The absence of Indian registration for a foreign trademark can make it seem as though the mark can be freely used in India. This comes from the territorial nature of intellectual property rights. In reality, the position is more complex. Indian courts apply the doctrine of transborder reputation, under which well-known foreign trademarks can be protected in India even without local registration. Over time, the law has evolved to balance the protection of global brands with the rights of Indian businesses.
Transborder reputation refers to the goodwill and recognition a trademark enjoys beyond its home country, even where it is not locally registered. In India, this concept became especially important during the 1990s and 2000s, when courts began protecting well-known foreign brands based on their international fame and evidence that Indian consumers were already aware of them.
The Rise of Transborder Reputation in India
Although the Trade Marks Act, 1999 does not specifically mention “transborder reputation,” Indian courts have relied on Section 27(2), which preserves the common-law action of passing off. This provision allows brand owners to take action against any party that misrepresents its goods or services in a way that misleads consumers. Using this route, courts have extended protection to foreign trademarks whose goodwill had reached Indian markets, even without local registration.
Case: Apple Computer Inc. v. Apple Leasing & Industries (1991)
Apple had exported products to India since 1977 but had not registered “Apple” locally. A local company began using “Apple” in its corporate identity and promotional materials. The Delhi High Court restrained them, recognizing Apple’s global reputation and presence through exports and advertising.
Case: N.R. Dongre & Ors. v. Whirlpool Corporation & Anr. (1996)
Whirlpool’s Indian trademark registration had lapsed in 1977. Despite this, Whirlpool advertised widely in magazines circulated in India and sold products to entities like the U.S. Embassy. A local company sought to register and use “Whirlpool.” The Supreme Court restrained them, ruling that international reputation and prior use could override subsequent registration.
These cases show that during this era, courts readily protected global brands even without Indian registration.
The First in the World Market Principle
Courts later developed the first in the world market doctrine. This meant a company that first used a trademark globally could assert rights in India, provided Indian consumers were aware of it.
Case: Milmet Oftho Industries & Ors. v. Allergan Inc.
Allergan marketed the drug “OCUFLOX” internationally but had not sold it in India. Milmet, an Indian company, began selling medicine under the same name. The Supreme Court restrained Milmet, noting that pharmaceutical confusion could harm consumers. The Court emphasized Allergan’s global first use and pending Indian registration. It held that international reputation could outweigh local adoption, especially in sensitive industries.
The Shift to Territoriality
This broad protection was revisited in the Toyota Prius case. It now stands as the accurate test for transborder reputation claims.
Case: Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018)
Toyota argued that “Prius” was globally famous for its hybrid car long before its Indian launch in 2009. A local company had used “Prius” for auto parts since 2001. The Supreme Court rejected Toyota’s claim, finding no evidence that Indian consumers associated “Prius” with Toyota before 2001. International fame alone was held insufficient.
The Court turned over to the principle of territoriality. Holding that Trademark rights are territorial and must be proved within the Indian market. After this case, foreign brands had to show substantial goodwill in India through advertising, surveys, or presence. Being internationally renowned alone was no longer enough. The Toyota ruling has reshaped the law. Courts now apply a Domestic Plus standard. International fame must be supported with demonstrable Indian recognition. Foreign brand owners must prove that Indian consumers were aware of the mark at the relevant time.
Domestic Squatters and the Challenge of Non-Use
Another issue is domestic squatters. These are businesses that register foreign or dormant trademarks in India with bad faith. Their goal is to exploit brand reputation, block legitimate owners, or sell the mark back for profit.
Indian law addresses this through Section 11, protecting well-known marks, and Section 47, which allows cancellation for non-use beyond five years.
Case: Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. & Ors. (2008)
Toshiba had registered its mark in India decades earlier but had limited use due to restrictive import policies. An Indian company began selling goods under “Tosiba” and sought cancellation of Toshiba’s mark. The Supreme Court ruled for Toshiba, holding that non-use caused by trade restrictions qualified as a “special circumstance.” Toshiba retained its rights, blocking the imitator. This shows that even if foreign brands delay entry, courts may acknowledge genuine obstacles.
Case: Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors.
Neon registered “ROFOL” in 1992 but only began use in 2004. Medical Technologies had sold “PROFOL” since 1998. The Supreme Court restrained Neon, stressing that actual use and goodwill outweigh mere registration. Section 34 of the Trade Marks Act protects prior users even against registered proprietors. The lesson is clear. In India, consistent use and market goodwill prevail over early but unused registrations.
Conclusion
Indian trademark law has shifted from automatic protection of international fame to an evidence-based approach. Courts that once prioritized global goodwill now require proof of substantial reputation in India. Businesses must understand that foreign brand names are not free to adopt simply because the owner lacks Indian presence. The risks of litigation, injunctions, and reputational harm are very real.
Practical Guidance for Businesses
- Avoid imitation and do not build your business on foreign trademarks.
- Create distinctive brands that generate goodwill of their own.
- Check trademark databases before choosing a brand name.
- Use your trademark actively and consistently to secure enforceable rights.
- Register your trademark early to prevent squatting.
- Keep evidence of advertising, promotions, and consumer reach in India.
- Seek legal advice before investing in brand identity linked to disputed marks.