The Delhi High Court recently had the opportunity to decide a case on trademark infringement and passing off where they examined the concept of usage of a trademark in India. While we have blogged about the concept of usage earlier (read our posts here and here) what was interesting in this case was the evidence that was submitted by the Plaintiff and the factors that were relied on to prove spill over reputation and trans-border reputation.

The basic facts of the case were that the Plaintiffs Jane Norman Limited (from the UK) received an enquiry on their website where a person from India asked them if they were affiliated to the Defendant Jane Norman Retail Private Limited (India). While they responded that they were in no way associated, they began their research into the Indian entity and found out that he was selling clothes, bag, footwear and other accessories which were identical to the Plaintiff’s products from the website Moreover they had gone to the extent of mentioning on their business card – “Jane Norman Fashion from London”

The Plaintiff Jane Norman operates out of the UK and through their website and while they didn’t have any retail shops in India, they had registered the trademark JANE NORMAN in Classes 14, 18, 25 and 35 in India. They had also on occasions imported products into India.

The evidence that the Plaintiff submitted, in this case, to prove that the mark was entitled to protection as it had acquired spill over reputation (reputation in other countries which had spilled over or extended into India) was the Registration Certificates of their marks in India and over 50 other countries. A major piece of evidence linked to their arguments was web analytics of their website which showed that between March 2011 and March 2012 there were over 18,000 visitors from India. The web analytics also showed that India ranked 22nd among all the countries from where users had accessed their website.

While it was evident that there was bad faith on the part of the defendant, Justice Sistani examined the famous Whirlpool case with regard to trans-border reputation and held that the important thing was that consumers in India had knowledge about the mark, even if there were no stores within the country.

Seeing as it was very succinctly and clearly stated in the judgment I’m just going to quote the paragraph on the holding below:

In the light of law laid down above, it may be observed that in the present case, although the plaintiff does not have physical stores in India where it sells its products under the trade mark “JANE NORMAN”, however, plaintiff definitely enjoys a spill over reputation which is evident from the statistics filed on record proving the huge number of visits that the plaintiff’s website receives from Indian users. Another factor that cannot be ignored and would contribute massively to spill over of plaintiff’s reputation to India is through purchase of plaintiff’s products by Indian visitors to nations where the plaintiff sells its products apart from the fact that plaintiff advertises its products on various media.

Holding that the Defendants were, in fact, trying to pass off their goods as the Plaintiff’s, the Judge granted a permanent injunction against the Defendants and ordered that they were liable for damages of INR 200000 (USD 3500).

While the case discussed several concepts that have been established by the Court earlier, it was great to see that evidence of usage over the Internet was considered and that visitor statistics on websites were treated as proof to show that people in India had knowledge of the mark.

In this particular case, the Plaintiff had registered trademarks in India but since the law of passing off is recognized in India, even if international companies don’t have registrations in India, but their marks have been accessed in India, a case for spill over reputation can be made.

This article has been authored by Navarre Roy, an IP Law practitioner.