Bad Faith and Prior User Rights in Trademark Rectification
Introduction:The dispute centers around the international reputation of the petitioner’s mark “BLUE JAYS,” its spillover into India, and the respondent’s adoption of a deceptively similar mark “BLUE-JAY.” The judgment critically examines the interplay between prior user rights, international goodwill, and dishonest adoption, reaffirming established principles that protect well-known marks against misappropriation through bad faith registration.
Factual Background: The petitioner, Major League Baseball Properties Inc., is an intellectual property holding company incorporated in New York, USA, managing trademarks of Major League Baseball (MLB) and its clubs. Since 1976, the petitioner has used the trademark “BLUE JAYS” for the Toronto-based MLB franchise. This mark is registered in various jurisdictions worldwide and used extensively on merchandise, team uniforms, and promotional material. In India, the petitioner filed applications for the “BLUE JAYS” marks in several classes starting as early as 1983, with continued presence through its official websites and broadcast of MLB games accessible in India since the late 1990s.
The respondents, trading as M/s PMS Creations, adopted the mark “BLUE-JAY” in 1998 for readymade garments in Class 25. Their initial explanation for choosing the mark was its association with the North American bird. Later, during rectification proceedings, the respondents advanced a new narrative that the mark was inspired by a resort in Panipat, Haryana, frequently visited by a family member.
Procedural Background:Upon learning of the respondents’ trademark application published in 2003, the petitioner filed a notice of opposition in 2004. However, due to a delay in filing evidence, the Deputy Registrar of Trade Marks deemed the opposition abandoned by an order dated October 8, 2015. The petitioner appealed to the Intellectual Property Appellate Board (IPAB). Following the abolition of the IPAB, the matter was transferred to the High Court of Delhi and numbered as C.A.(COMM.IPD-TM) 152/2022. Subsequently, by order dated September 25, 2023, the High Court permitted the petitioner to pursue rectification of the impugned mark by filing a cancellation petition under Section 57 of the Trade Marks Act, 1999. This led to the present petition challenging the registration of “BLUE-JAY.”
Legal Issue: The principal legal issue before the Court was whether the respondents’ adoption of the mark “BLUE-JAY” was bona fide or tainted by bad faith, and whether such bad faith adoption justified rectification and removal of the mark from the Register under Section 57 of the Trade Marks Act, 1999?
Discussion on Judgments: The petitioner cited Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, to establish that international reputation and prior worldwide use of a trademark can override local registration if there is sufficient spillover into India. It relied on B.K. Engineering v. Ubhi Enterprises, AIR 1985 Delhi 210, and Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, to demonstrate that deceptive similarity can cause confusion among consumers.
To highlight the element of bad faith, the petitioner referred to BPI Sports LLC v. Saurabh Gulati & Anr., 2023:DHC:2920, Kia Wang v. The Registrar of Trade Marks & Anr., 2023:DHC:6684, and Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah v. Regal Footwear, 2023 SCC OnLine Bom 10. These cases collectively underscore that adoption of a mark without honest intention or to ride on the reputation of another constitutes bad faith.
The respondents, in contrast, cited Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd., (2018) 2 SCC 1, arguing the petitioner lacked spillover reputation in India and had no valid registration in Class 25. They also cited Trustees of Princeton University v. Vagdevi Educational Society, 2023:DHC:6420, and Pioneer Nuts & Bolts v. Goodwill Enterprises, ILR (2010) 1 Delhi 738, to assert the importance of proving actual reputation and usage in the Indian market.
The petitioner in rejoinder emphasized the Supreme Court’s ruling in Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, reaffirming that the right of a prior user, including a worldwide prior user, is superior to that of a registered proprietor who is a subsequent user.
Reasoning and Analysis of the Judge: Court observed that the respondents initially stated in their counter statement before the Trade Marks Registry that the mark “BLUE-JAY” was inspired by the North American bird. However, during rectification proceedings, they introduced an entirely new explanation linking the mark to a local resort, which the Court found inconsistent and an afterthought. The Court held that adoption tainted by dishonesty cannot be legitimized by subsequent use or volume of sales.
The Judge recognized the petitioner as the undisputed prior worldwide user of the “BLUE JAYS” mark, with presence in India through online platforms and media coverage since the mid-1990s. The respondents’ adoption came 22 years later, with no cogent evidence explaining the choice of a nearly identical mark.
Citing Neon Laboratories Ltd., Milmet Oftho Industries, and Whirlpool, the Court reaffirmed that the rights of a prior user override those of a subsequent user, even if the latter has obtained registration. The Judge highlighted that bad faith, as explained in BPI Sports LLC, consists of unfair practices lacking honest intention, and when the purpose of adopting a mark is found dubious, registration must be canceled.
Final Decision: The Court concluded that the respondents’ adoption of “BLUE-JAY” was not bona fide but rather aimed to exploit the petitioner’s reputation. The Court directed the Registrar of Trade Marks to cancel and remove the registration of “BLUE-JAY” (application no.815236 in Class 25) from the Register of Trade Marks. The petition was accordingly allowed without costs.
Law Settled in This Case: This case settles that even absent a valid registration in the same class, a prior adopter and worldwide prior user with spillover reputation in India can succeed in rectification proceedings if the subsequent adopter’s mark is deceptively similar and tainted by bad faith. The judgment reinforces that bad faith, evident from inconsistent explanations or dishonest intentions, is fatal to maintaining a trademark registration.
Case Title: Major League Baseball Properties Inc Vs. Manish Vijay & Ors.:Date of Order: July 01, 2025: Case Number: C.O. (COMM.IPD-TM) 279/2023: Neutral Citation: 2025:DHC:5103: Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon'ble Mr. Justice Saurabh Banerjee
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
