In a significant ruling, the Delhi High Court has set a stringent precedent regarding the protection of trademarks beyond national borders. A division bench, comprising Justice YashwantVarma and Justice Dharmesh Sharma, pronounced that a mere global reputation or asserted goodwill of a trademark doesn’t suffice to claim trans-border reputation. The claimant/plaintiff must establish a substantial and significant reputation and goodwill of the mark within the concerned territory to warrant protection.
The court stressed the importance of proving a sizeable presence and awareness of the mark among the consuming public in the relevant territory. It highlighted that without a notable imprint of the mark’s presence, the claimant cannot assert entitlement to trademark protection. Additionally, the absence of a customer base in India or a lack of adequate advertising or promotional activities would render the claimant ineligible for trademark protection.
The judgment cited that the assessment of a significant reputation should adhere to principles akin to those outlined in Section 11 of the Trade Marks Act, which delineates grounds for refusal of trademark registration. This standard, the court noted, aims to strike a balance between brands with transcending reputations and the interests of national enterprise and consumers.
The case in question involved Bolt Technology OU’s appeal for an interim injunction against Ujoy Technology Private Limited’s use of the mark “BOLT” for EV (electric vehicle) charging stations in India. Upholding the Single Judge’s order denying the injunction, the Division Bench ruled that Bolt failed to demonstrate a substantial and significant reputational spill-over of its services into India.
The court observed that while Bolt had some awareness of its application and services, it did not meet the threshold of a significant and substantial reputation. It highlighted that the mere downloading of an app or publication of investor interest in Bolt, as reported in the Economic Times, didn’t constitute evidence of the mark’s substantial presence in India.
The bench also underscored the necessity for substantial evidence showcasing the mark’s goodwill or reputation in the Indian market, particularly in the context of technological advancements and global connectivity.
Counsels for the Appellant, Bolt Technology OU, led by Senior Advocate Amit Sibal, along with a team of advocates, contested the case against Counsels for the Respondents, Ujoy Technology Private Limited & Anr., represented by Senior Advocate DarpanWadhwa and a team of advocates.
The case titled BOLT TECHNOLOGY OU v. UJOY TECHNOLOGY PRIVATE LIMITED & ANR. (FAO(OS) (COMM) 45/2023) sets a rigorous standard for establishing a substantial reputation beyond borders for trademark protection. [Read the full judgment here](insert link).
The ruling underscores the necessity for claimants to provide concrete evidence of significant and substantial goodwill or reputation within the concerned territory to merit trademark protection beyond national borders.