After the Whirlpool Judgment, the Indian courts have been quite consistent in recognizing the trans-border reputation of a trademark thereby granting an injunction including both interim and permanent against the infringers. For seeking relief on the basis of trans-border reputation, it is not necessary for the trademark to have been used in India and the Trademark owner would only need to establish that the reputation, awareness and global admiration of the trademarked goods had crossed over to India before the Defendant started using the infringing mark. Therefore, it becomes very important for the Plaintiff to establish such reputation by submitting cogent documentary evidence.
Recently, the Delhi high court has vacated the initial interim injunction in a suit for infringement of trademark COLUMBIA filed by Columbia Sportswear Company (Plaintiff) against Harish Footwear (Defendant No. 1) and Galaxy Footwear (Defendant no. 2). The Plaintiff has claimed to be the registered proprietor of trademark COLUMBIA which was conceived and adopted in the year 1938 internationally for footwear products. The defendant claimed that his user of the trade mark COLUMBIA is honest and he is the prior adopter and has been using the mark continuously and extensively in relation to his goods since 1995. In addition to concealment of facts such as declaimers on trade mark registrations obtained by the Plaintiff and the prior trademark application filed by the Defendant in the plaint, the Defendant argued that the Plaintiff has failed to establish trans-border reputation. It was argued that there is not a single document of the Plaintiff to show its presence in India and no sales figures have been filed.
After hearing the parties, the Court noticed that the plaintiff has trademark registration for the mark COLUMBIA of the year 2007 but it has not been able to show any advertisement pertaining to its trade mark in India or it is selling the shoes under the trade mark and trade name COLUMBIA. The Court observed that the Plaintiff may be a well-known name in foreign countries but his presence in India has not been depicted. The Court also observed the difference in the price of shoes. The shoes of the Defendant are only priced at 500-600/- in comparison with the shoes of the Plaintiff which sell at Rs. 3000/- a pair. On the other hand, Defendant has been able to show his presence from the year 2002. Various documents have been filed by the Defendant which reflects that COLUMBIA shoes have been purchased from the year 2002-03.
The Court held that the Plaintiff has failed to discharge (through any documentary evidence) its burden showing that its presence in India has been active or that it is recognized in the Indian Market. After comparing the Defendant’s use of the mark COLUMBIA for shoes since the year 2002 against the Plaintiff’s subsequent trade mark registration of 2007, the Court held the Plaintiff has failed to make prima-facie case and balance of convenience also lies in favor of Defendant no. 2.
Under Indian laws, generally rights established by “first to use” have always been considered as better right than “first to register”. In order to successfully enforce trademark rights on the ground of trans border reputation, the documents such as advertisement in international journal or magazines which has circulation in India and many customers or potential customers are subscribers of such journal; Documents proving that Indian travelers have bought the goods in the form of importation and Online news about the trademark on such portal which has been circulated in India, can be useful.