Court holds that mere global fame of Toronto Blue Jays’ “BLUE JAYS” mark does not establish goodwill or use in India before 1998; bad faith claim against appellants for adopting “BLUE-JAY” mark found unsubstantiated.
In a significant judgment delivered on January 5, 2026, the Delhi High Court (Division Bench) quashed a Single Judge’s order that had struck off the registered trademark “BLUE-JAY” of Mr. Sumit Vijay and others, reinstating their mark on the Register of Trade Marks. The suit was brought by Major League Baseball Properties Inc. (MLB), proprietor of the “BLUE JAYS” mark used by the Toronto Blue Jays baseball club, alleging infringement, passing off, and bad faith adoption by the appellants.
The respondent MLB claimed that their “BLUE JAYS” trademark, adopted in 1976 and associated with the Toronto Blue Jays (TBJ) MLB franchise in Canada, had an extensive worldwide reputation, including in India, by virtue of international broadcasts, online presence, and merchandise availability. They contended that the appellants’ “BLUE-JAY” mark registered in India in 1998 was deceptively similar and adopted in bad faith, warranting removal under Sections 11(3)(a) and 11(10)(ii) of the Trade Marks Act, 1999, read with Section 57(2).
However, the Division Bench undertook a thorough examination of Indian trademark law principles, especially regarding trans-border reputation and passing off. The Court reiterated that for a passing off action to succeed under Section 11(3)(a), the plaintiff must establish goodwill and reputation of the mark in India prior to the defendant’s adoption of the impugned mark. Mere global fame or accessibility of websites and products online in India is insufficient to prove such Indian goodwill. The Court relied on Supreme Court precedents including N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc., and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., emphasizing the territoriality principle in trademark protection.
The Court found that MLB’s registrations for “BLUE JAYS” in India were abandoned before the appellants’ registration in 1998, and there was no concrete evidence of actual use, sales, promotions, or substantial consumer recognition of the “BLUE JAYS” mark within India prior to that date. The fact that MLB’s websites were accessible and products were available online to Indian consumers did not equate to use or goodwill in India. The Court also noted that baseball is not a popular sport in India, further weakening the claim of Indian goodwill.
Regarding the bad faith allegation under Section 11(10)(ii), the Court held that suspicion or inconsistent explanations by the appellants about the origin of their “BLUE-JAY” mark did not amount to dishonest intention at the time of registration. The appellants had explained adoption based on the name of a tourist resort frequented by their family, coupled with the name of a bird, which was a plausible explanation. Since MLB had no subsisting registration or pending application in India at the relevant time, bad faith was not established.
The Court therefore concluded that MLB’s “BLUE JAYS” mark did not qualify as an “earlier trade mark” under Sections 11(1) and 11(2) of the Trade Marks Act for the purposes of refusing registration of the “BLUE-JAY” mark. The absence of Indian goodwill prior to 1998 precluded passing off, and the bad faith claim was unproven. Consequently, the Court set aside the order removing the appellants’ mark and directed its restoration on the Register.
This judgment underscores the necessity of establishing trans-border reputation with actual goodwill and recognition in India to claim trademark protection, and clarifies that global fame alone, without Indian market penetration before the defendant’s mark adoption, is insufficient to restrain trademark registration or use in India.
Bottom Line:
Trade Mark - Mere global reputation of a trademark does not confer protection in India unless trans-border goodwill and reputation have percolated into India before the date of adoption of the impugned mark; absence of such Indian goodwill and reputation precludes passing off.
Statutory provision(s): Trade Marks Act, 1999 - Sections 2(1)(zg), 2(2)(b), 2(2)(c), 9(1)(a), 11(1), 11(2), 11(3)(a), 11(4) Explanation, 11(6), 11(10)(ii), 18(1), 47, 57(1), 57(2)
Mr. Sumit Vijay v. Major League Baseball Properties Inc., (Delhi)(DB) : Law Finder Doc Id # 2833490
