Bye-Bye Birdie: The "BLUE-JAY" Lesson in Territoriality and Trans-Border Reputation

This landmark judgment of the Hon’ble Delhi High Court in Sumit Vijay v. Major League Baseball Properties Inc. & Anr. explains how a foreign trademark can extend to find protection in India without any sufficient goodwill or any use in the country. This judgment also clarifies how the registered trademark might be eliminated under section 57 of the Trade Marks Act, 1999 [“the Act”]. This decision is significant for its contribution to Indian trademark jurisprudence, particularly regarding the principles of trans-border reputation, bad-faith registration, and the territorial character of trademark rights.

The Appellants in this case,  Mr. Sumit Vijay and Mr. Ajay Kumar Gupta, are proprietors of an Indian partnership firm that applied for and obtained the trademark "BLUE-JAY" in India for readymade garments. On the other hand, the Respondent No. 1 [“the Respondent”], Major League Baseball Properties Inc. [“MLB”], is the entity that holds and licenses intellectual property for MLB and oversees the worldwide trademark for the Toronto Blue Jays baseball club, which includes the word and device marks “BLUE JAYS.” The Respondent No. 2 is the Register of Trade Marks. 

FACTS AND TIMELINE

This dispute emerged from an attempt by a global sporting giant to revoke an account associated with a trademark registered with its country's authorities. The following events form the factual timeline:

• 1976: The club “Toronto Blue Jays” [“TBJ”] is formed in Canada and adopts the brand “BLUE JAYS” for the baseball team and its fine products.
• 1983 and 1988: MLB Properties submits trademark applications for “TORONTO BLUE JAYS” under Class 25 [Clothing] in India on a "proposed to be used" basis. Both applications, however, were abandoned-the first by 1990 and the second by 1995-for lack of prosecution or renewal.
• August 19, 1998: The Appellants file an application [No. 815236] for the word mark “BLUE-JAY” in Class 25 for shirts, pants, trousers, jeans, jackets, and readymade garments.
• February 2004: MLB Properties opposes the Appellants' application [DEL-161698]. However, MLB Properties failed to file its evidence in support before the expiry of the stipulated time, which resulted in the dismissal of the opposition by the Deputy Registrar in August 2005.
• June 08, 2017: The mark “BLUE-JAY” of the Appellants gets registered.
• 2023: Petition of cancellation filed by MLB Properties under Section 57 of the Trademarks Act, 1999, before the Delhi High Court, to delete the "BLUE-JAY" mark from the Trademarks Register.
• The Respondents, who own intellectual property connected to MLB and its Canadian team, the Toronto Blue Jays, filed a Rectification Petition under Section 57[2] of the Act to have the Appellants' registered mark “BLUE-JAY” in Class 25 revoked. They asserted that the appellants had adopted a confusingly similar mark in bad faith to capitalise on the long-standing worldwide goodwill associated with the BLUE JAYS mark since 1976.
• July 01, 2025: The learnt Single Judge Bench of the Hon’ble Delhi High Court acknowledged these arguments and based on which determined that the Appellants' justification for adopting the mark was contradictory and unpersuasive. As a result, the removal of the Appellants' trademark from the Register was ordered mainly on the grounds of alleged trans-border reputation of “BLUE JAYS” and bad faith adoption by the Appellants.

Being aggrieved by the said findings, the Appellants have preferred the present appeal. 

ISSUES

The following primary legal issues were framed and answered by the Division Bench:

JUDGEMENT AND ANALYSIS

The Appellants, who are partners in PMS Creations, had registered their mark on August 19, 1998, claiming inspiration from a vibrant North American bird known as the ‘BLUE JAY’ and later supplementing with a personal connection to the famous Blue Jay Tourist Resort in Haryana. MLB, however, asserted prior adoption of their “BLUE JAYS” mark since 1976 for the Toronto Blue Jays team, arguing trans-border reputation and bad faith in the appellants’ choice.

The Respondent placed reliance on global registrations in jurisdictions including the US, UK, and EU. While the website was launched in 1996 and broadcasts commenced on channels such as Fox Sports in India in 1997, the Court took note of the abandoned trademark applications from 1983 and 1988 which were treated as withdrawn/abandoned by 1995. Ultimately, the Court held that such evidence was insufficient to establish trans-border reputation or spillover goodwill in India prior to 1998.

Based on alleged contradictions in the Appellants’ responses, the Ld. Single Judge inferred mala fide intent, viewing the shift from an avian-inspired origin to a resort-linked justification as suspicious and indicative of an attempt to free-ride on the Respondent’s goodwill and reputation. Conversely, the Division Bench observed that both explanations were congruous rather than contradictory, noting the consistent reliance on the central avian motif. The Bench further held that bad faith or dishonest adoption requires clear evidence of mens rea at the time of adoption. That is to say, a threshold not met here, given the absence of the Respondent's registrations in India and the limited trans-border reputation among the relevant Indian public.

The Division Bench further emphasised that trans-border reputation is meaningless without real market penetration in India through substantial sales or customer recognition. This stringent evidentiary standard protects innovative local business owners from aggressive foreign claims by ensuring fair trademark practices.

The Division Bench observed that the Respondent failed to establish the essential trifecta of passing off [goodwill, misrepresentation, and resultant injury] prior to the relevant date of 1998. Consequently, the contentions under Section 11[3][a)] of the Trade Marks Act, 1999, were rejected, as the Court found the evidence of trans-border reputation to be insufficient. The Ld. Single Judge’s reliance on sporadic evidence, such as a solitary invoice and select articles from 1997, was deemed inadequate to prove a pervasive reputation, particularly given the niche status of baseball within the Indian socio-cultural context. This judicial restraint prevents the overextension of foreign brands into territories where they lack a local presence, thereby promoting a more equitable and diverse economic environment by requiring empirical proof rather than a presumption of global dominance.

The Division Bench accordingly set aside the impugned order and allowed the appeal, directing the Registrar of Trade Marks to restore the “BLUE-JAY” mark to the Register of Trade Marks, without any order as to costs.

This judgement significantly raises the evidentiary threshold for trans-border reputation claims, emphasising that rectification proceedings under Section 57(2) must be predicated on clear, substantiated grounds rather than mere suspicion. By striking a balance between protecting domestic entities and recognizing international IP rights, the ruling serves as a deterrent against trademark bullying. It reinforces India’s standing as a robust corporate hub by mandating that international sports brands pursue timely domestic registrations and localized marketing rather than assuming universal brand equity across diverse geographical markets. Key

The Sumit Vijay judgment is perhaps the clearest point in the balance between protecting international brands while strengthening the domestic businesses. It reiterates that while the Indian law respects the global commercial realities, including in the form of electronic trade, groundless claims of world fame/trans-border reputation that undermine legitimately acquired rights to trademarks in India will not be permitted.

It clearly establishes that if a brand wishes to claim trans-border reputation, it must necessarily establish that it not only “sings” loud enough in its home country/other countries but also that its “songs were genuinely heard in India” at the relevant time.