Mere Global Reputation, Asserted Goodwill Of Trademark Not Sufficient To Answer Claim Of Trans-border Reputation: Delhi High Court

The Delhi High Court has ruled that mere global reputation or asserted goodwill of a trademark is not sufficient to answer claim of trans-border reputation.

A division bench of Justice Yashwant Varma and Justice Dharmesh Sharma said that it is imperative for the claimant/plaintiff, who seeks protection of a trademark, to prove and establish the existence of a significant and substantial reputation and goodwill of the mark 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 bench said.

It added that the claimant who has no presence or a customer base in India, has not established its presence by way of adequate advertisement or promotional activity or who fails to establish a global reputation equally well known to the consuming public in India would be disentitled to claim trademark protection.

”We further find 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”. 

It was observed that the question of a significant reputation would have to be tested on principles analogous to those enumerated in Section 11 of the Trade Marks Act, which provides grounds for refusal of trademark registration.

“The adoption of the aforesaid standard would also subserve the imperatives of avoiding the stifling of local industry and enterprise. This in our considered opinion would be the correct approach and strike the right balance between brands whose reputation transcends territories and the interest of national enterprise and that of consumers on the other,” the court said.

The bench made the observations while upholding a Single Judge's order which refused to grant interim injunction in favor of Bolt Technology OU in relation to use of the mark "BOLT" in EV (electric vehicle) charging stations in India by Ujoy Technology Private Limited.

Earlier this year, the Single Judge had observed that since Bolt 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 spilled over to India.

Dismissing Bolt's appeal against the Single Judge order, the Division Bench observed that while Bolt may have been able to establish a limited knowledge and awareness of the application and services offered on its platform, it failed to meet the test of “significant and substantial reputational spill over.”

“Reputation of a mark, on the other hand, would stand satisfied if we were to find a substantial presence of that mark in the market. We also cannot possibly turn a blind eye to the changing and ever evolving trends in global commerce, the pervasive dissemination of knowledge of well-known marks in the age of the internet as well as the exponential surge in global travel,” the court opined.

Furthermore, it added that while technological advancements and precedents on the subject may have enabled courts to do away with the requirement of a real market, the strength of transnational reputation acquired by a trademark would have to be established and tested on the “metric of adequate evidence of substantial goodwill or reputation in the Indian market.”

The bench also observed that an article published in the Economic Times last year, on the interest evinced by various investors in Bolt and the investment money garnered by it, cannot be read as constituting evidence of the substantial presence of the mark "BOLT" in India.

“We are constrained to observe that the mere downloading of an app would not be sufficient to accept the contention of a sizeable consumer base. The appellant (Bolt) also did not lead any evidence of the number of Indian consumers who had utilised its services while travelling abroad. More importantly, the appellant failed to establish that these downloads and reviews would represent a significant or substantial number when it comes to Indian consumers who generally avail of ride hailing and mobility related services when travelling overseas,” the court said.

Counsels for Appellant: Senior Advocate Amit Sibal with Advocates Swathi Sukumar, Essenesse Obam, Ayesha Guha Thakurta, Ritik Raghuvanshi, PratyushRao, Rishav and Amira Dhawan

Counsels for Respondents: Senior Advocate Darpan Wadhwa with Advocates Amit Agrawal, Satyajit Sarna, Rahul Kukreja, Sana Jain, Radhika Yadav and Reea Mehta

Case Title: BOLT TECHNOLOGY OU v. UJOY TECHNOLOGY PRIVATE LIMITED & ANR., FAO(OS) (COMM) 45/2023

Citation: 2023 LiveLaw (Del) 1194

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