Dukes Bites Big, Wins Infringement Suit against 7-Eleven

ARGUMENTS

I. THE APPELLANT

The Respondent stressed and argued that they have had actual continuous use in India since 2004, with nationwide sales. They claimed that the Appellant had no business, sales or customers in India and that they had merely filed the application on a “proposed to be used” basis. Further, they claimed that merely accessing a website is insufficient to establish goodwill over international reputation under the territoriality principle. The Respondent cited Milmet Oftho v. Allergan, stating that the Registrar correctly applied prior India user as it comes primary and that international reputation is secondary. The Respondents also cited S. Syed Mohideen v. P. Sulochana Bai, Neo Labs v. Medical Tech, Intex Tech v. AZ Tech and Toyota Jidosha v. Prius. Thy further referred to the recent judgement of Sumit Vijay and Anr. v. Major League Baseball Properties Inc. to claim that website access cannot be used to prove use or reputation, and to actually prove use or reputation, there needs to be evidence of sales.

ISSUES FOR DETERMINATION

Accordingly, the following issues were framed for deliberation in this case:

1. Whether trans-border reputation and prior international use, in the absence of goodwill in India, are sufficient to claim trademark protection?
2. Whether mere reputation or online presence can sustain a passing off claim without actual commercial presence in India?
3. Whether prior user rights based on continuous use in India prevail over prior adoption or “proposed use” by a foreign proprietor?

JUDGMENT AND REASONING

Further, at the same time, the Respondent conclusively demonstrated sales and advertisements in India since 2004. The Court relied on various judgements, such as the case of Toyota Jidosha v. Pirus, wherein it was held that adequate evidence must be produced to demonstrate that the plaintiff had acquired a substantial goodwill in the Indian market, and that mere accessibility of websites, exhibitions, advertisements or internet portals cannot be considered as goodwill unless there are sales and customers in the market. The 1994 application filing of the Appellant was, therefore, held insufficient because their application failed to show “definite and present intention to use”. 

1. Territorial Nature of Trademark Rights: The Court reiterated the territorial nature of trademark rights and emphasised that it must be assessed with reference to the jurisdiction in which protection is sought. It held that prior adoption or use of a mark in foreign jurisdictions does not, by itself, confer enforceable rights in India.
   
   
2. Distinction Between Reputation and Goodwill: The Court reasoned the distinction between reputation and goodwill. The Court observed that while a mark may enjoy reputation through international exposure, goodwill is established only through actual business activity and a customer base within the jurisdiction.
   
   
3. Treatment of Trans-Border Reputation and Digital Presence: While acknowledging the doctrine of trans-border reputation, the Court clarified that such reputation must be supported by evidence of its spillover into the Indian market. Mere assertion of global fame or international use was considered inadequate. Further, the Court rejected that the mere accessibility of the appellant’s mark through websites or digital platforms would amount to any real use or goodwill in India. It rejected the passive online presence, without evidence of targeted engagement or commercial activity within the jurisdiction as sufficient.
   
   
4. Effect of “Proposed to be Used” Application: The Court noted that although the appellant had filed its application on a “proposed to be used” basis in 1994, there was no evidence of subsequent bona fide use for a prolonged period. This significantly weakened the appellant’s claim and undermined its assertion of priority. In contrast, the respondent’s continuous and bona fide use since 2004 was given determinative weight.

Placing reliance on the principle embodied in Section 34 of the Trade Marks Act and the Supreme Court’s ruling in S. Syed Mohideen v. P. Sulochana Bai, the Court held that prior and continuous use within India prevails over prior adoption elsewhere, as rights of a prior user in a passing off action prevail over those of a registered proprietor who has no proof of goodwill, likelihood of confusion, and damage.

ANALYSIS

Indian courts have attempted to balance these competing approaches. However, the present judgment clearly reasserts territoriality as the dominant principle. By prioritising actual use and goodwill within India, the court ensured that trademark protection remains tied to economic activity and consumer association within the jurisdiction, rather than abstract recognition

Overall, this decision represents a deliberate shift toward strict territoriality, prioritising legal certainty and domestic economic interests over expansive protection of global reputation. Its long-term significance will depend on how future courts reconcile this approach with the increasing role of digital presence and cross-border consumer engagement.