Transborder Reputation Requires Proof of Significant Territorial Goodwill in India to Sustain a Passing Off Action

Robert A. Merry (Plaintiff) is an Irish company that adopted the mark "WHISTLER" in 2005 and "THE WHISTLER" in 2016 for Irish whiskey, securing numerous international registrations.

Piccadily Agro (Defendant) is an Indian company that registered "WHISTLER" in India in 2008 in Class 33 and commercially launched its "Whistler" IMFL whiskey in 2018.

Plaintiff filed a suit for passing off to restrain Defendant’s use of the mark, alleging global reputation and spillover into India.

Defendant filed a cross-suit for trademark infringement and passing off, asserting its status as a registered proprietor in India and the prior user within the Indian territory.

Plaintiff had no sales in India until late 2025/early 2026, subsequent to obtaining excise approvals.

1. Whether the Plaintiff established a prima facie case of passing off against the Defendant based on "transborder reputation" despite having no prior sales or registration in India.

2. Whether the Defendant, as a registered proprietor in India, is entitled to an interim injunction for trademark infringement against the Plaintiff.

The Court applied the Territoriality Principle as established in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., which mandates that a plaintiff must prove reputation and goodwill within the specific jurisdiction (India) rather than relying on the "Universality Doctrine".

Section 27(2) of the Trade Marks Act, 1999 regarding passing off rights.

Sections 28 and 29, which grant exclusive rights to registered proprietors and define infringement.

The Court relied on S. Syed Mohideen v. P. Sulochana Bai to establish that prior user rights (within the territory) are superior to registration.

Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers regarding the high likelihood of confusion in the alcoholic beverage industry.

The Court found that the Plaintiff failed to establish a "spillover" of transborder reputation into India prior to the Defendant’s 2018 launch.

The Plaintiff’s evidence—consisting of foreign registrations, domain names, and post-2021 social media engagement—did not prove that the Indian public associated the mark with the Plaintiff at the relevant time.

Applying the Toyota standard, the Court held that mere accessibility of websites or foreign sales is insufficient to establish domestic goodwill.

Conversely, the Defendant proved it was the "first in the Indian market" with its 2018 launch, supported by sales data and excise approvals.

Regarding infringement, the Court noted that "THE WHISTLER" and "WHISTLER" are nearly identical for identical goods (whiskey); thus, under Section 29(3), confusion is presumed.

The Court rejected the Plaintiff's argument regarding discerning consumers and price differences, noting that the Plaintiff had itself pleaded that confusion was "bound to occur" due to the similarity of marks.

The Court dismissed the Plaintiff’s application for an injunction (I.A. 26995/2025) and allowed the Defendant’s application (I.A. 414/2026). The Plaintiff and its agents are restrained from selling Irish whiskey in India under the marks "THE WHISTLER" or "WHISTLER" during the pendency of the suit.