Introduction
For decades, the assumption governing international intellectual property was implicitly imperialistic, if you were big in London, New York or Tokyo, you were automatically big in Mumbai. This Universality Doctrine suggested that reputation travelled faster than goods, riding the waves of international magazines and later, the early internet, effectively creating a global common law right that transcended sovereign borders. It was a comfortable era for multinational conglomerates, who could essentially warehouse their trademarks in India without actually doing business there, shielding themselves against local competitors by waving the flag of their international prestige.
However, the Indian judiciary is currently in the midst of a jurisprudential counter-revolution, one that has decisively shifted the needle from Universality to Territoriality. This is not merely a procedural tightening of the screws but a fundamental philosophical realignment that prioritizes the domestic consumer’s actual experience over the global brand’s theoretical reach. The message from the Indian courts is that “global fame is vanity, but local goodwill is sanity.” Unless you can prove you have dirt on your boots or at least a genuine digital footprint on Indian soil, your global status might not be worth the paper your foreign registration is printed on.
The Great Divide: Universality vs. Territoriality
To understand the magnitude of this shift, we must look at the trajectory from the mid-90s to the present day. Historically, India flirted heavily with the Universality Doctrine. The high-water mark of this era was undoubtedly the decision in N.R. Dongre v. Whirlpool Corporation (1996). In that case, Whirlpool, the American appliance giant managed to enjoin an Indian company from using the ‘Whirlpool’ mark for washing machines, despite having no physical sales in India at the time. The court was swayed by the argument that the brand’s reputation had spilled over into India through international advertisements in magazines like Time and Fortune, which were circulated among the Indian elite. It was a victory for the idea that reputation is borderless.
But the winds have shifted. The seminal moment came in 2018 with the Supreme Court’s judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. This case essentially dismantled the lazy reliance on global fame. Toyota having launched the Prius hybrid in Japan in 1997, found itself in a battle with an Indian auto-parts manufacturer who had been using the name ‘Prius’ since 2001. Toyota argued that the global launch had created a trans-border reputation that reached India instantly. The Supreme Court disagreed.
In a ruling that prioritised evidentiary rigour over brand mythology, the Court held that trans-border reputation is not a substitute for ‘goodwill’ within the Indian jurisdiction. The Court dissected the evidence and found it wanting. The mere fact that the car was discussed in international automobile magazines or that the internet existed did not mean the relevant Indian consumer in 2001 knew about the brand. The Court rightly noted that internet penetration in India at that time was negligible. This judgment established the dominance of the Territoriality Principle, trademark rights are strictly limited to the geographical boundaries of the sovereign state where protection is sought. You cannot claim a monopoly in India based solely on your success in Japan or the UK. You must show that the reputation has actually spilled over and taken root in the minds of the Indian public.
The “Pitch” Theory: Why Baseball Doesn’t Matter in a Cricket Nation
The most recent and perhaps intellectually stimulating evolution of this doctrine arrived in early 2026 with the Delhi High Court’s judgment in Sumit Vijay v. Major League Baseball Properties Inc. This case is a fascinating study in cultural specificity and highlights why a one-size-fits-all approach to international IP fails.
The dispute involved the ‘BLUE JAYS’ mark, owned by the Major League Baseball (MLB) franchise based in Toronto. They sought to stop an Indian apparel manufacturer from using ‘BLUE-JAY,’ a mark the Indian entity had used since 1998. The MLB argued that their team was world-famous, their games were broadcast globally, and therefore, the Indian use was dishonest. Under the old Whirlpool standard, they might have won. But the Delhi High Court applied a lens of cultural realism that is becoming increasingly common in Indian IP jurisprudence.
The Court essentially asked, “Does baseball matter in India?” The answer, brutally, was no. The judgment noted that India is a cricket-centric country. While the Toronto Blue Jays might be household names in North America, to the average Indian consumer in 1998, or even today, the term ‘Blue Jay’ likely evokes a bird, not a baseball team. The Court rejected the MLB’s reliance on global broadcasts and website accessibility. It famously quipped that a team celebrated in international baseball leagues cannot automatically claim a win on an Indian cricket ground unless it has actually played and built a following within the country.
This Pitch Theory of trademark law is a critical strategic lesson. It implies that the relevant public is not a monolith. Just because a brand is iconic in a specific cultural sphere (like American sports), it does not automatically enjoy protection in a jurisdiction where that culture has no foothold. The Court refused to cancel the Indian registration, noting that the MLB failed to provide strict, contemporaneous evidence of reputation in India prior to the Indian entity’s adoption of the mark in 1998. The judgment explicitly rejected the notion that passive digital presence, merely having a website accessible in India, constitutes use of a trademark.
The Digital Delusion and the “Passive Web”
This brings us to a critical point of contention in modern trademark strategy i.e., the internet. Many foreign entities operate under the delusion that because their website is accessible globally, their trademark is used globally. The Indian courts are systematically dismantling this fallacy.
In Sumit Vijay, the Court clarified that the mere accessibility of a foreign website does not constitute use in the Indian jurisdiction. Unless the website specifically targets Indian consumers, perhaps by showing prices in INR, offering shipping to Indian addresses, or having specific India-facing content, it remains a passive digital entity. This distinction is vital in a digital economy, use requires active engagement. The availability of merchandise on a global third-party site like Amazon.com (US) does not prove that Indian consumers are buying it.
This connects back to the Toyota ruling, where the Supreme Court emphasized that the claimant must show that there are customers within the jurisdiction who are purchasing the goods or services. It is a transition from a regime of reputation by osmosis (where fame just seeps across borders) to reputation by transaction (where you must prove commercial engagement).
The Sectoral Divide: When Reputation is Enough
However, one must be careful not to oversimplify. While the Territoriality Principle is the general rule, the Indian courts have carved out specific exceptions based on the nature of the industry. The judiciary applies a sliding scale of scrutiny depending on who the consumer is and what is at stake.
For instance, take the pharmaceutical sector where in Milmet Oftho Industries v. Allergan Inc. (2004), the Supreme Court held that in the field of medicine, the first in the world test is still relevant. The logic here is grounded in public safety. Medicine is an international industry where doctors and medical professionals keep abreast of global developments. If a local manufacturer were allowed to use the name of a global drug, it could lead to disastrous confusion. Here, the court is willing to bypass the strict requirements of commercial use in India because the relevant public (doctors) are globally connected and the risks of confusion are life-threatening.
Similarly, the education sector has seen a nuanced interpretation of use. In The Trustees of Princeton University v. The Vagdevi Educational Society (2025), the Delhi High Court had to decide whether Princeton University could stop a Hyderabad-based society from using the ‘Princeton’ name. The local college argued that Princeton had no physical campus in India and therefore no use. The Court rejected this narrow view.
It held that for educational institutions, physical infrastructure is not the only metric of presence. The use of the mark occurred through the recruitment of students. The fact that over 160 Indian students were enrolled at Princeton in the US constituted actual performance of services in India. The reputation of an Ivy League university travels through its alumni and academic citations, not just through brick-and-mortar branches. This allowed the Court to grant an injunction preventing new institutions from using the name, although it allowed the existing ones to continue due to long-standing concurrent use (since 1991). This case illustrates that ‘service marks’ can have a more intangible footprint than ‘goods marks,’ but that footprint must still be proven with concrete data (student enrolment), not just vague claims of fame.
The Prior User Shield: The Burger King Saga
Perhaps the most dramatic illustration of the tension between global giants and local players is the ongoing saga of Burger King Corporation v. Anahita Irani & Anr.. This case is an excellent illustration on Section 34 of the Trade Marks Act, 1999, which protects the rights of a prior user.
A local family in Pune started a restaurant called ‘Burger King’ in 1992. The American giant, despite having registrations in India dating back to 1979, did not actually open a restaurant in India until 2014. When the corporation finally sued the Pune eatery, the local owners stood their ground. They argued that under Section 34, a registered proprietor cannot interfere with a person who has been using the mark continuously from a date prior to the proprietor’s use or registration. Since the corporation hadn’t used the mark in India until 2014, and the locals started in 1992, the locals claimed priority.
The Trial Court in Pune agreed, dismissing the corporation’s suit in July 2024. However, the Bombay High Court later issued an interim injunction restraining the local eatery. The matter reached the Supreme Court in March 2025, which stayed the High Court’s injunction, allowing the Pune eatery to keep flipping burgers under the name while the appeal is heard.
This case sends a signal to multinational corporations i.e., Registration without use is a paper tiger. You cannot squat on a trademark for decades, allowing local businesses to build goodwill under that name, and then expect the courts to sweep them away the moment you decide to enter the market. It reinforces the ‘Use it or Lose it’ philosophy that underpins modern Indian trademark law.
The Trap of Bad Faith: When Territoriality Won’t Save You
However, it is crucial not to interpret these rulings as a free pass for Indian businesses to steal foreign intellectual property. The courts have retained a powerful weapon to strike down dishonest adoption which is the concept of bad faith. Even if a foreign mark hasn’t fully established a commercial market in India, if the local adoption is a blatant, dishonest copy, the courts will intervene.
We saw this in BPI Sports LLC v. Saurabh Gulati, where the court removed a registration because the respondent was a former importer of the petitioner’s goods and had registered the mark behind their back. The relationship between the parties proved that the adoption was dishonest and was an attempt to hijack the brand.
Similarly, in Goodai Global Inc. v. Shahnawaz Siddiqu (2025), the Delhi High Court dealt with a squatter who had registered the ‘Beauty of Joseon’ mark, a famous Korean skincare brand. The respondent had copied the mark identically, including the Hangeul (Korean) script. The Court found this to be a clear case of bad faith. The term ‘Joseon’ refers to a Korean dynasty and had no linguistic connection to the Indian respondent. The exact visual replication of a foreign script screams dishonesty. In such cases, the court does not need to see massive sales figures from the foreign entity to see the dishonesty of the defendant which effectively lowers the evidentiary bar for the plaintiff.
The same principle was applied in Le Shark Apparel Limited v. Anil Shah (2025), where the Bombay High Court expunged a mark after discovering that the respondent had relied on fabricated invoices to claim prior use. Fraud vitiates everything. If you lie to the Registrar or the Court about your user date, no amount of territoriality arguments will save you.
Conclusion
So, where does this leave us? The Indian IP landscape has matured. It has moved away from a colonial-era deference to Western brands and towards a hard-nosed, evidence-based assessment of market reality.
For international brand owners, the strategy must shift from global fame to local footprint. You cannot rely on your reputation in New York or London to do the heavy lifting in New Delhi. You must document specific Indian engagement via sales invoices, Indian-specific marketing, verified website traffic from Indian IP addresses, and participation in Indian trade fairs. If you are in a niche sector like sports or specialized tech, you must prove that the specific Indian demographic you are targeting is aware of you.
For domestic businesses, the lesson is one of cautious confidence. You have a right to your own market, and the courts will protect your honest concurrent use against late-coming giants. However, this protection evaporates the moment your adoption looks suspicious. If you copy a logo, a font, or a foreign script, you are handing the foreign entity a loaded gun to shoot down your registration on the grounds of bad faith.
Ultimately, the law is trying to mirror the commercial reality of a digital yet culturally distinct India. We are a part of the global village, but we also have our own distinct neighbourhood. And in this neighbourhood, you can’t just claim to be the King but you have to earn the crown.
