Conflicting Standards For First Use Of A Trademark Under Indian Law
- IJLLR Journal
- May 3
- 2 min read
Prachi Garg, National Law University, Delhi
Modern trademark law faces a contemporary challenge in reconciling marks with transborder reputation with the principles and requirements of territorial presence to confer protection within a particular jurisdiction. This difficulty is illustrated quite well in fringe cases such as the ones involving educational institutions, particularly the Princeton University case wherein the Delhi High Court held that mere reputation or publicity in India, without demonstrable and continuous use of the mark within the jurisdiction, is insufficient to sustain a passing off claim. The decision sheds light on the larger issue of recognizing transborder reputation in a system bound by territoriality.
The most apparent manifestation of this conflict is noted under the cases of Milmet Oftho Industries v. Allergan Inc. (2004) and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018). In the former case, Milmet Oftho upholds the principle of global priority that is supported by the first-in-the-world market test, but Toyota demands that substantial goodwill in the Indian market be demonstrated in order to seek protection. The difference between these decisions can be explained by the difference in the evidentiary threshold, an issue that can be resolved within a more sophisticated framework, as further discussed in this paper.
On the face of it, these pronouncements seem to have nothing in common, however, a finer perusal shows that the point of difference is not in conceptual doctrine but in the seriousness of evidentiary conditions and the factual situations of every case. The case in Milmet Oftho was about pharmaceutical products, in which the risk of confusion on the part of the consumer has serious consequences on the health of the population. The Court recognized the international nature of the pharmaceutical industry and that there could be a likelihood that the Indian doctors and other professionals were already familiar with international drug brands before they were formally introduced into the Indian market. At the same time the Court warned against permitting multinational corporations with no intent to enter India to hamper legitimate domestic businesses that are actually first to market in the country. The Delhi High Court in Keller Williams Realty Inc. v Dingle Buildcons Pvt. Ltd also recognized that the principle laid down in Milmet oftho could not be seen as a blanket precedent, rather the peculiarity and nature of the goods and services have to be considered in devising any applicable evidentiary standard and that per se is not enough to override the territoriality principle.
