The Impact of India’s ‘Trans-Border Reputation’ Doctrine on International Trademark Bullying Cases

6th September, 2024 - 10:25 am Categories: Trademark 0 Comments

Introduction

Trademarks at the crossroads: the Indian style of setting up the trademarks In the constantly developing world of the intellectual property rights protection, India has established its position as a specific player in the sphere due to its individual approach in the trademarks matter. The basis of this approach is the “’trans-border’ reputation” legal principles which have great potential in both national and global economy environments. This blog entry will analyze this doctrine in detail and examine the question of how it can be used to fight trademark bullying on the international level.

The Essence of India’s Trans-Border Reputation Doctrine

The Doctrine of Trans-border Reputation is the doctrine which lies in the judicial domain and accepts the reputation of a trademark across geographical borders. This principle is a way of recognizing the fact of globalization and how the reputation does accompany a brand at the physical location of a particular market. The measure was pronounced for the first time in the important cause N. R. Dongre v Whirlpool Corporation 1996 wherein the Supreme Court of India asserted the trademark rights of Whirlpool in India despite the non-existence of the company to sell its products in India at that time.

This doctrine is in some ways an exception to the conventional concept of territoriality of trademark rights under which trademark rights are only valid and enforceable in the geographical territory of the country where actual use or registration of the mark has been made. Appreciation of reputation that transcends borders means Indian courts have to deal with trademarks in a novel way, thus offering panoply of protection to global brands while simultaneously trying to dissuade potential bullies.

Effect on International Companies in the Indian Market

To the international business looking forward to tapping this enormous market in India, the trans-border reputation doctrine offer prospect as well as threats. On one hand, it helps to provide certain measure of protection to well established global brands, which can seek remedies even before they formally set their shops in India. This may turn out to be a major defense against trademark squatting and other instances of infringement of a person’s intellectual property.

But it does also increase the amount of research which has to be done beforehand. Global brands must be clearly on the organisational cognition irrespective of their operational existence in India or not. Should this not be done, there could be accidental breach of the law, which might lead to legal disputes.

Case Studies: Combating Trademark Bullying

The trans-border reputation doctrine has been instrumental in several high-profile cases where it was used to combat trademark bullying by foreign entities:

1. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. (2017)[1] : The fact that the Supreme Court came down in favor of the Indian company did not leave much scope for officials seeking to apply the trans-border reputation doctrine in the case. It called for more compelling proof of the manner in which reputation creates spill-over effect into India.
2. Milmet Oftho Industries & Ors. v. Allergan Inc. (2004)[2] : The Supreme Court recognized the rights of Allergan, a U. S. company, largely based on its repute internationally even though it was not using the mark in India at the time of the controversy.

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Erstwhile recognitions of the trans-border reputation doctrine have been discussed in the Indian legal settings. The above cases categorise the application of the trans-border reputation doctrine in India. Although the doctrine is acknowledged, the use of the doctrine varies with the situation of the particular case dependant on the type of industry, the appropriate consumer base, and especially the evidence that existed pointing to establishment of the reputation in India before the controversy arose. The dissimilar outcomes also underscore the fact that this legal concept is still unfolding in Indian law.

Global Context: Comparison with Other Jurisdictions

India’s approach to trans-border reputation is particularly progressive when compared to many other jurisdictions:

1. United States: Usually follows what is known as the “use-based” system, which means actual use and/or bona fide intention in use of the mark in commerce.
2. European Union: Protects some extent of well-known marks but provides the fullest extent of protection upon registration.
3. China: Used to be very particular about the registration with recent changes in the law embracing that of well-known marks.

India’s doctrine, on the other hand, is comparatively lenient and more realistic because it adapts to the principles of brand recognition in the modern world of the internet.

Influence on Indian Companies Going Global

The trans-border reputation doctrine has also had a significant impact on Indian companies expanding globally. Armed with this legal precedent, Indian brands can potentially claim protection in foreign markets based on their reputation, even before establishing a physical presence. This has emboldened Indian companies to be more aggressive in protecting their intellectual property rights on the global stage.

However, it’s important to note that the effectiveness of this strategy depends on the willingness of foreign jurisdictions to recognize and respect India’s legal approach.

Legal Challenges and Criticisms

 However, the trans-border reputation doctrine as we know it, has not been without controversies as we are going to learn in the remaining part of this work. Some of the challenges and criticisms include:

1. Evidentiary Burden: It is usually difficult to establish the recognition of a brand in another country and this may entail a lot of evidence of the reputation of a brand.
2. Potential for Abuse: It has been raised that it might prove possible for giant companies to intimidate smaller domestic companies using the doctrine.
3. Inconsistent Application: The doctrine has not been rigidly followed by Indian courts due to which there is certain amount of ambiguity in its application.
4. Impact on Local Innovation: Others have criticised the grant of excessive protection to international trademarks as a hindrance to innovation and local brands.

Proposed measures to enhance international trademark cooperation 

As shall be discussed in the following sections, both positively and negatively, India’s trans-border reputation doctrine has implications for the international trademark harmonisation process. On one hand, it pays homage to the fact that contemporary business is global and consumers are familiar with brands. This is going hand in hand with attempts to strengthen the IP protection internationally, to make it as homogeneous as possible.

However, the doctrine, due to the independence of its propositions, may cause tensions with ‘conventional’ district-based methods. There is no one right answer as to which of these three approaches is better than the others and as global trade expands finding the right mix between all of these will be increasingly important for efficient international IP protection.

Conclusion

India’s trans-border reputation doctrine is a shift that is radical and creative in the modern concept of trademark policy in the globalising economy. Hence, while it corrects for the failings of trademark bullying it is also a potent weapon in the arsenal of companies partaking in the globalized economy; it presents some degree of novelty to the globalized marketplace.

Because the doctrine remains an issue of ongoing development through additional relevant case law and possible changes in legislation it will also serve as important key to the future of international IP protection. To the business, legal profession and subsequent policy-making, it shall be useful to comprehensively grasp and steer through this peculiar ambit of the Indian trademark law in the time to come.

The trans-border reputation doctrine is yet another example of the establishment of the fact that the protective mechanisms of intellectual property law are constantly evolving as well as that the existing law needs to meet the challenges of the constantly growing globalization. As interesting as it may sound, it will be intriguing to observe the trajectory of this Indian invention in addressing the global debate on trademark and a rising trend of anti-IP bullying.

Author: Ayushman Singh, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

7. References:
8. Dongre, N.R. v. Whirlpool Corporation, 1996 PTC (16) 583 (SC)
9. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd., Civil Appeal Nos. 5375-5377 of 2017
10. Milmet Oftho Industries & Ors. v. Allergan Inc., 2004 (28) PTC 585 (SC)
11. Ranjan, P., & Agarwal, A. (2019). The Trans-Border Reputation Doctrine in Indian Trademark Law. Journal of Intellectual Property Law & Practice, 14(2), 100-108.
12. World Intellectual Property Organization. (2021). World Intellectual Property Indicators 2021. WIPO.
13. International Trademark Association. (2020). Famous and Well-Known Marks: An International Analysis. INTA.
14. Tripathi, S. K. (2018). Trans-border Reputation: An Analysis of Indian Perspective. ILI Law Review, Summer Issue, 100-115.
15. Gangjee, D. (2017). Territorial Overlaps in Trademark Law: The Evolving European Model. Notre Dame Law Review, 92(4), 1669-1711

[1] Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal, 2016 SCC OnLine Del 3809

[2] Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624