Transborder Reputation In Trademark Law: A Reassessment Of Territoriality

I. Introduction

Borders are drawn on maps, never in the minds of consumers. A brand trending on social media, carried home in tourist shopping bags and advertised across international platforms does not cease to exist simply because it lacks a trademark registration in a particular country.  Reputation travels and often arrives long before a business does. It is increasingly shaped by the internet and cross-border visibility and is no longer confined to physical markets, it travels ahead of and sometimes even substitutes for, commercial presence.

This reflects the present reality of trademark law, where brand identity and consumer recognition transcend national borders. The principle of transborder reputation captures this particular shift, acknowledging that a trademark may warrant protection even in jurisdictions where it is neither registered nor used, provided it has acquired sufficient goodwill among the relevant public. Through digital platforms, advertising, etc, reputation can “spill over” into markets without formal entry, influencing consumer perception in a manner that traditional legal frameworks did not anticipate.

Historically, however, Indian trademark law was firmly anchored in the principle of territoriality, due to which foreign proprietors without a commercial presence in India faced significant limitations in enforcing their rights. The only remedy available in such circumstances was an action for passing off. Unlike infringement, which is a statutory remedy available to registered proprietors, passing off is grounded in common law and protects the goodwill of a business against misrepresentation. Yet, passing off imposed a considerable  evidentiary burden.¹ This limitation highlighted the inadequacy of strict territoriality in an increasingly digital and borderless commercial world.

II. International Recognition of Transborder Reputation

The limitations of territoriality further led to the gradual development of international norms recognizing the cross-border nature of trademark reputation. Central to this evolution is the concept of well-known marks, which serves as a legal vehicle through which transborder reputation is recognized and protected. By according protection to marks based on their reputation rather than their territorial use or registration, international law implicitly acknowledges that goodwill can transcend national boundaries.

A significant step in this regard was the Paris Convention for the Protection of Industrial Property². Article 6bis of the said convention acknowledges that reputation can transcend jurisdictional limits of usage by requiring member states to refuse or revoke the registration of marks that are identical to or similar to well-known marks, even if such marks are not registered within the jurisdiction.

This protection was expanded under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)³, which mandates protection of well-known marks even for dissimilar goods and services, provided there is a likelihood of confusion or an indication of connection with the proprietor, emphasizing recognition among the relevant public rather than mere presence. 

Further guidance is provided by the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks⁴, which gives factors for determining well-known mark status, including the extent and reach of recognition. Though non-binding, it has significantly influenced legislative and judicial approaches to transborder reputation.

III. Statutory Framework in India

India has incorporated these evolving international principles into its domestic law through the  Trade Marks Act, 1999⁵ which expressly recognizes “well-known trademarks” under Section  2(1)(zg) and provides for their protection. According to the said Act, a well-known mark is one that has become so widely recognized among the relevant public that its use in relation to other goods or services would likely indicate a connection with its proprietor.

A notable aspect of the statute is that it does not mandate actual use or registration in India for a mark to qualify as well-known. Instead, it focuses on the extent of recognition of the mark among the relevant public. This allows courts and authorities to consider global reputation, advertising and digital presence in determining whether a mark enjoys protection.

Therefore, the Act gives statutory recognition to transborder reputation, enabling protection of internationally reputed marks while ensuring that such recognition is based on credible evidence, hence, maintaining a balance between global brand protection and domestic commercial interests.

IV. Judicial Evolution in India

Indian courts have played a significant role in developing the doctrine of transborder reputation through a series of significant judicial pronouncements.

An early articulation of this principle can be seen in Kamal Trading Co. v. Gillette U.K. Ltd. ⁶, where the Bombay High Court recognised that goodwill may exist even without an actual commercial presence in the domestic market. It observed that reputation can be built and sustained through advertisements and international exposure and that the likelihood of confusion must be evaluated from the standpoint of an average consumer, notwithstanding minor distinctions between the goods.

This position was subsequently reinforced by the Supreme Court in N.R. Dongre v. Whirlpool Corporation ⁷, where it was held that the “Whirlpool” mark had acquired substantial reputation in India owing to extensive advertising and global visibility. The Court clarified that actual use within India is not an essential condition for protection, thereby underscoring the centrality of goodwill in trademark jurisprudence.

However, a more restrained and evidence-oriented approach was adopted by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd ⁸. The Apex Court ruled that the existence of global goodwill in isolation is inadequate; it must be shown that such goodwill had permeated the Indian market prior to the defendant’s adoption of the mark.  In the absence of such proof, the claim was denied. This decision highlighted the necessity of establishing a concrete link between international reputation and recognition within India.

A significant contemporary application of the principle of transborder reputation is reflected in the case of Trustees of Princeton University v. Vagdevi Educational Society ⁹. The case involved the alleged unauthorized use of the mark “Princeton” by an Indian educational institution. The Delhi High Court held that “use” under the Act, especially with regards to

services, includes broader indicators such as media publications, academic engagement and recognition among Indian consumers. The court recognised that trademark reputation and goodwill can extend across borders and need not depend on a physical commercial presence in India.

However, in granting interim relief, the Court held hat the plaintiff was successful in establishing a prima facie case and adopted a balanced and pragmatic approach. Instead of ordering an immediate shutdown, it restrained the defendant from any further expansion under the impugned name and from entering into new affiliations or representations using “Princeton.” 

It is pertinent to note that the matter is presently pending adjudication and the observations discussed arise from the interim order of the Court, wherein a prima facie case of both infringement and passing off was made out.

V. Conclusion

The concept of transborder reputation represents a significant evolution in trademark law, moving beyond rigid territorial boundaries to accommodate the realities of global commerce and digital connectivity. From a system that once confined foreign proprietors to the limited remedy of passing off, the law has progressed to recognize and protect goodwill that transcends borders. International conventions, statutory recognition under the Trade Marks Act, 1999 and judicial decisions have together shaped this concept in India. At the same time, courts have maintained a balanced approach by requiring clear evidence of goodwill within the domestic market.

As brands continue to build global identities and consumers engage with them across digital platforms, transborder reputation remains central to trademark jurisprudence. Its continued development depends on preservation of balance between ensuring robust protection for legitimate goodwill and safeguarding fair competition within domestic markets.

Footnotes

^{1 P.M. Shanmuka Priya, M. Sai Deekshitha & P.M. Arun, Trans-Border Reputation of Trademarks in India, 6 IJLMH 580, 580–88 (2023).}

^{2 Paris Convention for the Protection of Industrial Property, Mar. 20, 1883.}

^{3. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994.}

^{4. World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (1999).}

^{5 Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).}

^{6 Kamal Trading Co. v. Gillette U.K. Ltd., 1987 SCC OnLine Bom 754 (India).} 

^{7 Toyota Jidosha Kabushiki Kaisha v. Prius Auto Indus. Ltd., (2018) 2 SCC 1 (India).}

^{8 N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714 (India).}

^{9 Trustees of Princeton Univ. v. Vagdevi Educ. Soc’y, 2025 SCC OnLine Del 6296 (India).}

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.