Reputation of a trademark implies to the knowledge and awareness of such trademark among the public and is the means by which a trademark is recognized. With globalization of trade and commerce, products are widely available in every nook and corner of the world irrespective of their place of origin. Adding to this, the knowledge about the products reach other countries long before the actual availability of the product through various modern mass communication technology like TV, internet, newspapers, magazines, cinemas, etc. And thus, the reputation of a trademark is not limited to the country of its origin, but surpasses the geographical frontiers and is spread all across the world.

The Indian courts have also been increasingly recognizing the reputation of foreign trademarks and since the Supreme Court delivered a landmark decision in N.R. Dongre vs. Whirlpool Corporation, trans-border reputation has been a well accepted proposition for claiming a remedy for passing-off even though the trademark has not entered the Indian markets.

Recently the Delhi High Court reiterated the recognition of trans-border reputation in India and protected the spillover reputation of overseas trademark, even when the mark has not been used in India. Furthermore, the judicial pronouncement laid down certain constructive key parameters that courts must take into consideration while deciding a claim of passing-off on the basis of trans-border reputation.

Mac Personal Care Pvt. Ltd. vs. Laverana Gmbh And Co. Kg

Facts: The respondents Lavarana GMBH & Co. Kg, a limited liability company incorporated in Germany has been using the trademark LAVERA since 1980s with respect to their cosmetic products that are being sold globally in various foreign countries. The respondent’s trademark has been registered in 8 countries and is pending registration in India. The respondent became aware of the appellant’s trademark LAVERA and MAC’s LAVERA when the same was published in the Trademarks Journal no. 1441 and 1443 dated September 2010, to which the respondent filed oppositions. Consequently in a suit for permanent injunction by the respondent, it was held that the goodwill and trans-border reputation of the respondent’s trademark has been established and an interim injunction was granted against the appellant. And thus this appeal.

Contentions by the Appellant:
  • The respondent’s cosmetic products as well as their trademark is not been used in India. The trademark application for LAVERA dated September 2009 was filed on proposed to used basis and therefore the trademark has not yet entered the Indian markets and is unknown to the Indian public.
  • The appellant has been using LAVERA and MAC’s LAVERA since 2005, but the respondent filed a suit after a delay of 7 years, which amounts to acquiescence of the Appellant’s use.

Contentions by the Respondent:

  • The respondent’s trademark has attributed to itself a wide ranging and global goodwill and reputation on account of its extensive use and marketing for a prolonged period since 1982. The worldwide acclaim associated with the respondent’s trademark is evidenced by the fact that their sales have risen tremendously between 2007-2011.
  • The respondent’s products under the trademark LAVERA are available on numerous online platforms and they also have registered domains for LAVERA in India as well. Considering the dominant presence of the trademark on cyberspace, the reputation ought to have spread over to India.
  • Indians traveling abroad are exposed to the respondent’s products and the mark LAVERA is associated with the respondent’s cosmetic products.
Observation by the Court:

The concept of trans-border reputation has grown quite considerably in India through various judicial precedents and the concept of trans-border reputation essentially means that an unregistered trademark in India need not necessarily have a commercial use in the Indian market in order to maintain an action for passing off. International reputation and renown may suffice if the same spills over to India.

The Court enumerated two vital elements for determining trans-border reputation:

  • There is an international reputation inuring in the trademark on account of use made overseas, and
  • The reputation spills over to India.

Also registrations in multiple jurisdictions create a stronger presumption that reputation inures in favor of the trademark.

Decision:
  • The respondent applied for registration of the trademark in India in 2009 and when its application was pending the appellant applied for registration of the same mark in the year 2010 which suffices the presumption that the adoption by the appellant is prima-facie dishonest.
  • The threshold to establish a reputation in the international market has been achieved by the respondent considering that they are the registered proprietor of the trademark LAVERA in many countries abroad and having intended to market the product in India and having applied for registration of its trademark in India. Accordingly it was held that the respondent was entitled to an injunction against the appellant and the appeal was dismissed.

With the rapidly growing international trade physical frontiers are no more a restraint and the products are widely available in every country of the world, it is important to recognize the trans-border reputation attached to the foreign trademarks and the Indian Courts are rapidly taking a constructive view towards protecting overseas trademarks on the basis of global reputation without insisting on any localized business.