Transborder Reputation Requires Proof of Significant Local Goodwill and Customer Base Beyond Minimal Internet Presence or Foreign Sales

The Plaintiffs, UAE-based perfume entities, claim use of the mark "Ahmed Al Maghribi" since 2000 and the calligraphic logo "Ahmed" since 2015.

They alleged that the Defendants (former customers/prospective distributors) adopted identical and deceptively similar marks—including "Ahmed Al Maghribi," "Al Ahmed," "Bin Shaikh," and the calligraphic logo—for a rival perfume business in India.

The Plaintiffs sought interim injunctions against the Defendants for passing off and copyright infringement of their artistic logos.

The Defendants claimed prior use in India since 2017/2020 and argued that the name "Ahmed" and sub-brands like "Oud & Roses" are generic or common to the trade.

1. Whether the Plaintiffs established sufficient transborder reputation and goodwill in India to maintain an action for passing off against the Defendants.

2. Whether the Defendants' use of the calligraphic logos constitutes an infringement of the Plaintiffs' copyright under the International Copyright Order, 1999.

The Court applied the Territoriality Principle as established in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., which mandates that a foreign claimant must prove actual goodwill (customers) within the specific jurisdiction, rather than mere global reputation.

It relied on Starbucks (HK) Ltd. v. British Sky Broadcasting Group to distinguish between customers in the jurisdiction and residents who happen to be customers while abroad.

Regarding copyright, the Court applied the International Copyright Order, 1999, which grants reciprocal protection in India to artistic works created in WTO convention countries like the UAE.

The Court found the Plaintiffs failed the "transborder reputation" test for passing off. Evidence showed minimal sales in India (approx. Rs. 5.5 lakhs in 2021), and most invoices indicated goods were purchased in the UAE by Indian travelers rather than direct sales into the Indian market.

Furthermore, digital presence via websites and social media was deemed insufficient as there was no evidence of targeted Indian engagement or significant local advertisement expenditure (e.g., meta-ad costs for India were negligible).

However, regarding copyright, the Court noted the calligraphic logo was a specific artistic work designed by the Plaintiffs in 2015.

The Defendants provided no explanation for adopting an identical artwork and failed to rebut the Plaintiffs' claim of ownership. Thus, while the trade names were not protected due to lack of local goodwill, the specific artistic logos were protected under copyright law.

The Defendants are restrained from reproducing, printing, or communicating to the public the Plaintiffs’ calligraphic logos (as specified in prayer clause (b)) or any substantial/colorable imitations thereof during the pendency of the suit.