Goodwill of a Trademark and the Principle of Territoriality
Introduction:
The recent decision by the Hon'ble Division Bench of the High Court of Delhi in a trademark dispute involving the mark "BOLT" underscores the significance of the principle of territoriality in establishing goodwill for trademarks in India. The case involved a multinational company's attempt to secure an interim injunction based on the alleged violation of its trademark in the Indian market.
Factual Background:
The Plaintiff, a multinational company, claimed to have used the trademark "BOLT" in connection with taxi aggregation services in Tallinn, Estonia, and Riga, Latvia since 2013. Over time, the services expanded to 45 countries, including India. In 2018, the Plaintiff adopted the "BOLT" brand for a wide range of services, including ride-hailing, food and grocery delivery, rental of cars, e-bikes, and scooters, as well as electric vehicles.
The Plaintiff relied on advertising campaigns launched in February 2020, reaching several Indian cities, including Ahmedabad, Pune, Surat, Chennai, and Kolkata. The campaigns were conducted through the Plaintiff's mobile app and purportedly reached over 30 lakh customers in India.
Legal Proceedings:
The trademark dispute arose when the Defendant announced the impending launch of its electric vehicle charging network under the brand "REVOS Bolt" through public posts on social media platforms in October 2020. The Plaintiff sought an interim injunction, which was initially denied by the Ld. Single Judge on the grounds of the Plaintiff's failure to establish goodwill in India.
The Plaintiff appealed this decision, leading to the recent decision by the Hon'ble Division Bench.
Analysis of the High Court's Decision:
The Hon'ble Division Bench upheld the decision of the Single Judge, emphasizing the principle of territoriality in determining goodwill for trademarks. The Court observed that the Plaintiff's singular advertising campaign in five cities within India was insufficient to establish substantial goodwill or reputation across the entire nation.
The court noted that the geographical expanse of India requires a more extensive and impactful presence to claim cross-border reputation. It held that the transnational reputation of a trademark must be substantiated with adequate evidence of substantial goodwill or reputation specifically within the Indian market.
Implications:
This decision reinforces the importance of establishing territorial goodwill for trademarks in India. Mere transnational reputation, without a concrete demonstration of substantial goodwill within the Indian market, is unlikely to succeed in trademark disputes. Multinational companies operating in India must strategically develop and present evidence of widespread and impactful use of their trademarks to successfully claim protection under the principle of territoriality.
The Concluding Note:
The recent decision by the High Court of Delhi reaffirms the principle that establishing goodwill for trademarks in India requires more than just transnational reputation. It serves as a reminder to litigants and trademark owners that a robust and territoriality specific case must be presented to secure protection against potential trademark violation in the Indian market.
The Case Law Discussed:
Date of Judgement/Order:30/11/2023
Case No. FAO(OS) (COMM) 45/2023
Neutral Citation No:2023:DHC:8509-DB
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma, HJ
Case Title: Bolt Technology Vs Ujoy Technology
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney
Mob No: 9990389539
