The Madras High Court recently held that a foreign proprietor cannot rely on international reputation alone to demonstrate goodwill in the Indian market so as to maintain a trademark passing off claim [7-Eleven International LLC v. Deputy Registrar of Trademarks].
Justice N Anand Venkatesh upheld a 2014 order of the Deputy Registrar of Trade Marks which rejected 7-Eleven’s application for registration. It instead allowed the competing application of Ravi Foods Private Limited, an Indian food products company that has been using the mark in India since 2004. The Court held,
"...it must be demonstrable that the mark used extensively outside India is so well known that they may presume, when such mark or name is used by the respondent and that the claimant has now established a presence in that territory."
7-Eleven claimed that it had adopted and used the mark “Big Bite” internationally since 1988 and had filed an Indian trademark application in 1994 . It argued that its prior international use and global reputation entitled it to protection in India and that the Indian applicant’s adoption of the identical mark was likely to cause confusion.
The rival applicant - originally Dukes Consumer Care Limited and now Ravi Foods Private Limited - asserted that it had been openly and continuously using “Big Bite” in India since October 5, 2004 for food products falling under Class 30.
By a common order dated July 18, 2014, the Trade Marks Registry rejected 7-Eleven’s application and accepted the Indian company’s application. 7-Eleven challenged that decision before the High Court under Section 91 of the Trade Marks Act, 1999.
The core issue, the Court said, arose under Section 11(3) of the Act, which requires examination of whether use of a mark would be prevented by the law of passing off. On the nature of goodwill, the Court stated:
“The essence of passing off is that it is an injury against goodwill, which, in turn, is inextricably linked to a business for goodwill, cannot exist independently of a business.”
Turning to the facts, the Court found that 7-Eleven had not shown sale or trade presence in India under the mark at the relevant time. It concluded:
“It cannot be said that the appellant has acquired sufficient goodwill in this country so as to entitle them to protection.”
The Court noted that the 7-Eleven had not established that the Big Bite mark qualified as a well-known trademark in India:
“There is no material to show that the appellant is a well-known trademark within the meaning of Section 2(1)(zg) and Section 11(8) of the Act.”
Accordingly, the Court held that the case fell to be examined under Section 11(3), dealing with passing off.
A key plank of 7-Eleven’s case was that the mark was displayed on its website, which was accessible in India. The Court rejected this argument, holding that mere online visibility does not establish use or goodwill in India.
The Court also addressed Section 18 of the Act, noting that an application based on “proposed to be used” must reflect a definite and present intention to trade. It observed:
“It must be remembered that the applicant must show that it has a definite and present intention to use the mark as on the date of the application.”
The fact that the 1994 application had not translated into commercial activity in India for over a decade weighed against 7-Eleven.
7-Eleven was represented by Advocate K Harishankar for Archer & Angel.
The Trademarks Registry was represented by Advocates Diwakar and Subbu Ranga Bharathi.
Ravi Foods was represented by Advocate Aanchal Nichani.
[Read Judgment]