CHENNAI: International reputation alone is insufficient under Indian trademark law to claim goodwill and rights over a trademark, the Madras high court has said. The court made the observation while upholding a trademark registrar’s order rejecting a claim moved by 7-Eleven International LLP over the trademark “Big Bite” for chocolates, biscuits and confectionery.Justice N Anand Venkatesh confirmed the order passed by the trademark registrar allotting the mark to Hyderabad-based Ravi Foods Pvt Ltd, which used the mark in India since 2004. 7-Eleven claimed that it had used the mark internationally since 1988.“…the admitted position is that 7-Eleven did not sell their products in this country (India) at any time from 1994, when they purportedly made an application for registration of the trademark, or in 2007, when the opposition proceedings commenced before the registrar,” the court pointed out in its order on Wednesday.The order of the registrar also states that the appellant was not selling any products in India and could not produce any material to show the use of their mark. Consequently, in view of the decision of the Supreme Court in the Toyota Jidosha Kabushiki Kaisha case, it cannot be said that 7-Eleven acquired sufficient goodwill in this country (India) to entitle them to protection, the court said.“On the other hand, Hyderabad-based Ravi Foods Pvt Ltd demonstrated actual sale and percolation of their products throughout the country with the mark ‘Big Bite’ for a sufficiently long period to generate goodwill and reputation, entitling them to protection under the law of passing off,” the judge said.It must also be pointed out that, though Section 18 of the Trademarks Act does permit registration of a mark which is used or proposed to be used, it must be remembered that the applicant must show that it has a definite and present intention to use the mark as on the date of the application, the court added.The issue pertains to orders passed by a deputy registrar of trademarks dated July 18, 2014, rejecting the application of 7-Eleven for the mark “Big Bite” and accepting the application of Ravi Foods Pvt Ltd for the same mark. Aggrieved, 7-Eleven moved an appeal challenging the orders.
