Toyota Jidosha Kabushiki Kaisha vs Tech Square Engineering Pvt Ltd & Anr.
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 18.02.2026
Judgment pronounced on: 04.05.2026
+ LPA 176/2023 & CM APPL. 11804/2023
TOYOTA JIDOSHA KABUSHIKI KAISHA .....Appellant
Through: Mr. Sandeep Sethi, Sr. Adv.
with Mr. Peeyoosh Kalra, Mr. Gaurav
Mukerjee, Mr. Amol Dixit, Mr. Suyash
Malhotra, Mr. Krisna Gambhir, Ms. Shreya
Sethi, Advs.
versus
TECH SQUARE ENGINEERING
PVT LTD & ANR. .....Respondents
Through: Mr. Kapil Wadhwa and Mr.
Anish Jandial, Adv. for R-1
Ms. Rukhmini Bobde, CGSC with Mr. Jatin
Dhamija, Mr. Vinayak Aren and Ms.
Aishwarya Nigam, Advs. for R-2
+ LPA 177/2023 & CM APPL. 11807/2023
TOYOTA JIDOSHA KABUSHIKI KAISHA .....Appellant
Through: Mr. Sandeep Sethi, Sr. Adv.
with Mr. Peeyoosh Kalra, Mr. Gaurav
Mukerjee, Mr. Amol Dixit, Mr. Suyash
Malhotra, Mr. Krisna Gambhir, Ms. Shreya
Sethi, Advs.
versus
TECH SQUARE ENGINEERING
PVT LTD & ANR. .....Respondents
Through: Mr. Kapil Wadhwa and Mr.
Anish Jandial, Adv. for R-1
Ms. Rukhmini Bobde, CGSC with Mr. Jatin
Dhamija, Mr. Vinayak Aren and Ms.
Aishwarya Nigam, Advs. for R-2
Signature Not Verified
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Signed By:PRAGYA
ARORA
Signing Date:05.05.2026
17:55:45
+ LPA 178/2023 & CM APPL. 11810/2023
TOYOTA JIDOSHA KABUSHIKI KAISHA .....Appellant
Through: Mr. Sandeep Sethi, Sr. Adv.
with Mr. Peeyoosh Kalra, Mr. Gaurav
Mukerjee, Mr. Amol Dixit, Mr. Suyash
Malhotra, Mr. Krisna Gambhir, Ms. Shreya
Sethi, Advs.
versus
TECH SQUARE ENGINEERING
PVT LTD & ANR. .....Respondents
Through: Mr. Kapil Wadhwa and Mr.
Anish Jandial, Adv. for R-1
Ms. Rukhmini Bobde, CGSC with Mr. Jatin
Dhamija, Mr. Vinayak Aren and Ms.
Aishwarya Nigam, Advs. for R-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE OM PRAKASH SHUKLA
JUDGMENT
% 04.05.2026
OM PRAKASH SHUKLA, J.
1. The present LPA, brings into focus the interplay between prior
global adoption, cross-border reputation, and territorial use, in the
context of the trademark ALPHARD , asserted by the Appellant.
1
2. The Appellant -Toyota Jidosha Kabushiki Kaisha multinational
automobile manufacturer of undisputed global standing, claims to
have adopted the mark ALPHARD as early as 1986, with its
continuous and extensive use worldwide since 2002. It is contended
that the mark has acquired formidable goodwill and recognition,
1
“Petitioner” before the learned Single Bench
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including within India, by virtue of cross-border exposure and the
availability of vehicles through imports.
2
3. The Respondent No.1 , on the other hand, secured registration
of the mark ALPHARD in India in 2015, on a “proposed to be used”
basis, in relation to goods falling within the same business sector.
4. The Appellant alleges that such registration constitutes a clear
instance of the misappropriation of a well-known mark, which
predates the Respondent’s registration. Consequently, the Appellant
initiated rectification proceedings under Section 57 of the Trade
3
Marks Act, 1999 , seeking the removal of the impugned mark from
the Register.
5. The learned Single Judge, by the impugned judgment dated
03.02. 2023, dismissed the Appellant’s challenge, principally on the
ground that the Appellant had failed to establish sufficient use and
reputation of the mark ALPHARD within India prior to the
Respondent’s adoption and registration of the mark.
6. Aggrieved by the dismissal, the Appellant has preferred the
present appeal, challenging the correctness of the learned Single
Judge’s findings and asserting that the mark ALPHARD had acquired
sufficient recognition and goodwill within India prior to the
Respondent’s adoption.
2
“Respondent” before the learned Single Bench
3
“the Act” hereinafter
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7. We have heard Mr. Sandeep Sethi, learned Senior Advocate for
the Appellant, and Mr. Kapil Wadhwa, learned Counsel for
Respondent No.1 at length. Both Sides have also submitted written
submissions for our consideration.
FACTS
8. The Appellant, is a corporation duly incorporated under the
laws of Japan. It is one of the world’s leading automobile
manufacturers and carries on business globally through its subsidiaries
and affiliates.
9. Founded in the year 1937, the Appellant has, over the course of
several decades, established a formidable presence in the automobile
industry. Its vehicles being sold in over 170 countries and enjoy
widespread recognition for quality, innovation, and reliability.
10. Among the several trademarks owned and used by the
Appellant worldwide is the mark ALPHARD. The Appellant claims to
have adopted the mark as early as 1986.It further asserted that the
mark was commercially launched in connection with a luxury multi-
purpose vehicle (MUV) in the year 2002.
11. The Appellant contends that the mark ALPHARD has, over
time, acquired substantial goodwill and reputation on a global scale,
supported by extensive sales, promotional activities, and widespread
consumer recognition across various markets.
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12. Insofar as India is concerned, the Appellant asserts that
although the luxury vehicle under the ALPHARD mark was not
formally launched in the Indian market, it was available in India
through direct imports by automobile enthusiasts and private parties as
early as 2008.
13. The Appellant further relies upon its established global
reputation, online presence, and cross-border dissemination of
information to contend that the mark ALPHARD had acquired spill-
over reputation and goodwill within India prior to its formal
introduction in the Indian market.
14. On the other hand, the Respondent No.1, Tech Square
Engineering Pvt. Ltd., applied for registration of the mark ALPHARD
in India under three classes namely Classes 9,12, and 27, under
Registration Nos. 3093216, 3093218, and 3093219, respectively.
15. Upon becoming aware of the Respondent’s registrations, the
Appellant initiated rectification proceedings before the Registrar of
Trade Marks, seeking removal of the impugned mark from the
Register.The Appellant’s grounds for seeking rectification include its
prior adoption and use of the ALPHARD mark, which had already
acquired trans-border reputation and goodwill. The Appellant further
alleges that the Respondent’s adoption of the mark was dishonest and
mala fide ,as it pertains to identical, allied, or cognate goods.
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16. The rectification petitions were originally filed before the
4
Intellectual Property Appellate Board .However, upon abolition of
the IPAB, these petitions were transferred to this Court and were
adjudicated as C.O. (COMM.IPD-TM) 586/2022.
17. The learned Single Judge, by judgment dated 03.02.2023,
dismissed the Appellant’s petitions, holding that the Appellant had
failed to demonstrate sufficient use or establish the reputation of the
ALPHARD mark within India prior to the Respondent’s adoption of
the mark.
IMPUGNED JUDGMENT
18. The learned Single Judge proceeded on the foundational
premise that, notwithstanding the Appellant’s global stature and
undisputed adoption of the mark ALPHARD over several decades, the
Appellant had failed to establish the existence of goodwill or
reputation within the territorial confines of India. The impugned
judgment places determinative reliance on the absence of formal
commercial use of the mark in India prior to the Respondent’s
adoption of the mark.
19. In this backdrop, the learned Single Judge held that the doctrine
of transborder reputation, as expounded by the Supreme Court in
Appellant’s own case in Toyota Jidosha Kabushiki Kaisha v. Prius
5
Auto Industries Ltd. , (“Prius” hereinafter) was applicable. However,
4
“IPAB” hereinafter
5
(2018) 2 SCC 1
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the Appellant was found to have failed to discharge the necessary
evidentiary burden required to demonstrate the spill-over of reputation
into the Indian market.
20. The impugned judgment records that the materials relied upon
by the Appellant, comprising international registrations, global sales
figures, promotional materials, and instances of import of vehicles
into India, were insufficient to establish that the mark ALPHARD had
acquired the requisite degree of goodwill, reputation, and popularity
within the Indian market so as to create a right of prior user in favour
of the appellant.
21. Regarding the import-export shipments documents from 2014-
2016, it was observed that not all consignments relates to the mark
ALPHARD and that, in any event, the imports were undertaken by
private parties, not the Appellant. As regards the articles and
newspaper reports relied upon, the learned Single Judge noted that
most of these were published after the Respondent had already
secured registration of the mark ALPHARD in India, and therefore
could not assist the Appellant in establishing prior reputation.
22. The learned Single Judge also noted that that the vehicle under
the ALPHARD brand was never launched in India.In contrast, the
same model was launched in the Indian market under the brand name
VELLFIRE in February 2020.
23. Proceeding further, the learned Single Judge held that the
Respondent No.1 was the prior adopter and bona fide user of the mark
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ALPHARD in India since the year 2015 , and that the Respondent’s
use of the mark ALPHARD , including through its sister concerns,
constituted as valid commercial exploitation of the mark in India.
24. The learned Single Judge further relied on the Appellant’s own
application for registration of the mark ALPHARD in India on a
“proposed to be used” basis in 2017 to infer the absence of prior use
within India.This was treated as weighing against the Appellant’s
claim of pre-existing goodwill or reputation in the domestic market.
25. On the issue of registrability under Sections 11(1), 11(2) and
11(3) of the Act, the learned Single Judge held that, in the absence of
demonstrable prior reputation or use in India, the Appellant could not
claim protection against a subsequent adopter. Consequently, the
statutory bar against registration was held to be inapplicable.
26. The impugned judgment further records that the Appellant’s
reliance on global reputation and foreign registrations, absent cogent
evidence of spill-over into India, could not suffice to invalidate the
Respondent’s registrations. The learned Single Judge emphasised the
primacy of the territoriality principle, holding that reputation must be
established within India and cannot merely inferred from international
presence.
27. The learned Single Judge opined that the mere international use
of the mark ALPHARD by the Appellant was insufficient to prove the
spill-over of its trans-national reputation into India. It was noted that
the evidence placed on record included only a single invoice, and the
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Appellant’s own case was that ALPHARD model was launched under
a different brand name VELLFIRE, in India.
28. Insofar as the allegation of mala fide adoption by the
Respondent is concerned, the learned Single Judge declined to accept
the same. It was held that the Appellant had failed to establish that the
mark ALPHARD had attained such notoriety in India as would render
the Respondent’s adoption of the mark dishonest or calculated to
capitalize on the Appellant’s goodwill.
29. In view of the above findings, the learned Single Judge upheld
the validity of the Respondent’s mark registration and concluded that
no case for rectification of the register had been made out under the
provisions of the Act.
PROCEEDINGS BEFORE THIS COURT
SUBMISSIONS ON BEHALF OF THE APPELLANT
30. Arguing for Toyota, Mr. Sandeep Sethi, learned Senior
Counsel, advanced the following submissions:
30.1 The learned Senior Counsel argued that the Learned Single
Judge has failed to consider, in its proper perspective, the
overwhelming and uncontroverted material on record, which
establishes the Appellant’s prior rights, trans-border reputation, and
the Respondent’s palpably dishonest adoption of the mark. The
conclusions drawn by the learned Single Judge are thus perverse,
unsustainable, and liable to be set aside.
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30.2 It was submitted that the Learned Single Judge has
fundamentally erred in disregarding the Appellant’s indisputable prior
adoption of the mark ALPHARD , dating back to 1986, with
commercial exploitation commencing at least in 2002 in respect of the
Appellant’s globally acclaimed luxury vehicles.This adoption predates
the Respondent No. 1’s application dated 05.11.2015,which was filed
on a “proposed to be used” basis, thereby establishing superior rights.
The mark enjoys extensive statutory protection across numerous
jurisdictions, including Japan, China, Singapore, and Malaysia, and is
supported by substantial sales and promotional efforts, demonstrating
its distinctiveness and global reputation
30.3 The Learned Single Judge has failed to appreciate the
overwhelming commercial success of the Appellant’s mark, as
evidenced by substantial sales turnover and significant promotional
expenditure incurred over the years. These factors are crucial indicia
of reputation and goodwill,and their disregard reflects a patent
misappreciation of the evidence on record.
30.4 Further, the Learned Single Judge failed to appreciate that the
Appellant’s mark ALPHARD has achieved significant commercial
success, supported by substantial sales and promotional expenditure,
thereby establishing its reputation and goodwill. It was further
contended that such reputation had extended to India well prior to the
Respondent’s adoption, with vehicles available in India through
imports, independent listings, automotive platforms, and digital
visibility since at least 2008. This consistent presence, coupled with
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media coverage and consumer awareness, satisfies the requirement of
spill-over reputation within India.The contrary finding reflects a
misappreciation of the evidence on record.
30.5 Mr. Sethi submitted that the voluntary importation of
ALPHARD branded vehicles by Indian consumers indicates
recognition of the mark within the domestic market. When considered
alongside the Appellant’s global sales of over 8,50,000 units since
2002, sustained commercial success, and significant promotional
investment, it is clear that the mark has acquired considerable
goodwill and consumer loyalty worldwide. Therefore, there can be no
doubt that such use and publicity have fostered consumer awareness
and loyalty, including in India, enabling the mark to occupy a distinct
niche, thereby qualifying it as a well-known trademark entitled to
protection under the Act.
30.6 The Appellant has invested considerable capital, effort, and
resources in promoting the mark, resulting in the acquisition of
immense goodwill and indelible association with the Appellant
worldwide, thereby attaining the status of a well-known trademark
entitled to protection under the Act.
30.7 Mr. Sethi submitted that the mark ALPHARD enjoys extensive
recognition globally, including in India, by virtue of its long,
continuous, and extensive use and publicity. The mark has garnered
substantial consumer loyalty and occupies a distinctive niche among
both the trade and the public.
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30.8 It was contended that the Respondent’s adoption of an identical
mark for identical goods is, ex facie , dishonest calculated solely to
appropriate the Appellant’s established reputation and goodwill. This
lack of bona fides is further evident from the Respondent’s
inconsistent stands, i.e., at one stage claiming to have coined the mark
and, at another, asserting it to be a dictionary word, thereby
undermining its defence.
30.9 The Learned Single Judge has failed to appreciate that even if
the mark were to be considered a dictionary word, its adoption in
relation to automobiles, where it bears no descriptive or generic
connotation, is neither natural nor bona fide. This adoption is clearly
indicative of deliberate appropriation.
30.10 Mr. Sethi argued that despite securing registration of the mark
under Class 12, the Respondent proceeded to file further applications
extending the mark to allied and cognate goods. This conduct,
undertaken with full knowledge of the Appellant’s prior and well-
established mark, reveals a calculated strategy to monopolise the mark
across overlapping domains.Such conduct, when viewed
cumulatively, demonstrates an intent to encroach upon the Appellant’s
goodwill, rendering the adoption void ab initio and incapable of being
cured by subsequent use.
30.11 It was further contended that the continued use of the impugned
mark by the Respondent would inevitably result in the dilution of the
distinctive character of the Appellant’s well-known mark, thereby
eroding its exclusivity and diminishing its source-identifying function.
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30.12 The learned Single Judge has also proceeded on an erroneous
understanding of the law governing proprietorship. It is well-settled
that priority in adoption, and not the volume or duration of use, is
determinative of rights. Proprietorship does not hinge upon
quantitative thresholds of use.
30.13 Mr. Sethi submitted that the Respondent’s documentary
evidence is inherently unreliable and devoid of probative value and
has not been subjected to the requisite degree of judicial scrutiny.
30.14 It was also pointed out that the Respondent’s application,
having been filed on a “proposed to be used” basis, its subsequent
reliance on documents purporting to evidence prior use constitutes a
glaring and irreconcilable contradiction, exposing the falsity of its
claim.
30.15 The invoices relied upon by the Respondent do not pertain to
the Respondent but to third parties and sister concerns, including
Tekstar Global Private Limited, and therefore cannot, in law, establish
use by the Respondent. Moreover, a substantial number of such
invoices are incomplete, involve undisclosed cash transactions, or lack
essential particulars, rendering them wholly devoid of evidentiary
value.
30.16 The additional documents relied upon, including presentations
and alleged collaborations, are wholly irrelevant and do not even
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reference the impugned mark, further demonstrating an attempt to
mislead the Court.
30.17 As regards the principles applied by the learned Single Judge,
Mr. Sethi submitted that the Learned Single Judge has fundamentally
misdirected himself in applying the ratio of Prius (supra) without
appreciating the materially distinguishable factual matrix of the
present case.
30.18 Unlike in Prius (supra) where spill-over reputation within India
was not established, the Appellant herein has demonstrated actual
presence, consumer awareness, and market recognition within India
through imports, digital accessibility, and sustained exposure.
30.19 The test of transborder reputation, as enunciated by the
Supreme Court, stands fully satisfied in the present case, as the
Appellant’s mark has clearly permeated and established itself within
the Indian market.
30.20 The learned Single Judge has further failed to appreciate the law
6
as settled in N.R. Dongre & Ors v. Whirlpool Corp. & Anr , wherein
it was unequivocally held that a trade mark transcends territorial
boundaries and acquires reputation through advertisement, publicity,
and dissemination of knowledge, irrespective of actual physical sale
within the jurisdiction.
6
[(1996) 5 SCC 714]
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30.21 Mr. Sethi further submitted that the existence of a tangible
market is not a sine qua non for establishing reputation. A virtual
presence, coupled with consumer awareness, is sufficient in law.
30.22 The impugned order proceeds on a fundamentally flawed
application of law to facts and should therefore be set aside.
30.23 It was also contended that the Respondent’s use of the
impugned mark is inherently deceptive and bound to cause confusion
among members of the trade and the public as to the source, origin,
and quality of the goods. The mark having become exclusively
associated with the Appellant, ought to have been refused registration
under Section 9(2)(a) of the Act.
30.24 It was submitted that ALPHARD and VELFIRE are different
and distinct marks representing different models of MUVs. Although
both are MUV’s and may share certain similarities in appearance, they
are treated as separate products in several jurisdictions and have
separate registrations.
30.25 In view of the foregoing, it was submitted that the impugned
judgment is contrary to settled principles governing prior use, trans-
border reputation, and dishonest adoption. The Respondent’s mark is
liable to be refused registration under Sections 11(1), 11(2), and 11(3)
of the Act, and the impugned order is liable to be set aside.
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SUBMISSIONS ON BEHALF OF THE RESPONDENTS
31. Arguing for Tech Square, Mr. Kapil Wadhwa learned Counsel
advanced the following submissions:
31.1 At the outset, it was contended that the present appeal is wholly
devoid of merit and ought to be dismissed at the threshold. It was
submitted that the impugned judgment, is well-reasoned, legally
sound, and does not warrant any interference by this Hon’ble Court in
the exercise of its appellate jurisdiction.
31.2 It was submitted that Respondent No. 1 is the bona fide adopter,
prior user, and registered proprietor of the trademark ALPHARD in
India in respect of goods falling under Classes 9, 12, and 27, with
adoption and continuous use dating back to the year 2015.
31.3 Learned counsel submitted that the Respondent independently
coined and adopted the mark ALPHARD in 2015, and has since used
the same continuously, extensively, and in the ordinary course of trade
in relation to its goods.
31.4 It was further contended that the mark ALPHARD is derived
from the name of a star, and its adoption by the Respondent is entirely
arbitrary, distinctive, and bona fide , particularly in relation to
automobile accessories.
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31.5 The Respondent’s use of the mark has not been confined to a
single entity but extends across its business operations, including
associated entities. This evidences consistent and commercial
exploitation of the mark in India.
31.6 It was emphatically submitted that the Appellant has, by its own
admission, neither launched, marketed, nor commercially used the
mark ALPHARD in India in respect of goods falling under Classes 9,
12, or 27 at any point prior to the Respondent’s adoption.
31.7 Learned counsel submitted that the Appellant has never claimed
use of the mark in India in relation to the relevant goods and applied
for registration only in November 2017, and that too on a “proposed to
be used” basis, long after the Respondent’s registrations had already
been secured.
31.8 It was further contended that the Appellant is bound by its own
pleadings before the Trade Marks Registry, where it acknowledged
absence of use in India till 2017.The Appellant cannot now be
permitted to take inconsistent positions before this Hon’ble Court.
31.9 In the absence of any actual use, it was submitted that the
Appellant cannot claim any goodwill or reputation in India in respect
of the mark ALPHARD . Any assertion of spill-over reputation must
meet the stringent threshold of “substantial reputation,” which the
Appellant has failed to discharged.
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31.10 It was further pointed out that according to the Appellant’s own
case, the vehicle in question was introduced in India only in 2020
under a different mark, VELLFIRE, thereby further negating any
claim of prior goodwill or recognition in India.
31.11 It was submitted that the Appellant cannot invoke the
provisions of Section 11 of the Act, as it does not qualify as an
“earlier trade mark” within the meaning of the statute.
31.12 Learned counsel submitted that the Appellant neither possesses
any prior registration in India nor any application predating the
Respondent’s registrations. Consequently, it lacks the statutory locus
to challenge the Respondent’s mark under Sections 11(1) and 11(2) of
the Act.
31.13 It was further contended that the Appellant cannot derive any
benefit under Section 11(3) of the Act, as it has failed to establish the
existence of goodwill or reputation within India, which is a sine qua
non for invoking protection against passing off.
31.14 The absence of any passing off action by the Appellant further
reinforces the lack of goodwill or actionable reputation in India.
Reliance was placed on Bennett Coleman and Co. Ltd. v. Vnow
7
Technologies Private Limited and Anr in support of this submission.
7
2023/DHC/001066
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31.15 It was submitted that the Appellant has failed to establish any
trans-border reputation in India in respect of the mark ALPHARD , as
required under settled law.
31.16 Learned counsel contended that there is no credible evidence on
record demonstrating actual use of the mark in India by the Appellant,
whether through sales, advertisements, or any commercial activity.
31.17 The alleged instances of import relied upon by the Appellant
are, at best, isolated and sporadic third-party transactions, which
cannot constitute commercial use or establish goodwill attributable to
the Appellant.
31.18 It was further submitted that the Appellant has not placed on
record any invoices, advertisements, or other documentary evidence
demonstrating market presence or consumer recognition of the mark
in India.
31.19 Mere international use or reputation, it was argued, is
insufficient to establish spillover reputation within India in the
absence of cogent evidence of market penetration or consumer
awareness.
31.20 Reliance was placed on the decision of this Bench in Sumit
Vijay and Another v. Major League Baseball Properties Inc. and
8
Another ., where it was held that goodwill must be proven
8
2026 SCC OnLine Del 2
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substantially and sufficiently, and that the documents produced by the
Appellants are not sufficient to prove goodwill.
31.21 Learned counsel placed strong reliance on the judgment of the
Supreme Court in Prius (supra) to contend that the principle of
territoriality squarely governs the present case.
31.22 It was submitted that in Prius (supra), the Supreme Court
declined relief to the Appellant on the ground that trans-border
reputation had not spilled over into India, despite global use of the
mark.
31.23 Drawing a parallel, it was contended that the Appellant herein
stands on an even weaker footing, having failed to demonstrate any
substantive reputation, goodwill, or market presence in India prior to
the Respondent’s adoption.
31.24 Applying the territoriality principle, it was argued that the
burden squarely lies on the Appellant to establish goodwill and
reputation within the Indian jurisdiction, which burden has not been
discharged.
31.25 It was further submitted that there is no material on record to
demonstrate that the Appellant enjoys any goodwill, reputation, or
consumer recognition in India in respect of the mark ALPHARD ,
sufficient to confer rights of prior user.
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31.26 Learned counsel contended that mere global reputation, in the
absence of demonstrable spill-over into India, cannot defeat the
statutory rights of a registered proprietor who has adopted and used
the mark bona fide within the jurisdiction.
31.27 It was further submitted that the present case stands on a weaker
footing than Prius (supra), as the Appellant has neither marketed nor
advertised the mark in India and has failed to establish even minimal
consumer awareness.
31.28 In view of the foregoing, it was submitted that the Appellant
has failed to establish any prior rights, goodwill, or trans-border
reputation in India, and is therefore not entitled to any relief.
31.29 The Respondent, being the bona fide adopter, prior user, and
registered proprietor of the mark in India, is entitled to statutory
protection under the provisions of the Act9.
31.30 It was accordingly prayed that the present appeal be dismissed
with costs, and the impugned judgment be upheld.
REJOINDER BY MR. SETHI
32. In rejoinder, Mr. Sethi addressed the scope and interpretation of
Section 11(5) of the Act, as understood in Bennett Coleman and
Company Limited (supra). He submitted that Sections 11(2) and 11(3)
embody relative grounds for refusal of registration, which are based
on existence of prior rights, goodwill, and reputation in a mark.
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32.1 It was contended that while Section 11(5) stipulates that the
Registrar may not refuse registration under Sections 11(2) and 11(3)
in the absence of opposition, such a procedural limitation must be read
in conjunction with Section 57 of the Act. In particular, Section 57(2)
permits “any person aggrieved” to seek rectification f the register on
sufficient cause shown. The mere failure to oppose at the registration
stage does not disentitle a person from subsequently invoking the
grounds available under Section 11 of the Act, including the relative
grounds for refusal based on prior use, goodwill, and reputation.
32.2 Addressing the reliance placed by the Respondents on the
decision in Prius (supra) and Sumeet Vijay and Another (supra), Mr.
Sethi submitted that these decisions were primarily based on the
finding that the material on record was insufficient to establish
goodwill or reputation in India. He contended that the factual matrix
in the present case is distinguishable, as the Appellant has placed
substantial material on record demonstrating the existence of
reputation in India even prior to the Respondent’s application.
32.3 It was submitted that substantial material has been placed on
record by the Appellant to demonstrate that the mark ALPHARD has
acquired reputation in India even prior to the Respondent’s
application. This includes evidence of the vehicles being imported,
traded, and used by prominent individuals in India. This includes
evidence of the vehicle being imported, traded, and used by prominent
individuals in India. While the volume of such use may be limited due
to the high-value nature of the product, the presence of such use is
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significant, indicating a niche but established awareness and interest
among the relevant consumer base.
32.4 Mr. Sethi relied on the judgment in Trustees of Princeton
9
University v. VagdevI Educational Society and Others to counter the
Respondents’ contention that such imports were effected by third
parties. It was submitted that third-party imports, where they are
conducted with the knowledge and consent of the proprietor, do not
negate the existence of reputation or goodwill in the mark. The
Appellant’s mark ALPHARD enjoys recognition and consumer
interest, which is reflected by these imports and is sufficient to
establish goodwill in India.
32.5 It was further contended that the Respondents have failed to
establish any credible linkage demonstrating that the entities involved
in the imports and sales are sister concerns. Consequently, the
invoices relied upon by the Respondents,which refer to these third-
party imports, must be treated as unreliable and lacking probative
value. These documents cannot substantiate the Respondents’ claims
of use in India or establish their bona fide adoption of the mark.
32.6 In view of the above, Mr. Sethi submitted that the Respondents’
adoption and registration of the mark ALPHARD is unsustainable in
law. The Respondents have failed to establish that their use of the
mark has been bona fide or that it has not caused confusion or dilution
of the Appellant’s reputation. As such, the Respondents’ mark should
9
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be removed from the Register in accordance with Section 57 of the
Act.
ANALYSIS AND FINDINGS
33. At the outset, before delving into the present dispute, it is
necessary to first understand the scope of interference in an intra-court
appeal, i.e. an LPA against the decision of the Single Judge of this
court. The principles governing the scope of interference in such
appeals have been well-settled in judicial precedents, which we shall
now briefly examine.
34. Recently, in Bihar Industrial Area Development Authority and
10
Others v. Scope Sales Pvt. Ltd. and Another , the Supreme Court
once again addressed the nature and extent of jurisdiction in an intra
court appeal. The Court reiterated the limited scope of interference in
such appeals, emphasizing that intervention is only justified when
there are compelling reasons, such as manifest error or injustice. This
principle, as elucidated by the Supreme Court, outlined below, guides
our approach in the present case:
“ In our view, the exercise of intra-court appellate jurisdiction is
warranted only where the judgment or order under challenge is
demonstrably erroneous or suffers from perversity. Such
jurisdiction ought not to be invoked merely because another view is
possible on the same set of facts, particularly where the view
adopted by the Single Judge is a plausible and reasonable one. In
other words, an intra-court appellate Bench ought not to substitute
its own view, merely because such Bench considers its view to be
better than the one taken by the Single Bench; so long as the view
10
2026 SCC OnLine SC 112
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taken by the Single Bench is a plausible one, interference should
stay at a distance. ”
35. Having understood the scope of interference, we now move on
to the applicable statutory scheme governing the present dispute.
36. The dispute arises in the context of a petition for rectification of
the trademark register, and it is essential to examine the provisions of
11
the Act, particularly Section 57 of the Act, which governs the power
to cancel or vary registration and rectify the Register.
37. Section 57 operates as a corrective mechanism to ensure that the
Register of Trade Marks does not continue to carry marks that should
not have been registered. This provision empowers the Court to order
the removal or rectification of marks that were erroneously registered
or are otherwise not entitled to remain on the Register. It is important
to note that this provision falls for consideration, in the present
dispute, as Appellant seek the removal of the Respondents’ mark from
the Register.
11
57. Power to cancel or vary registration and to rectify the register .—(1) On application made in the
26 27
prescribed manner to the [High Court] or to the Registrar by any person aggrieved, the [Registrar or the
High Court, as the case may be,] may make such order as it may think fit for cancelling or varying the
registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on
the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in
the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or
28
defect in any entry in the register, may apply in the prescribed manner to the [High Court] or to the
29
Registrar, and the [Registrar or the High Court, as the case may be,] may make such order for making,
expunging or varying the entry as it may think fit.
30
(3) The [Registrar or the High Court, as the case may be,] may in any proceeding under this section decide
any question that may be necessary or expedient to decide in connection with the rectification of the register.
31
(4) The [Registrar or the High Court, as the case may be,], of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any
order referred to in sub-section (1) or sub-section (2).
32
(5) Any order of the [High Court] rectifying the register shall direct that notice of the rectification shall be
served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register
accordingly.
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38. Section 57 has been the subject matter of authoritative
exposition by this Court, including in cases such as BPI Sports LLC v.
12
Saurabh Gulati and Ors. and more recently in Sumit Vijay and
Another (supra). In these decisions, authored by one of us (C. Hari
Shankar. J.), the contours of Section 57 and its interplay with other
provisions of the Act were discussed. These decisions provide
valuable guidance on how the Court should approach cases involving
the rectification of the register.
39. To lend clarity to the discussion and aid in understanding the
present issue, we deem it relevant to highlight the findings in Sumit
Vijay and Another (supra) , where the application of Section 57 was
discussed. The same merits reproduction here for a cleared
understanding:
“5.1 Sections 47 and 57 are the only provisions, in the Trade
Marks Act, under which a registered trade mark of one person can
be removed from the Register of Trade Marks at the instance of
another. Section 47 allows the mark to be removed on the ground
of continuous disuse. Section 57(1) allows removal of a registered
trade mark if any condition, in relation to the mark and entered in
the Register, is contravened or not observed.
5.2 These provisions do not concern us. We are concerned with
Section 57(2).
5.3 Section 57(2) can be invoked by any person who is
aggrieved
(i) by the absence from the Register of any entry, or
(ii) by any entry made without sufficient cause, or
(iii) by any entry which wrongly remains on the Register, or
(iv) by any error or defect in any entry in the Register, and
empowers the Registrar, or the High Court, to make,
expunge or vary the entry. Circumstances (ii) and (iii), if
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accepted, would naturally result in expunction of the entry,
as has happened here.
5.4 The circumstances in which a trade mark can be said to be
“wrongly remaining” on the Register are not elucidated in Section
57. Nor are they to be found elsewhere in the Trade Marks Act. In
the circumstances, one has to refer, for the purpose, to Sections 9
and 11, which set out the grounds on which registration of a trade
mark can be refused. If a mark ought not to have been registered in
the first place, as it breached the proscriptions contained in
Section 9 or Section 11, the sequitur is, naturally, that it ought not
to remain on the Register.
5.5 The circumstances in which the Registrar can refuse to
register a trade mark, as envisaged in Sections 9 and 11, are many
and varied. Of these, Section 9 contains “absolute” grounds of
refusal, whereas Section 11 contains “relative” grounds of refusal.
Section 9 does not concern us, as the respondent has not invoked
any clause thereof.”
40. It can be understood that Section 47 and 57 are the two primary
provisions under which a registered trademark may be removed from
the Register. Section 57, in particular, enables the Court to rectify the
Register by removing marks that were wrongly registered, whether
due to oversight, misrepresentation, or other errors.
41. Additionally, Section 57(2) envisages cases where an entry has
been made without sufficient cause, where it remains on the Register
without justification, or where the entry suffers from any error or
defect. However, the Act does not define the expression “wrongly
remaining on the Register” or set out the precise circumstances in
which a trademark may be removed. In such cases, it is necessary to
refer to Sections 9 and 11, which prescribe the circumstances under
which a mark ought not to have been registered in the first place.
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42. If a mark could not have been registered in the first place,
having regard to the prohibitions contained in Sections 9 or 11, it
cannot be permitted to remain on the Register. Thus, Section 57
enables the Court to undo an erroneous registration, whether the error
arose from oversight, misrepresentation, or any other factor that
renders the mark ineligible for registration.
43. Before embarking on an inquiry as to whether the mark was
wrongly registered under Sections 9 or 11, it would be useful to first
understand the scope and purport of those Sections. Section 9 deals
with absolute grounds for refusal, while Section 11 addresses relative
grounds for refusal. Section 9 examines the mark in isolation, whereas
Section 11 looks at the mark in relation to an earlier mark or prior
rights held by another party.
44. In the context of this matter, the Appellants have invoked the
grounds enumerated in Section 11. Specifically, they seek the removal
of the Respondent’s mark on the ground of (i) Prior adoption,
worldwide registrations, and use of the mark ALPHARD by the
Appellant, (ii) Reputation and goodwill in India, supported by
evidence of trans-border reputation, (iii) Dishonest adoption of the
mark by the Respondent.
45. Therefore, the enquiry in this case is confined to Section 11,
which deals with the relative grounds for refusal. We will now
examine whether the Respondent’s mark ought to be removed based
on the grounds raised by the Appellant under Section 11, specifically
focusing on prior adoption, trans-border reputation, and the alleged
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dishonest adoption by the Respondent. For the sake of clarity, Section
11 is reproduced below:
“11. Relative grounds for refusal of registration.—(1) Save as
provided in section 12, a trade mark shall not be registered if,
because of—
(a) its identity with an earlier trade mark and similarity of
goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or
similarity of the goods or services covered by the trade
mark, there exists a likelihood of confusion on the part of
the public, which includes the likelihood of association with
the earlier trade mark.
(2) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not
similar to those for which the earlier trade mark is
registered in the name of a different proprietor, shall not be
registered if or to the extent the earlier trade mark is a
well-known trade mark in India and the use of the later
mark without due cause would take unfair advantage of or
be detrimental to the distinctive character or repute of the
earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent
that, its use in India is liable to be prevented—
(a) by virtue of any law in particular the law of passing off
protecting an unregistered trade mark used in the course of
trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of
a trade mark where the proprietor of the earlier trade mark
or other earlier right consents to the registration, and in
such case the Registrar may register the mark under
special circumstances under section 12.
Explanation.—For the purposes of this section, earlier
trade mark means—
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1[(a) a registered trade mark or an application under
section 18 bearing an earlier date of filing or an
international registration referred to in section 36E or
convention application referred to in section 154 which has
a date of application earlier than that of the trade mark in
question, taking account, where appropriate, of the
priorities claimed in respect of the trade marks;]
(b) a trade mark which, on the date of the application for
registration of the trade mark in question, or where
appropriate, of the priority claimed in respect of the
application, was entitled to protection as a well-known
trade mark.
(5) A trade mark shall not be refused registration on the
grounds specified in sub-sections (2) and (3), unless
objection on any one or more of those grounds is raised in
opposition proceedings by the proprietor of the earlier
trade mark.
(6) The Registrar shall, while determining whether a trade
mark is a well-known trade mark, take into account any
fact which he considers relevant for determining a trade
mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the
relevant section of the public including knowledge in India
obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of
that trade mark;
(iii) the duration, extent and geographical area of any
promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the
goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration
of or any application for registration of that trade mark
under this Act to the extent that they reflect the use or
recognition of the trade mark;
(v) the record of successful enforcement of the rights in that
trade mark, in particular the extent to which the trade mark
has been recognised as a well-known trade mark by any
court or Registrar under that record.
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(7) The Registrar shall, while determining as to whether a
trade mark is known or recognised in a relevant section of
the public for the purposes of sub-section (6), take into
account—
(i) the number of actual or potential consumers of the
goods or services;
(ii) the number of persons involved in the channels of
distribution of the goods or services;
(iii) the business circles dealing with the goods or services,
to which that trade mark applies.
(8) Where a trade mark has been determined to be well
known in at least one relevant section of the public in India
by any court or Registrar, the Registrar shall consider that
trade mark as a well-known trade mark for registration
under this Act.
(9) The Registrar shall not require as a condition, for
determining whether a trade mark is a well-known trade
mark, any of the following, namely:—
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark
has been filed in India;
(iv) that the trade mark—
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has
been filed in, any jurisdiction other than India, or
(v) that the trade mark is well-known to the public at large
in India.
(10) While considering an application for registration of a
trade mark and opposition filed in respect thereof, the
Registrar shall—
(i) protect a well-known trade mark against the identical or
similar trademarks;
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(ii) take into consideration the bad faith involved either of
the applicant or the opponent affecting the right relating to
the trade mark.
(11) Where a trade mark has been registered in good faith
disclosing the material information to the Registrar or
where right to a trade mark has been acquired through use
in good faith before the commencement of this Act, then,
nothing in this Act shall prejudice the validity of the
registration of that trade mark or right to use that trade
mark on the ground that such trade mark is identical with
or similar to a well-known trade mark.”
46. Sub-section (1) of Section 11 proscribes registration where the
mark sought to be registered is identical with, or similar to, an “earlier
trade mark” and is sought to be used in respect of identical or similar
goods or services, thereby giving rise to a likelihood of confusion.
This provision is designed to prevent confusion among the public by
ensuring that marks which are likely to cause confusion due to their
similarity to an earlier mark are not allowed to be registered.
47. Under Section 11(2), even where the goods or services are not
similar, registration can still be refused if the earlier mark is a “well-
known” trade mark in India and the use of the later mark, without due
cause, would take unfair advantage of, or be detrimental to, the
distinctive character or repute of that earlier mark. This provision
safeguards the rights of well-known marks by preventing dilution or
exploitation of their reputation in India.
48. It is important to note that both sub-sections (1) and (2) are
applicable only in the case of an “earlier trade mark”. In other words
whose registration is sough is identical or similar to an “earlier trade
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mark”. Therefore, the determination of what constitutes an “earlier
trade mark” is crucial for the applicability of these provisions.
49. The term “earlier trade mark” is defined in the explanation to
Section 11. This Court, in Sumit Vijay and Another (supra) ,
elaborated on the concept of an “earlier trade mark” as follows:
“11.4. The expression “earlier trade mark”, for the purposes of
Sections 11(1) and 11(2) stands defined in the Explanation below
Section 11(4). A mark would qualify as an “earlier trade mark”
plainly said, if (i) it was a prior registered trade mark, or (ii) an
application for registration of the trade mark was pending before
the Registrar, or (iii) it was a well-known trade mark on the date of
application for registration of the latter mark.”
50. In simple terms, a mark qualifies as an “earlier trade mark” if it
satisfies any of the following conditions: (i) it is already a registered
trade mark, (ii) its registration application is pending before the
Registrar, or (ii) it is recognised as a well-known trade mark on the
date the later mark is applied for.
51. In this matter, clearly the Appellant’s mark is neither a prior
registered mark in India nor has any application been made for its
registration before the Registrar. Thus, for the provisions of Section
11(1) and 11(2) to be triggered, the Appellant’s mark must qualify as
a “well-known” trade mark in India.
52. The determination of whether a mark qualifies as a “well-
known” trade mark is governed by Section 11(6) to (10) of the Act,
which outlines the factors to be considered. These factors include:
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i. the knowledge or recognition of the mark in the relevant
section of the public, including recognition in India arising from
promotion;
ii. the duration, extent and geographical area of use of the
mark;
iii. the extent and nature of promotion and publicity,
including advertisements and exhibitions;
iv. the extent of registration or applications for registration
of the mark; and
v. the record of enforcement of rights in the mark, including
recognition by courts or authorities.
These factors are crucial in determining whether a mark
qualifies as a “well-known” trade mark and thus entitles the Appellant
to seek protection under Section 11.
53. Moving further, other grounds of refusal are addressed under
Section 11(3), which stipulates that the registration must also be
refused if the use of the mark in India would be prevented by law,
especially by the law of passing off protecting an unregistered mark or
by copyright law. This provision seeks to ensure that marks that are
likely to infringe upon unregistered rights or other intellectual
property rights are not allowed registration.
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54. Under Section 11(4), if the proprietor of the earlier trade mark
or earlier right consents, the Registrar is not barred from registering
the mark. In such cases the Registrar may permit registration under
Section 12, which provides for registration in cases of honest
concurrent use or other special circumstances.
55. Section 11(5) stipulates that refusal on the grounds of sub-
sections (2) and (3) ordinarily cannot happen unless such an objection
is raised in opposition proceedings by the proprietor of the earlier
mark. This provides procedural clarity regarding when objections
based on these grounds may be raised.
56. As discussed above, Sub-sections (6) to (10) of Section 11
stipulates the factors that help determine whether a mark qualifies
as “well-known”. These include the extent of use, recognition,
promotion, registration, and enforcement of rights, all of which be
evaluated to establish the well-known status of a trade mark.
57. In summary, Section 11 plays a crucial role in refusing
applications where an earlier conflicting mark or prior right is at issue.
It ensures which may cause confusion, unfair advantage, or detriment
to the distinctiveness of a well-known or earlier trade mark are not
registered. The provisions under Section 11 thus serve as an important
safeguard to protect the interests of those holding earlier or well-
known marks from potential harm caused by the registration of similar
or identical marks.
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58. Also keeping in mind the definition of well-known mark under
13
Sections 2(1) (zg) of the Act which states that a mark qualifies as
“well-known” mark if it has acquired recognition and reputation
among a substantial segment of the public that actually purchases or
use the mark. The law does not require the mark to be universally
known across the entire population; rather it must enjoy real and
substantial recognition within the relevant consumer segment that
engages with those particular goods or services.
59. Thus, the Registrar, when applying Section 11 must look
beyond simply counting how many people actually use or could
potentially use a well-known brand's products or services , but what
matters is the recognition or the knowledge of the mark in that
relevant section of the public.
60. The Appellants herein assert that their mark has been used and
registered worldwide and has also acquired a trans-border reputation
in India. Given the significance of this claim, it is also important to
note that Prius (supra) should not be read as rejecting the concept of
cross-border reputation. Rather, it should be understood as holding
that Toyota failed on facts because Prius brand lacked a real
commercial presence, sufficient publicity, and inadequate consumer
recognition in India. The Court’s focus in Prius (supra) was on the
failure to prove actual recognition and presence of the mark in India,
which are critical elements for establishing trans-border reputation.
13
( zg ) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to
the substantial segment of the public which uses such goods or receives such services that the use of such
mark in relation to other goods or services would be likely to be taken as indicating a connection in the course
of trade or rendering of services between those goods or services and a person during the mark in relation to
the first mentioned goods or services.
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61. In the present case, the Appellant must show that the mark has
made a substantial imprint on the Indian market, even if no direct
sales were made. The necessary territorial goodwill can be shown
through spill-over reputation, such as extensive advertisements,
promotions, and general public awareness. The core test is whether a
significant and noteworthy segment of the relevant Indian consumer
base recognizes the mark and associates it with the claimant.
62. Having discussed the applicable statutory provisions and legal
principles governing trans-border reputation, we shall now advert to
the facts of the present appeal.
63. In the present case, the nature of the goods in question i.e.
luxury multi-purpose vehicles, assumes significant importance. In
markets for luxury goods, consumer awareness is not driven by mass
penetration but rather by brand visibility and global reputation.
Therefore, evidence such as imports and niche market presence holds
heightened probative value, especially when establishing the
reputation and goodwill of the mark in the relevant territory.
64. It is undisputed that the Appellant is the prior adopter of the
mark globally, with adoption dating back to 1986 and commercial use
commencing in 2002. In contrast, the Respondents’ adoption of the
mark is relatively recent, with its application filed in 2015 on a
“proposed to be used” basis.
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65. The controversy, therefore, is not the priority of adoption per se,
but whether the Appellant’s prior adoption of the mark translates into
protectable goodwill within India, such that the Appellant’s mark
qualifies for protection under Indian law.The crux of the matter lies in
determining whether the Appellant’s mark, by virtue of its alleged
prior adoption and asserted trans-border reputation, qualifies as a
“well-known” trade mark on the date of the Respondents’ application
for registration.
66. The learned Single Judge,in dismissing the petition under
Section 57, proceeded on the premise that, in the absence of a formal
commercial launch of the ALPHARD vehicle in India, no goodwill or
reputation could be established. According to the learned Single
Judge, the Appellant has failed to discharge the onus of proving the
reputation and goodwill of the mark ALPHARD here in India .
67. The learned Single Judge made the following specific findings
to reject the Section 57 petition, (i) The Appellant failed to provide a
single invoice showing that it had sold any vehicle under the
ALPHARD mark in India, (ii) The Appellant did not advertise the said
brand in any form within India, (iii) Documents such as international
brochures, annual reports, awards, worldwide trademark registration
certificates, and promotional materials were relatedonly to
international use, not Indian use, (iv) Imports and sale documents
indicated that imports were made by third parties, not by the
Appellant, (v) The articles submitted by the Appellant were published
after the Respondent had secured registration of the impugned mark.
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68. Mr. Sethi argued that although ALPHARD vehicle had not yet
been formally launched in India, it had been available in the country
since at least 2008 by way of direct imports by individuals and vehicle
enthusiasts. In support of this claim, the Appellant submitted the
following evidence:
a. www.cartrade.com Listing for sale of a second hand 1 vehicle
under the Appellant’s mark ALPHARD (Manufactured/Registered
in the year 2008);
b. www.car.mitula.in (Page Nos. 839 to 842) Listings for sale of a
second hand vehicle under the Appellant’s mark ALPHARD in
Mumbai (Model 2008 and 2007);
c. www.glorious-car.blogspot.in (Page Nos. 860 to 862)
Advertisement of a vehicle under the Appellant’s mark ALPHARD
dated October 23, 2009;
d. www.myk384.blogspot.in (Ultimate Car Guide Blog) Listing of a
vehicle under the Appellant’s mark ALPHARD dated December
10, 2013 (Page No. 864);
e. www.cars.trovit.co.in (Page Nos. 887 & 888) Listings for sale of
a second-hand vehicle under the Appellant’s mark ALPHARD in
Mumbai/Delhi (Model 2008, 2007, 2009);
f. www.carswale.com (Page No. 890) Listings for sale of a second-
hand vehicle under the Appellant’s mark ALPHARD in Mumbai
(Model 2008);
g. www.team-bhp.com Discussion about the Appellant’s vehicle
under the mark ALPHARD on an Indian blog, Team BHP (Page
Nos. 843 to 847, 851, 854, 857 and 891 to 895);
h. www.motorcane.com Indian article dated April 16, 2015 (Page
Nos. 868 to 869) on the Appellant’s vehicle under the mark
ALPHARD;
i. www.bharathautos.com Indian article dated September 01, 2016
(Page No. 870) on the Appellant’s vehicle under the mark
ALPHARD;
j. www.indianautosblog.com Indian article dated January 27, 2015
(Page Nos. 873 to 875) on the Appellant’s vehicle under the mark
ALPHARD;
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k. www.indianautoblog.com India article dated March 24, 2015
(Page Nos. 683 to 685) on the Appellant’s vehicle under the mark
ALPHARD;
l. www.theautomotiveindia.com Discussion on the India blog, The
Automotive India, dated October 15, 2010 (Page Nos. 896 & 897)
about Tamil Nadu Chief Minister’s vehicle under the Appellant’s
mark ALPHARD;
m. Times of India classified advertisement dated October 8, 2010
(Page No. 899) for sale of the Appellant’s vehicle under the mark
ALPHARD in Mumbai (Model 2004);
n. Times of India article dated November 22, 2011 (Page No. 900)
re Mr. Gautam Adani’s vehicle under the Appellant’s mark
ALPHARD;
o. www.zauba.com (Page No. 1122 to 1124) Data on the import of
the Appellant’s vehicle under the mark ALPHARD into India
69. Mr Sethi emphasized the fact that private parties had in fact
independently imported the Appellant’s vehicle under the ALPHARD
mark into India is in itself powerful evidence of the mark’s reputation
and goodwill in the country. According to him, this unsolicited
importation establishes beyond doubt the recognition of the
Appellant’s mark by Indian consumers, as there can be no greater
evidence of the mark’s goodwill than its independent introduction into
the market by third parties.
70. We agree with Mr Sethi’s submission. Such unsolicited
importation is not a neutral or accidental occurrence. Rather, it reflects
a conscious commercial decision, driven by the recognition and
attractiveness of the Appellant’s mark among Indian consumers and
traders. This indicates that the mark has achieved a significant level of
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awareness and desirability in India, even in the absence of formal
commercial sales by the Appellant.
71. The material on record demonstrates that there exists a definite
consumer base and demand for goods bearing the ALPHARD mark.
The goodwill attached to the mark is sufficiently strong to motivate
independent market actors to import the goods into India without any
prompting from the Appellant. In such circumstances, we find that
there is no more compelling or persuasive proof of reputation and
goodwill in India.Goodwill is best evidenced not by mere assertion,
but by the response of the market itself, and in this case, the market
has spoken unequivocally in favour of the Appellant’s mark.
72. We are satisfied that the Appellant has placed on record a
substantial body of material demonstrating that the mark ALPHARD
had acquired recognition within India prior to the Respondent’s
application dated 05.11.2015. This materials on record, taken as a
whole, clearly supports the Appellant’s claim of a trans-border
reputation and establishes the goodwill attached to the mark within the
Indian market.
73. It is crucial to recognize that the nature of the goods in question,
high-value luxury automobiles, necessarily influences how market
presence and reputation should be assessed. Unlike mass-market
products, the penetration of such goods is inherently limited to a
niche, specialised consumer segment. Consequently, the indicia of
reputation must be evaluated accordingly, considering the targeted
consumer base rather than broad public penetration.
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74. At this juncture, we wish to refer to the judgment of Prius
(supra) wherein the Supreme Court clearly held that the existence of a
“real” market is not a precondition to establishing a trans-border
reputation. Instead, presence in a subtle form within the relevant
territory can give effect to the territoriality principle. The Court
further held that if there are customers for the claimant's products in a
jurisdiction, then the claimant stands in the same position as a
domestic trader in that market. The relevant paragraphs of the Prius
(supra) decision, as reproduced, reflect these findings:
“ 32. Prof. Cristopher Wadlow's view on the subject appears to
be that the test of whether a foreign claimant may succeed in a
passing-off action is whether his business has a goodwill in a
particular jurisdiction, which criterion is broader than the
“obsolete” test of whether a claimant has a business/place of
business in that jurisdiction. If there are customers for the
claimant's products in that jurisdiction, then the claimant stands in
the same position as a domestic trader.
33. The overwhelming judicial and academic opinion all over
the globe, therefore, seems to be in favour of the territoriality
principle. We do not see why the same should not apply to this
country.
34. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spill-over of the
reputation and goodwill of the mark used by the claimant who has
brought the passing-off action. In the course of such determination
it may be necessary to seek and ascertain the existence of not
necessarily a real market but the presence of the claimant through
its mark within a particular territorial jurisdiction in a more subtle
form which can best be manifested by the following illustrations,
though they arise from decisions of courts which may not be final
in that particular jurisdiction.
75. In Prius (supra), the evidence was held insufficient to establish
any substantial goodwill or reputation of the product in India at the
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relevant time. This was because the car had only entered the Indian
market in 2009-2010, with negligible advertisement or sales prior to
2001. Additionally, the limited online material available was deemed
insufficient to infer reputation, and there was a lack of awareness
among the relevant section of the Indian public.
76. In contrast, the present case is distinguishable on facts. The
Appellant has demonstrated prior reputation for its vehicle,
substantiated by substantial published material, including evidence of
sales through third parties. This distinction in the factual matrix makes
Prius (supra) inapplicable to the present case.
77. While it is true that the imports of the Appellant’s vehicle were
effected by private individuals, this circumstance does not diminish
their evidentiary value. On the contrary, voluntary importation by
consumers strongly indicates pre-existing awareness and demand. The
act of importing a luxury product is not undertaken in the absence of
recognition of the product’s source or reputation.
78. In the context of miche luxury goods, such imports acquire
heightened significance, as they reflect conscious consumer demand
and recognition of the brand, further supporting the Appellant’s claim
of goodwill in India.
79. The test, therefore, is not one of mere visibility, but of
recognition, whether the mark had, prior to the relevant date, acquired
a discernible association in the minds of the relevant section of the
public within India. In this case, the relevant section comprises
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consumers and market participants in the luxury automobile segment,
for whom recognition of the ALPHARD mark is both meaningful and
significant.
80. The Respondent has sought to characterise the Appellant’s
evidence as sporadic and insufficient. However, this submission
proceeds on an incorrect standard. The law does not require mass-
market penetration or extensive commercial sales to establish
reputation. As recognised under Section 11(6) and (7) of the Act, it is
sufficient if the mark is known within the relevant section of the
public. In the present case, this relevant section comprises consumers
and market participants in the luxury automobile segment, and the
Appellant has demonstrated recognition within that group.
81. Considering the factors laid down in Sections 11(6) to 11(10), it
can be concluded that the Appellant’s mark ALPHARD has crossed
the threshold from mere foreign reputation to actionable recognition
within India. The evidence clearly demonstrates that the mark is
recognized within the relevant consumer segment in India, thereby
qualifying as a “well-known” trade mark under Indian law.
82. The learned Single Judge appears to have proceeded on the
erroneous assumption that the absence of widespread or mass-market
presence is fatal to the Appellant’s claim. In our view, this amounts to
applying a standard of general public recognition, which is not
contemplated under Section 11(6) or under the doctrine of trans-
border reputation. The law acknowledges that reputation in a niche
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market, even without mass penetration, is sufficient to establish a
well-known mark.
83. Equally, the fact that the Appellant subsequently applied for
registration on a “proposed to be used” basis in 2017 does not
diminish its claim of prior reputation. Such an application reflects the
absence of a formal commercial launch but does not negate the
existence of spill-over goodwill that had already accrued. The mere
fact of a “proposed to be used” application does not detract from the
Appellant’s reputation in India, especially in the absence of a formal
commercial launch.
84. Turning to the Respondent’s adoption of the mark, the
explanation that the mark is derived from the name of a star does not,
in the facts of the present case, appear entirely convincing. The
adoption of an identical mark in the same field of business or in
relation to cognate goods or services, particularly against the backdrop
of the Appellant’s global reputation, raises a serious doubt as to the
bona fides of such adoption.
85. The inconsistencies in the Respondent’s stand, at one stage
claiming coinage of the mark, and at another attributing its origin to a
dictionary or astronomical reference, further detract from the
credibility of its explanation. These contradictory statements
undermine the Respondent’s argument and suggest an attempt to
obscure the true nature of the adoption.
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86. In such circumstances, the adoption of the mark “ ALPHARD ”
by the Respondent cannot be viewed as entirely fortuitous or innocent.
On the contrary, it bears the hallmark of an attempt to appropriate a
mark that already exists internationally, thus potentially infringing
upon the Appellant’s rights.
87. The Respondent has relied upon invoices and other documents
to establish the use of the mark. However, as rightly contended by Mr.
Sethi, a substantial portion of this material pertains to third parties or
alleged sister concerns, without any clear legal nexus being
established. Such documents cannot be deemed reliable unless a valid
connection between the Respondent and the entities involved is
established.
88. It is undisputed that all invoices are in the name of Tekstar
Global Private Limited , and not the Respondent itself. The
Respondent attempts to overcome this issue by describing the entity as
a “sister concern”. However, no material has been placed on record to
substantiate this claim, such as evidence of common shareholding,
management control, or any formal commercial arrangement between
the Respondent and Tekstar .
89. In the absence of such foundational evidence, the invoices
cannot, in law, be attributed to the Respondent. A mere assertion of
corporate association, unsupported by documentary proof, cannot
convert the actions of a third party into use by the proprietor.
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90. It is further noted that several invoices record cash transactions,
without disclosing the identity or address of the purchasers. Such
undocumented transactions cannot be regarded as reliable proof of
commercial use in the ordinary course of trade. The lack of basic
details regarding the transactions further weakens the Respondent’s
case.
91. The evidentiary value of such documents is therefore, limited.
The Respondent’s claim of continuous and bona fide commercial use
cannot be accepted at face value, particularly in light of the
contradictions surrounding its adoption and use of the mark.
92. This Court is, therefore, constrained to hold that the Respondent
has failed to discharge the burden of proving prior user. The reliance
placed on defective and unsubstantiated material cannot sustain a
claim of proprietorship in law. The Respondent has not sufficiently
demonstrated that it holds any prior right or goodwill in the mark
ALPHARD .
93. The learned Single Judge placed considerable reliance on the
fact that the material relied upon by the Appellant, such as instances
of import, media references, and public domain material, did not
constitute “use” of the mark by the Appellant itself. This reasoning, in
our considered view, cannot be sustained in law.
94. The issue of “use” is no longer res integra . A Division Bench of
this Court, in Trustees of Princeton University (supra) has
authoritatively clarified the ambit of “use” under Section 2(2)(c)(ii) of
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the Act. The Court held that the statutory definition of “use” does not
confine it to acts of the proprietor alone but extends to any statement
in the public domain that associates the mark with the availability or
performance of the services.
95. The learned Single Judge’s approach, discounting such material
solely because it did not emanate from the Appellant, is inconsistent
with the statutory framework and binding precedent. As established in
Trustees of Princeton University (supra), “use” can be inferred from
third party actions and public domain references that associate the
mark with the goods or services and is not restricted to formal
commercial sales by the proprietor.
96. The marks in question are identical, and are used in relation to
allied and cognate goods. In such circumstances, the likelihood of
confusion is not merely probable, but inevitable. Consumers are likely
to confuse the Respondent’s mark with that of the Appellant,
particularly given the similarity of the marks and the overlap in the
goods and services offered.
97. The continued use of the impugned mark by the Respondent
would inevitably lead to an association with the Appellant, causing
confusion as to source, origin, and affiliation. Such confusion could be
detrimental to the Appellant’s reputation and brand integrity,
particularly given the recognition that the Appellant’s mark has
garnered internationally.
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98. In light of the foregoing, the balance decisively tilts in favour of
the Appellant. The Respondent cannot be permitted to retain an
identical mark in circumstances which disclose an attempt to
appropriate pre-existing goodwill. The Respondent’s actions, in
attempting to register a mark so similar to the Appellant’s are contrary
to the principles of fairness and the protection of intellectual property
rights.
99. This case falls squarely within the scope of marks that are
“wrongly remaining on the Register” under Section 57(2) of the Act.
The Respondent’s mark should be removed from the Register, as its
continued presence violates the Appellant’s established rights and
creates an unjust enrichment at the Appellant’s expense.
CONCLUSION
100. Upon a holistic consideration of the material on record, we are
satisfied that:
i. The Appellant has established prior adoption of the mark
ALPHARD and has established its spill-over reputation within
India, supported by substantial evidence of recognition and
goodwill in the Indian market.
ii. The Respondent’s adoption of the mark lacks bona fides
and is not entirely innocent, given the inconsistencies in their
explanation and the proximity of the mark to the Appellant’s
internationally recognized brand.
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iii. The impugned registrations are in contravention of the
provisions of Section 11 of the Act, and the marks are “wrongly
remaining on the Register” within the meaning of Section 57.
101. We are further satisfied that the mark ALPHARD was a “well
known” trade mark at the time of Respondent’s application. The
evidence presented by the Appellant sufficiently establishes the
mark’s international reputation, which had spilled over into India,
qualifying it for protection under the applicable provisions of Indian
trademark law.
102. In light of the above findings, we deem it appropriate to order
the removal of the impugned registration for the mark ALPHARD in
favour of the Respondent, specifically under Registration
Nos.3093216, 3093218, and 3093219, in respect of Classes 9, 12, and
27, respectively, dated 17.09.2016,17.09.2016, and 13.09.2016. These
registrations are hereby declared to be invalid and are to be removed
from the Register of Trade Marks.
103. Consequently, we direct that the Register of Trade Marks be
rectified to reflect the removal of the impugned ALPHARD mark from
the Register. The Registrar of Trade Marks is further directed to take
immediate action to effect this rectification.
104. Let a copy of this judgment be forwarded to the Registrar of
Trade Marks through the prescribed mode for due compliance and
immediate action in accordance with the directions above.
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105. The appeal is allowed. No order as to cost(s).
OM PRAKASH SHUKLA, J.
C. HARI SHANKAR, J.
MAY 04, 2026/ gunn/ss
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