INTRODUCTION
According to the territorial principle of intellectual property, intellectual property is territorial in nature and is only protected in the country where it was registered. This is why inventors and entrepreneurs want to file their patents in many countries. However, because trademark registration is not mandatory, the same brand is frequently used in multiple countries by different businesses. When a trademark enables the public to identify the source of a product, it is said to have a reputation in the market. However, the reputation of a well-known mark knows no borders, and many businesses enjoy recognition not only in the country in which they are registered, but also in other countries. This concept of trans-border reputation is based on the principle of universality, which states that because a trademark is recognized throughout the globe, it should be protected in all countries where it has gained such popularity. A mark is considered to have achieved a trans-border reputation if it is so well-known that it is recognized by the general public worldwide. In any trademark dispute involving transnational repute, the court is most concerned with the breadth of the evidence presented in support.
JUDICIAL DECISIONS IN INDIA
One of the earliest cases involving the issue of trans-border reputation in India was William Grant & Sons Ltd. v. Mcdowell & Company Ltd., [55 (1994) DLT 80], in which a single judge bench of the Delhi High Court determined that plaintiff’s GLENFIDDICH whiskey had acquired trans-border reputation in India through duty-free sales in India, advertisements in Indian magazines, and other forms of advertising.
Later in the case of N.R. Dongre and others v. Whirlpool Corporation and Anr., [1996 AIR SCW 3514], the Indian Supreme Court held that trademark protection can be granted on the basis of trans-border reputation, even when knowledge of the product is solely disseminated through media and advertisements, without the product having any physical presence or use in the Indian market.
Until 2017, Indian courts traditionally applied the universality principle in evaluating a brand’s trans-border reputation in India. In 2018, the Supreme Court gave a historic decision that has formed a precedent for many future cases involving determining trans-border reputation.
The Supreme Court issued its decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., [AIR 2018 SC 167], widely known as the Prius case. Based on international precedents, the Supreme Court determined that a foreign mark’s widespread reputation around the world is insufficient to prove that the mark has likewise developed substantial goodwill in Indian Territory. The Supreme Court ruled that advertisements in various magazines and information available on internet websites were insufficient to establish the plaintiff’s mark’s reputation and goodwill in India, because internet use was not widespread enough in the early 2000s for the public to be aware of Toyota’s car launch.
WAY FORWARD
The Prius decision has been a shield for many Indian businesses because big foreign brands used to be a danger to Indian businesses even if they did not have any operations in India and just because they were well-known in other nations. The Indian courts’ approach has shifted from universality to territoriality, and the courts specifically decide the trans-border reputation in India whether the brand has earned such a reputation in India and not otherwise. Recently, in 2020, the Delhi High Court utilized the Prius precedent in a case of Keller Williams Realty, Inc. vs. Dingle Buildcons Pvt. Ltd. & Ors [CS(COMM) 74/2019].
BY
Ekta Dixit
LLM (IPR & Tech Laws)
JINDAL GLOBAL Law School