Debate over ‘Trans-border reputation’ and ‘Territoriality Principle’

In this case, the question before the Court was whether the goodwill and reputation, though garnered abroad, is so considerable that it has spilled over to India to confuse or deceive a customer of average intelligence and imperfect recollection. Bolt Technology Ou (‘Bolt’) filed the suit against Ujoy Technology Private Limited and Ors (Ujoy), alleging passing off to restrain Ujoy from using the mark BOLT in relation to EV charging stations. Bolt claims their services overlap with Ujoy and has relied upon its prior international use and goodwill to claim passing off.

Bolt (Plaintiff) in the suit stated:

  1. They conceived and adopted the brand “BOLT” in 2018. They are a ‘global market leader in transportation’ offering services under the brand ‘BOLT’, including vehicles for hire, micro-mobility, car sharing, Electric Vehicle (EV) charging stations and docks, and food and grocery delivery services.
  2. They operate a website https://bolt.eu/ and have a huge following on Facebook, LinkedIn, Instagram, and Twitter. They also trade through a mobile application titled “BOLT,” available on Apple’s App Store and Google’s Play Store, which is downloadable in India, and users in India have downloaded the app at least 2 lakh times.
  3. On account of continuous use, the mark “BOLT” has acquired considerable goodwill and reputation and has become exclusively associated with the products and services of the Plaintiff.
  4. In India, their applications for the marks’ Bolt Charge’ in Class 99 and the device mark in Classes 09, 12, 35, 36, 37, and 39 are pending registration.
  5. Their goods and services are provided in over 400 cities in over 45 countries in Europe, Africa, West Asia, South America, and Latin America, with over 100 million customers globally.
  6. Several articles have been published in CNBC and the Economic Times, and, coupled with the number of times Bolt’s App has been downloaded by Indian users, evidences the trans-border reputation of the BOLT mark.
  7. Ujoy’s adoption and use of the mark in relation to EV charging docks/stations is dishonest.

Ujoy (Defendant) countered the injunction application on the following grounds:

  1. Bolt is engaged in providing taxi services for hire, whereas Ujoy is engaged in the business of EV charging stations. Thus, there is no connection between the services rendered by the rival parties.
  2. EV charging stations/docks is the business activity of Ujoy. Bolt is essentially in the business of taxi ride-hailing, and the inclusion of “EV charging stations/docks” in its realm of activities is a strained effort at creating a cause of action where none exists.
  3. Ujoy had adopted the mark ‘BOLT’ for EV chargers in 2018, and by October 2020, they had introduced ‘BOLT’ to the public at large by uploading public posts on social media platforms like YouTube and Instagram.
  4. In February 2020, Bolt did not have a single EV charging point anywhere in the world. Thus, Ujoy enjoys priority of user vis-à-vis Bolt in respect of EV charging stations.
  5. On or before 8th January 2021, Ujoy’s EV charging stations stood installed in 24 cities, whereas Bolt introduced its first charging station in Estonia in August 2021.
  6. Bolt has suppressed the response filed in reply to the notification of provisional refusal of protection for its IRDI application for the trademark “BOLT.” In the reply, Bolt contended that there was no likelihood of confusion vis-à-vis the cited earlier marks, as the application for BOLT marks was for a niche category of goods and services specifically in relation to a mobile App for transport and delivery-related services.
  7. Bolt’s case is completely lacking in any material evidencing trans-border reputation, which has spilled over into India.

After considering the pleadings, arguments, and case laws relied on by the parties, the Court held as follows:

  • The primary issue in the instant dispute is whether, based on the pleadings and documents on record Bolt, prima facie, has been able to make out a case of passing off by Ujoy.
  • That mere establishment of the fact that Ujoy is using a deceptively similar mark to that of Bolt does not necessarily lead to an inference of passing off.
  • In the instant case, matters become complex as Bolt has no business whatsoever in India. To prove the tort of Passing off, it has to be established that Bolt has goodwill and reputation in India, which is being usurped by Ujoy. Thus, in the present case, Bolt would have to show that its goodwill and reputation, though garnered abroad, is so considerable that it has spilled over to India to confuse or deceive a customer of average intelligence and imperfect recollection.
  • Documents filed by Bolt show it is engaged in providing taxi-hailing services. Nothing indicates that it was either engaged in providing EV charging services, making EV charging points, or intending to do so at any time in the foreseeable future. Moreover, the articles do not suggest that Bolt was expanding its activities to India. Thus, based on the articles, it cannot be held that an average customer in India who reads them would believe that Bolt was venturing into the Indian market with EV charging solutions. The number of times the Bolt’s App has been downloaded in India, or its website accessed by drivers, cannot, prima facie, make out a case of spill over of the trans-border reputation of Bolt, in the EV charging market, into India.
  • Ujoy is the first in the Indian market to provide EV charging services. Materials on record show that Ujoy has a reputation in the EV charging services and is far ahead of the others in the field. The territoriality principle has overtaken the universality doctrine. Bolt is not engaged in providing EV charging services anywhere in the world other than installing some EV charging stations in a handful of locations for charging its electric scooters. Thus, no trans-border reputation in EV charging services can be credited to Bolt.

In light of the above, the Court held that Bolt has failed to establish its trans-border reputation and thus dismissed the injunction application. Bolt has since filed an Appeal against the order to the two-judge bench of the Delhi High Court (Division Bench). The Court is currently hearing the Appeal. However, no interim relief has been granted.

Our Comment

The case has ignited the debate on requirements of establishing trans-border reputation and spill over reputation. It also raises an interesting point on use of the mark in relation to digital apps which connects consumers around the world and if that is sufficient to show goodwill and reputation.

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