Trans-Border Reputation in laws of Trademark

Trans-Border Reputation in laws of Trademark

Trans-Border Reputation in laws of Trademark • The concept of goodwill is derived from reputation but the reputation need not be necessarily a local reputation. It can even be a spill over in India of the international reputation enjoyed by the Plaintiff’s mark. • It is not necessary for the Plaintiff to actually show the presence of or sale of its products in India as long as it is able to establish that it enjoys a spill over reputation in India. The reputation of a product may precede its introduction and may exist without trade of the product in the country. • The proof of reputation can be in the form of advertisements in the media and general awareness which in the modern day context would include advertisements or display on the internet and social media. • The reputation must be shown to exist at the time the Defendant enters the market. • A mechanical incantation of reputation is not sufficient. There must be some material that the product is known to the Indian consumer. The material will be scrutinised by the Court from many relevant perspectives, including the class of consumers likely to buy the product • Although in the internationalisation of trade there could be a possible confusion with the domestic trader bona fide adopting business names similar to names legitimately used elsewhere, a dishonest adoption or use of a mark similar to one having a reputation in the market, with a view to causing deception or confusion in the mind of the average consumer, may invite an injunction. • In the instant matter, it was held that Plaintiffs was successfully in prima facie establishing that their products and marks had a substantial spill over reputation in India prior to the date the Defendant re-commenced using the mark in India and thus entitled for the interim injunction. [Cadbury UK Limited and Anr. vs. Lotte India Corporation Ltd.] (Delhi HC, 24.01.2014)