Court Rejects Irish Company’s Passing Off Claim Due to Lack of Transborder Reputation in India; Grants Injunction to Indian Firm Holding Registered “Whistler” Mark
In a significant trademark dispute involving international and domestic brands, the Delhi High Court on May 29, 2026, ruled in favor of Piccadily Agro Industries Ltd. (“Defendant”) against Robert A. Merry and Co. Ltd. (“Plaintiff”) concerning the use of the “Whistler” mark on whiskey products. The Court dismissed the Plaintiff’s claim of passing off based on its international reputation and granted an injunction in favor of the Defendant, who holds the registered trademark “Whistler” in India since 2008.
The case arose when the Plaintiff, an Irish company with extensive global registrations for the marks “Whistler” and “The Whistler,” sought to restrain the Defendant from selling whiskey in India under the “Whistler” mark. The Plaintiff relied on its prior international use since 2005 and argued that its goodwill and reputation had spilled over into India, thus entitling it to protection against passing off. The Defendant, an established Indian company engaged in manufacturing and selling malt spirits, counterclaimed for infringement and passing off, asserting prior registration and commercial use in India since 2008 and 2018 respectively.
The Court undertook a detailed examination of the law on transborder reputation in trademark cases, extensively relying on the Supreme Court’s landmark judgments including Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018), N.R. Dongre v. Whirlpool Corporation (1996), and subsequent Delhi High Court rulings such as BPI Sports LLC v. Saurabh Gulati (2023) and VIP Industries Ltd. v. Carlton Shoes Ltd. (2025). It reiterated the territoriality principle, emphasizing that mere global or international goodwill is insufficient to claim passing off in India. Instead, a plaintiff must establish significant goodwill and reputation within Indian territory prior to the defendant’s use of the mark.
In the present case, the Court found that the Plaintiff failed to demonstrate any substantial spillover of goodwill or reputation into India before the Defendant’s commercial launch in 2018. The Plaintiff’s international trademark registrations, domain names, social media presence, awards, and sales outside India did not constitute “presence” in India. The lone pro forma invoice indicating sales to an Indian distributor was dated May 2025, well after the Defendant’s prior use. Additionally, excise approvals and customs documents confirmed that the Plaintiff did not import or sell whiskey under the “Whistler” mark in India prior to 2018.
Conversely, the Defendant successfully established prior registration in India and continuous use since 2018, supported by sales invoices, excise approvals, financial statements, social media promotions, and recognition in the Indian market. The Court also highlighted that the Defendant’s “Whistler” whiskey is positioned in the mid-premium segment, priced substantially lower than the Plaintiff’s premium Irish whiskey, yet held that price and consumer class differences do not negate the likelihood of confusion when marks are nearly identical.
The Court further held that the Plaintiff’s mark “The Whistler” is visually, phonetically, and structurally nearly identical to the Defendant’s registered mark “Whistler,” and the goods being identical whiskies, confusion among consumers is presumed under Section 29(3) of the Trade Marks Act, 1999. Therefore, the Defendant is entitled to injunctive relief to protect its statutory trademark rights.
Consequently, the Court dismissed the Plaintiff’s application for interim injunction restraining the Defendant’s use of the mark, finding no prima facie case of passing off due to absence of goodwill in India. However, the Defendant’s application for injunction against the Plaintiff was allowed, restraining the Plaintiff and its agents from selling whiskey in India under the contested marks during the pendency of the suit.
The judgment underscores the strict adherence to the territoriality principle in Indian trademark law, especially in passing off claims involving transborder reputation. It clarifies that international trademark registrations and global sales do not automatically confer rights in India unless accompanied by demonstrable goodwill and customer base within Indian territory before the defendant’s mark use.
The Court also emphasized that passing off is an action in deceit requiring the plaintiff to prove goodwill, misrepresentation, and damage. Without establishing goodwill in India, the Plaintiff’s claim fails at the threshold. The decision serves as a caution for foreign brand owners seeking to enforce trademark rights in India based solely on international reputation.
The Court clarified that its observations are prima facie and interim in nature, with no prejudice to the final adjudication on merits. Both suits—one by the Plaintiff for passing off and the other by the Defendant for infringement and passing off—remain pending for final disposal.
Bottom line:-
Trademark Law - Passing off claim based on transborder reputation requires plaintiff to establish that its goodwill and reputation have spilled over into India prior to the defendant's use of the mark.
Statutory provision(s):
Trade Marks Act, 1999 Sections 27, 28, 29, 34
Robert A. Merry And Co. Ltd. v. Piccadily Agro Industries Ltd, (Delhi) : Law Finder Doc id # 2917903
