Defending the home turf: Madras HC reaffirms local goodwill over global stature

Introduction 

In a globalization-era legal battle, the Hon’ble Madras High Court (‘Court’) recently adjudicated a trademark dispute between the international retail giant 7 Eleven International LLC. and the domestic entity Ravi Foods Pvt. Ltd. The case 7-Eleven International LLC v. The Deputy Registrar of Trade Marks[1] serves as a critical touchstone for the ‘territoriality principle’ in intellectual property law, balancing the rights of global brands against established local businesses. The Court’s decision underscores that mere global presence does not automatically equate to enforceable goodwill within Indian borders.

Factual background

The dispute arose when 7 Eleven Intl. LLC challenged the registration of the trademark ‘Big Bite’ by Ravi Foods, an Indian entity. In 2014, the Deputy Registrar rejected 7 Eleven’s application and upheld the registration in favour of Ravi Foods in an opposition proceeding. Both the parties filed cross‑oppositions, which culminated in the present appeals under Section 91 of the Trade Marks Act, 1999 (‘Act’).

7 Eleven’s (the Appellant’s) position: The multinational corporation claimed prior use of the ‘Big Bite’ mark for its hot dogs and food products, asserting that their brand enjoyed a ‘transborder reputation’ that extended into India, even without a significant physical retail presence at the time of the dispute.

Ravi Foods' (the Respondent’s) position: A prominent Indian snack and biscuit manufacturer, Ravi Foods, had been using the ‘Big Bite’ mark for its products. They sought to protect their registration against the claims of the international giant.

Issues 
 

1. Whether the mark ‘Big Bite’ used by the Appellant had acquired sufficient transborder reputation and goodwill in India to block a domestic registration?
2. Whether there was a likelihood of confusion among the Indian public under Section 11 of the Act?
3. Whether the domestic user (Ravi Foods) acted in bad faith or sought to ride on the coattails of the international brand?
    

Contentions of the parties

The Appellant:

The Appellant asserted its dominance by highlighting its international usage of the mark since 1988 and its prior Indian filing in 1994, which predated the Respondent’s 2004 adoption. Invoking the Doctrine of Universality and the precedent set in N.R. Dongre v. Whirlpool Corporation[2], the retail giant argued that its global reputation, bolstered by internet and media exposure, transcended geographical boundaries to create a ‘transborder reputation’ in India. It was further contended by the Appellant, per S. Syed Mohideen v. P. Sulochana Bai[3] and Milmet Oftho Industries v. Allergan Inc.[4], that it should be protected against mala fide domestic adoptions that seek to exploit global goodwill, regardless of physical retail presence. In summary, the following submissions were made on its behalf: 
 

• The Deputy Registrar, in the opposition proceeding, relied solely on the Supreme Court’s judgment in the Milmet Oftho[5] case, which does not support the reasoning that only prior use in India should determine trademark grant.
• The mark ‘Big Bite’ is integral to the Appellant’s global brand identity, adopted as early as 1988, with prior international use and an earlier Indian application.
• The Respondent adopted an identical mark only in 2004, with mala fide intent to exploit the Appellant’s international reputation and goodwill, leading to unfair association.
• The Respondent sought registration for allied goods in the food industry, overlapping with the Appellant’s domain, thereby creating consumer confusion and likelihood of association.
• Maintained that the reputation of their mark had ‘spilled over’ into India through tourism, media, and the internet, making Indian consumers well‑acquainted with their brand.
   

The Respondent:

In counter to the Appellant’s submissions, the Respondent relied on the Doctrine of Territoriality, arguing that trademark rights are fundamentally confined to the sovereign territory where they are exercised. Relying on the high threshold established in the case of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.[6], they maintained that the Appellant possessed no localized goodwill or ‘customers’ in India at the relevant time. While the Appellant had filed on a ‘proposed to be used’ basis, the Respondent provided extensive evidence to prove their own continuous use, sales, and advertising since 2004. In summary, the following submissions were forwarded: 
 

• The Respondent has continuously, openly, and extensively used the trademark ‘Big Bite’ in India since 05.10.2004.
• The Appellant has never used the disputed mark in India and was only proposing to enter the Indian market.
• Applying the Territoriality Principle, the Deputy Registrar in impugned order rightly recognized the Respondent as the prior user of the mark.
• Mere availability of the mark on the Appellant’s website does not establish actual usage in India or confer goodwill/reputation in the Indian market.
   

Key observation on transborder reputation

The Hon’ble Court ultimately agreed with the Territorial Approach forwarded by the Respondent, affirming that mere website visibility or a ‘problematic intention’ to use a mark, cannot override the established domestic reputation of a local trader who has actually entered and served the Indian market.

The Hon’ble Court observed that the doctrine of transborder reputation is not given just because a company is well-known globally. For a foreign mark to succeed in an opposition or rectification proceeding in India, the reputation must be ‘substantial’.

The Hon’ble Court noted that while the world is more connected, the legal requirement for a ‘reputation coupled with goodwill’ within the Indian territory remains a strict evidentiary hurdle. Knowledge of a brand among a tiny, globe-trotting elite does not necessarily constitute reputation among the general ‘purchasing public’ in India.

Doctrine of Universality vs. Territoriality

The Hon’ble Madras High Court engaged in a profound analysis of the competing doctrines of Universality and Territoriality. The Doctrine of Universality posits that a trademark is a unified entity that carries the same source-identifying meaning globally; once a brand achieves international fame, it should theoretically be protected everywhere. In contrast, the Doctrine of Territoriality maintains that trademark rights are a matter of municipal law, existing only within the specific sovereign boundaries where the mark is registered or has established localized goodwill. With respect to the Appellant’s case, the Court firmly rejected the universality approach, holding that the mere global presence of the ‘Big Bite’ mark did not automatically translate into enforceable rights within India. The Court further emphasized that for an international brand to block a domestic user, it must prove that its reputation has ‘percolated’ into the Indian market to such a degree that a significant section of the local public recognizes it.

This reasoning was heavily anchored in the landmark decision of the Hon’ble Supreme Court in the Toyota Jidosha[7] case, where the Apex Court shifted the focus of the Indian trademark law by ruling that the Territoriality Principle should govern transborder reputation claims. The Hon’ble Court held that even if a mark like ‘Prius’ was world-famous, its owner must provide ‘adequate evidence’ of ‘substantial goodwill’ in India specifically such as actual sales or targeted advertisements before the date of adoption by the domestic party. Considering this, the Hon’ble Court in the present matter observed that the Appellant had failed this evidentiary test; despite filing a ‘proposed to be used’ application in 1994, the company had no actual commercial presence or sales in India for decades. Consequently, the Hon’ble Court found no ‘spillover’ of reputation that could override the rights of the Respondent, which had demonstrated continuous use and market percolation in India since 2004.

Furthermore, the Court drew upon the Division Bench rulings of the Hon’ble Delhi High Court in Trans Tyres India Pvt. Ltd. v. Double Coin Holdings Limited [8]and Sumit Vijay & Anr. v. Major League Baseball Properties Inc. & Anr[9]  to clarify the limits of digital exposure. In Trans Tyres[10], it was established by the Hon’ble Delhi High Court that trademark rights have a ‘separate existence’ in each dominion, and prior use in one country does not ipso facto grant rights in another. The Court noted that the availability of a brand on a website or international magazines does not suffice as proof of reputation among Indian consumers. This was corroborated by the Sumit Vijay[11] ruling, wherein the Hon’ble Delhi High Court held that mere website accessibility is not enough, as otherwise every mark on the internet would claim global protection. By applying these precedents, the Hon’ble Madras High Court in the present matter settled that in a contest between an inactive global giant and an active domestic manufacturer, the law favours the Territorial goodwill built by the local entity through actual trade.

Reasoning and analysis 

The Hon’ble Court’s reasoning was focused broadly on the following aspects:
 

1. Lack of evidence of use in India: The Court found that the Appellant could not produce sufficient material to show the use of their mark in the relevant classes (29&30), or to show any evidence that the consumers in India were confused or deceived in the past two decades.  The Court found that for a foreign mark to succeed, it must prove that its reputation has ‘percolated’ into India to such an extent that the Indian public associates the mark with the foreign entity.
2. The Territoriality vs. Universality Doctrine: In the present matter the Court leaned towards the Territoriality Principle and held that trademark rights are groomed within the borders of the country where the protection is sought. If a brand is not known to the consumers in India, a claim of passing off or infringement based on international fame cannot stand. A foreign claimant must prove substantial goodwill in India at the relevant time; foreign reputation alone is insufficient.
3. Website access is insufficient: Mere global internet presence is not a substitute for local goodwill. Actual sales and/or adequate evidence of Indian consumer awareness is required. To show trans‑border reputation, the claimant must demonstrate concrete percolation of reputation into the Indian relevant public.
    

In view of the above, the judgment reinforces that Section 11(3) of the Act requires a high standard of proof for transborder reputation. A foreign entity cannot stall domestic registrations by merely showing global existence. They must demonstrate that their brand has crossed the border in the minds of the Indian public through significant use, promotion, or accessibility before the domestic entity adopted the mark.

Further, the Hon’ble Court critically examined the statutory provision under Section 18 of the Act, which allows for the registration of a mark on a ‘proposed to be used’ basis. The Hon’ble Court clarified that this phrase does not grant an indefinite reservation of a name; rather, it requires the applicant to possess a definite and present intention to use the mark at the time of application. The Hon’ble Court emphasized that a ‘proposed use’ must reflect a resolve or settled purpose rather than a mere problematic or indeterminate possibility. This was further bolstered by the rationale in Batt’s Trade Mark[12], which warned that allowing entities to register marks for goods they do not genuinely intend to deal in would be mischievous to trade and commerce, effectively preventing the squatting on trademarks without commercial activity.

The Court’s decision

Applying these principles to the facts at hand, the Hon’ble Court noted a glaring gap in the Appellant’s claim. Although the global retail giant had applied for the ‘Big Bite’ registration as early as 1994, it had failed to commence any business or sales in India by the time opposition proceedings began in 2007, a span of 13 (thirteen) years. The Hon’ble Court observed that while the lack of immediate use is not always decisive, such a prolonged period of inactivity strongly suggests the absence of a bona fide intention to use the mark in the Indian dominion. Consequently, the Hon’ble Court held that an applicant cannot rely on a ‘proposed to be used’ status to stall a domestic competitor like the Respondent, who had not only intended to use the mark but had successfully established a decade-long commercial presence in the market. 

Conclusion

The Hon’ble Court's dismissal of 7 Eleven’s claim is a victory for domestic manufacturers who have built localized goodwill. It serves as a message for foreign corporations that to protect their IP in India, they must do more than rely on their global stature; they must actively engage with and establish their presence in the Indian market. The mark ‘Big Bite’ remains with Ravi Foods, affirming that in the eyes of Indian law, local hard-earned goodwill holds significant weight against unsubstantiated global claims.

[The author is an Associate in IPR practice at Lakshmikumaran & Sridharan Attorneys, New Delhi]

[1] 2026 SCC OnLine Mad 1212

[2] (1996) 5 SCC 714

[3] 2015 SCC OnLine SC 1084

[4] (2004) 12 SCC 624

[5] Supra

[6] 2017 SCC OnLine SC 1500

[7] Supra

[8] 2011 SCC OnLine Del 1842

[9] MANU/DE/0021/2026

[10] Supra

[11] Supra

[12] Reported in (1898) 15 RPC 534