
countries, including India. On an estimate, in 2023, over 70
million people, including people from India, would have
attended MLB games. These games were played at venues
spread across the US and in different cities around the world.
30 teams comprise MLB, representing 29 cities in the US and
one in Canada.
(ii) Of the 30 teams comprising the MLB, the only team
situated outside the USA, which is in Canada, is the Toronto
Blue Jays
9
. The respondent is the proprietor of the BLUE JAYS
and TORONTO BLUE JAYS word and device marks,
employed by the BLUE JAYS club. These include the ,
8
“MLB” hereinafter
9
“TBJ”, hereinafter
LPA 475/2025 Page 7 of 67
, , , ,
and marks
10
. The BLUE JAYS marks were adopted
by the respondent in 1976, when the TBJ Club was established
as an MLB team. BLUE JAYS was chosen and adopted as the
name for the TBJ club.
(iii) As a result of extensive use and promotional activities,
the BLUE JAYS marks have become distinctive and have
achieved worldwide fame. They operate as source identifiers of
the TBJ club and the vast array of goods and services used to
promote the club. The TBJ club has, over a period of time,
become one of the most famous and recognisable teams in
professional baseball. The documents filed to substantiate this
claim of widespread popularity and use of the BLUE JAYS
marks are
(i) an article dated 7 February 2006, titled “Toronto
Blue Jays” from the Canadian Encyclopedia,
(ii) a valuation list in the Forbes magazine of the TBJ
MLB team,
(iii) an article regarding the first official MLB game
played by TBJ on 7 April 1977, on a website titled
“FireShot Capture 077”,
(iv) details regarding the attendance, stadiums and park
10
“the BLUE JAYS marks” hereinafter
LPA 475/2025 Page 8 of 67
factors of TBJ in the magazine “baseball reference”, a
tabular statement setting out the franchise attendance,
stadia and other details of TBJ,
(v) certain Instagram pages and photographs from the
TBJ Instagram page,
(vi) an article in the magazine offside dated 17
September 2021 regarding celebrities who are fans of
TBJ, and
(vii) an article dated 8 November 2023 in the Indian
Express titled “Punjabi Singing Sensation AP Dhillon
throws official ceremonial first pitch for baseball team
Toronto Blue Jays”.
(iv) Ever since 7 April 1977, when the TBJ club played its
first regular session MLB game, one or more of the BLUE
JAYS marks have appeared on the TBJ clubs’ uniforms. Over
the years, the BLUE JAYS marks have also been used on a
wide variety of goods and in relation to a wide variety of
services including baseball games, exhibition services and
education services. The marks have become well known
throughout the world, and have also received extensive
worldwide acclaim. Various documents, in the form of articles
in foreign magazines, were placed on record in this regard.
(v) Consumers around the world, including India, have been
exposed to a wide range of goods and services designated by
the BLUE JAYS mark through the official MLB website
(https://www.mlb.com). Through this website, fans of baseball
LPA 475/2025 Page 9 of 67
in India and all over the world could subscribe to live game day
broadcasts.
(vi) The official MLB website, and several other websites
which covered MLB news and events, as well as sell MLB
products, featuring the BLUE JAYS marks, have been seen by
internet users throughout the world, including India. News and
entertainment services provided on these websites, as well as
goods available for sales thereon, have been offered to Indian
consumers and worldwide through internet enabled computers,
mobile phones etc. at least since 1998.
(vii) Games played as part of the MLB, including games in
which the TBJ club was a participant, have been broadcasted
and televised to persons across the world, including India, for
several decades. MLB games, featuring the BLUE JAYS marks,
have been broadcasted in India via Fox Sports India, Facebook,
ESPN, Star Sports and other channels. These broadcasts have
considerably enhanced consumer awareness of MLB
professional baseball, as well as the BLUE JAYS marks. News
coverage of MLB games, including games played by the TBJ
club, was also widespread. Several international publications
contained news items about MLB professional baseball,
accompanied by photographs of the TBJ players wearing
uniforms bearing the BLUE JAYS marks. Many of these
publications were available online to internet users in India and
throughout the world.
LPA 475/2025 Page 10 of 67
(viii) The social media accounts of the TBJ club and of MLB
and its matches in general also contributed to their worldwide
recognition. The TBJ club is recognised across the globe by the
general public and fans alike. The BLUE JAYS marks are
exclusively identified with the TBJ club. Consumers world
over, who came across the BLUE-JAY mark would be
compelled to infer an association with the TBJ club.
(ix) The following material indicated that the reputation of
the BLUE JAYS marks has penetrated into India:
(i) In 2008, Z-Sports organized a contest called the
‘Million Dollar Arm’ to discover America’s next baseball
hero from India, in which more than 30,000 people in
India participated. The two winners were signed to a
professional contract by the Pittsburgh Pirates Major
League Baseball Club. This created considerable buzz
and excitement about the sport of baseball in general and
MLB professional baseball in India. The two players
made their debut in a baseball game on 4 July 2009,
which was reported in well-known publication circulated
in India.
(ii) MLB games featuring the BLUE JAYS marks have
been televised and broadcasted internationally, including
India, for several decades. Indian consumers and public
thus stand exposed to the BLUE JAYS marks. Fox Sports
Asia, VEQTA and Facebook are the international
LPA 475/2025 Page 11 of 67
broadcasters for MLB baseball games in India. During
broadcasts of these games, the BLUE JAYS marks are
visible on the uniforms of the players, coaches and on-
field personnel.
(iii) MLB games, including those featuring the BLUE
JAYS marks, are widely covered in news reports by
publication in media outlets across the world, including
India.
(iv) Details relating to the TBJ Club and the MLB
games featuring the BLUE JAYS marks are also
available by way of online articles, accessible in India
and throughout the world. Highlights and scores of MLB
games including those featuring the TBJ club are
reported daily in virtually every newspaper in the US and
worldwide, which are accessible even in India. The
respondent’s websites are accessible throughout the
world, including India. They actively promote the TBJ
Club and display the BLUE JAYS marks at least since far
back as in 1996.
(v) In July 2019, the respondent announced the
opening of an office in India to promote the game of
baseball in India. This announcement was well covered in
the media, both online and offline.
(vi) The official licensed products and merchandise of
LPA 475/2025 Page 12 of 67
the respondent including those bearing the BLUE JAYS
mark continue to be sold on the respondent’s websites
since several years. They have been purchased by
consumers across the world, including India. These
products have also been available for sale through
unauthorised sellers or various e-commerce websites.
(vii) The respondent’s BLUE JAYS marks have
enhanced goodwill and reputation amongst Indian
consumers as compared to the rest of MLB clubs, owing
to the significant presence of the Indian diaspora in
Canada, as the TBJ Club is the only MLB club based out
of Canada.
(x) The status of registrations held by the respondent under
Section 23 of the Trade Marks Act, as on the date of filing the
petition, were as under:
S.
No.
Mark Class Goods/Services Date of
Application
Status
1 TORONTO
BLUE JAYS
(word)
25 Clothing, Footwear,
Head-Gear (Head-Wear)
and Knit-Wear included
in Class 25
11 October
1983
Removed
2 TORONTO
BLUE JAYS
(word)
16 Stickers, Posters,
Banners, Paper,
Cardboard and Goods
made of these materials,
Printed Matter including
Catalogues, Brochures,
Rosters, Pamphlets,
Leaflets, Book Binding
Material, Photographs,
Stationery, Adhesives
for Stationery or
Household Purposes,
Artists’ Material, Paint
Brushes, Office
11 October
1988
Removed
LPA 475/2025 Page 13 of 67
Requisites (except
Furniture), Instructional
and Teaching Material
(except Apparatus),
Playing Cards, Plastic
Material Printing
Blocks, All being goods
included in Class 16
3
16 Stickers, Posters,
Banners, Paper,
Cardboard and Goods
made of these materials,
Printed Matter including
Catalogues, Brochures,
Rosters, Pamphlets,
Leaflets, Book Binding
Material, Photographs,
Stationery, Adhesives
for Stationery or
Household Purposes,
Artists’ Material, Paint
Brushes, Office
Requisites (except
Furniture), Instructional
and Teaching Material
(except Apparatus),
Playing Cards, Plastic
Material Printing
Blocks, all being goods
included in Class 16
11 October
1988
Abandoned
4
25 Clothing, Footwear,
Head-Gear (Head-Wear)
and Knit-Wear included
in Class 25
11 October
1988
Registered
5
41 Education in relation to
baseball; providing of
training; entertainment;
sporting and cultural
activities, education
services in relation to
baseball; educational
information in relation
to baseball; organization
of educational
competitions in relation
to baseball, organization
of exhibitions for
cultural, educational
services in relation to
baseball; organization of
sports competitions;
entertainment services;
providing sports
facilities;
entertainment
information; Providing
information relating to
sports;
13
December
2021
Objected
LPA 475/2025 Page 14 of 67
presentation of live
performances, sports
camp services,
instruction and
coaching (training)
services; Preparation of
entertainment
programmes
for broadcasting;
Organization of live
shows; Conducting of
live sports
events; production and
rental of video tapes and
DVDs featuring
recorded baseball
programs; Recording,
production and
distribution of
films, video and audio
recordings, radio and
television programs;
providing on -line
electronic publications;
Online game services;
Providing online
newsletters in the fields
of sports entertainment.
6
41 Education; providing of
training; entertainment;
sporting and cultural
activities, education
services; educational
information;
organization of
educational
competitions,
organization of
exhibitions for
cultural, educational;
organization of
sports competitions;
entertainment services;
providing sports
facilities;
entertainment
information; Providing
information relating to
sports;
presentation of live
performances, sports
camp services,
instruction and
coaching (training)
services; Preparation of
entertainment
programmes
for broadcasting;
13
December
2021
Registered
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Organization of live
shows; Conducting of
live sports
events; production and
rental of video tapes and
DVDs featuring
recorded baseball
programs; Recording,
production and
distribution of
films, video and audio
recordings, radio and
television programs;
providing on -line
electronic publications;
Online game services;
Providing online
newsletters in the fields
of sports entertainment.
7
25 Clothing, footwear,
headgear
8 February
2022
Opposed
(xi) Though the respondent’s first 1983 registration of the
BLUE JAYS mark, in Class 25, was deemed to have been
abandoned on account of non-renewal, the application, by the
respondent, for registration of the mark, indicated that the
respondent had adopted the BLUE JAYS marks in India prior to
the appellants. The respondent continues to use its BLUE JAYS
marks till date without interruption across the world, including
India.
(xii) Owing to priority in adoption, long, continuous and
uninterrupted user and worldwide publicity, the respondent’s
BLUE JAYS marks are familiar to a large number of consumers
and members of the trade in India. There is considerable
spillover of the global reputation of the said marks into India.
The BLUE JAYS marks, therefore, enjoy trans-border
LPA 475/2025 Page 16 of 67
reputation in India.
(xiii) The respondent’s BLUE JAYS mark also, therefore,
qualifies as a “well known trade mark” within the meaning of
Section 2(1)(zg)
11
read with Section 11(6)
12
of the Trade Marks
Act.
(xiv) The word mark BLUE-JAY stood registered in favour of
the appellants, in Class 25, for “shirts, pants, trousers, jeans,
jackets and readymade garments”, vide Registration No.
815236, with effect from 19 August 1998.
(xv) Notice of Opposition No. DEL-161698 was filed by the
respondent opposing the grant of registration to the world mark
BLUE-JAY in favour of the appellants in Class 25, on 3
February 2004. The counter statement to the said notice of
opposition was filed by the appellants on 9 November 2004. In
its counter statement, the appellants contended that, unlike the
11
(zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so
to the substantial segment of the public which uses such goods or receives such services that the use of such
mark in relation to other goods or services would be likely to be taken as indicating a connection in the course
of trade or rendering of services between those goods or services and a person during the mark in relation to
the first-mentioned goods or services.
12
(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 application 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
extent to which the trade mark has been recognised as a well-known trade mark by any court or
Registrar under that record.
LPA 475/2025 Page 17 of 67
respondent who used the BLUE JAYS marks for sport goods,
the appellant was using the BLUE-JAY mark for readymade
garments, which were distinct and different. Moreover, it was
contended that the blue jay was a bird, native to North America
and that, therefore, the mark BLUE JAYS lacked
distinctiveness and was incapable of distinguishing any goods
and was not, therefore, registrable in view of Section 9(1)(a)
13
of the Trade Marks Act.
(xvi) As evidence in support of the notice of opposition could
not be filed by the respondent on or before 12 August 2005
when the time to do so expired, the appellants’ application
proceeded to registration on 8 June 2017.
6.1.2 In this factual backdrop, the respondent sought removal of the
appellants’ BLUE-JAY mark from the Register on the following
grounds:
(i) The continuance, on the Register of Trade Marks, of the
appellants’ BLUE-JAY mark, would irreparably damage,
tarnish and injure the BLUE JAYS mark, of which the
respondent was the prior adopter, user (dating back to 1976)
and registrant.
13
9. Absolute grounds for refusal of registration. –
(1) The trade marks—
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
*****
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use made of it or
is a well-known trade mark.
LPA 475/2025 Page 18 of 67
(ii) The appellants had no proper cause for adopting the
BLUE-JAY mark.
(iii) The BLUE JAYS mark of the respondent was coined,
fanciful and arbitrary, and was not indicative of the associated
goods or services.
(iv) The BLUE JAYS mark had a global reputation, which
had also percolated into India much prior to the adoption of the
BLUE-JAY mark by the appellants.
(v) The BLUE JAYS mark also had extensive and long use
within India itself, inter alia because
(a) the respondent’s websites, which prominently
displayed and promoted the BLUE JAYS mark, were
accessible throughout the world, including India, at least
since 1996,
(b) the respondent was directly using the BLUE JAYS
mark in India at least since 1997, since which time the
respondent began directly broadcasting MLB games,
including games involving the BLUE JAYS club, in India
through its official broadcast partners,
(c) the respondent was subjected to numerous pop-
culture references in Hollywood movies and TV shows,
prior to August 1998, and
(d) the respondent’s BLUE JAYS mark was regularly
cited in various articles published in periodicals with
global circulation, and sizeable Indian readership.
LPA 475/2025 Page 19 of 67
(vi) The appellants ought, therefore, to have been aware of
the reputation and goodwill of the respondent’s BLUE JAYS
mark. This was also apparent from the near identity of the two
marks.
(vii) The application of the appellants for registration of the
BLUE-JAY mark was, therefore, tainted with bad faith. The
mark ought not to have been registered in view of Section
11(10)(ii) of the Trade Marks Act.
(viii) As the respondent’s BLUE JAYS mark was an earlier
mark, the appellants’ BLUE-JAY mark ought not to have been
registered.
(ix) Concurrent existence of the two marks was likely to
result in confusion in the minds of the public, as the marks were
nearly identical, and were used for the same goods.
(x) The adoption of the BLUE-JAY mark by the appellants
was, therefore, with an intention of passing off their goods as
those of the respondent.
(xi) Priority of user trumped registration.
(xii) As the respondent’s BLUE JAYS mark was well known,
the appellants’ mark ought not to have been registered in view
of Section 11(10)(i) of the Trade Marks Act.
LPA 475/2025 Page 20 of 67
(xiii) The appellants were not the bona fide proprietor of the
BLUE-JAY mark. They could not, therefore, have sought
registration of the mark, under Section 18(1)
14
.
6.1.3 To support its claim of trans-border reputation of the BLUE
JAYS mark having percolated into India, the respondent filed, with
the petition,
(i) various news articles, as Documents 6, 7, 10 and 25,
(ii) screen shots evidencing online sale of merchandise
carrying the respondent’s BLUE JAYS mark, as Document 13,
as well as websites evidencing their availability for sale in
India, as Document 16,
(iii) printouts of the web pages of the MLB franchise, inter
alia featuring the respondent’s BLUE JAYS mark, as
Documents 14 and 15,
(iv) screenshots from broadcasts of MLB games featuring the
respondent’s BLUE JAYS mark, as Document 17,
(v) documents relating to the “Million Dollar Arm” contest
conducted by the MLB, in which two Indians made their debut,
which was also covered in a Disney motion picture titled
“Million Dollar Arm”, as Document 22,
(vi) documents evidencing that Fox Sports Asia, VEQTA and
Facebook were the international broadcasters for MLB Baseball
games in India, as Document 23, and
14
18. Application for registration. –
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by
him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed
manner for the registration of his trade mark.
LPA 475/2025 Page 21 of 67
(vii) online articles in well-known Indian periodicals and
newspapers covering the opening of the respondent’s office in
India in July 2019, as Document 28.
6.2 Stand of the appellants, as the respondents in CO (Comm IPD-
TM) 279/2023
In response, the appellants, as the respondents before the learned
Single Judge, contended thus:
(i) The evidence placed on record by the respondent at best
manifested use of the BLUE JAYS mark in the US and Canada.
There was no evidence of use of the mark in India.
(ii) There was no evidence of any trans-border reputation of
the BLUE JAYS mark in India, or spillover, into India, of the
reputation of the mark overseas. The respondent had placed
only one invoice on record, in the form of Document 16, of
someone ordering their product in Delhi.
(iii) Presence of the respondents on social media platforms is
no evidence of goodwill or reputation, in the absence of actual
use of the respondent’s mark.
(iv) The respondent had not placed, on record, any evidence
which was specific to India.
(v) The respondent has no offices, stores or operations in
India.
LPA 475/2025 Page 22 of 67
(vi) In the absence of any evidence of use, promotion or
recognition of the respondent’s BLUE JAYS mark in India, the
mark could not qualify as a well-known trade mark within the
meaning of Section 2(1)(zg) or 11(6) of the Trade Marks Act.
(vii) Baseball is not a popular sport in India.
(viii) The respondent had not renewed its applications for
registration of the trademark BLUE JAYS. Moreover, the
applications were filed on “proposed to be used” basis. The
respondent did not have any valid registration under Class 25.
(ix) As against this, the appellants were the holders of a valid
registration for the mark BLUE-JAY in Class 25 since 1998.
Moreover, the registration was specific to ready-made
garments, which were unrelated to the respondent’s activities.
The appellants prayed, therefore, that the Section 57 petition be
dismissed.
The Impugned Judgment
7. In the impugned judgment, the learned Single Judge has
proceeded to analyse the issues involved, and return his findings
thereon, as under:
(i) Where cancellation of a registered trade mark was sought
LPA 475/2025 Page 23 of 67
on the basis of an identical or similar trade mark, and both
marks related to similar goods or services falling within the
same class, the adoption of the marks was of vital importance.
Therefore, the fact that the Respondents had first applied for
registration of the mark BLUE JAYS, albeit on proposed to be
used basis in Class 25, only to give it up, and that the appellants
had subsequently applied for registering the mark BLUE-JAY
in Class 25, had to be considered.
(ii) The appellants had provided contradictory reasons for
adopting the mark BLUE-JAY. In their counter-statement filed
before the Trade Marks Registry, it was stated that the mark
BLUE-JAY had been adopted from the name of a common bird
of North America. As against this, in their reply to the Section
57 petition of the respondent, before the learned Single Judge,
the appellants contended that their father, who was an employee
of the Punjab National Bank, Sonipat, used to visit the Blue Jay
Tourist Resort in Panipat for having meals and that he had
suggested the use of the name BLUE-JAY, which was also the
name of a famous bird of North America. Thus, the appellants
had, before the learned Single Judge, concocted an entirely new
explanation for adopting the mark BLUE-JAY. This
contradiction raised a credible doubt in the mind of the Court as
to the reliability of the adoption of the mark BLUE-JAY by the
appellants. It reflected the appellants’ mala fides and dishonest
intention to appropriate and ride on the worldwide reputation
and goodwill of the respondents BLUE JAYS mark. The
adoption was, therefore, “shrouded under a dark cloud of
LPA 475/2025 Page 24 of 67
suspicion”. No other valid reason or justification, for adopting
the BLUE-JAY mark, had been provided by the appellants.
(iii) The rival marks were nearly identical.
(iv) The appellants did not seek to contend that, when they
adopted the mark BLUE-JAY, they were unaware of the
respondent’s BLUE JAYS mark. In view of the fact that the
respondent had applied for registration of the BLUE JAYS
mark much before the appellants, it was highly unlikely that the
appellants were unaware of the respondent’s mark at the time
when they applied for registration of their BLUE-JAY mark.
(v) On the aspect of trans-border reputation of the
respondent’s BLUE JAYS mark, the learned Single Judge has
held, in para 26 of the impugned judgment, thus:
“26. In any event, the petitioner's trademark 'BLUE
JAYS' has a worldwide presence since its adoption in the
year 1976. The same is used/ consistently depicted on the
uniform of the MLB franchise/ Club for the city of Toronto
as well as on goods and services associated with the Club,
thereby acquiring a substantial, irrefutable, and
insurmountable reputation and goodwill globally. The
petitioner was/ is also the holder of the trademark 'BLUE
JAYS' in India under various Class(s), a few of which were
applied well before the respondent nos.1 and 2 applied for
registration of the impugned mark. Moreover, the petitioner
has placed sufficient material like the presence of 'BLUE
JAYS' marks on its websites, which are accessible in India
since the year 1996, proof of its products under the 'BLUE
JAYS' marks being available in India since the year 1996
and the broadcasting of the MLB matches in India at least
since the year 1997. The same are sufficient for the
petitioner to have established ' use ', which need not be
actual/ physical, in India.”
LPA 475/2025 Page 25 of 67
(vi) The rights of a prior user were superior to the right of a
subsequent user, even if the subsequent user was the proprietor
of a registered trade mark. Reliance has been placed, to sustain
this finding, on the judgment of the Supreme Court in Neon
Laboratories Ltd v. Medical Technologies Ltd
15
.
(vii) Further, the determinative test for establishing prior user
was identifying who was the first to adopt and use the mark in
the world market, as held by the decisions in Innovolt Inc. v.
Kevin Power Solutions Ltd
16
and Icrave LLC v. Icrave Design
Pvt Ltd
17
, both rendered by learned Single Judges of this Court.
Admittedly, the appellants had adopted the mark BLUE-JAY
only in 1998, 22 years after adoption of the mark BLUE JAYS
by the respondent.
(viii) Following these observations, the learned Single Judge
has, in para 31 of the impugned judgment, observed and held as
under:
“31. In the light of the aforesaid, particularly,
considering the dark clouds shrouded over the adoption of
the impugned mark 'BLUE-JAY' by the respondent nos.1
and 2, its close resemblance with the petitioner's trademark
'BLUE JAYS', and its suspicious usage for the garments
covered in Class 25 collectively establishes that the
adoption thereof was not bona fide but was rather tainted
with dishonest intention to ride upon the goodwill and
reputation of the petitioner. When the element of 'bad faith'
in adoption is so evident, the petitioner is entitled to the
benefit of Section 11(10)(ii) of the TM Act as it mandates
the Registrar of Trade Marks to take the same into account,
15
(2016) 2 SCC 672
16
2015 SCC OnLine Del 13730
17
2013 (1) RAJ 618 (Del)
LPA 475/2025 Page 26 of 67
more so, if it is affecting the rights of a party relating to a
trademark.”
Apropos the contours of the expression “bad faith”, as
contained in Section 11(10)(ii), the learned Single Judge has
relied on the judgement of one of us (C. Hari Shankar J),
sitting singly, in BPI Sports LLC v. Saurabh Gulati
18
.
8. Following the above findings, the impugned judgment
concludes thus:
“34. Thus, based on the pleadings and documents on record, the
petitioner has filed documents worthy of credence but on the other
hand there is/ are ' no document(s) ' in support of the adoption of
the impugned mark by the respondent nos.1 and 2, particularly
since they themselves have claimed user after 22 years of the
petitioner's trademark. The aforesaid, are thus sufficient for this
Court to conclude that the petitioner is the undisputed ' prior user '
of the trademark 'BLUE JAYS'.
35. Accordingly, being the ' prior adopter ' and ' prior user ' of
the trademark 'BLUE JAYS', the petitioner certainly has a better/
superior right over the respondent nos.1 and 2, who, in any event,
have come with half-baked truth with hardly any supporting
document(s) qua its adoption. In light of the above, the respondent
nos.1 and 2 cannot claim any benefit of its subsequent use. In view
of the aforesaid, the petitioner has made out a prima facie case for
cancellation of the impugned mark under Section 57 of the TM
Act. Under the existing factual scenario, the facts that the
petitioner has no valid and subsisting registration for the trademark
'BLUE JAYS' in Class 25 in India since it had abandoned the same
and that the application for registration was filed on a ' proposed to
be used ' basis, or that the respondent no.1 after applying for the
impugned mark 'BLUE-JAY' by claiming usage after applying also
in Class 25 has subsequently obtained registration are meaningless,
in fact, of no relevance. In any event, though the application for
registration of the trademark 'BLUE JAYS' in Class 25 was filed
on a ' proposed to be used ' basis by the petitioner, however, as
held in Trustees of Princeton University (supra) the actual usage, if
any, prior in point of time can be established by sufficient/ ample
evidence. As held hereinabove, the petitioner has been able to
18
2023 SCC OnLine Del 2424
LPA 475/2025 Page 27 of 67
show sufficient proof thereof.
*****
37. Accordingly, the case set up/ defenses raised by the
respondents herein and/ or reliance upon Toyota (supra) is of no
assistance.
Conclusion:
38. In view of the foregoing analysis, this Court finds merit in
the case/ submissions of the petitioner and is satisfied that the
petitioner has been able to make out a case for cancellation of the
trademark 'BLUE-JAY' registered in favour of the respondent
nos.1 and 2 vide trademark application no.815236 in Class 25 .
Accordingly, the Registrar of Trade Marks is directed to cancel and
remove the registration of the impugned mark 'BLUE-JAY'
registered vide application no.815236 in Class 25 from the
Register of Trade Marks.”
Rival Submissions before us
9. Submissions of Mr. Chander M. Lall, learned Senior Counsel
for the appellants
9.1 Mr. Lall submits that the appellants’ registration of the BLUE-
JAY trade mark dates back to 19 August 1988 and that the appellants
have placed on record sale agreements, invoices and advertisements
evidencing use of the mark by them with effect from 2002, which is
much prior to the alleged rights being claimed by the respondent in the
BLUE JAYS marks in India. It is also pointed out that the appellants’
BLUE-JAY mark proceeded to registration only after the respondent
had abandoned its objection against the application filed by the
appellants for registration of the mark. It is also pointed out that, till
date, the respondent has not filed any suit alleging infringement or
passing off against the appellants, or sought any injunction against the
use by the appellants, restraining use, by them, of the BLUE-JAY
LPA 475/2025 Page 28 of 67
mark.
9.2 Mr. Lall further submits that there is no evidence worth the
name, placed by the respondent on record, to indicate that the BLUE
JAYS mark of the respondent enjoyed any trans-border reputation in
India. There is no document or evidence indicating any presence, in
India, of the BLUE JAYS mark of the respondent, prior to adoption
and use of the BLUE-JAY mark by the appellants. The trade mark
applications for registration of the BLUE JAYS mark, filed by the
respondent in 1983 and 1988 were on “proposed to be used” basis,
and were abandoned by the respondent itself in 1990 and 1995.
9.3 Mr. Lall further re-emphasises that there is no evidence of use
by the respondent of the BLUE JAYS mark for Class 25 goods in
India. Jerseys and merchandise of the respondent, or of the TBJ Club,
may be sold in baseball playing countries. Baseball, however, is not a
popular sport in India and there are no stores selling TBJ merchandise
in India.
9.4 In fact, submits, Mr. Lall, that there is no evidence of the
respondent having dealt in readymade garments using any mark at any
point, anywhere in the world.
9.5 Mr. Lall once again submits that the respondent has not shown
the existence of any goodwill or reputation of the BLUE JAYS mark
in India. In the absence of any such goodwill or reputation, there was
obviously no reason for the appellants to piggyback on the reputation
of the respondent, or to adopt a mark which was similar to the BLUE
LPA 475/2025 Page 29 of 67
JAYS mark of the respondent which, at the end of the day, is merely a
mark used by a Canadian Baseball Team.
9.6 In this context, it is also pointed out that, of the 30 teams
forming the MLB, the only team outside the US is TBJ, located in
Canada.
9.7 Mr. Lall submits that, in order to succeed in a claim of passing
off, the respondent would have to succeed in demonstrating goodwill
and reputation of the BLUE JAYS mark in India prior to August 1998.
There is no evidence of any such goodwill or reputation prior to
August 1998 or even till today. Mr. Lall points out that the only
surviving class 25 application of the respondent is for the device mark
.
9.8 Mr. Lall has also sought to debunk, document by document, the
claim of the respondent that it enjoyed trans-border reputation of the
BLUE JAYS mark in India. We would advert to these submissions in
our findings which follow hereinafter.
9.9 Mr. Lall submits finally that the learned Single Judge has
proceeded entirely on the basis of bad faith adoption, by invoking
Section 11(10)(ii) of the Trade Marks Act. He submits that the
material cited by the learned Single Judge does not in any way make
out a case of bad faith adoption, by the appellants, of the BLUE-JAY
mark. In the absence of any trans-border goodwill or reputation of the
LPA 475/2025 Page 30 of 67
respondent’s BLUE JAYS mark in India, he submits that there was no
reason why the appellants would surreptitiously seek to adopt a
similar mark. Moreover, he submits that the respondent itself having
abandoned its applications for registration of the BLUE JAYS mark in
India even prior to the adoption of the BLUE JAY mark by the
appellants, the said adoption of the BLUE-JAY mark by the appellants
could not be said to be tainted with bad faith.
10. Submissions of Mr. Urfee Roomi for the respondent
Mr. Urfee Roomi, responding to Mr. Lall’s submissions, adopts the
reasoning contained in the impugned judgment of the learned Single
Judge. He seeks to point out that the learned Single Judge has, for
cogent and convincing reasons, found the adoption of the BLUE-JAY
mark by the appellants to be tainted with bad faith, and that no
occasion arises for this Court to interfere with the said findings in
appeal. He further submits that there was clear and convincing
evidence to indicate the existence of trans-border goodwill and
reputation of the respondent’s BLUE JAYS mark in India. The
finding of the learned Single Judge that the appellants were aware of
the said mark while adopting the BLUE-JAY mark in 1998, he
submits, is unexceptionable, and, even on this sole ground, the
decision of the learned Single Judge to remove the BLUE-JAY mark
of the appellants from the register of Trade Marks deserves to be
upheld.
LPA 475/2025 Page 31 of 67
Analysis
11. Provisions which are required to be considered
11.1 The respondent sought to contend, both before the learned
Single Judge as well as before us, that its BLUE JAYS mark was an
“earlier trade mark” for the purposes of Section 11(1) and 11(2) of the
Trade Marks Act and that, as the appellants’ BLUE-JAY mark was
deceptively similar thereto, and used for identical goods, the mark
should not have proceeded to registration.
11.2 We are unable to agree.
11.3 The proscription against registration of a mark, which is
identical with or similar to an earlier trade mark, as contained in
Sections 11(1) and 11(2) of the Trade Marks Act, applies at the stage
of registration. It has, therefore, to be seen, whether, on the date when
the appellants’ mark was registered, the respondent’s BLUE JAYS
mark was as an “earlier trade mark”.
11.4 The expression “earlier trade mark”, for the purposes of
Sections 11(1) and 11(2) stands defined in the Explanation below
Section 11(4). A mark would qualify as an “earlier trade mark” plainly
said, if (i) it was a prior registered trade mark, or (ii) an application for
registration of the trade mark was pending before the Registrar, or (iii)
it was a well known trade mark on the date of application for
registration of the latter mark.
LPA 475/2025 Page 32 of 67
11.5 Quite clearly, the respondent’s BLUE JAYS mark does not fall
in any of these categories.
11.6 The applications for registration of the BLUE JAYS mark, filed
in 1983 and 1988, already stood abandoned in 1990 and 1995, prior to
the application by the appellants for registration of the BLUE-JAY
mark in 1998. There was, therefore, no prior registration of the
respondent’s BLUE JAYS mark on that date. Nor was any application
for registration of the respondent’s BLUE JAYS mark pending before
the Registrar in August 1998.
11.7 It could not also be said that by 1998, the respondent’s BLUE
JAYS mark, had achieved the status of a well known mark in India.
As we would hold hereinafter, there is no evidence to indicate that,
even as on the date of the filing of the Section 57 petition before this
Court, the respondent’s BLUE JAYS mark qualified as a well known
mark. There is no evidence of use of the said mark in India, or of
percolation, into India, of the trans-border reputation of the said mark
even as on the date of filing of the Section 57 petition, much less as
far back as in 1998. It could not, therefore, be said that on 19 August
1998, the respondent’s BLUE JAYS mark was a “well known trade
mark”.
11.8 In as much as, therefore,
(i) the respondent’s BLUE-JAYS mark was not a registered
trade mark,
(ii) there was no application for registration of the
respondent’s BLUE JAYS mark pending either on the date of
LPA 475/2025 Page 33 of 67
application, by Appellant 1, for registration of the BLUE-JAY
mark, or even till the filing of the Section 57 petition by the
respondents before this Court, and
(iii) the respondent’s BLUE JAYS mark cannot be treated as
a well known trade mark on 19 August 1998, when Appellant 1
had applied for registration of the BLUE-JAY mark, or even on
8 June 2017, when the appellant’s BLUE-JAY mark proceeded
to registration,
the respondent’s BLUE JAYS mark does not qualify as an “earlier
trade mark” for the purposes of Sections 11(1) or 11(2) of the Trade
Marks Act.
11.9 We, therefore, have to examine the present controversy only
apropos Section 11(3)(a) and 11(10)(ii) of the Trade Marks Act.
12. Re. Section 11(3)(a)
12.1 The learned Single Judge has cancelled the registration of the
appellant’s BLUE-JAY mark on the ground that it was adopted in bad
faith. He has, thereby, invoked Section 11(10)(ii) of the Trade Marks
Act. Nonetheless, as the impugned judgement also returns findings of
goodwill and reputation in favour of the respondent’s BLUE JAYS
mark, and even holds that the respondent had led sufficient evidence
to establish “use” of the BLUE JAYS mark in India, we are also
examining whether the registration appellant’s BLUE-JAY trade mark
could be cancelled by invoking Section 11(3)(a).
12.2 Section 11(3)(a) proscribes registration of a trade mark if its use
LPA 475/2025 Page 34 of 67
is liable to be prevented by any law, in particular the law of passing
off.
12.3 The law of passing off, as applicable to trade marks, prohibits
goods of one person from being passed off as goods of another, by
adopting a deceptively similar trade mark. It is classically a tort of
deceit, in which the tortfeasor seeks to ride on the goodwill and
reputation of another, by confusing consumers into believing his
goods to be the other’s though proof of mala fides on the part of the
tortfeasor is not indispensable for a passing off action to succeed. The
existence of goodwill, in the mark which has been imitated is,
therefore, the sine qua non of any passing off action. Apart from
goodwill, the two other requisites, for any passing off action to
succeed, are misrepresentation, by the tortfeasor, and resulting damage
to the other.
12.4 In its comparatively recent decision in Brihan Karan Sugar
Syndicate (P) Ltd v. Yashwantrao Mohite Krushna Sahakari Sakhar
Karkhana
19
, the Supreme Court has approvingly cited the following
passages from Satyam Infoway Ltd v. Siffynet Solutions (P) Ltd
20
,
which identify the ingredients of passing off as a tort:
“13. The next question is, would the principles of trade mark
law and in particular those relating to passing off apply? An action
for passing off, as the phrase “passing off” itself suggests, is to
restrain the defendant from passing off its goods or services to the
public as that of the plaintiff's. It is an action not only to preserve
the reputation of the plaintiff but also to safeguard the public. The
defendant must have sold its goods or offered its services in a
manner which has deceived or would be likely to deceive the
19
(2024) 2 SCC 577
20
(2004) 6 SCC 145
LPA 475/2025 Page 35 of 67
public into thinking that the defendant's goods or services are the
plaintiff's. The action is normally available to the owner of a
distinctive trade mark and the person who, if the word or name is
an invented one, invents and uses it. If two trade rivals claim to
have individually invented the same mark, then the trader who is
able to establish prior user will succeed. The question is, as has
been aptly put, who gets these first? It is not essential for the
plaintiff to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a plaintiff
in a passing off action is misrepresentation by the defendant to the
public. The word “misrepresentation” does not mean that the
plaintiff has to prove any mala fide intention on the part of the
defendant. Of course, if the misrepresentation is intentional, it
might lead to an inference that the reputation of the plaintiff is such
that it is worth the defendant's while to cash in on it. An innocent
misrepresentation would be relevant only on the question of the
ultimate relief which would be granted to the plaintiff [Cadbury-
Schweppes (Pty) Ltd. v. PUB Squash Co. (Pty) Ltd.
21
; Erven
Warnink Besloten Vennootschap v. J. Townend & Sons (Hull)
Ltd.
22
] . What has to be established is the likelihood of confusion
in the minds of the public (the word “public” being understood to
mean actual or potential customers or users) that the goods or
services offered by the defendant are the goods or the services of
the plaintiff. In assessing the likelihood of such confusion the
courts must allow for the “imperfect recollection of a person of
ordinary memory” [Aristoc Ltd. v. Rysta Ltd.
23
].
15. The third element of a passing off action is loss or the
likelihood of it.”
12.5 Before, however, adverting to either of these provisions, we are
required first to address the findings of the learned Single Judge that
there was evidence of use by the respondent of the BLUE JAYS mark
in India and that the mark enjoyed goodwill and reputation.
12.6 Both these findings are essentially contained in para 26 of the
21
(1981) 1 WLR 193
22
(1979) 3 WLR 68 (HL)
23
1945 AC 68 (HL)
LPA 475/2025 Page 36 of 67
impugned judgment.
12.7 Re. use of the mark BLUE JAYS by the respondent.
12.7.1 In the concluding sentence in paragraph 26 of the impugned
judgment, the learned Single Judge has held that there was sufficient
evidence of established use, by the respondent, of the BLUE JAYS
mark in India. From a reading of paragraph 26, however, the basis of
this finding is not immediately apparent. In fact, the observations in
paragraph 26 of the impugned judgment, which precede the finding of
established use, appear more to relate to the aspect of trans-border
goodwill and reputation, rather than “use”. It appears to us, in fact,
that the impugned judgment has conflated the aspects of “use” and
trans-border goodwill and reputation.
12.7.2 “Use” of a trademark has a definite connotation in the Trade
Marks Act. Section 2(2)(b) and (c) of the Trade Marks Act cover,
within the meaning of the expression “use” of a mark, (i) use of
printed or other visual representations of the mark, (ii) use of the mark
upon, or in any physical or in any other relation whatsoever, to goods,
or (iii) use of the mark as part of any statement about the availability,
provision or performance or services.
12.7.3 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,
LPA 475/2025 Page 37 of 67
by the respondent, within India. At least, prior to 1998, there is little
or no evidence of such use.
12.8 Re: trans-border goodwill and reputation
12.8.1 The learned Single Judge has, in paragraph 26 of the impugned
judgment, observed, firstly, that the respondent’s trademark BLUE
JAYS has a worldwide presence since its adoption in 1976, and,
secondly, that the consistent use of the BLUE JAYS mark on the
uniforms of the TBJ club, as well as on goods and services associated
with the club, had resulted in the BLUE JAYS mark acquiring
“substantial, irrefutable and insurmountable” global goodwill and
reputation.
12.8.2 Acquisition of global goodwill and reputation is entirely
irrelevant, while examining an allegation of passing off. It is goodwill
and reputation in India that matters. The Court has to assess whether
the “global” goodwill, assuming it exists, has percolated into India.
Before arriving at any finding that the BLUE-JAY mark could be
cancelled under Section 11(3)(a), therefore, the Court would have to
satisfy itself that respondent’s BLUE JAYS mark enjoyed goodwill,
not merely globally, but also within India, before August 1998 when
the appellants adopted the BLUE-JAY mark.
12.8.3 The impugned judgment does not, in fact, return any specific
finding to the effect that the respondent’s BLUE JAYS mark enjoyed
any goodwill or reputation in India. In paragraph 26, after first
observing that the mark had global goodwill and reputation, the
LPA 475/2025 Page 38 of 67
learned Single Judge has proceeded to hold that (i) the applications,
by the respondent, for registration of the BLUE JAYS trademark in
India prior to adoption of the BLUE-JAY mark by the appellants, (ii)
the presence of the respondent’s BLUE JAYS mark on its websites
which were accessible in India since 1996, (iii) the availability of
products bearing the BLUE JAYS mark of the respondent in India
since 1996 and (iv) the broadcasting of the MLB matches in India at
least since 1997, were sufficient to prove “use”, by the respondent, of
the BLUE JAYS mark in India prior to 1998.
12.8.4 We have already found the finding that the respondent was
using the BLUE JAYS mark in India prior to 1998 to be
unsustainable. We, however, proceed to examine whether the factors
noted by the learned Single Judge in paragraph 26 of the impugned
judgment, even read cumulatively with the other material on which
the respondent sought to rely before the learned Single Judge, as
enumerated in para 6.1.3 supra, would make out a case of trans-border
reputation of the BLUE JAYS mark in India prior to 19 August 1998.
12.8.5 The answer, to our mind, has necessarily to be in the negative.
12.8.6 The law with respect to trans-border reputation and goodwill in
a passing off action are the judgments of the Supreme Court in N.R.
Dongre v. Whirlpool Corporation
24
, Milmet Oftho Industries v.
Allergan Inc.
25
and Toyota Jidosha Kabushiki Kaisha v. Prius Auto
24
(1996) 5 SCC 714
25
(2004) 12 SCC 624
LPA 475/2025 Page 39 of 67
Industries Ltd.
26
12.8.7 N.R. Dongre
In N.R. Dongre, the respondent Whirlpool Corporation
27
sued the
appellant N R Dongre
28
for having manufactured and sold washing
machines under the mark ‘WHIRLPOOL’, thereby confusing and
deceiving buyers into believing that they had been manufactured by
Whirlpool. Though Whirlpool was located abroad, and had no
subsisting trade mark registration in India, the Supreme Court upheld
the decision of this Court to injunct Dongre, as Whirlpool had the
requisite trans border reputation which had spilled over into India.
This finding was returned on the basis of the following facts:
(i) Though there was no evidence of actual sales of
Whirlpool appliances in India, Whirlpool had been frequently
advertised and featured in international magazines having
Indian circulation.
(ii) Whirlpool was trading in its products in several parts of
the world and was also sending the products to India in a
limited circle.
(iii) The worldwide reputation of Whirlpool was travelling
trans border to India through commercial publicity made in
magazines which were available or bought in India, in the strata
of society which used washing machines.
26
(2018) 2 SCC 1
27
"Whirlpool" hereinafter
28
“Dongre” hereinafter
LPA 475/2025 Page 40 of 67
12.8.8 Milmet Oftho
12.8.8.1 In Milmet Oftho, the respondent Allergan Inc
29
sued
Milmet Oftho Industries
30
for having used the mark ‘OCUFLOX’ for
eye drops, in respect of which Allergan claimed to be the prior owner
and user. Allergan had no registration of the mark in India, though it
claimed to have several registrations worldwide. Applications, for
registration of the mark, filed by Allergan and Milmet were, however,
pending with the Indian Trade Marks Registry.
12.8.8.2 A learned Single Judge of the High Court declined
injunction, holding that Allergan was not selling OCUFLOX drops in
India, and that Milmet had first introduced the product in this country.
An appeal, therefrom, was allowed by the Division Bench, on the
premise that Allergan was first in the market.
12.8.8.3 The Supreme Court, in appeal, upheld the decision of the
Division Bench, reasoning thus:
“8. We are in full agreement with what has been laid down by
this Court. Whilst considering the possibility of likelihood of
deception or confusion, in present times and particularly in the
field of medicine, the courts must also keep in mind the fact that
nowadays the field of medicine is of an international character.
The court has to keep in mind the possibility that with the passage
of time, some conflict may occur between the use of the mark by
the applicant in India and the user by the overseas company. The
court must ensure that public interest is in no way imperilled.
Doctors, particularly, eminent doctors, medical practitioners and
persons or companies connected with the medical field keep
abreast of latest developments in medicine and preparations
worldwide. Medical literature is freely available in this country.
29
“Allergan” hereinafter
30
“Milmet” hereinafter
LPA 475/2025 Page 41 of 67
Doctors, medical practitioners and persons connected with the
medical field regularly attend medical conferences, symposiums,
lectures, etc. 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. However, one note of caution
must be expressed. 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.
9. In the present case, the marks are the same. They are in
respect of pharmaceutical products. The mere fact that the
respondents have not been using the mark in India would be
irrelevant if they were first in the world market. The Division
Bench had relied upon material which prima facie shows that the
respondents' product was advertised before the appellants entered
the field. On the basis of that material the Division Bench has
concluded that the respondents were first to adopt the mark. If that
be so, then no fault can be found with the conclusion drawn by the
Division Bench.”
(Emphasis supplied)
12.8.8.4 The following three important features of this decision
merit mention:
(i) Firstly, it is necessary to note that, even in this case, the
Supreme Court upheld the necessity of the existence of trans
border reputation which has spilled over into India as a
prerequisite for grant of relief. Given the peculiar nature of
pharmaceutical products, the Supreme Court held that, by dint
of extensive literature and advertisements, with which doctors
were necessarily conversant, existence of worldwide reputation
could be presumed.
LPA 475/2025 Page 42 of 67
(ii) Secondly, the Supreme Court, even in such a case and
with full consciousness of the overwhelming public interest
involved, deemed it necessary to enter a cautionary caveat, by
holding that “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”.
(iii) Thirdly, the Supreme Court was also obviously
influenced by the fact that the rival marks were identical, i.e.
OCUFLOX. The case was, therefore, one of clear imitation.
12.8.9 Toyota
12.8.9.1 Toyota is, perhaps, the most authoritative of the
pronouncemenets on trans border reputation and spillover, in the
context of passing off actions.
12.8.9.2 Toyota Jidosha Kabushiki Kaisha
31
was a manufacturer
of automobiles, incorporated in Japan. Toyota instituted a suit against
Prius Auto Industries Ltd.,
32
in this Court, alleging infringement and
passing off, by Prius, by use of the marks ‘TOYOTA’, ‘TOYOTA
INNOVA’, ‘TOYOTA DEVICE’ and ‘PRIUS’. Toyota claimed
31
“Toyota” hereinafter
32
“Prius” hereinafter
LPA 475/2025 Page 43 of 67
priority of user. Interlocutory injunction was granted, by a learned
Single Judge of this Court, in favour of Toyota and against Prius, in
respect of all these marks. Prius appealed to the Division Bench of
this Court only against the injunction granted against use, by it, of the
‘PRIUS’ mark. The Division Bench allowed Prius’ appeal, and set
aside the injunction granted in favour of Toyota and against Prius, qua
use of the ‘PRIUS’ mark by the latter. Toyota appealed to the
Supreme Court.
12.8.9.3 Before the learned Single Judge, Prius contended that the
mark ‘PRIUS’ had not been registered in favour of Toyota for any
product, and no PRIUS car had been shown to have been sold in India
so as to result in creation of any goodwill therein. The product itself
not being in existence in India, Prius contended that there was no
possibility of Indian customers identifying the defendant's registered
‘PRIUS’ trade mark with Toyota's products. Prius claimed, in fact, to
be the first in the Indian market to manufacture add on accessories.
12.8.9.4 The learned Single Judge of this Court held that as (i)
Toyota was the first in the world market to use the mark ‘PRIUS’, (ii)
the goodwill and reputation of the brand ‘PRIUS’, given quantum of
sales of ‘PRIUS’ cars and exponential rise thereof, and (iii) the
permeation, into India, of the goodwill and reputation of Toyota in the
mark ‘PRIUS’, Toyota was entitled to an injunction as sought. In
arriving at the said decision, the learned Single Judge took into
account (a) the fact that the plaintiff's websites had been visited by
many Indians seeking information about Prius cars, (b) exhibitions of
the car held in India and other countries, (c) advertisements in
LPA 475/2025 Page 44 of 67
different automobile magazines and cover stories in international
magazines and journals, and (d) availability of information regarding
the car in information-disseminating portals such as Wikipedia and
Britannica. The learned Single Judge relied on N.R.
Dongre and Milmet Oftho to hold that the Court was required to
examine who was first in using the mark in the world market. Given
the repute that the mark had earned internationally, which, according
to the learned Single Judge, had permeated into India, Toyota was
held to be entitled to an injunction.
12.8.9.5 The Division Bench of this Court disagreed with the
learned Single Judge. It held that the learned Single Judge had taken
into accounts facts pertaining to a period after the date of first use of
the impugned PRIUS mark by Prius. The reportage, and advertising,
of the launching of the Prius car by Toyota in 1997 was held not to be
groundbreaking, and figured as small news items in select papers. The
Division Bench held that the Universality doctrine (which posits that a
mark signifies the same source the world over) had been replaced with
the Territoriality doctrine (which recognized the separate existence of
the trade mark in each country). Prior to April 2001, when Prius
commenced use of the impugned PRIUS mark in India, internet
penetration in the country was held to be limited, and insufficient to
justify an inference of establishment, by Toyota, of its goodwill and
reputation in India.
12.8.9.6 The Supreme Court, in its judgment, identified, at the
outset, the three ingredients of passing off as goodwill of the plaintiff,
misrepresentation by the defendant, and damage suffered by the
LPA 475/2025 Page 45 of 67
plaintiff as a consequence.
12.8.9.7 Paras 29 to 39 of the report, thereafter, deal with the
territoriality doctrine, which applied to trade mark passing off in
preference to the universality doctrine. They merit reproduction, in
extenso, thus:
“29. The view of the courts in UK can be found in the decision
of the UK Supreme Court in Starbucks
33
wherein Lord Neuberger
observed as follows:
“52. As to what amounts to a sufficient business to
amount to goodwill, it seems clear that mere reputation is
not enough…. 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.”
30. It seems that in Starbucks, the Apex Court of UK had
really refined and reiterated an earlier view in Athletes’ Foot
Mktg. Associates Inc. v. Cobra Sports Ltd.
34
, 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 …”
33
Starbucks (HK) Ltd v. British Sky Broadcasting Group, (2015) 1 WLR 2628
34
1980 RPC 343
LPA 475/2025 Page 46 of 67
31. A passing reference to a similar view of the Federal Court
of Australia in Taco Bell v. Taco Co. of Australia
35
, may also be
made.
32. Prof. Cristopher Wadlow's view on the subject appears to
be that the test of whether a foreign claimant may succeed in a
passing-off action is whether his business has a goodwill in a
particular jurisdiction, which criterion is broader than the
“obsolete” test of whether a claimant has a business/place of
business in that jurisdiction. If there are customers for the
claimant's products in that jurisdiction, then the claimant stands in
the same position as a domestic trader.
33. The overwhelming judicial and academic opinion all over
the globe, therefore, seems to be in favour of the territoriality
principle. We do not see why the same should not apply to this
country.
34. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spillover of the
reputation and goodwill of the mark used by the claimant who has
brought the passing-off action. In the course of such determination
it may be necessary to seek and ascertain the existence of not
necessarily a real market but the presence of the claimant through
its mark within a particular territorial jurisdiction in a more subtle
form which can best be manifested by the following illustrations,
though they arise from decisions of courts which may not be final
in that particular jurisdiction.
35. In LA Societe Anonyme Des Anciens Etablissements
Panhard v. Panhard Levassor Motor Co. Ltd.
36
, the plaintiffs
were French car manufacturers who had consciously decided to not
launch their cars in England (apprehending patent infringement).
Nevertheless, some individuals had got them imported to England.
It was seen that England was one of the plaintiff's markets and
thus, in this case, permanent injunction was granted. Similarly
in Grant v. Levitt
37
, a Liverpool business concern trading as the
Globe Furnishing Company, obtained an injunction against the use
of the same name in Dublin as it was observed that advertisements
by the plaintiff had reached Ireland and there were Irish customers.
36. C & A Modes v C & A (Waterford) Ltd.
38
, was a case
where the plaintiffs operated a chain of clothes stores throughout
35
(1981) 60 FLR 60 (Aust)
36
(1901) 2 Ch 513
37
(1901) 18 RPC 361
38
1976 IR 198 (Irish)
LPA 475/2025 Page 47 of 67
the UK and even in Northern Ireland but not in the Republic of
Ireland where the defendants were trading. The Court held that,
“a very substantial and regular custom from the Republic of
Ireland was enjoyed by this store. Up to that time an
excursion train travelled each Thursday from Dublin to
Belfast, and so great was the influx of customers from the
Republic as a result of that excursion that the store
ordinarily employed extra part-time staff on Thursday on
the same basis as it did on Saturday which were normally
the busiest shopping days.”
The said view has since been upheld by the Irish Supreme Court.
37. Whether the second principle evolved under the trinity test
i.e. triple identity test laid down in Reckitt & Colman Products
Ltd. v Borden Inc
39
. would stand established on the test of
likelihood of confusion or real/actual confusion is another question
that seems to have arisen in the present case as the Division Bench
of the High Court has taken the view that the first test i.e.
likelihood of confusion is required to be satisfied only in quia
timet actions and actual confusion will have to be proved when the
suit or claim is being adjudicated finally as by then a considerable
period of time following the initiation of the action of passing-off
might have elapsed. Once the claimant who has brought the action
of passing-off establishes his goodwill in the jurisdiction in which
he claims that the defendants are trying to pass off their goods
under the brand name of the claimant's goods, the burden of
establishing actual confusion as distinguished from possibility
thereof ought not to be fastened on the claimant. The possibility or
likelihood of confusion is capable of being demonstrated with
reference to the particulars of the mark or marks, as may be, and
the circumstances surrounding the manner of sale/marketing of the
goods by the defendants and such other relevant facts. Proof of
actual confusion, on the other hand, would require the claimant to
bring before the Court evidence which may not be easily
forthcoming and directly available to the claimant. In a given
situation, there may be no complaints made to the claimant that
goods marketed by the defendants under the impugned mark had
been inadvertently purchased as that of the plaintiff claimant. The
onus of bringing such proof, as an invariable requirement, would
be to cast on the claimant an onerous burden which may not be
justified. Commercial and business morality which is the
foundation of the law of passing-off should not be allowed to be
defeated by imposing such a requirement. In such a situation,
likelihood of confusion would be a surer and better test of proving
39
(1990) 1 WLR 491
LPA 475/2025 Page 48 of 67
an action of passing-off by the defendants. Such a test would also
be consistent with commercial and business morality which the
law of passing-off seeks to achieve. In the last resort, therefore, it
is preponderance of probabilities that must be left to judge the
claim.
38. The next exercise would now be the application of the
above principles to the facts of the present case for determination
of the correctness of either of the views arrived at in the two-tier
adjudication performed by the High Court of Delhi. 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 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.
39. All these should lead to us to eventually agree with the
conclusion of the Division Bench of the High Court that the brand
name of the car Prius had not acquired the degree of goodwill,
reputation and the market or popularity in the Indian market so as
LPA 475/2025 Page 49 of 67
to vest in the plaintiff the necessary attributes of the right of a
prior user so as to successfully maintain an action of passing-off
even against the registered owner. In any event the core of the
controversy between the parties is really one of appreciation of the
evidence of the parties; an exercise that this Court would not
undoubtedly repeat unless the view taken by the previous forum is
wholly and palpably unacceptable which does not appear to be so
in the present premises.”
(Italics and underscoring supplied)
12.8.9.8 Toyota is a defining authority on the evidence which can,
or cannot, make out a case of trans border reputation and goodwill.
12.8.9.9 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.
12.8.10 In paragraph 26 of the impugned judgment, however, the
learned Single Judge has practically relied on identical, or even lesser,
material, to hold that use of the BLUE JAYS mark in India by the
respondent, prior to August 1998, stood established.
12.8.11 Before adverting, now, to the individual elements cited
by the respondent, to support its stand that the BLUE JAYS mark
enjoyed trans border reputation and goodwill in India, we have to bear
certain basic principles in mind.
LPA 475/2025 Page 50 of 67
12.8.12 Firstly, there is no presumption that a mark, howsoever
wide or global its reputation might otherwise be, has trans border
reputation in India. Trans border reputation in India has to be
positively proved. This is especially shown in the case of marks which
may be associated with activities which are not popular or well known
in India. Invoking this principle, the appellants have sought to contend
that baseball, as a sport, is not followed in India by any substantial
part of the populace. The respondent’s BLUE JAYS mark is
exclusively associated with the TBJ Club, which is a baseball Club
located in Canada. Mr. Lall submits that the mark might, therefore,
have considerable goodwill and reputation in Canada, perhaps in the
US and, perhaps, also in other countries which play baseball or where
baseball is a popular sport. In a country like India, where baseball is
not played and is hardly followed, it is contended by the appellants
that the mark of the TBJ Club cannot be said to have any goodwill or
reputation. Baseball, in India, is not cricket.
12.9 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
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
LPA 475/2025 Page 51 of 67
accessed in India would have also to be pleaded.
12.10 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.
12.11 The same principle applies to publication of marks in
periodicals, magazines, etc. With the proliferation of the internet,
most magazines, periodicals and the like are now available globally.
Every mark which figures in such magazines or periodicals cannot,
therefore, be said to have trans-border reputation within India. There
would have to be positive assertions regarding the readership or
subscription of such magazines among Indians. Besides, such
assertions cannot be merely in the nature of bald statements, but
would also have to be supported by disclosure of the material on
which the assertion is made, even if positive evidence in that regard
may be deferred to the stage of trial. In the case of newspapers or
LPA 475/2025 Page 52 of 67
periodicals, empirical material should also be forthcoming that the
newspapers or periodicals are widely circulated in the country.
Offices of professionals often stock magazines, to occupy the time of
that those who are awaiting an appointment. The mere fact that some
of them may be sports magazines does not ipso facto indicate that
every sport, with reference to which an article may be contained in the
magazines, has goodwill or reputation.
12.12 Goodwill and reputation, it has to be remembered, is a two-way
street. One cannot claim to have goodwill and reputation, unless
others feel the same. Thumping one’s own chest, and claiming to be
famous, is mere false hope, and nothing more. Goodwill and
reputation are positive attributes, relative to others. The purpose of
requiring establishment of goodwill and reputation, in passing off
actions, has to be remembered. They are not empty incantations.
Passing off, in its very essence, involves misleading the consumer
public into believing one’s goods or services, to be those of another.
If the other has no goodwill or reputation, the very raison d’ etre of
alleging passing off fails. Why would one pass off one’s goods as
those of another, if the other has no goodwill or reputation? Ergo,
questions Mr. Lall, “Why on earth would my client adopt a mark
which belongs to a baseball club based out of Canada?”
12.13 The submission has weight, and merit.
12.14 We have to examine the issue of whether the material, on which
the respondent has placed reliance to make out a case of trans border
reputation does, or does not, do so, keeping in mind the above
LPA 475/2025 Page 53 of 67
principles.
12.15 Additionally, the Court is also to keep in mind the fact that the
appellants had applied for registration of the BLUE-JAY mark on 19
August 1998. Existence of sufficient goodwill or reputation in the
respondent’s BLUE JAYS mark would, therefore, have to be
established as on 19 August 1998, in order to sustain a case of passing
off. This follows from the judgment in Toyota, in which the Supreme
Court has clearly held that a plaintiff can succeed in a claim of
passing off against the defendant only if the plaintiff can establish the
existence of sufficient goodwill or reputation in its mark prior to the
adoption of the mark by the defendant. Material which pertains to any
period after 19 August 1998 is, therefore, of no relevance in assessing
the existence of goodwill or reputation, in India, of the respondent’s
BLUE JAYS mark in the present case and cannot, therefore, constitute
a basis to strike the appellants’ BLUE-JAY mark off the register in
exercise of the power conferred by Section 11(3)(a) of the Trade
Marks Act.
12.16 Thus viewed, there is no material, whatsoever, which can
indicate the existence of any – much less substantial – goodwill or
reputation of the BLUE JAYS mark in India, before August 1998.
12.17 The observations and findings of the learned Single Judge in
para 26 of the impugned judgment are clearly contrary to the extant
legal position. The learned Single Judge has returned positive findings
of goodwill, in favour of the BLUE JAYS mark of the respondent, on
the ground that (i) the mark is “used/consistently depicted on the
LPA 475/2025 Page 54 of 67
uniform of the MLB franchise/Club for the city of Toronto as well as
on goods and services associated with the Club”, (ii) the mark had,
thereby, acquired a “substantial, irrefutable and insurmountable
reputation and goodwill globally, (iii) the respondent was the “holder
of the trademark ‘BLUE JAYS’ in India under various Class(s), a few
of which were applied well before the respondent nos. 1 and 2 applied
for registration of the impugned mark”, (iv) the respondent had placed
“sufficient material like (a) the presence of ‘BLUE JAYS’ mark on its
websites, which are accessible in India since the year 1996, (b) proof
of its products under the ‘BLUE JAYS’ marks being available in India
since the year 1996 and (c) broadcasting of the MLB matches in India
since the year 1997”.
12.18 We are unable to sustain these findings.
12.19 In the first place, the finding that the respondent was the holder
of the trade mark BLUE JAYS in India under various Classes, for
some of which the respondent had applied well before the appellant
applied for registration of the BLUE-JAY mark, is, with respect,
incorrect. The only two applications filed by the respondent for the
BLUE JAYS mark were in 1983 and 1988, for registering the
TORONTO BLUE JAYS word marks, both of which were abandoned
much before the appellants applied for registering its BLUE-JAY
mark. The respondent was never, therefore, the “holder” of the said
marks.
12.20 In fact, in the rejoinder filed before the learned Single Judge,
the respondent has admitted that “at least till 1995”, the respondent
LPA 475/2025 Page 55 of 67
owned one or more valid registration of the BLUE JAYS marks. It is
undisputed that, on 19 August 1998, when Appellant 1 applied for
registration of the BLUE-JAY mark – which the impugned judgment
has removed from the Register – there was no valid registration, held
by the respondent, of any BLUE JAYS mark, in word or device form.
12.21 Secondly, acquisition of global reputation is irrelevant, unless
said reputation has percolated into India.
12.22 Thirdly, merely accessibility of websites, on which the
respondent’s mark figured, or availability of merchandise bearing the
said mark for sale in India, would not make out even a prima facie
case of goodwill or reputation. No reference is made to any
transaction of sale and purchase – except one solitary invoice.
Significantly, the respondent does not seek to contend that goods or
merchandise, bearing the BLUE JAYS mark, was physically available
for sale anywhere in India, or that there is any franchisee, or any brick
and mortar store, which sells the said products.
12.23 The documents on which the respondent places reliance, to
make out a case of goodwill and reputation, too, do not advance its
case. To wit,
(i) Document 12, as filed by the respondent, relates to
articles and photographs available in the Sports Illustrated
magazine of 2 November 1999. It cannot, therefore, constitute a
basis to plead existence of goodwill or reputation, of the
respondent’s BLUE JAYS mark prior to 19 August 1998.
LPA 475/2025 Page 56 of 67
(ii) Document 25 contains printouts of news and media
reports, around the world, featuring the respondent’s BLUE
JAYS mark. The only periodicals cited in these documents are
the New York Times and the Baltimore Sun. There is no
material to indicate that these periodicals had any circulation in
India, at any point of time, much less prior to August 1998.
(iii) Document 27 refers to an article which adverts to the
BLUE JAYS Club. However, the article itself is from a
magazine which was launched only in 2016.
(iv) Document 27 further adverts to references of the BLUE
JAYS Club in the “Friends” sitcom. This, again, is irrelevant as
the “Friends” sitcom was first aired, in India, in 1999.
(v) Document 23 contains printouts from the Wayback
Machine site, and the respondent’s website, evidencing
international broadcasts of MLB games in India. Mere
reference, in news articles, of broadcast of MLB games in
India, cannot constitute a basis for asserting trans-border
reputation. There is no reference, in the petition, to the
viewership of such games within India. Moreover, as the
appellants point out, the screen shots do not refer to the TBJ
Club but only to baseball in general. It has to be remembered
that the respondent is required to establish the existence of
goodwill and reputation, not in baseball as a sport, but in the
BLUE JAYS trade mark.
LPA 475/2025 Page 57 of 67
(vi) Document 26 contains screen shots from the respondent
websites between 1996 and 1997 showing use of the respondent
BLUE JAYS mark and availability of products bearing the
respondent’s BLUE JAYS mark online. As we have already
noted, mere accessibility to websites is no proof of trans-border
reputation. Equally, mere availability of goods online is also no
evidence in that regard unless there is positive material relating
to sale and purchase of the said goods, to a substantial extent.
No such material is forthcoming.
(vii) Similarly, Document 29 refers to excerpts from the
respondent’s website, indicating that the respondent’s goods
bearing the BLUE JAYS mark are available for purchase in
India. In the absence of any material indicating actual sale or
purchase, or at least interest, in the Indian consuming public, to
purchase such goods, the mere availability of goods online
cannot constitute positive material to indicate trans-border
reputation.
(viii) Document 13 refers to excerpts from the respondent’s
website showing sale of licensed goods bearing the
respondent’s BLUE JAYS mark. There is no evidence that any
such sale took place in India or that any consumer from India
purchased the products. The petition does not make any
reference to any person or outlet in India which is licensed to
sell goods bearing the respondent BLUE JAYS mark.
LPA 475/2025 Page 58 of 67
(ix) Document 16 again contains printouts of the respondent
websites evidencing availability of MLB products in India, and
invoices showing shipping of MLB licensed products by the
respondent to India. None of this material pertains to the period
prior to August 1998 and is, therefore, of no significance.
12.24 Given the principles relating to trans-border reputation
elucidated earlier in this judgment, and the law as it emerges from the
decision in Toyota, it is clear that the material cited by the respondent
in its petition does not make out any case of trans border reputation of
the BLUE JAYS mark, in India. There is, in any case, certainly no
material to indicate that the BLUE JAYS mark enjoyed trans-border
goodwill and reputation in India prior to 19 August 1998.
12.25 In the absence of any evidence of trans-border goodwill or
reputation of the respondent’s mark in India prior to 19 August 1998,
it is clear that no case of passing off, by the appellants of its products
or services as those of the respondent, by using the BLUE-JAY mark
can be said to exist.
12.26 Resultantly, no case for removal of the appellants’ BLUE-JAY
mark from the register of Trade Marks under Section 11(3)(a) of the
Trade Marks Act is made out.
13. Re: Section 11(10)(ii) – bad faith adoption
13.1 We now proceed to address the issue of bad faith adoption.
Indeed, the learned Single Judge has primarily directed removal from
LPA 475/2025 Page 59 of 67
the register of Trade Marks, of the appellants’ BLUE-JAY mark on
the ground that its adoption was tainted with bad faith.
13.2 We are of the considered opinion that the material on which the
learned Single Judge has arrived at a conclusion of bad faith adoption
on the part of the appellants of the BLUE-JAY mark is entirely
inadequate for the said purpose.
13.3 The learned Single Judge has repeatedly adverted to the
appellants’ BLUE-JAY mark as “shrouded under a dark cloud of
suspicion”. To our mind, even if this finding were to be treated as
justifiable, it would not make out a case of bad faith adoption. No
amount of suspicion make out a case of bad faith, which has to be
definitively established in order for a mark to be removable from the
register in terms of Section 11(10)(ii) of the Trade Marks Act.
13.4 One of us (C. Hari Shankar, J.), sitting singly, has, in BPI
Sports, considered the ambit of the expression “bad faith” as
employed in Section 11(10)(ii) and held in that regard as under:
“47. “Bad faith” is not defined in the Trade Marks Act. Courts
have, however, cogitated on the concept, in the context of trade
mark law. The Court of Appeals of England and Wales, in
Harrison v. Teton Valley Trading Co. Ltd.
40
, observed thus:
“29. In Surene Pty. Ltd. v. Multiple Marketing Ltd.
41
C000479899/1, the proprietor, multiple marketing,
distributed the applicant for revocation's products under the
trade mark BE NATURAL. The cancellation division held
that the application had been made in bad faith. It said:
40
(2004) 1 WLR 2577
41
C000479899/1
LPA 475/2025 Page 60 of 67
10. Bad faith is a narrow legal concept in the
CTMR system. Bad faith is the opposite of good
faith, generally implying or involving, but not
limited to, actual or constructive fraud, or a design
to mislead or deceive another, or any other sinister
motive. Conceptually, bad faith can be understood
as a ‘dishonest intention’. This means that bad faith
may be interpreted as unfair practices involving lack
of any honest intention on the part of the applicant
of the CTM at the time of filing.
11. Bad faith can be understood either as unfair
practices involving lack of good faith on the part of
the applicant towards the office at the time of filing,
or unfair practices based on acts infringing a third
person's rights. There is bad faith not only in cases
where the applicant intentionally submits wrong or
misleading by insufficient information to the office,
but also in circumstances where he intends, through
registration, to lay his hands on the trade mark of a
third party with whom he had contractual or
precontractual relations.
30. In the Senso Di Donna Trade Mark case
42
, the first
cancellation division said:
“17. Bad faith is a narrow legal concept in the
CTMR system. Bad faith is the opposite of good
faith, generally implying or involving, but not
limited to actual or constructive fraud, or a design to
mislead or deceive another, or any other sinister
motive. Conceptually, bad faith can be understood
as a ‘dishonest intention’. This means that bad faith
may be interpreted as unfair practices involving lack
of any honest intention on the part of the applicant
of the CTM at the time of filing.
Example: if it can be shown that the parties
concerned had been in contact, for instance at an
exhibition in the respective trade, and where then
one party filed an application for a CTM consisting
of the other party's brand, there would be reason to
conclude bad faith. In this case, however, according
to the meaning of the term ‘bad faith’, there is no
evidence that Senso di Donna Vertriebes-GmbH
was acting dishonestly or that they intended any
42
C0006716979/1 2001 ETMR 5
LPA 475/2025 Page 61 of 67
similar act, or were involved in unfair practices or
the like.”
31. To similar effect was the decision in Lancôme
Parfums et Beauté and Cie's Trade Mark case
43
.”
13.5 Lindsay J held thus, in Gromas Plasticulture Ltd v. Don &
Low Nonwovens Ltd
44
, on “bad faith”:
“Plainly it include dishonesty, as I would add. It includes also
some dealings which fall short of the standards of acceptable
commercial behaviour observed by reasonable and experienced
men in the particular area being examined.”
13.6 It has to be remembered that bad faith, in order to constitute a
basis to remove of mark from the register of Trade Marks has to be
found to exist at the time when the applicant applied for registration of
the mark. This is because bad faith must reside in the applicant who
applies for registration of the mark and not in any other person.
Section 11(10)(ii) envisages the taking into consideration, by the
Registrar, of bad faith involved “either of the applicant or the
opponent” affecting the rights relating to the trade mark.
13.7 The applicant must, therefore, be shown to have acted with bad
faith. Either, therefore, the application made by the applicant must be
tainted with bad faith or, after the application has been submitted, but
before it is registered, the applicant must have acted with bad faith.
No allegation of bad faith, howsoever serious, subsequent to the
registration of the mark, can be relevant for the purposes of Section
11(10)(ii) of the Trade Marks Act.
43
2001 ETMR 89
44
(1999) RPC 367
LPA 475/2025 Page 62 of 67
13.8 The impugned judgment, in our respectful opinion, does not
advert to any material on the basis of which it can be said that, at any
time prior to the registration of the BLUE-JAY mark in favour of the
appellants, there was any bad faith in the manner in which they acted.
13.9 To sustain the finding of bad faith, the learned Single Judge
observes that the explanation provided by the appellants for adopting
the BLUE-JAY mark, in the counter statement filed before the
Registrar of Trade Marks, was at variance with the explanation
tendered in the reply filed to the Section 57 petition of the respondent.
We may, in this context, reproduce paras 19 and 20 of the impugned
judgment, thus:
“19. At the outset, this Court while going through the plethora
of documents on record finds that the respondent nos.1 and 2 in
their Counter Statement filed before the Trade Marks Registry,
have categorically stated that “… …the trademark BLUE JAY is a
trading style of the firm. The same was adopted by the proprietor
Ajay Kumar by using nomenclature of Blue Jay, a common bird of
North America……”. Notably, barring this, there are no other
pleading(s) of any sort qua the adoption of the impugned mark
‘BLUE-JAY’. Meaning thereby, the respondent nos.1 and 2
claimed to have adopted the said impugned mark ‘BLUE-JAY’,
drawing inspiration from the North American bird of the same
name. However, surprisingly, and to the contrary, in the present
cancellation proceeding, the respondent nos.1 and 2 have sprung up
with a story that “… …the father of Mr. Sumit Vijay and brother of
Mr. Ajay Kumar Gupta, Mr. Dinesh Kumar Vijay was an employee
of Punjab National Bank from 31st October, 1973 to 28th
February, 2012 and he was posted to Punjab National Bank, Rasoi,
District, Sonipat from January 1997 to September, 1999 and during
his posting he frequently used to go to the restaurant of Blue Jay
Tourist Resort of Haryana Tourism in Panipat for having meals.
The Resort is a very famous Resort and is very amongst the people
in the region. When Mr. Ajay Gupta and Mr. Sumit Vijay decided
to start the business and was looking for a trade mark to be adopted
in respect of the goods, Mr. D. K. Vijay suggested the name of
LPA 475/2025 Page 63 of 67
BLUE-JAY which is also the name of a very famous bird of North
America. Hence, it was decided by Mr. Ajay Kumar Gupta and Mr.
Sumit Vijay to adopt the trade mark BLUE-JAY… …”. This
shows that the respondent nos.1 and 2 have now concocted an
entirely new explanation/ story about the reason/ justification for
adoption of the impugned mark ‘BLUE-JAY’.
20. The aforesaid, being a bald statement, is inconsistent with
the earlier case of the respondent nos.1 and 2 themselves. It raises a
credible doubt in the mind of this Court as to the reliability of the
adoption of the impugned mark ‘BLUE-JAY’ by the respondent
nos.1 and 2. It, prima facie, seems to be an afterthought since the
respondent nos.1 and 2 were failing to provide any cogent and
convincing reason/ justification for adopting the impugned mark
‘BLUE-JAY’. The same, primarily reflects the respondent nos.1
and 2’s mala fide and dishonest intentions to appropriate and ride
upon the worldwide reputation and goodwill associated with the
petitioner.”
13.10 Having perused paras 19 and 20 of the impugned judgment, we
are of the opinion that they do not make out any case of bad faith
adoption by the appellants of the BLUE-JAY mark, either in law or on
facts.
13.11 The observation of the learned Single Judge that the
explanation tendered by the appellants for adopting the BLUE-JAY
mark in their counter statement before the Trade Mark Registry and in
response to the Section 57 petition of the respondent, was
contradictory, cannot be accepted. There is no real contradiction in the
two explanations. In the counter statement filed before the Trade
Marks Registry, the appellants submitted that the BLUE-JAY mark
was adopted as the blue jay is a common bird of North America. In
the reply filed to the respondents’ Section 57 petition, the appellants
merely pointed out that the BLUE-JAY mark had been adopted at the
instance of Mr. Dinesh Kumar Vijay, from the name of the Blue Jay
LPA 475/2025 Page 64 of 67
Tourist Resort which he used to frequent, as it was also the name of a
famous bird of North America. It is not, therefore, as though the
appellants advanced two different reasons, before the Trade Marks
Registry and before the learned Single Judge, for adopting the BLUE-
JAY mark.
13.12 Even if, arguendo, it were to be assumed that the reasons cited
by the appellants for adopting the BLUE-JAY mark on these two
occasions were different, that cannot, in our mind, make out a case of
bad faith adoption of the BLUE-JAY mark at the time when the
appellants applied for registration thereof. It has to be remembered
that, on that day, there was no subsisting registration of the BLUE
JAYS mark in favour of the respondent. The two applications filed by
the respondents for registering the BLUE JAYS mark in 1983 and
1988 had both been abandoned prior to Appellant 1’s application for
registration of the BLUE-JAY mark. We fail to understand how, even
if it were to be assumed that the appellants were aware of the BLUE
JAYS mark of the respondent, any bad faith can be alleged in the
appellant applying for registration of the BLUE-JAY mark, when the
respondent had abandoned its applications for registration of the
BLUE JAYS marks much earlier.
13.13 Moreover, we have already found that there is no substantial
material on the basis of which it could be said that, on 19 August
1998, the respondent’s BLUE JAYS mark commanded any goodwill
or reputation in India. We agree with Mr. Lall, therefore, that there
was no real reason for the appellants to seek to capitalize on the
goodwill or reputation of the mark belonging to a baseball club which
LPA 475/2025 Page 65 of 67
was based in Canada and had never played a single match in India,
where it has neither goodwill nor reputation.
13.14 Further, if the findings of the learned Single Judge have to be
accepted, it would amount to permitting the respondents to
monopolize, and claim exclusivity in, an abandoned mark, which is
clearly impermissible in law.
13.15 The learned Single Judge has, on this aspect, further observed,
in para 22 of the impugned judgment, thus:
“22. Considering the aforesaid, as also that the whole case of the
petitioner vested on the impugned mark ‘BLUE-JAY’ being
identically similar to its ‘BLUE JAYS’ marks, the respondent nos.
1 and 2 ought to have been more cautious, careful, if not specific.”
13.16 With great respect, we fail to understand why the appellants
ought to have been conscious, careful or specific in adopting a mark
which was not similar to any mark which stood registered in the name
of the respondent, or which had any goodwill or reputation in India. In
fact, the very fact that the respondent had abandoned its applications
for registration of the mark BLUE JAYS would convey a clear signal
that there was no proscription on any other party applying for
registration of an identical or similar mark in India. Any such
application, if made, cannot, therefore, be said to have been tainted
with bad faith.
13.17 The finding, of the learned Single Judge, that the adoption of
the mark BLUE-JAY by the appellants was tainted with bad faith, and
that, therefore, the mark was liable to be cancelled under Section
LPA 475/2025 Page 66 of 67
11(10)(ii) of the Trade Marks Act, is not, therefore, sustainable in law.
14. Re. Findings regarding prior user of the BLUE JAYS mark by
the respondent
14.1 The learned Single Judge has, in paras 27 to 29 of the impugned
judgment, observed that the respondent was the prior user of the mark
BLUE JAYS and that the appellants had adopted the BLUE-JAY
mark only in 1998, 22 years after the adoption of the BLUE JAYS
mark by the respondent.
14.2 This finding is predicated on the premise that the respondent’s
adoption of the BLUE JAYS mark dates back to 1976. The very basis
of this premise is incorrect, as the respondent commenced user of the
BLUE JAYS mark in 1976 only in Canada and the US. There is no
proof of any user, by the respondent, of the BLUE JAYS mark, in
India, prior to 1998. As such, the finding that the adoption by the
appellants of the BLUE-JAY mark in 1998 was 22 years after the
commencement of user by the respondent, of the BLUE JAYS mark,
is unsustainable on facts.
15. Re. Conclusions in the impugned judgment
In view of the aforesaid discussion, the conclusions contained in paras
35 to 37 of the impugned judgment are obviously unsustainable.
16. We are, therefore, of the considered opinion that no case for
rectification of the Register of Trade Marks by removal, therefrom, of
LPA 475/2025 Page 67 of 67
the appellants’ BLUE-JAY mark under Section 57(2) read with
Section 11 of the Trade Marks Act, exists.
Conclusion
17. In view of the aforesaid discussion, we are unable to sustain the
impugned judgment dated 1 July 2025 of the learned Single Judge in
C.O. (COMM.IPD-TM) 279/2023. It is, accordingly, quashed and set
aside. The appellants’ BLUE-JAY mark would stand restored to the
Register of Trade Marks forthwith.
18. The appeal stands allowed in the aforesaid terms with no orders
as to costs.
C. HARI SHANKAR, J.
OM PRAKASH SHUKLA, J.
JANUARY 5, 2026/aky/yg
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