You have a brand but you don’t’ sell the products under that brand in India and neither do you hold a trademark registration for the mark in India. Meanwhile, someone in India adopts your brand name and starts manufacturing and selling products under that brand. If you have advertisements in magazines that are distributed in India and if your product is listed on a website accessible from India, can you then say that the reputation of your brand has spilled over into India?

The concept of Spill-over reputation or Trans-border reputation was recently analysed by the Delhi High Court while determining whether the mark “Mac’s Lavera” is similar to “Lavera’.

Facts and contentions:

The mark “Lavera” for cosmetics has been registered by the plaintiff in various jurisdictions around the world like Germany, Denmark, Hong Kong, Italy, France, Japan, Singapore, Ireland etc. The same is pending registration in India.

The plaintiffs contended that the products are available for purchase on ebay and several online stores and a large number of Indian travellers are exposed to Lavera cosmetics through television, magazines, in flight catalogues/ magazines, etc. They have also incurred huge expenditures to promote the brand worldwide and have several domain registrations. The plaintiff’s products under the trademark LAVERA are extensively advertised in several international magazines which have a large circulation in India namely Cosmopolitan, Marie Claire, Women’s Health, Elle, Oprah, Glamour etc. The plaintiff also contended that the use and reputation of plaintiff’s brand LAVERA has spilled over into India.

In September 2010, the plaintiff discovered that the defendants had adopted a mark deceptively similar to theirs, “Mac’s Lavera” for cosmetics. The defendants contended that the plaintiff is guilty of delay, latches and acquiescence as they did not take any action for two years after discovering the alleged infringement. Moreover, they contended that the plaintiff’s mark is not a well-known mark as the plaintiff is neither the proprietor of the impugned trademark under statutory law nor under the common law and that they have failed to make out a case of trans- border reputation.

Trans-border reputation:

Over the years, the concept of trans-border reputation has only been expanded by the Courts in India. The change in the interpretation of the concept of trans-border reputation can be seen by way of the following judgments;

  • In one of the most important cases on trans-border reputation in India, the Court held that “a product and its trade name transcend the physical boundaries of a geographical region and acquire a trans-border or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trade and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial”
  • In the year 2004, while the Supreme Court upheld that the goods don’t need to be sold in India for the reputation to transcend the geographic boundaries, the SC also expressed its concern to the extent that people who have no intention of coming to India or introducing their products here should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market;
  • In the year 2009, it was reiterated by the Delhi High Court that the world has to be viewed as one common market;
  • In 2014, in an important case between Cadbury U.K. Limited & Anr vs. Lotte India Corporation Ltd, the Court had not only relied on the cases mentioned upon but also extended the principle of trans-border reputation by observing that the existence of a merchant on web pages which are of foreign origin and social media are sufficient to show the trans- border nature of reputation without having any activity in India at the relevant time;

In 2015, the Delhi High Court reiterated and reaffirmed in the present case that even if one does not have a localised business in the Country, mere advertisements in magazines and online sale of products are sufficient to show that there is spill over of reputation in India. The Court also held that Mac’s Lavera is similar to Lavera and granted an injunction.

Thought the concept of trans-border reputation has just been becoming broader day by day, it is something that needs to be determined based on the facts of each case. Blanket application of the principle of trans-border reputation in all the cases should be avoided and the facts and circumstances of each case should be taken into consideration.

This article has been authored by Durga Bhatt, an IP Law practitioner.