As businesses increasingly expand across international markets, disputes concerning the protection of international trademarks in India have become more frequent. While Indian trademark law recognizes the doctrine of transborder reputation, protection is not granted solely on the basis of global recognition. A foreign proprietor must demonstrate that its goodwill and reputation have extended/spilled into the Indian market.

These principles were recently examined by the Delhi High Court in the dispute between Robert A. Merry & Co. Ltd., proprietor of the Irish whiskey brand “THE WHISTLER”, and Piccadily Agro Industries Ltd., proprietor of the registered Indian trademark “WHISTLER” [Robert A. Merry and Co. Ltd. vs Piccadilly Agro Industries Ltd, CS(COMM) 1164/2025 & CS(COMM) 9/2026]. The Court considered competing claims of passing off and infringement and clarified the evidentiary threshold required to establish transborder reputation in India.

Background & Contentions:

The dispute arose from two cross-suits between Robert A. Merry & Co. Ltd. (“Plaintiff”), proprietor of the Irish whiskey brand “THE WHISTLER”, and Piccadily Agro Industries Ltd. (“Defendant”), proprietor of the registered Indian trademark “WHISTLER”, concerning the use of the mark in relation to whiskey. The Plaintiff claimed that its predecessor had adopted the mark “WHISTLER” in 2005 and that they have been using “THE WHISTLER” globally since 2016. Although the Plaintiff owned registrations for the marks globally in several jurisdictions, they did not hold any registration in India. Nevertheless, they contended that their extensive international use, global sales, awards and commercial activities had resulted in a transborder reputation extending to India, entitling them to restrain the Defendant from using the impugned mark through an action for passing off.

The Defendant, on the other hand, obtained registration of the mark “WHISTLER” in India in 2008 and commenced commercial use of the mark in relation to whiskey in 2018. In response to the Plaintiff’s passing off action, the Defendant instituted a separate suit alleging infringement of their registered trademark as well as passing off. The Defendant contended that the Plaintiff had failed to establish any goodwill or reputation in India prior to the Defendant’s adoption and use of the mark and, consequently, could not claim protection on the basis of transborder reputation. The principal issue before the Court was whether the Plaintiff had acquired sufficient transborder reputation in India to maintain a passing off action despite not holding a trademark registration in the country.

Analysis:

The Court began by examining the scope of protection available to an unregistered foreign trademark in India and reiterated that a passing off action based on transborder reputation is governed by the “territoriality principle”. Referring to the decisions of the Supreme Court in N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc., and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., the Court observed that while Indian law recognises the doctrine of transborder reputation, protection cannot be claimed solely on the basis of international use or global reputation. The proprietor must establish that its goodwill has spilled over into India and has acquired recognition amongst the relevant class of Indian consumers.

The Court further noted that the Plaintiff, not being the registered proprietor of the mark in India, could maintain only a passing off action. Accordingly, the burden lay on the Plaintiff to establish the classical trinity of passing off, namely, goodwill or reputation in India, misrepresentation by the Defendant, and the likelihood of damage resulting therefrom. The Court observed that the threshold for establishing goodwill assumes greater significance where the claim is founded entirely on transborder reputation.

Applying these principles, the Court examined the evidence relied upon by the Plaintiff, including foreign trademark registrations, international sales figures, industry awards, social media presence, proposed distributorship arrangements, and promotional activities. The Court held that while these materials established the Plaintiff’s reputation abroad, they did not demonstrate that the mark had acquired goodwill or recognition amongst consumers in India prior to the Defendant’s adoption and commercial use of the mark. The evidence was found insufficient to establish the requisite transborder reputation.

The Court also took note of the Defendant’s registration of the mark “WHISTLER” in India since 2008 and their continuous commercial use from 2018. In the absence of evidence establishing the Plaintiff’s prior goodwill in India, the Court held that the Defendant, as the registered proprietor, had made out a stronger prima facie case. Consequently, the Plaintiff was not entitled to an interim injunction, whereas the Defendant was entitled to protection of its statutory rights arising from registration.

Conclusion:

This decision serves as a timely reminder that foreign brand owners cannot rely solely on global reputation when seeking protection in India. Businesses intending to enter the Indian market should secure timely trademark registrations and establish a demonstrable commercial presence in India to effectively safeguard their rights.

Written by Sai Jawahar