The case involves a trademark dispute between 7 – Eleven International LLC (the appellant) and Ravi Foods Private Limited (the substituted third respondent) over the use and registration of the mark "Big Bite" in Class 30. The litigation arose from cross-oppositions regarding the registration of the "Big Bite" mark. 7-Eleven argued they have used the "Big Bite" mark internationally since August 1988 and filed their earliest Indian trademark application in 1994. They claimed a transborder reputation that transcends geographical boundaries, including India, and sought to register the mark for savory food items like hot dogs and pizzas. The third respondent (originally M/s. Dukes Consumer Care Limited) claimed continuous and extensive use of the "Big Bite" mark in India since October 5, 2004, for products such as chocolates, biscuits, and confectionery.
Key Legal Issues and Principles
The Court's analysis centered on whether 7-Eleven's international reputation could prevent a local Indian company from registering an identical mark when 7-Eleven had no actual commercial presence in India.
- Territoriality vs. Universality: The court emphasized the territoriality doctrine, which posits that a trademark has a separate existence in each sovereign territory where it is recognized. It rejected the "universality doctrine," which assumes a mark signifies the same source worldwide.
- Prior User Test: Following the Supreme Court's precedent in Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd., the court held that a claimant must show actual goodwill within the local jurisdiction (India).
- Transborder Reputation: The court noted that mere international fame or the accessibility of a mark on a global website does not automatically establish protectable goodwill in India. To succeed, a foreign entity must prove its reputation has "percolated" into the Indian market to such a degree that local consumers would be confused.
The Court's Findings
The Court found no evidence that 7-Eleven had conducted any business or sold products under the "Big Bite" mark on Indian soil prior to the opposition proceedings.
Conversely, the third respondent demonstrated significant sales and investment in advertisements across India since 2004. While 7-Eleven filed an application in 1994 on a "proposed to be used" basis, the court noted they failed to commence business for over a decade, indicating a lack of a "definite and present intention" to use the mark.
The High Court upheld the Registrar's order, dismissing 7-Eleven's appeals. The Court concluded that 7-Eleven had not acquired sufficient goodwill in India to entitle them to protection under the law of passing off, whereas the respondent had successfully generated local goodwill through long-term use of the mark.
[7-Eleven International LLC v. Deputy Registrar of Trademarks, Madras High Court ( (T) CMA (TM) Nos.110 & 157 of 2023 )]
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