Bolt Technology Ou v. Ujoy Technology Private Limited & Ors.

Bolt Technology Ou v. Ujoy Technology Private Limited & Ors.

CS (COMM) 582/2022 & I.As.13529-32/2022

Decided on 29 August 2022

Brief Facts of the Case:

The company BOLT TECHNOLOGY OU, formerly known as 'Taxify OU', is based in Estonia and was founded in August 2013 as a ride-hailing service. In 2018, the company rebranded and changed its name to 'BOLT'. It now offers an electric ride-sharing/hailing platform with fast kickstand scooters to help people commute and travel more easily.

On the other hand, Udyog Technology Private Ltd and Anr, both based in India, are involved in the business of making electric charging docks/stations. In 2018, they adopted the name 'BOLT', and introduced themselves to the public through social media in 2020. They were previously known as 'Revos', but decided to change their name to reflect their focus on fast charging stations/docks across the country.

The dispute between the two companies arose due to their similar brand names. This could lead to confusion among consumers and harm the goodwill and recognition of both companies, especially internationally. Additionally, the adoption of the name "BOLT" by Udyog Technology and Anr violated the trademark of BOLT Technology Ou, as there are allied/cognate goods involved in this particular case that could be misinterpreted.

Arguments of the Appellant Side:

The appellant relied on several arguments during the legal proceedings. Firstly, they argued that their app had a significant presence in India as it was downloaded over 2 lakh times and was promoted through targeted marketing campaigns in various Indian cities. Therefore, they claimed that the respondents' usage of the mark amounted to a violation of 'passing off', which would cause confusion among consumers and harm the appellant's reputation. Secondly, the appellant pointed out that they had registered the mark in 92 countries around the world, which indicated their international image and reputation. They also referred to news headlines about their product to establish the substantial goodwill they had earned. They relied on the case of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors. to argue that transnational goodwill and reputation were significant concepts in the multilateral world. Even if there was no physical presence of the brand in the specific country where the alleged infringement had taken place, the importance of granting recognition to a company's brand value and goodwill remained. The appellants also tried to demonstrate that their image/reputation had spread to India through the internet and global communication means, creating spill-over reputation. They relied on Laxmikant V. Patel v. Chetanbhai Shah to show that even if there was an innocent registration of a mark that could potentially cause confusion, an injunction was necessary to avoid any confusion.

Arguments of the Respondent Side:

During the legal proceedings, the parties argued about the priority use and adoption of their products in India, as well as their consumer base. It was noted that both parties had used charging docks/stations for their products, but while the appellants had only used them for their own electric scooters and appliances, the respondents had a wider range of charging networks available to the public. The trademark 'BOLT' was registered by both parties in the same year (2018), and the respondents claimed to have been the first to introduce charging docks/stations in India.

The lack of a substantial presence and consumer base of the appellants was established by citing newspaper articles and app downloads as irrelevant, and emphasizing the limited rollout of their branded electric chargers in India. The respondents, on the other hand, had a much larger consumer base and charging network. Therefore, it was claimed that the usage of the name 'BOLT' by the respondents did not significantly impact the appellants' consumer base.

To determine substantial goodwill, the case of Starbucks (HK) Ltd. v. British Sky Broadcasting Group Plc. & Ors. was referred to. The court should only protect a person's business reputation in a particular area if it is established that they have a good reputation. Additionally, the court should ensure that granting extensive monopoly over a mark does not tip the scales too much in favour of protection, whether or not intention to launch in the country exists.

Court’s Decision and Reasoning:

The case regarding a trademark dispute was settled by the court after examining the coverage of EV charging station rollout by both the appellants and respondents. The evidence presented by both parties regarding the use and promotion of the "BOLT" mark in connection with their respective services was deemed crucial in demonstrating a significant and recognized presence in India. However, the court found that the appellants failed to provide sufficient evidence of a notable and recognized presence in India, and their presence did not lead to a trans-border spill-over or percolation of their image in India. It was stated that foreign companies that have no intention of entering the Indian market should not be allowed to suppress the spirit of Indian entrepreneurs by misusing trademark protection, as seen in the cases of Toyota and Milmet Oftho. The court upheld the opinion of the first judge and dismissed the petitioner's application, citing a lack of market exposure as one of the reasons.

Conclusion:

The court's decision, favoring Ujoy Technology, highlighted the importance of establishing a notable and recognized presence in India for trademark protection. The ruling, however, raised concerns among international businesses regarding the applicability of the territorial principle and the spill-over effect of image. To maintain faith in India's IP protection system, it is suggested that the precedent be reconsidered, taking into account the nuances of allied or cognate goods and their potential impact on image spill-over in the country.