Abstract: The old Indian trademark statute, the Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999. The Indian Courts have rendered many trademark decisions under both these statutes, where rights based on trans-border reputation of a plaintiff’s marks were upheld based on the doctrine of universality, which states that a mark should signify the same source globally. However, in 2017, a Supreme Court judgment (“the Prius case”), without any discussion or analysis of the numerous earlier decisions, rendered a decision based on the principle of territoriality of trademarks, which requires that a trade mark should be recognized as having a separate existence in each country. Since Article 141 of the Indian Constitution mandates that the law declared by the Supreme Court is binding on all courts within India, would this decision come in the way of enforcement of rights in well-known marks based on trans-border reputation? The authors seek guidance from a catena of the Supreme Court’s own decisions, including a Constitution Bench decision to conclude in the negative. The said line of decision states that, when judgments of a superior court are of coequal benches and, therefore, of matching authority, then their weight inevitably must be considered by the rationale and the logic thereof and not by the mere fortuitous circumstances of the time and date on which they were rendered. The authors conclude that, since the Prius order, decided by a coequal Bench of the Supreme Court, took a sudden U-turn from the well-settled ‘universality’ principle to the ‘territoriality’ principle without assigning any reasons for such a departure and without discussing why its own earlier judgments such as Whirlpool and Milmet Oftho are irrelevant, it raises questions of soundness. The article concludes that the Prius case is not the last word in deciding issues of trademark rights based on trans-border reputation.


Authors: Mr. Rajendra Kumar is a founding member of K&S Partners, an intellectual property law firm situated in New Delhi. He chairs the trademarks practice of the firm, and is the head of litigation for trademarks, copyrights and geographical indication disputes with over 34 years of experience. He holds a PG diploma in “UK, US and European Law of Copyrights and Related Rights” from King’s College, London, United Kingdom. He may be contacted at rajendra@knspartners.com

Ms. Aishwarya Menon is a partner at K&S Partners, and has worked for over a decade on formulating strategies for protection of trademark portfolios and geographical indications in India and the sub-continent. She holds an LL.M in intellectual property law from Queen Mary University of London, United Kingdom. She may be contacted at amenon@knspartners.com.

The full text of the article can be found as a PDF here.

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