Essentiality of territorial goodwill and reputation for establishing a trademark: Delhi High Court rules

The Division Bench of the Delhi High Court has held that merely having a global reputation or goodwill is not sufficient to claim trans-border reputation for a trademark. In order to succeed, it is imperative for the claimant to prove and establish existence of goodwill and reputation in the concerned territory.

The decision was passed in Bolt Technology OU v. Ujoy Technology Private Limited & Anr., on November 30, 2023, in line with the 2017 judgment rendered by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. on the subject of transborder reputation.

The Single Judge had directed that having installed a limited number of electric vehicles and not being engaged in providing electric vehicle charging services globally, Bolt Technology cannot be attributed a transborder reputation in offering EV charging services that extend to India.

The Court held:

1. It is essential to establish goodwill and reputation of a trademark in India; merely having trans-border reputation is not sufficient. Thus, territoriality principle applies and not the universality doctrine.
2. For a claimant to be entitled to protection of trademark, the mark must have a substantial presence among consumers. Establishing reputation itself relies on widespread recognition within a significant and notable segment of an audience.
3. A claimant lacking presence or a customer base in India, or failing to establish such presence through sufficient advertisement or promotional activity, or one who fails to establish a global reputation widely recognized by the Indian consuming public, would be disentitled to claim protection.
4. The goodwill for the mark necessarily implies that the claimant has made significant and substantial revenue. Reputation would stand satisfied if the Court is to find substantial presence of the mark in the market.
5. The technical progress and precedents that are set may have enabled the Court to eliminate the requirement of a real market. However, in determining the robustness of a trademark’s global reputation, it is crucial to establish and assess the metric of substantial goodwill or reputation through sufficient evidence within the Indian market.