Mere Global Reputation & Asserted Goodwill Of Trademark Not Sufficient To Answer Claim Of Transborder Reputation: Delhi HC
The Delhi High Court held that mere global reputation or asserted goodwill of a trademark is insufficient to answer a transborder reputation claim.
The court said that the claimant has to prove and establish the existence of a significant and substantial reputation and goodwill in the concerned territory.
The Bench of Justice Yashwant Varma and Justice Dharmesh thus said that, "a mere global reputation or asserted goodwill has neither been accorded a judicial imprimatur nor accepted as being sufficient by our courts to answer a claim of transborder reputation. In order to succeed on this score, it is imperative for the claimant to prove and establish the existence of a significant and substantial reputation and goodwill in the concerned territory. Unless a sizeable imprint of the presence of the mark is established amongst the consuming public, a claimant would not be entitled to protection. In fact, knowledge amongst a sizeable and noteworthy number of the concerned segment would be a sine qua non for proving reputation itself."
The Court, referring to the principles enumerated in Section 11 of the Trademarks Act, held that a claimant like the appellant, who has no presence or a customer base in India, has not established its presence by way of adequate advertisement or promotional activity or fails to establish a global reputation equally well known to the consuming public in India would be disentitled to claim protection.
Senior Advocate Amit Sibal, among others, appeared for the appellant. Senior Advocate Darpan Wadhwa, among others, appeared for the respondents.
In this case, the appellant had appealed against an order of the Single Judge, wherein it was observed that since the appellant is not engaged in providing EV charging services anywhere in the world and has merely installed some EV charging stations in a handful of locations for charging its own vehicles, no trans-border reputation in providing EV charging services can be credited to it which can be said to have spilt over to India.
The Division Bench upheld the order, while observing that, "while the appellant may have been able to establish a limited knowledge and awareness of its app and the bouquet of services offered on its platform, it clearly, as the learned Single Judge has correctly found, failed to meet the test of significant and substantial reputational spill over."
In a similar vein, the Court held that the appellant had failed to adequately address the seminal test of a high level of familiarity with the mark amongst the concerned segment of our population which is a pivotal factor when it comes to establishing cross-border reputation.
Cause Title: Bolt Technology OU vs Ujoy Technology Pvt Ltd & Anr.
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