Sporadic Use Of Trademark In India No Ground To Assume Goodwill Or Reputation: Delhi High Court

Justice Amit Bansal also noted that an internationally well-known mark itself is not a ground to assume that there has been a spillover of its reputation and goodwill in India.

The Court was considering a trademark infringement suit filed by two companies incorporated in Cayman Islands and Singapore respectively. The plaintiff-companies are investment advisers/managers for investment funds, which invest in equities and credit.

The plaintiffs submitted that they secured various registrations in respect of 'BROAD PEAK' trademark in various jurisdictions across the world. They submitted that they have been providing investment advisory services with respect to their investment holdings and funds in India since 2008 under the name 'BROAD PEAK'.

It is stated that the plaintiffs applied for registration of their trademark 'BROAD PEAK' in India on a 'proposed to be used' basis since the actual use documents of the plaintiffs dating back to 2008 were not traceable.

It is the plaintiffs' case that the name of the defendant-company 'Broad Peak Capital Advisors LLP' infringes upon their trademark. The defendant-company is an asset management company which has been carrying its business under the impugned mark since 2016.

When the plaintiffs came to know that the defendants filed applications for registration of the 'BROAD PEAK' mark before the Trade Marks Registry, they raised an objection. However, the defendant was granted registration of the mark as the plaintiffs' application was filed on a 'proposed to be used' basis whereas the defendants have been using the impugned mark since August 2016.

The plaintiffs thus filed the present suit seeking a permanent injunction restraining the defendants from using the trademark.

Pursuing the plaintiffs' records, the Court noted that sporadic use of mark in India cannot mean that it has acquired reputation and goodwill of the mark in India.

It referred to Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries (2018), where the Supreme Court applied the territoriality principle and observed that there must be adequate evidence to show that the plaintiff has acquired substantial goodwill and reputation for its mark in India.

The Court noted that while a well-known reputation of the plaintiff internationally itself would not be a ground to assume that it has reputation and goodwill in India. It said, “Applying the aforesaid territoriality principle to the facts of the present case, while it can be said that the plaintiffs may be a well-known name internationally, but that by itself cannot be a ground to assume that there has been a spillover of the reputation and goodwill of the plaintiffs' mark in India.”

The Court observed that the plaintiffs did not place anything on record to show that the defendants were aware that they were operating under the same name as the plaintiffs when adopting the impugned mark.

It was of the view that prima facie the adoption of the impugned mark by the defendants was bona fide. It stated that use of the mark constituted honest and concurrent use in terms of Section 12 of the Trade Marks Act.

The Court also observed that the plaintiff and defendant are engaged in different businesses. It noted that while the defendant is a private equity professional and its clients are either private equity investors investing in unlisted companies, the plaintiffs are involved in the business of investment management and buying and selling equities of various Indian listed companies.

It remarked, “Significantly, both the plaintiffs and the defendants are providing their services to sophisticated corporate entities, whose officials would be well-qualified in the field of business and finance. Therefore, it is highly unlikely that clients of such sophistication would get confused between the services offered by the plaintiffs and defendants.”

The Court thus held that the plaintiffs failed to make out a prima facie case for grant of interim injunction and dismissed the application.

Case title: Broad Peak Investment Holdings Ltd. And Anr vs. Broad Peak Capital Advisors LLP And Anr.

Citation: 2025 LiveLaw (Del) 78