Transborder Reputation and Goodwill of a Trademark in India: The High Threshold Requirement

Transborder Reputation and Goodwill of a Trademark in India: The High Threshold RequirementOn November 30, 2023, the Division Bench of the Delhi High Court issued a significant decision in the case of Bolt Technologies OU vs Ujoy Technologies Pvt. Ltd 11380/2023 & CM APPL. 20183/2023, concerning the alleged passing off of the trademark “BOLT”. The case highlights that a mark’s global reputation or asserted goodwill alone would not suffice to establish a trans-border reputation claim. The claimant must prove and establish the existence of a significant and substantial reputation and goodwill in the concerned territory.

The plaintiff, Bolt Technology OU (formally known as Taxify OU), an Estonian Company, filed a suit before the Delhi High Court against the defendant, Ujoy Technologies Pvt Ltd. The plaintiff alleged that the defendant’s use of the trademark ‘BOLT’ with respect to EV charging stations in India was an act of passing off the plaintiff’s products and services. The plaintiff argued that it conceptualised and adopted the brand “BOLT” in 2018 in connection with the services relating to ride-hailing, food and grocery delivery, rental of cars, e-bikes and scooters and electric vehicles in over 45 countries in Europe, Africa, West Asia, South America and Latin America and through continuous use, the mark ‘Bolt’ has amassed considerable goodwill and reputation, being exclusively associated with its products and services. Further, campaigns were launched in February 2020 across various cities in India, including Ahmedabad, Pune, Surat, Chennai and Kolkata, on its mobile app. Thus, the plaintiff claimed that the international reputation and goodwill of its trademark ‘Bolt’ had spilt over in India much before the adoption of the impugned mark by the defendant, and the defendant should be restrained from using the mark.

The defendant denied Bolt’s claim that its mark ‘BOLT’ was entitled to be regarded as a ‘well-known trademark’ under Section 2(1) (zg) of the Trademarks Act, 1999. The defendant submitted that it is the largest player in India in the EV charging stations market and that the plaintiff is not engaged in the business of EV charging stations/docks and, thus, does not enjoy any goodwill or reputation for the same. The defendant submitted that the use of the mark ‘Bolt’ by the plaintiff for EV charging docks/ stations in Tallinn (Estonia), Lithuania and Portugal cannot be considered as a trans-border/ worldwide reputation having spilt over into India. The defendant further submitted that it had adopted the mark BOLT for EV chargers in 2018. By October 2 2020, the defendant had introduced the trademark BOLT to the public at large by uploading public posts on social media platforms like YouTube and Instagram.

On February 23, 2023, the Single Judge of the Delhi High Court refused to grant an interim injunction in favour of Bolt Technology in relation to the defendant’s use of the trademark ‘Bolt’ for electric vehicle charging stations in India. The Court opined that the plaintiff is not engaged in providing EV charging services anywhere in the world. The plaintiff was using the mark ‘Bolt’ in the market of taxi-hailing services related to activities like food and grocery delivery and the like. The Court observed that in the EV-charging market, the plaintiff can claim to be the ‘first to use the mark. The plaintiff has no business in India, and establishing the tort of passing off first requires the plaintiff to establish its goodwill and reputation in India or that its goodwill and reputation garnered abroad is so considerable that it has spilt over into India. The Court further held that the plaintiff has no market exposure in India, and there is no spillover of its trans-border reputation into India to jeopardise the market or the repute that the defendant has earned by the use of the impugned mark for providing EV charging services. Aggrieved by the denial of an ad interim injunction by the Single Judge, the appellant/plaintiff filed an appeal.

The Decision of the Division Bench

The Division Bench of the Delhi High Court examined the legal principles and various precedents across different jurisdictions to consider whether goodwill and reputation should be given distinct connotations. The Court referred to the understanding in the case of Intex Technologies (India) Ltd. & Anr. vs AZ Tech (India) Ltd 2017 SCC Online Del 7392, where it has been explained that “reputation” is a matter of fact, and its existence does not require that there should be a business in this country. However, there must be some business or market in this country for “goodwill” to exist.

The Court also stated that in the case of Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd (2018) 2 SCC 1, it was observed that while determining and answering the question of whether there has been a spillover of reputation and goodwill, the enquiry need not be confined to ascertaining the existence of a real market but the presence of the claimant through its mark within a particular territorial jurisdiction being sufficient. The presence of a mark in the market could well be established or proven on the basis of the extent of the promotion and advertisement of a well-known mark, the knowledge of the said mark amongst a sizable section of the concerned segment of the public and its reputation being found to have spilt over and be sufficiently grounded in the minds of consumers in India.

The Court inter alia observed that: (i) The Appellant also did not provide any evidence of the number of Indian consumers who had utilised its services while travelling abroad, (ii) the Appellant had failed to meet the tests of cross-border reputation as enunciated in Toyota case, (iii) the Appellant failed to produce sufficient evidence to show that they had a trans-border reputation associated with their marks with regards to the same goods and business as the Respondent/Defendant in India; (iv) The Appellant may have been able to establish a limited knowledge and awareness of the bouquet of services offered on its platform, but failed to meet the test of significant and substantial reputational spill over. Thus, the Court upheld the order of the Single Judge and dismissed the appeal.

In Conclusion

The decision of the Division Bench reinforces the high threshold requirement to produce evidence for claiming the trans-border reputation of a trademark in India. The Division Bench stated appropriate reasoning to uphold the decision passed by the Single Bench by placing goodwill and reputation into distinct categories and insisting on proof of reputation to justify the claim of transborder reputation. Thus, a mere transnational reputation, without sufficient proof of substantial goodwill within the Indian market, would not suffice to succeed in trademark disputes.


Authors: Manisha Singh and Angelina Talukdar

First Published By: Lexology Here