Blue Jays' Global Reputation Alone Not Enough To Cancel Indian 'BLUE-JAY' Trademark: Delhi High Court
The Delhi High Court has held that mere global reputation of a trademark, without proof of spillover of goodwill into India, is insufficient to cancel a registered Indian trademark.A Division Bench of Justices C Hari Shankar and Om Prakash Shukla thus set aside a single judge order cancelling the 'BLUE-JAY' mark used by an Indian partnership firm (Appellant-Defendant) on its apparel.The mark...
The Delhi High Court has held that mere global reputation of a trademark, without proof of spillover of goodwill into India, is insufficient to cancel a registered Indian trademark.
A Division Bench of Justices C Hari Shankar and Om Prakash Shukla thus set aside a single judge order cancelling the 'BLUE-JAY' mark used by an Indian partnership firm (Appellant-Defendant) on its apparel.
The mark was cancelled in a trademark infringement suit filed by the IP holding company (Respondent-Petitioner) of Canadian professional baseball team based in Toronto 'Blue Jays'.
Before the single bench, the Appellant had argued that any goodwill claimed by Respondent in respect of the 'BLUE JAYS' marks is exclusively limited to the USA and Canada, and there is no spill over of its reputation among Indian consumers as baseball is not popular in India.
However, the single judge had held that the trademark was present on the Petitioner's (Respondent here) websites, which are accessible in India since the year 1996. “The same are sufficient for the petitioner to have established 'use', which need not be actual/ physical, in India,” it had held.
Disagreeing, the division bench held that trans-border reputation cannot be presumed merely because a mark is known internationally. It found that the single judge had conflated the aspects of “use” and trans-border goodwill and reputation.
In the Court's words,
““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.
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, by the respondent, within India. At least, prior to 1998, there is little or no evidence of such use.”
It relied on the Supreme Court's judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) which held 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.
“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,” the division bench thus held.
The single judge had also found that adoption of the trademark by the Appellant was in bad faith.
The division bench however ruled that bad faith cannot be inferred lightly and in the case at hand, there was no material to show that the adoption was dishonest or intended to ride on the Respondent's alleged reputation.
Setting aside the cancellation order, the Court observed that a registered proprietor cannot be deprived of statutory rights on the basis of conjecture or assumptions of global fame, especially when the registration had stood unchallenged for years.
Case title: Sumit Vijay & Anr. v. Major League Baseball Properties Inc. & Anr.
Citation: 2026 LLBiz HC (DEL) 11
Case number: LPA 475/2025
For Appellants: Senior Advocate C.M. Lall and Senior Advocate J. Sai Deepak with Advocates Rupin Bahl, Karan Bajaj, Aastha Arora, Avinash and Annanya Mehan.
For Respondents: Advocates Urfi Roomi, Janaki Arun, Jaskaran Singh and Angela Arora for respondent No. 1; Senior Advocate Nidhi Raman, Central Government Standing Counsel, with Advocates Akash Mishra, Arnav Mittal and Mayank Sansanwal for respondent No 2