INTRODUCTION
Before globalization, trade was mostly restricted to particular areas since reaching foreign markets or extending trade beyond local borders was difficult and time-consuming. However, new opportunities arose with the onset of globalization, turning the world into a single, interconnected economy. Liberal policies promoting international commerce made trade between countries easier.
Businesses that grow globally encounter both opportunities and challenges, especially when it comes to protecting their intellectual property. As vital identifiers for a business's "products or services" and a key factor in "building brand recognition and consumer trust," trademarks are among these assets."
Trademark goes way beyond being mere symbols, logos, or names. They embody the "reputation, quality, and goodwill" a company stands for. A well-established trademark with a strong presence in the market not only sets a business apart from its competitors but also assures customers of "consistency and reliability." This article engages into two recent and famous judgments of the Delhi High Court and how both revolve around cross-border reputation.
- WHAT CONSTITUTES TRADEMARK INFRINGEMENT:
There are various ways in which an individual or an entity can infringe someone's registered trademark. This concept applies and includes any mark used in commerce, including "logos, slogans, and brand names." Commonly, there are three ways of infringement: use by unauthorized persons, someone else using "identical or deceptively similar mar," or passing off in cases where the trademark is unregistered. In the first case, a person is using a registered trademark but is "not authorized by the holder" of the "registered trademark" to use it. In the second case, the unauthorized person uses the trademark either in an identical manner to that of the "registered trademark" or "deceptively similar" to it. The term "deceptively similar1" indicates that the disputed mark is such that a standard/common consumer may get confused between the two marks and may be misled into thinking that either the two are connected or one is endorsing the other. The key term here is 'may,' meaning it only needs to be shown that misrecognition is possible rather than proving it has occurred. Demonstrating the likelihood of confusion between the marks is sufficient to establish infringement. The remedy lies in both criminal and civil law2. By section 135 of the Trademark Act, if a suit is filed for infringement or passing off, the court may grant relief in the form of injunction, and additionally, if the plaintiff opts, then either damages or "an account for profit together with or without an order for delivery of the infringing labels and marks for destruction3 or erasure." The court can also order to provide the aggrieved the cost of legal proceedings.
- CONCEPT OF CROSS-BORDER INFRINGEMENT:
"Cross-border trademark infringement" arises when a mark is wielded "without rightful leave/authorization" in a country far from whence it was first registered. Verily, such transgression may come to pass when an individual or business in one country takes up a mark so akin or deceptively close to one protected in another nation.
If a foreign business or individual uses a trademark that is similar to one registered within India in form or spirit, they may be accused of "cross-border trademark infringement" in India. The legitimate owner of the mark may then use the Indian Trade Marks Act of 1999's authority to pursue justice in Indian courts. According to its terms, the rightful owner of the mark may request an injunction to prevent unlawful use, pursue "monetary damages," and demand costs for engaging legal counsel. The remedy is found in a number of additional acts in addition to the Trademark Act. Briefly, it includes The Customs Act, 1962; The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007; The Information Technology (Intermediary Guidelines) Rules, 2011; The Commercial Courts, Commercial Division, and Commercial Appellate Division of High Courts Act, 2015; The Paris Convention for the Protection of Industrial Property and the4 TRIPS Agreement.
The jurisdiction in such cases lies with the courts in India where the act of infringement takes place in India, the defendant is India's resident or where the disputed goods are "imported into India." Indian courts nowadays encourage the parties to go for Mediation as a remedy for a speedy and less expensive trial.
- AMUL DISPUTE:
Amul, a famous Gujrat-based "Indian dairy brand," is owned by G.C.M.M.F. With such a large base of cooperative committees and a strong network of 36,000 farmers, Amul expanded globally, and its products are "exported to more than 50 countries" around the globe. Being such a famous brand, Amul is a registered trademark under class 29, which pertains to Dairy products (for food), milk, buttermilk, chhas, edible cream, ghee, edible oils and edible fats, milk beverages principally of milk in India. It has been registered since 2011.
In September 2024, Amul, India's iconic dairy cooperative brand known for its milk, butter, and various dairy products, found itself in a legal battle with an Italian company, Terre Primitive. The Italian company had been selling "cookies and chocolate-coated biscuits" under the "Amuleti" brand, which bore a striking resemblance to "Amul's trademark." "The Gujarat Cooperative Milk Marketing Federation" (G.C.M.M.F.), which looks after the management of the Amul brand, instituted proceedings through their legal representative, Abhishek Singh.
He argued that Amul, a "well-known" and respected brand in India, also has a significant global presence. Additionally, it also ranks 8th among the top dairy organizations worldwide. He also pointed out that Terre Primitive had "blatantly" copied Amul's logo's font, design, and overall appearance, with only the addition of "eti" to create the Amuleti mark.
The Italian company was forbidden from using any mark that was identical to or substantially resembled Amul's by Justice Mini Pushkarna, who "issued an injunction." Additionally, the court mandated that the company's website be cleared of the infringing merchandise. Furthermore, "Meta Inc." was directed to "block or take down the company's social media accounts," which advertised products that were in violation of the law.
- BOLT TECHNOLOGIES DISPUTE:
The DHC's Division Bench ruled on the case of "Bolt Technologies O.U. vs. Ujoy Technologies Pvt. Ltd," addressing an alleged trademark passing off involving the "BOLT" mark. The Estonian company Bolt Technology accused Ujoy Technologies of misusing its mark for electric vehicle (E.V.) charging stations in India. Bolt Technology, a global player in ride-hailing and delivery services, argued that it had established significant international goodwill for its "BOLT" trademark, which had extended into India.
However, Ujoy Technologies, a leading provider of E.V. charging stations in India, contested this claim. They argued that Bolt's reputation in India was limited, and their use of "BOLT" for E.V. charging had no impact on Bolt's services. Ujoy pointed out that Bolt was not active in the E.V. charging business and had not established any goodwill in that market, particularly in India.
In February 2023, the Single Judge refused to grant Bolt Technology an injunction, noting that the company lacked sufficient reputation and market presence in India. Bolt's global reputation, the judge ruled, did not extend to the Indian E.V. charging industry. Reliance was also placed on the principles laid down in the Toyota Judgement. Bolt Technology appealed, but the Division Bench upheld the earlier ruling. The court concluded that Bolt had not provided enough evidence to prove a substantial spillover of its reputation into India, particularly in the E.V. charging sector. The judgment reinforced the principle that global reputation alone does not establish trademark rights in India; companies must demonstrate a significant and well-established presence in the local market to succeed in cross-border trademark disputes.
- COMPARISION AND CONCLUSION:
Amul had significant goodwill both within India and internationally in the dairy industry, while Bolt's goodwill, though present globally in the ride-hailing and delivery sectors, did not extend to E.V. charging stations in India. Amul's trademark was directly linked to products similar to those infringing upon (dairy and related food products), with its global reach and recognition firmly established. Conversely, Bolt lacked a relevant presence in the Indian E.V. charging market, undermining its case for passing off. Amul successfully protected its brand based on its solid cross-border presence and goodwill, securing a legal victory against Terre Primitive. On the other hand, Bolt could not prove sufficient spillover of its reputation into the Indian market for E.V. charging stations, resulting in the court ruling in favor of Ujoy Technologies. Therefore, while Amul's case highlighted the strength of having a global reputation and local market presence, Bolt Technologies' dispute demonstrates that even a well-known international brand must show substantial goodwill within India's specific market and industry to win a cross-border trademark case.
Footnotes
1 Trademark Infringement In India - What is it, Types, Penalties for Infringement. https://cleartax.in/s/trademark-infringement-india.
2 Arohee Sandeep Bhatkar, Nikhil Rote & Shaista Peerzada, Cross Border Trademark Infringement: A Study of Indian and U.S.A.'s Laws, Remedies, Cases, and Protection, 4 INDIAN J.L. & LEGAL RSCH. 1 (2022-2023).
3 ICT-IPR. https://ict-ipr.in/trademark/.
4 Royal Decree 63/98 on the Accession of the Sultanate of Oman to the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works – Decree. https://decree.om/1998/rd19980063/.
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