Transborder Reputation in Indian Trademark Law Passing Off Claim Rejected

The plaintiff filed a passing off action against the defendant, an Indian whisky manufacturer, alleging use of the identical/similar mark "WHISTLER." The plaintiff claimed registrations for the marks "WHISTLER" and "THE WHISTLER" in the United Kingdom and Ireland. The defendant, however, produced evidence establishing its prior use and market presence in India and contended that the plaintiff had neither used nor marketed its goods in India. The plaintiff failed to establish any commercial presence, goodwill, or reputation in the Indian market. Consequently, the Court decided in favour of the defendant, holding that it was the registered proprietor of the mark in India since 2008 and had established prior use in the Indian market. The Court found that the plaintiff had failed to establish transborder reputation or goodwill in India sufficient to sustain a passing off action and held transborder reputation does not grant automatic protection to a foreign trademark in India, even if it enjoys reputation abroad.

FACTS:

The case arise out of the dispute between an Irish Whiskey(Plaintiff) “THE WHISTLER” maker and Indian Company “WHISTLER”(Defendant) who are conducting business under the name WHISTLER for the same goods ”WHISKEY”. The Doctrine of Trans border reputation states that a brand’s Goodwill and Reputation can be protected in a country even if the owner has not actually started selling its product in that country, as long as mark has become well known among its consumers in that country through advertisements, media or other means. As per the facts, Plaintiff tried to sell its products in India under the mark “THE WHISTLER” in the year 2025 to which the defendant raised an objection on the ground of his being a prior user and had significantly established a goodwill for his products with the name “WHISTLER” and had adapted the trademark in 2007 after getting inspired from the  Whistler Warbler song, - songbird indigenous and obtained the registration for the same in the year 2008 and launched his Whiskey, commercially in Indian Markets in 2018, through which he had established a goodwill and gathered a significance market presence among the Indian consumers and held that Irish Whiskey held no trademark registrations in India and thus it cannot claim a registration in India on the ground that defendant being a prior user and having established a goodwill in the Indian markets.

Court dismissed the passing off claim of plaintiff and decided in the favour of the defendants substantiating on the grounds that plaintiff has failed to establish the presence of its goodwill and well know trademarks in India, and defendant being a registered proprietor having established its goodwill and prior use in the market there is a high chance of likelihood of confusion in the minds of public if the plaintiff’s mark would have been allowed.

Conclusion:

This decision is a proof that Doctrine of Transborder reputation does not automatically confers a protection upon any foreign trademark if it has no physical presence or prior registration in India and also emphasizes on the fat that trademark reputation can extend to any geographical boundaries, the burden of proof relies upon the party who claims to establish such reputation or prior use. Further, mere foreign registrations without any actual presence in the Indian markets cannot sustain a passing off claim. Thus, this decision balances between protecting international trademark and safeguarding rights of honest prior users in the Indian markets.