Introduction

In a significant ruling reaffirming the limits of trans-border reputation under Indian trademark law, the Division Bench of the Delhi High Court set aside an order of the Single Judge directing cancellation of the BLUE-JAY trademark registered in favour of Mr. Sumit Vijay and anr. The Court held that global reputation, online presence, and international fame, without cogent India-specific evidence of goodwill or use prior to the relevant date, are insufficient to sustain cancellation action and a claim of passing off under the Trademarks Act, 1999.

Background of the Dispute

The appeal arose from rectification proceedings initiated by Major League Baseball (MLB), seeking removal of the BLUE JAY mark from the Trademarks Register, where it stood registered in Class 25 in relation to readymade garments in favour of the appellant.

The learned Single Judge allowed the rectification petition, primarily on the grounds of:

1. trans-border reputation of MLB’s BLUE JAYS mark in India,
2. priority of adoption claimed by MLB, and
3. alleged bad faith in adoption of the appellant’s BLUE-JAY mark.

Aggrieved by the cancellation of its mark, the appellant preferred an appeal before the Division Bench.

Respondent’s Case in Rectification

MLB contended that it is a globally renowned professional baseball league and owns all intellectual property rights associated with MLB, including the BLUE JAYS and TORONTO BLUE JAYS marks, adopted in 1976 for the Toronto Blue Jays baseball team.

MLB in support of its case contended:

1. Continuous use since 1977 and extensive worldwide promotion rendered the marks distinctive, well-known, and internationally recognised.
2. The BLUE JAYS marks had acquired reputation in India through official websites, television broadcasts, live coverage of MLB games, news publications, social media platforms, and online sale of licensed merchandise.
3. Broadcast of Toronto Blue Jays games in India over decades had significantly enhanced consumer awareness.
4. The opening of an MLB office in India in 2019 and accessibility of online content further entrenched the mark’s reputation in India.
5. Despite lapse of its 1983 Indian registration, MLB claimed prior adoption, continuous global use, and trans-border reputation sufficient to qualify the mark as a well-known trademark in India.

MLB further relied on the fact that the appellant’s BLUE-JAY registration in Class 25 was obtained later, on August 19, 1998.

Appellant’s Defence to Rectification

The appellant resisted the rectification petition on multiple grounds, contending that:

1. MLB failed to prove any trans-border reputation or goodwill of the BLUE JAYS mark in India prior to 1998.
2. The evidence relied upon demonstrated use only in the US and Canada, save for a solitary invoice from Delhi.
3. There was no India-specific evidence of use, promotion, sales, goodwill, or commercial operations.
4. Mere social media presence or website accessibility does not constitute “use” or reputation in India.
5. Given the limited popularity of baseball in India, the BLUE JAYS mark could not be treated as well-known under Indian law.
6. MLB had no valid or subsisting registration in Class 25, its Indian applications having been filed on a proposed-to-be-used basis and later abandoned.
7. The appellant held a valid registration for BLUE-JAY in Class 25 since 1998 for readymade garments, unrelated to MLB’s core activities.

Findings of the Single Judge

The learned Single Judge allowed the rectification petition, holding that:

1. In rectification proceedings involving similar marks for identical goods, priority of adoption is paramount, and MLB’s earlier application for BLUE JAYS deserved precedence.
2. The appellant’s explanations for adopting BLUE-JAY were inconsistent, raising doubts as to bona fides and indicating dishonest intent to ride on MLB’s goodwill.
3. The BLUE JAYS mark had acquired worldwide and trans-border reputation since 1976, with sufficient accessibility and exposure in India through broadcasts, websites, and merchandise.

Issues Before the Division Bench

The Division Bench was called upon to examine whether:

1. MLB’s BLUE JAYS mark qualified as an “earlier trademark” under the Trademarks Act.
2. Trans-border reputation could be equated with “use” in India.
3. MLB had established goodwill or reputation in India prior to August 1998.
4. The appellant’s adoption of BLUE-JAY was tainted by bad faith.
5. Grounds existed for rectification under Sections 11 and 57 of the Act.

Findings and Analysis of the Division Bench

No “Earlier Trademark” in India

The Division Bench held that the BLUE JAYS mark was not an “earlier trademark” at the time of the appellant’s registration. MLB had:

1. no subsisting registration,
2. no pending application, and
3. no well-known trademark status in India in 1998 or even by 2017.

The respondent’s abandoned applications from 1983 and 1988 could not confer prior rights.

Trans-Border Reputation Is Not “Use”

The Court categorically rejected the Single Judge’s equation of trans-border reputation with “use” in India. Under the Trademarks Act, “use” requires specific statutory modes, none of which were proved.

Mere website accessibility, online visibility, or the theoretical possibility of purchasing merchandise from India does not amount to trademark use.

Global Fame Must Percolate into India

The Court emphasised that global goodwill is legally irrelevant unless it is shown to have percolated into India before the relevant date. The Single Judge failed to record any clear finding of goodwill or reputation among Indian consumers.

Factors such as websites, broadcasts, and prior applications were held insufficient to establish trans-border reputation in India.

Popularity of the Activity Is Relevant

Given that the BLUE JAYS mark is intrinsically linked to a Canadian baseball team, and baseball enjoys limited following in India, trans-border reputation could not be presumed. Where the underlying activity itself has limited Indian exposure, stronger proof of consumer recognition is required.

Passing Off Requires Indian Goodwill

The Court reiterated that goodwill must be recognised by the Indian public, not merely asserted by the proprietor. In the absence of Indian goodwill prior to August 1998, a passing-off claim necessarily fails.

No Bad Faith in Adoption

The Division Bench rejected the finding of bad faith, holding that:

1. Suspicion cannot substitute proof.
2. Bad faith must exist at the time of application or prior to registration.
3. Alleged inconsistencies in explanations for adoption were illusory, as both explanations traced the mark to the Blue Jay bird.
4. Even assuming differing explanations, they did not establish dishonest adoption, particularly when MLB had abandoned its Indian applications long before 1998.

No Prior User in India

The finding that MLB was a prior user since 1976 was held to be factually incorrect, as such use was confined to Canada and the US, with no evidence of use in India prior to 1998.

Final Decision

In light of the above findings, the Division Bench held that no grounds for rectification were made out. The order of the Single Judge was set aside, and the appellant’s BLUE-JAY mark was directed to be restored to the Trade Marks Register.

Comment

This judgment serves as a decisive reaffirmation that global reputation alone does not translate into enforceable trademark rights in India. Trans-border reputation, prior user, and bad faith adoption cannot be presumed and must be strictly proved with clear, India-specific evidence as on the relevant date. It would seem Indian courts have moved from a liberal trans-border reputation approach to strict territoriality-based framework.