Recent Delhi and Madras High Court judgements on trans-border reputation have shaped the Indian Trademark law with a different rationale. These judgements establish and put forth a cornerstone principle in the Indian Trademark law, that global fame and wide use of a mark do not automatically establish substantial goodwill or reputation in India.

The Delhi High Court considered whether the popular “TORONTO BLUE JAYs” mark had trans-border reputation in India as of 1998, a significant date in the rectification procedures under the Trade Marks Act, 1999. The case was Sumit Vijay v. Major League Baseball Properties (January 2026). In 1998, the appellants registered “BLUE-JAY” as a trademark in Class 25 (clothing). Prior to 1998, Major League Baseball (MLB) had given up on its previous Indian trademark applications in the same class, despite asserting worldwide use of “BLUE JAYS” since 1976. The Division Bench overturned the Single Judge’s decision to grant MLB’s rectification petition due to the company’s trans-border reputation and claimed ill faith adoption.

The Court emphasized on several foundational principles:

  1. Global recognition does not implicitly mean reputation in India.
  2. The Indian Trademark law predominantly prioritizes territoriality.
  3. A party claiming reputation must demonstrate actual goodwill in India at the relevant time through concrete evidence such as sales, targeted marketing, or consumer recognition
  4. Reputation building in India requires more than just having access to the internet or being present on global e-commerce sites.
  5. There lies a burden of proof on the foreign company to substantiate claims of Indian market engagement.
  6. Abandonment of earlier Indian applications prevents a party from claiming “earlier trademark” status for relative grounds of refusal.
  7. Allegations of dishonest or mala fide intention must be backed by compelling evidence.
  8. Suspicion alone is insufficient, particularly where no prior Indian reputation is established.

Consequently, the ruling significantly limits the reliance on foreign reputation in domestic trademark disputes and reinforces the territoriality framework established in previous rulings.

A similar approach was adopted by the Madras High Court in 7-Eleven International LLC v. Ravi Foods Pvt. Ltd (February 2026), a dispute concerning the mark “Big Bite.” 7-Eleven International LLC relied on its global brand and an earlier Indian application filed in 1994 to challenge the registration obtained by Ravi Foods in 2004. The Indian company, however, demonstrated continuous use of the mark in India since 2004 and contended that 7-Eleven’s international reputation did not amount to goodwill in India.

This judgment reinforces the principle of territoriality in Indian trademark law. It holds that international reputation or prior foreign use, without corresponding goodwill, reputation, or an actual business presence in India, cannot override the rights of a bona fide prior user who has continuously used the mark in the Indian market. A foreign applicant’s earlier filing date alone is insufficient to prevail over a local user’s established trade use, particularly where no spillover of reputation into India is demonstrated. The decision narrows the scope for invoking trans-border reputation under Sections 11(2) and 11(3) of the Trade Marks Act, 1999, making clear that concrete evidence of goodwill within India is essential. Mere global fame or the existence of a website accessible in India does not suffice. It further emphasized that recognition of trans-border reputation is an exception rather than the rule, and must be supported by clear evidence of Indian consumer awareness.

Collectively, these rulings underscore three interrelated principles in Indian trademark law.

  • The doctrine of territoriality remains fundamental: trademark rights are rooted in use and reputation established within India.
  • Courts insist on concrete, contemporaneous evidence of goodwill in India when evaluating claims of spill‑over reputation.
  • The priority accorded to continuous and local use can outweigh assertions based solely on earlier foreign adoption or international renown.

Ultimately, these decisions reassert that Indian trademark law, though functioning within a globalized marketplace, is still inherent in territorial principles. While international reputation may serve as a contributing element, it cannot substitute for tangible evidence of goodwill within India. For foreign brands to secure protection, they must exhibit real involvement in the Indian market through registrations, targeted advertising, sales activity, and recognizable consumer presence.  In the absence of  such engagement, they risk ceding priority to domestic users who can prove their established reputation locally.

Written By

Shobhitha M