One mark, one source: trademarks in India
The principle of ‘one mark, one source, and one proprietor’ has caught the fancy of the Indian courts over past few years and, more often than not, many foreign brands are protected on Indian soil without having an actual physical presence in India against the defence of ‘prior use in India’ by certain entities in passing off actions.
The Indian courts have recognised that it is very easy for Indian entities to run faster than the first owners of trademarks in commencing use of the trademark in India and then to claim the defence of prior use in India.
These attempts are now being thwarted without any favouritism towards Indian entities. After the opening up of the economy and markets in India, the legal principle of transborder reputation has been developing and has now reached a decent stage wherein the thresholds for the owner of trademark to seek protection despite not having a presence in India have been considerably lowered in recent years. This is a welcome step.
The principle
One of the first Indian judgments to recognise the principle of transborder reputation was delivered almost 25 years ago when a division bench of the Bombay High Court held in Kamal Trading Co v Gillette UK Ltd that goodwill and reputation could not be limited to one particular country and that they do not depend only upon the availability of goods in a particular country. With this judgment the seed of the principle of transborder reputation being recognised in India was sown, which grew into a plant and has developed slowly to become a strong tree.
The principle of transborder reputation again found support in the early 1990s when the Delhi High Court in the matter of Apple Computers Inc v Apple Leasing and Industries echoed the same sentiment after discussing the law prevalent in various foreign jurisdictions.
The principle attained new heights by virtue of judgment(s) rendered by the Delhi High Court and the Supreme Court of India in 1996 in N R Dongre & Ors v Whirlpool Corporation, wherein a large Indian corporation was restrained from using the trademark ‘Whirlpool’ despite being the registered proprietor of it on the Indian trademark register and despite Whirlpool Corporation’s having never sold its goods on a commercial scale in India.
The supply of goods in Indian embassies was held sufficient to satisfy the requirement of reputation and use in India. Further, advertisement in foreign magazines with circulation in India was held to be sufficient to acquire reputation.
