Reputation Without Borders, Rights Within Limits: India's Territoriality Principle Revisited

Introduction

A foreign proprietor who files an infringement or opposition action in India is likely to start with a number, ninety countries, decades of uninterrupted use, a mark known by hundreds of millions of consumers across the globe. The underlying principle of a number is that reputation is portable meaning that a brand's goodwill which is acquired in one country is carried over to another when the brand next comes into contact with a new country. Indian trademark law has never subscribed to that notion, and two decisions in quick succession, issued within a span of a week of each other, in early 2026, reaffirm the limits of this proposition under Indian law .

In both the “Big Bite” case of 7-Eleven and Indian food manufacturer and the “BLUE-JAY” case, where Major League Baseball challenged the restoration of the mark by the Delhi High Court, the same principle applied: passing-off protection depends on the establishment of legally relevant goodwill and reputation, rather than international recognition alone , and the global fame is the key to the knowledge of the mark. This article examines these decisions and compares the territoriality principle with the statutory framework governing well-known marks, which, much like a blanket, is supposed to alleviate some of the scourges of the doctrine. What a foreign brand has to do before it can feel the sting of the Indian doctrine of territoriality is the question that this article asks.

Background and Legal Framework

In India, passing off is guided by the classical triad of Reckitt & Colman i.e., goodwill, misrepresentation and harm. Of the three, it is the goodwill area where the territoriality principle plays its role, and Indian courts have historically differentiated between awareness of reputation and goodwill (that is, a customer base, or trading connection, in the territory for which relief is sought). There cannot be one without the other, a mark cannot be reputed without gaining goodwill.

This may not have always been the case with the doctrine itself. In N.R. Dongre v. Whirlpool Corporation, the Supreme Court held that Whirlpool's previous worldwide use and advertising, including printing magazines which were distributed in India prior to their registration with the Indian registrar, was sufficient to create a trans-border reputation to deny the domain to a local registrant.^[1]

Milmet Oftho Industries v. Allergan Inc. took it a step further, the Supreme Court recognised the significance of international prior adoption in the pharmaceutical sector, notwithstanding the absence of established Indian commercial use by the foreign proprietor.^[2] Both judgments gave an opportunity for a foreign brand to do well in terms of awareness and honesty of adoption without real proof of their Indian market. This loose framework is what the statutory definition of a well-known mark is based on: Section 2(1)(zg) of the Trade Marks Act, 1999 defines the well-known mark by considering whether the relevant Indian public recognises it and Section 11(6)-11(9) lays out the conditions for extent of knowledge, duration, and geographical area of use, all of which do not require actual commercial presence in India before the mark is deemed to be well-known.

Furthermore, Section 11(9) makes it clear that a mark does not need to be registered in India or used in India nor need to be well-known to the general public, but only to the relevant section. The well-known marks regime is on paper good for just the sorts of claims territoriality is supposed to kill.

Analysis

The difference between that statutory largesse and what claimants actually end up getting in litigation that is fought is the story of 2026. However, in 7-Eleven International LLC v. Deputy Registrar of Trademarks, 7-Eleven had already registered “Big Bite” as a trademark internationally in 1988 and applied for Indian registration in 1994, more than a decade before the Indian respondent Ravi Foods registered its trademark “Big Bite” for its own snacks products in 2004. In terms of adoption and filing dates, 7-Eleven's case would have seemed better than Dongre's. That was the view expressed by the Madras High Court:

An applicant that has registered a mark for 30 years without making even a single Indian sale cannot claim to rely on the doctrine of Section 11(3) or passing off as the mere fact that its website is accessible from India or the mark is well-known elsewhere.^[3] The Court did not find anything relevant in evidence before it that the business was ever carried on in India and the long time lapse between the application and the use was itself probative under Section 18, and decided that Ravi Foods' business was better evidenced with local goodwill since 2004 as compared to 7-Eleven's global goodwill. Reputation is fact about the world, goodwill is fact about India and only the latter counts, the Court said.

Sumit Vijay v. Major League Baseball Properties Inc., MLB wanted cancellation of the “BLUE-JAY” apparel mark as it had claimed to have a “BLUE JAYS” mark for the Toronto franchise since 1976 that had established its own trans-border reputation, thereby making the Indian registrant's adoption of the mark “BLUE-JAY” in 1998 an act of bad faith. A Single Judge agreed and cancelled and the Division Bench reversed.^[4] It did not identify consumer evidence in India as of 1998, did not accept Internet or foreign magazine circulation as evidence, and made the pointed, almost anthropological finding that baseball has little following in a country where cricket is king and therefore won't likely elicit any consumer association with the mark. 

The Supreme Court had already limited Dongre's reasoning in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., which had held that the concept of "spillover reputation" could not be presumed on the basis of a party's reputation in the rest of the world, but must be proved cogently in India, as of the date concerned.  Combined, BLUE-JAY and Big Bite prove that Toyota's curbing was not limited to cars, but was equally to be found in snack foods and sportswear, whether the foreign proprietor was on the front or back foot.^[5]

Both decisions reveal the same kind of evidence in the Indian context, contemporaneous evidence, not global evidence translated into Indian terms of whether the statutory well-known marks regime or the passing-off doctrine of trans-border reputation is the more appropriate test to apply. The promise of Section 11(9) (that Indian use is not required for a well-known finding), is theoretically alive, but it was not the benefit of 7-Eleven nor of MLB; in practice, courts continue to require proof of Indian consumers' knowledge of the mark, not only by search engines or international press, but also by Indians. Now a foreign brand can invoke two live doctrines to obtain Indian protection without having to clear the same one hurdle under either doctrine.

The lesson for the foreign owners is that the Indian courts are not against global brands but they have come to the position that they don't accept “fame” as proof. A brand that wishes to enter or monitor its presence in India should compile an inventory of consumer exposure including import records, licensed distribution, and domestic advertising spend before controversy arises, rather than attempting to construct that evidentiary database a decade after a local competitor has established goodwill.. The evidence of Big Bite and BLUE-JAY is that the waiting period for infringement to accumulate the case is too long.

Conclusion

Territoriality in Indian trademark law has become firmer, not weaker, in 2026, and it has become firm on both sides, with the foreign trademark owner claiming rights on the Indian territory where they do not have an interest, and the foreign company who filed the petition to cancel the foreign trademark on the basis of mere foreign fame. Dongre's assumption of goodwill in India from the world has not been overturned; rather, it's been curtailed  and now applied with some force by two High Courts in the same season.

In theory the statutory well-known marks regime still exists, but Big Bite and BLUE-JAY make it clear that the broad interpretation won't replace the evidentiary record that territoriality always called for. The road to global fame may lead to an Indian courtroom, but it will not be enough to get a claimant past this threshold on its own.

Medhavi Capoor

Associate

medhavi.capoor@iprattorneys.com

^[1] N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 (SC).

^[2] Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624.

^[3] 7-Eleven International LLC v. Deputy Registrar of Trademarks, (T) CMA (TM) Nos. 110 & 157 of 2023, Madras High Court, judgment dated 11 February 2026 (Anand Venkatesh, J.).

^[4] Sumit Vijay & Anr. v. Major League Baseball Properties Inc. & Anr., LPA 475/2025, Delhi High Court, judgment dated 5 January 2026 (Hari Shankar & Om Prakash Shukla, JJ.).

^[5] Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1.