The Division Bench of the Delhi High Court has ruled that mere global reputation or goodwill is not sufficient to claim trans-border reputation for a trademark. To succeed, the claimant must demonstrate and establish tangible goodwill and reputation within the relevant Indian market.
The decision was delivered in Bolt Technology OU v. Ujoy Technology Private Limited & Anr. on November 30, 2023. The Court relied on the precedent set by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2017), which had clarified the doctrine of territoriality over the principle of universality in trademark law.
The Single Judge had earlier held that, since Bolt Technology had installed only a limited number of electric vehicles and was not actively providing EV charging services globally, it could not be attributed a trans-border reputation extending to India.
Key takeaways from the Court’s ruling:
- Goodwill in India is essential: The Court reaffirmed that the territoriality principle applies. Claimants must establish goodwill and reputation in India; mere global reputation is insufficient.
- Substantial consumer presence required: Protection of a trademark depends on evidence that the mark enjoys widespread recognition among a significant section of Indian consumers.
- Advertisement & promotional activity matter: A claimant without a customer base or without sufficient promotional activity in India cannot rely solely on international goodwill to claim protection.
- Goodwill linked to revenue: Demonstrating substantial revenue or commercial presence strengthens the case for protection, as it reflects genuine goodwill in the market.
- Evidence-driven assessment: Courts will require strong, market-based evidence of substantial reputation or goodwill among Indian consumers before granting protection to a mark with alleged global recognition.
This decision reinforces that businesses seeking trademark protection in India must adopt a proactive intellectual property strategy. Merely relying on global reputation will not suffice—companies must ensure their marks build substantial visibility, consumer recognition, and goodwill within India.
At Seraphic Advisors, our team advises businesses on trademark registration and protection, cross-border enforcement, and IP dispute resolution. This ruling highlights the critical need for companies entering India to establish a clear presence and protect their brand through strategic filings and enforcement.
