Delhi High Court Grants Relief To IP Holding Company Of Canadian Baseball Team Toronto 'Blue Jays' In Trademark Infringement Suit

Noting the global goodwill of 'BLUE JAYS' in connection with Canadian professional baseball team based in Toronto, the Delhi High Court ordered cancellation of 'BLUE-JAY' trademark registered in favour of a partnership firm in India.The IPR holding company of Major League Baseball was aggrieved of the use of 'deceptively similar' trademark on the apparel manufactured by the respondent-firm.While granting relief, Justice Saurabh Banerjee observed that the 'purpose' of adoption of the impugned trademark by the respondent was tainted in bad faith, 22 years after adoption of the trademark 'BLUE JAYS' by the petitioner.“Circumstances of adoption of the trademark are of significant importance and where the very adoption of the mark is tainted with dishonest intention, no subsequent user or volume of sales can clean the vices of dishonesty…If the 'purpose' of adoption of a trademark is found to be in doubt, it can be inferred that the registration of the trademark is tainted in 'bad faith' and the same may be taken off the Register of Trade Marks,” the bench remarked.In the present case, it was noted that initially the respondent claimed to have adopted the impugned mark drawing inspiration from the North American bird of the same name. However, later, it “sprung up” with another story, raising a credible doubt in the mind of the Court.“It, prima facie, seems to be an afterthought since the respondent nos.1 and 2 were failing to provide any cogent and convincing reason/ justification for adopting the impugned mark 'BLUE-JAY'. The same, primarily reflects the respondent nos.1 and 2's mala fide and dishonest intentions to appropriate and ride upon the worldwide reputation and goodwill associated with the petitioner,” the Court said.During the hearing, respondent sought to argue that any goodwill claimed by the petitioner 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 Court was of the opinion that Petitioner's trademark has presence on its 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 said.As such, the petition was allowed.Appearance: Mr. Urfee Roomi, Ms. Janki Arunand Mr. Jaskaran Singh, Advs. for Petitioner; Mr. Mohan Vidhani, Ms. Nidhi Pandey, Mr. Saurabh Kumar, Ms. Shreya Jain and Ms. Mokshita Gautam, Advs. for R-2. Ms. Nidhi Raman, CGSC with Mr. Arnav Mittal and Mr. Akash Mishra, Advs. for R-3/UOI.Case title: Major League Baseball Properties Inc v. Manish Vijay & Ors.Citation: 2025 LiveLaw (Del) 897Case no.: C.O. (COMM.IPD-TM) 279/2023Click here to read order

Delhi High Court Grants Relief To IP Holding Company Of Canadian Baseball Team Toronto 'Blue Jays' In Trademark Infringement Suit

Kapil Dhyani

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