Transborder Reputation in Trademark Law: A Reassessment of Territoriality

Introduction

Borders are drawn on maps, never in the minds of consumers. A brand trending on social  media, carried home in tourist shopping bags and advertised across international platforms  does not cease to exist simply because it lacks a trademark registration in a particular country. Reputation travels and often arrives long before a business does. It is increasingly shaped by  the internet and cross-border visibility and is no longer confined to physical markets, it travels  ahead of and sometimes even substitutes for, commercial presence.

This reflects the present reality of trademark law, where brand identity and consumer  recognition transcend national borders. The principle of transborder reputation captures this  particular shift, acknowledging that a trademark may warrant protection even in jurisdictions  where it is neither registered nor used, provided it has acquired sufficient goodwill among the  relevant public. Through digital platforms, advertising, etc, reputation can “spill over” into markets without formal entry, influencing consumer perception in a manner that traditional  legal frameworks did not anticipate.

Historically, however, Indian trademark law was firmly anchored in the principle of  territoriality, due to which foreign proprietors without a commercial presence in India faced significant limitations in enforcing their rights. The only remedy available in such  circumstances was an action for passing off. Unlike infringement, which is a statutory remedy available to registered proprietors, passing off is grounded in common law and protects the goodwill of a business against misrepresentation. Yet, passing off imposed a considerable  evidentiary burden.¹ This limitation highlighted the inadequacy of strict territoriality in an  increasingly digital and borderless commercial world.

International Recognition of Transborder Reputation

The limitations of territoriality further led to the gradual development of international norms  recognizing the cross-border nature of trademark reputation. Central to this evolution is the concept of well-known marks, which serves as a legal vehicle through which transborder  reputation is recognized and protected. By according protection to marks based on their  reputation rather than their territorial use or registration, international law implicitly acknowledges that goodwill can transcend national boundaries.

A significant step in this regard was the Paris Convention for the Protection of Industrial  Property ². Article 6bis of the said convention acknowledges that reputation can transcend  jurisdictional limits of usage by requiring member states to refuse or revoke the registration of  marks that are identical to or similar to well-known marks, even if such marks are not registered  within the jurisdiction.

This protection was expanded under the Agreement on Trade-Related Aspects of Intellectual  Property Rights (TRIPS)³, which mandates protection of well-known marks even for  dissimilar goods and services, provided there is a likelihood of confusion or an indication of  connection with the proprietor, emphasizing recognition among the relevant public rather than  mere presence.

Further guidance is provided by the WIPO Joint Recommendation Concerning Provisions on  the Protection of Well-Known Marks⁴, which gives factors for determining well-known mark  status, including the extent and reach of recognition. Though non-binding, it has significantly  influenced legislative and judicial approaches to transborder reputation.

Statutory Framework in India

India has incorporated these evolving international principles into its domestic law through the  Trade Marks Act, 1999⁵ which expressly recognizes “well-known trademarks” under Section  2(1)(zg) and provides for their protection. According to the said Act, a well-known mark is one  that has become so widely recognized among the relevant public that its use in relation to other  goods or services would likely indicate a connection with its proprietor.

A notable aspect of the statute is that it does not mandate actual use or registration in India for  a mark to qualify as well-known. Instead, it focuses on the extent of recognition of the mark  among the relevant public. This allows courts and authorities to take into account global  reputation, advertising and digital presence in determining whether a mark enjoys protection.

Therefore, the Act gives statutory recognition to transborder reputation, enabling protection of  internationally reputed marks while ensuring that such recognition is based on credible  evidence, hence, maintaining a balance between global brand protection and domestic  commercial interests.

Judicial Evolution in India

Indian courts have played a significant role in developing the doctrine of transborder reputation  through a series of significant judicial pronouncements.

An early articulation of this principle can be seen in Kamal Trading Co. v. Gillette U.K. Ltd.⁶, where the Bombay High Court recognised that goodwill may exist even without an actual  commercial presence in the domestic market. It observed that reputation can be built and  sustained through advertisements and international exposure and that the likelihood of  confusion must be evaluated from the standpoint of an average consumer, notwithstanding  minor distinctions between the goods.

This position was subsequently reinforced by the Supreme Court in N.R. Dongre v. Whirlpool  Corporation⁷, where it was held that the “Whirlpool” mark had acquired substantial reputation  in India owing to extensive advertising and global visibility. The Court clarified that actual use  within India is not an essential condition for protection, thereby underscoring the centrality of  goodwill in trademark jurisprudence.

However, a more restrained and evidence-oriented approach was adopted by the Supreme  Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd ⁸. The Apex Court  ruled that the existence of global goodwill in isolation is inadequate; it must be shown that  such goodwill had permeated the Indian market prior to the defendant’s adoption of the mark.  In the absence of such proof, the claim was denied. This decision highlighted the necessity of  establishing a concrete link between international reputation and recognition within India.

A significant contemporary application of the principle of transborder reputation is reflected  in the case of Trustees of Princeton University v. Vagdevi Educational Society ⁹. The case  involved the alleged unauthorized use of the mark “Princeton” by an Indian educational  institution. The Delhi High Court held that “use” under the Act, especially with regards to services, includes broader indicators such as media publications, academic engagement and  recognition among Indian consumers. The court recognised that trademark reputation and  goodwill can extend across borders and need not depend on a physical commercial presence  in India.

However, in granting interim relief, the Court held that the plaintiff was successful in establishing a prima facie case and adopted a balanced and pragmatic approach. Instead of  ordering an immediate shutdown, it restrained the defendant from any further expansion under  the impugned name and from entering into new affiliations or representations using  “Princeton.”

It is pertinent to note that the matter is presently pending adjudication and the observations  discussed arise from the interim order of the Court, wherein a prima facie case of both  infringement and passing off was made out.

Conclusion

The concept of transborder reputation represents a significant evolution in trademark law,  moving beyond rigid territorial boundaries to accommodate the realities of global commerce  and digital connectivity. From a system that once confined foreign proprietors to the limited  remedy of passing off, the law has progressed to recognize and protect goodwill that transcends  borders. International conventions, statutory recognition under the Trade Marks Act, 1999 and  judicial decisions have together shaped this concept in India. At the same time, courts have  maintained a balanced approach by requiring clear evidence of goodwill within the domestic  market.

As brands continue to build global identities and consumers engage with them across digital  platforms, transborder reputation remains central to trademark jurisprudence. Its continued  development depends on preservation of balance between ensuring robust protection for  legitimate goodwill and safeguarding fair competition within domestic markets.

Author:- Gusimar Kaur, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

Endnotes

1. P.M. Shanmuka Priya, M. Sai Deekshitha & P.M. Arun, Trans-Border Reputation of Trademarks in India, 6 IJLMH 580, 580–88 (2023).
2. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883. 3. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994. 4. World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (1999).
3. Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
4. Kamal Trading Co. v. Gillette U.K. Ltd., 1987 SCC OnLine Bom 754 (India). 7. N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714 (India).
5. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Indus. Ltd., (2018) 2 SCC 1 (India). 9. Trustees of Princeton Univ. v. Vagdevi Educ. Soc’y, 2025 SCC OnLine Del 6296 (India).