Transborder Reputation of Trade Marks

A trade mark is a representation attached to goods for the purpose of indicating the trade origin of those goods. For example, the trade mark ‘COMPAQ’ distinguishes the goods of COMPAQ from those of say, the ‘LENOVO’. Trade marks are associated with brand identity, the purpose of which is to establish a link between the particular products or services and the company in the minds of the members of trade and public. Reputation of a trade mark is an important factor. The traditional theories relating to acquisition of a trade mark are that the trade mark must be used upon goods in the concerned country, and that the trade mark must be registered in that country. It is on the basis of this principle, in Alian Benardian v. Pavilian Properties[1] (Crazy Horse), in England relief was refused to a French company on the ground that the said company did not have business in England.

Transborder Reputation Of Trade Marks In India
With the opening of the economy and expansion of the concept of globalisation the Indian law and Indian courts have recognised action by foreign plaintiff on the basis of reputation of his goods or services on the foreign soil and have departed from the traditional concept of requirement of use of the trade mark or registration in India for the success in the Passing Off action. Transborder reputation is embodied in Section 35 of the Indian Trade Mark Act, 1999 and it offers protection to foreign trade marks on the basis of their international reputation.

In Kamal Trading Co., Bombay v. Gillette U.K. Limited Middle Sex, England[2], the Hon’ble Bombay High Court held:

“…It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other Medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Take for example, the televisions, and Video Cassette recorders manufactured by National, Sony or other well Japanese concerns. These televisions and V.C.R’s are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word "National" or "Sony" has not acquired reputation in this country? In our judgement, the good will or reputation of goods or marks does not depend on its availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturer.”

Reiterating the same principles the Hon’ble Delhi High Court in Blue Cross and Blue Shield Association v. Blue Cross Health Clinic[3], granted an exparte injunction relief on the ground that there was an international reputation although there was no registration or use of the trade mark in India. The Hon’ble Calcutta High Court in Kabushiki Kaisha Toshiba v. Toshiba Appliances Co[4]., attached more importance to ‘use of mark’ in relation to goods than transborder reputation. But the Division Bench of the same court in M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle[5], observed that the use of a trade mark does not necessarily imply actual sale of the goods bearing such mark. Use of a trade mark can be in any form.

N.R. Dongre v. Whirlpool Corpn.[6] is the landmark judgment which recognised the doctrine of ‘transborder reputation’ in detail. In this case, one of the questions before the court was whether the aggrieved party who was not selling in India could claim the benefit of transborder reputation in the trade mark ‘WHIRLPOOL’ so as to maintain a Passing Off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trade mark in the market? Answering the question in favour of the aggrieved party an injunction was granted by the Hon’ble Delhi High Court which was reaffirmed by the Hon’ble Supreme Court.

The Hon’ble Supreme Court has finally settled the law with respect to transborder reputation in the case of Milmet Oftho Industries & Ors. v. Allergen Inc[7]. In the present case the Appellant Allergen Inc., a company manufacturing pharmaceutical products in different countries but not in India, sought to restrain the respondent company, carrying on business of manufacturing pharmaceutical products in India from using the mark ‘OCUFLOX’ in respect of a medicinal preparation manufactured and marketed by the respondents. The question that arose was whether a foreign manufacturer had the right to restrain use of a mark outside the country? Answering the question in favour of the Appellant it was held that the Appellant had sufficient worldwide reputation connecting the name ‘OCUFLOX’ and that it was entitled to seek protection in respect of the said name to medicinal products against the respondent.

Remedies Available For Transborder Reputation Infringement
The protection provided to unregistered trade marks is also extended to foreign marks, which have a reputation in India on the basis of extensive advertisements and publicity. The international reputation of a trade mark could enable the owner to obtain injunction in the courts of a country in which he is not even trading. Indian courts have also granted injunction in cases of transborder reputation. In Jolen Inc. v. Shobanlal Jain[8], transborder reputation was established by the fact that the plaintiff marketed goods in other countries. Considering the fact that there was copy of the plaintiff’s trade mark, interim injunction was granted.

Conclusion
The growth and development in international market makes it important that transborder reputation of a trade mark is properly recognised and protected in different countries. The Indian courts have given due importance and protection to transborder reputation of a trade mark. It is always suggested that the foreign traders should get their marks registered in as many countries as possible in order to avoid any kind of a conflict. The present scenario in India is that recognition and protection is extended to unregistered and foreign trade marks on the basis of their transborder reputation.
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[1] 1967 R.P.C. 581
[2] 1988 PTC 1
[3] (1990) I.P.L.R. 92 (Del)
[4] 1994 P.T.C. 53
[5] 1994 P.T.C. 83
[6] (1996) 16 P.T.C. 476 Del (DB)
[7] (2004) 12 SCC 624
[8] 2005 30 P.T.C. 385 (Mad)

The  author can be reached at: sunainabasera@legalserviceindia.com