A German cosmetics brand, LAVERA, stopped an Indian company from using its mark — despite never having sold a product in India. How? Trans-border reputation. Here’s how the Delhi High Court applied it, and the parameters it set.
The principle
A trademark’s reputation is the public’s awareness of it. With globalisation, products — and knowledge of them via TV, internet, newspapers, cinema — cross borders long before the goods arrive. So a mark’s reputation isn’t confined to its country of origin; it can spill over worldwide.
Indian courts increasingly recognise this. Since the Supreme Court’s landmark N.R. Dongre v. Whirlpool Corporation, trans-border reputation has been an accepted basis for a passing-off remedy even where the mark hasn’t entered the Indian market.
The LAVERA case
In Mac Personal Care Pvt Ltd v. Laverana GmbH & Co. KG:
- Laverana (Germany) had used LAVERA for cosmetics since the 1980s, sold in many countries, registered in 8, and pending in India. It discovered the appellant’s LAVERA / MAC’s LAVERA when published in the Trade Marks Journal (Sept 2010) and opposed, then won an interim injunction. This was the appeal.
Appellant: Laverana’s products/mark weren’t used in India; its 2009 application was “proposed to be used,” so the mark hadn’t entered the market or become known to Indians; and the appellant had used LAVERA since 2005, with Laverana suing after a 7-year delay amounting to acquiescence.
Respondent (Laverana): it had global goodwill from prolonged use since 1982 (sales rising sharply 2007–2011); products available on online platforms with registered Indian domains for LAVERA (so reputation spilled into India via cyberspace); and Indians travelling abroad were exposed to the mark.
The court’s parameters
Trans-border reputation means an unregistered mark in India need not have commercial use here to sustain passing off — international reputation may suffice if it spills over to India. The court set two vital elements:
- an international reputation in the mark from overseas use; and
- that reputation spilling over to India.
It also noted that registrations in multiple jurisdictions create a stronger presumption that reputation inures in the mark’s favour.
The decision
- Laverana applied in India in 2009; the appellant applied for the same mark in 2010 while that was pending — a prima facie dishonest adoption.
- Laverana met the international-reputation threshold (registered in many countries, intending to market in India, having filed there).
So Laverana was entitled to an injunction, and the appeal was dismissed. As international trade grows, Indian courts are taking an increasingly constructive view — protecting foreign marks on global reputation without insisting on localised business.
The takeaways
- Use in India isn’t always required — trans-border reputation can support passing off (since Whirlpool).
- Two elements — international reputation from overseas use, plus spillover into India.
- Multi-country registrations help — they strengthen the presumption of reputation.
- Copying a pending foreign mark looks dishonest — as the 2010-vs-2009 timing showed here.
Frequently asked questions
Can a foreign brand protect its mark in India without selling here? Yes — through trans-border reputation, if it can show international reputation that has spilled over into India, it can maintain a passing-off action even without use in India.
What two elements must be shown? An international reputation in the mark from overseas use, and that reputation spilling over to India.
Do registrations in other countries help? Yes — the court held that registrations across multiple jurisdictions create a stronger presumption that reputation inures in the mark’s favour.
How did LAVERA differ from the Toyota PRIUS outcome? LAVERA proved spillover reputation (online presence, Indian domains, filings), while Toyota failed to prove PRIUS’s reputation had reached India by the relevant date.
Legislation referred to
- The Trade Marks Act, 1999