The present appeal arises out of a trademark infringement suit (“suit”) involving the marks “Big Deeper” and “Big Dipper”. M/S Arvi Lights & ors. (“Appellants”) challenged the correctness of an order passed in favour of M/S Big Deeper Industries LLP & anr. (“Respondents”), by the division bench of the Delhi High Court (“Court”).
The appellants are the authorised importers of products manufactured by Big Dipper Laser Science and Technology Co. Ltd. (“BDLST”), a Chinese company which has adopted the trademark “Big Dipper”.
Appellant’s Contentions
The appellant, contesting the case on behalf of BDLST, argued that the goods under trademark and logo “Big Dipper” are legally imported to India. It was submitted that BDLST is the bonafide proprietor of “Big Dipper” since 2003 in relation to LED and laser lights, in China and other countries, including India. Appellants put forth that the mark “Big Dipper” was distinctive in nature, had acquired secondary meaning, and possessed transborder reputation.
Further, BDLST had filed a trademark application back in 2011 under class 11 which came to be refused on technical grounds alone. It was argued that BDLST was the prior adopter and user of the ‘Big Dipper’ mark.
Respondent’s Contentions
The Respondents instituted the suit against the appellants stating that they adopted “Big Deeper” in 2010. Upon continuous use, the respondents registered their mark on 05-10-2023. They contended that “Big Dipper” is deceptively similar to “Big Deeper” and amounted to infringement. An ex parte injunction was granted in their favour.
Court’s Observations
The Court was of the view that the Appellants’ challenge to ex parte injunction could not be ignored for the reasons stated in the impugned order; which held that an importer (i.e., appellants) cannot assert cross-border reputation unless the trademark holder (i.e., BDLST) itself were to come forward and contest the claim.
The Court relied on the legal position on cross-border reputation enunciated in Bolt Technology OU v. Ujoy Technology Pvt. Ltd. & anr (2023 SCC OnLine Del 7565) –
“115. We further find that a mere global reputation or asserted goodwill has neither been accorded a judicial imprimatur nor accepted as being sufficient by our courts to answer a claim of transborder reputation. In order to succeed on this score, it is imperative for the claimant to prove and establish the existence of a significant and substantial reputation and goodwill in the concerned territory. Unless a sizeable imprint of the presence of the mark is established amongst the consuming public, a claimant would not be entitled to protection. In fact, knowledge amongst a sizeable and noteworthy number of the concerned segment would be a sine qua non for proving reputation itself. Ultimately the question of a significant reputation would have to be tested on principles analogous to those enumerated in Section 11 of the TM Act. This, in our considered opinion, constitutes a sufficient, adequate and salutary safeguard which would allay and lay to rest doubts of us having adopted a too overly protective stance in favour of claimants who may otherwise have no intent of introducing goods or providing services in India. A claimant who has no presence or a customer base in India, has not established its presence by way of adequate advertisement or promotional activity or one who fails to establish a global reputation equally well known to the consuming public in India would thus be disentitled to claim protection. The adoption of the aforesaid standard would also subserve the imperatives of avoiding the stifling of local industry and enterprise. This in our considered opinion would be the correct approach and strike the right balance between brands whose reputation transcends territories and the interest of national enterprise and that of consumers on the other.”
Conclusion
The Court allowed the appeal and set aside the impugned order. The application for injunction filed in the suit was remanded for fresh consideration.
Citation: M/S. Arvi Lights & ors. v. M/S. Big Deeper Industries LLP & anr., FAO (COMM) 214/2024, CM APPL. 63857/2024 (Stay), CM APPL. 63858/2024 (Delhi High Court, Nov. 4, 2024). Available at https://indiankanoon.org/doc/94395563/.
Authored by Ms. Charishma, Associate, Innovation, Consulting & Strategy, BananaIP Counsels
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