BLUE JAYS vs BLUE-JAY: Delhi HC on Bad Faith and Trans-Border Goodwill

Summary

In Mr. Sumit Vijay & Anr. v. Major League Baseball Properties Inc. & Anr., the Delhi High Court examined whether the globally recognised BLUE JAYS mark of Major League Baseball qualified as an earlier trade mark in India and whether it enjoyed trans-border goodwill sufficient to sustain a passing off claim. The Court held that, in the absence of a subsisting Indian registration, pending application, or well-known status in India as of 1998, BLUE JAYS could not be treated as an earlier trade mark. Finding no evidence of use or goodwill in India, the Court rejected the passing off claim and ruled that the BLUE-JAY registration was not liable to be cancelled, reaffirming the territorial nature of Indian trademark rights.

Background

Major League Baseball (MLB) is a professional baseball league operating out of USA and Canada. The respondent, Major League Baseball Properties Inc. (MLB Properties) is the intellectual property holding company of MLB, and is responsible for licensing and merchandising rights of MLB clubs and affiliated entities. One such team is the Toronto Blue Jays Club, established in 1976 in Canada, whose identity is built around the BLUE JAYS word and device marks.

In India, the appellants, Mr. Sumit Vijay and another filed a trademark application (No. 815236) for the word mark BLUE-JAY in class 25 for readymade garments on 19 August 1998. MLB Properties filed an opposition in February 2004. However, due to the non-filing of the evidence in support of the opposition within the stipulated time, the Deputy Registrar of Trade Marks dismissed the opposition, allowing the application to proceed to registration.

Although MLB Properties preferred an appeal before the Delhi High Court, considering that the impugned mark, BLUE-JAY proceeded to registration in 2017, MLB Properties was permitted to pursue remedies by way of a cancellation petition. Accordingly, MLB Properties approached the Delhi High under Section 57 of the Trade Marks Act, 1999, alleging that the impugned mark was wrongfully remaining on the Register.

A learned Single Judge accepted MLB Properties’ case vide judgment dated 1 July 2025 in C.O. (COMM.IPD-TM) 279/2023 (Impugned Judgment) and directed removal of the BLUE-JAY mark. Aggrieved by this decision, the appellants preferred an appeal before the Division Bench of the Delhi High Court.

Issues Before the Court

1. 1. Whether BLUE JAYS of MLB Properties qualified as an “earlier trade mark” under Section 11(1) and (2) of the Trade Marks Act as against the appellants’ BLUE-JAY mark.
   2. Whether MLB Properties had established goodwill, reputation, or trans-border reputation in India, sufficient to sustain a claim of passing off.
   3. Whether the appellants’ adoption of BLUE-JAY was vitiated by bad faith under Section 11(10)(ii).
   4. Whether the registration of BLUE-JAY could be cancelled under Section 57(2) as a mark “wrongly remaining on the Register”.

Arguments by MLB Properties

MLB Properties contended that:

• • The BLUE JAYS mark had been adopted in 1976 and had acquired worldwide fame, including spillover reputation in India through television broadcasts, online content, merchandise sales, and media coverage.
  • The Toronto Blue Jays being the only MLB team based outside the United States enhanced its recognition, particularly among the Indian diaspora.
  • The appellants’ mark BLUE-JAY was nearly identical, used for identical goods (Class 25), and was adopted with knowledge of the respondent’s mark.
  • The appellants gave inconsistent explanations for adopting the mark BLUE-JAY, indicating mala fides. Before the Trade Marks Registry, they stated that the mark was adopted from the name of a common North American bird. However, in their reply to the cancellation petition, they claimed that the name was suggested by their father, who frequently visited the Blue Jay Tourist Resort in Panipat and was inspired by its name, which also happened to refer to a well-known bird of North America.
  • The appellants’ registration was therefore hit by bad faith, attracting Section 11(10)(ii), and was liable to be removed under Section 57.

Arguments by the Appellants

The appellants argued that:

• • MLB Properties had no subsisting registration for BLUE JAYS in Class 25 in India when the appellants applied in 1998; as earlier Indian applications had been abandoned.
  • There was no evidence of use, goodwill or reputation in India, especially in relation to readymade garments, prior to 1998.
  • Baseball is not a mainstream sport in India, and mere online presence or foreign broadcasts could not establish actionable reputation.
  • Their mark proceeded to registration only after MLB Properties failed to pursue its opposition.
  • In the absence of Indian goodwill, no claim of passing off could be sustained, and consequently, there was no basis to allege bad faith.

Findings of the Court

The Division Bench undertook a detailed examination of Sections 11 and 57 of the Trade Marks Act and made the following findings:

Whether BLUE JAYS was an “Earlier Trade Mark”

Section 11(4) of the Trade Marks Act, sets out the conditions for a mark to qualify as an “earlier trade mark”, namely if:

1. 1. it was a prior registered trade mark, or
   2. an application for registration of the trade mark was pending before the Registrar, or
   3. it was a well-known trade mark on the date of application for registration of the latter mark.

The Court held that BLUE JAYS did not qualify as an “earlier trade mark” under Sections 11(1) or 11(2) because:

• • There was no subsisting Indian registration or pending application in 1998, and
  • The mark could not be treated as a well-known trade mark in India at the relevant time.

Passing Off and Trans-Border Reputation

Since goodwill in India is the sine qua non of a passing off claim, the Court examined the concepts of use of a mark and trans-border goodwill and reputation.

Use of the BLUE JAYS mark:

• • Under Section 2(2)(b) and (c) of the Trade Marks Act, “use” of a mark includes its visual representation, use on or in relation to goods, or use in connection with the offering or performance of services.
  • MLB Properties failed to place convincing evidence on record to demonstrate such use of the BLUE JAYS mark in India.

Trans-border goodwill and reputation:

Relying on N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc. and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd, the Court considered the following principles:

1. 1. There is no automatic presumption that a globally well-known mark enjoys trans-border reputation in India; such reputation must be specifically proved.
   2. Mere presence of a mark on websites does not establish trans-border goodwill unless access and viewership from India are specifically shown.
   3. Mere availability of goods on e-commerce platforms or brand websites is insufficient unless substantial purchases from India are demonstrated.
   4. Appearance in magazines or periodicals does not establish trans-border reputation unless significant readership or circulation in India is shown.

Applying these principles, the Court held that there was no convincing evidence of use, goodwill or reputation of the BLUE JAYS mark in India prior to the appellants’ adoption. Consequently, passing off could not be invoked.

Bad Faith Adoption

On the issue of bad faith, the Court disagreed with the Single Judge and held that:

• • In the absence of Indian goodwill or reputation, there was no plausible reason for the appellants to ride on the respondent’s mark.
  • The abandonment of Indian trademark applications by MLB Properties prior to 1998 weakened any allegation of dishonest adoption. Moreover, while the BLUE JAYS mark had been used in Canada since 1976, no use in India prior to 1998 was established.
  • Inconsistent explanations for adoption, by themselves, were insufficient to establish bad faith under Section 11(10)(ii).

Decision

The Division Bench set aside the Impugned Judgment and held that the registration of BLUE-JAY in favour of the appellants could not be cancelled under Section 57 of the Trade Marks Act. Accordingly, the BLUE-JAY mark was directed to remain on the Register. This decision in the BLUE JAYS vs BLUE-JAY dispute reaffirms that Indian trademark rights remain territorially grounded, notwithstanding the global reach of brands and digital access.

Relevant Paragraphs:

12.7.2 “Use” of a trademark has a definite connotation in the Trade Marks Act. Section 2(2)(b) and (c) of the Trade Marks Act cover, within the meaning of the expression “use” of a mark, (i) use of printed or other visual representations of the mark, (ii) use of the mark upon, or in any physical or in any other relation whatsoever, to goods, or (iii) use of the mark as part of any statement about the availability, provision or performance or services.

12.7.3 There is no evidence of the respondent’s having used the BLUE JAYS mark, in India, in any of the modes envisaged in the Trade Marks Act. The mere fact that the BLUE JAYS mark figured on websites which are accessible in India, or figured on merchandise which could be purchased in India, cannot amount to use of the mark, by the respondent, within India. At least, prior to 1998, there is little or no evidence of such use.

12.8.2 Acquisition of global goodwill and reputation is entirely irrelevant, while examining an allegation of passing off. It is goodwill and reputation in India that matters. The Court has to assess whether the “global” goodwill, assuming it exists, has percolated into India. Before arriving at any finding that the BLUE-JAY mark could be cancelled under Section 11(3)(a), therefore, the Court would have to satisfy itself that respondent’s BLUE JAYS mark enjoyed goodwill, not merely globally, but also within India, before August 1998 when the appellants adopted the BLUE-JAY mark.

12.8.11 Before adverting, now, to the individual elements cited by the respondent, to support its stand that the BLUE JAYS mark enjoyed trans border reputation and goodwill in India, we have to bear certain basic principles in mind.

12.8.12 Firstly, there is no presumption that a mark, howsoever wide or global its reputation might otherwise be, has trans border reputation in India. Trans border reputation in India has to be positively proved. This is especially shown in the case of marks which may be associated with activities which are not popular or well known in India. Invoking this principle, the appellants have sought to contend that baseball, as a sport, is not followed in India by any substantial part of the populace. The respondent’s BLUE JAYS mark is exclusively associated with the TBJ Club, which is a baseball Club located in Canada. Mr. Lall submits that the mark might, therefore, have considerable goodwill and reputation in Canada, perhaps in the US and, perhaps, also in other countries which play baseball or where baseball is a popular sport. In a country like India, where baseball is not played and is hardly followed, it is contended by the appellants that the mark of the TBJ Club cannot be said to have any goodwill or reputation. Baseball, in India, is not cricket.

12.9 Secondly, the availability of a mark on websites can again be no indicator of trans-border goodwill or reputation percolating into a particular country such as India. Websites are globally accessible. If the principle that accessibility of a mark on a website is to be treated as an indicator of trans-border reputation, every mark of every entity would have trans border reputation in every country in the world. It is not enough, therefore, to aver that a particular mark is available on a website which is accessible within India, to substantiate a contention that the mark enjoys trans-border reputation in India. Positive assertions regarding the number of times the websites has been accessed in India would have also to be pleaded.

12.10 Similarly, the availability of goods bearing a particular mark, for sale on websites, whether they belong to the owner of the mark or are e-commerce websites, can also be no evidence of percolation of the reputation of the mark into India. As in the case of websites in general, e-commerce websites may be accessible within India, even if they are not hosted from within the country. Similarly, there is no necessity that every product which is available on an e-commerce website commands reputation or goodwill within India. Mere availability of products bearing a mark for sale on an e-commerce website, or on the website of the owner of the mark, would not, however, suffice as proof of trans-border goodwill or reputation. It would further have to be shown that orders were actually placed or purchases effected, to a considerable existent, of the goods bearing the mark, from within India.

12.11 The same principle applies to publication of marks in periodicals, magazines, etc. With the proliferation of the internet, most magazines, periodicals and the like are now available globally. Every mark which figures in such magazines or periodicals cannot, therefore, be said to have trans-border reputation within India. There would have to be positive assertions regarding the readership or subscription of such magazines among Indians. Besides, such assertions cannot be merely in the nature of bald statements, but would also have to be supported by disclosure of the material on which the assertion is made, even if positive evidence in that regard may be deferred to the stage of trial. In the case of newspapers orperiodicals, empirical material should also be forthcoming that the newspapers or periodicals are widely circulated in the country. Offices of professionals often stock magazines, to occupy the time of that those who are awaiting an appointment. The mere fact that some of them may be sports magazines does not ipso facto indicate that every sport, with reference to which an article may be contained in the magazines, has goodwill or reputation.

12.12 Goodwill and reputation, it has to be remembered, is a two-way street. One cannot claim to have goodwill and reputation, unless others feel the same. Thumping one’s own chest, and claiming to be famous, is mere false hope, and nothing more. Goodwill and reputation are positive attributes, relative to others. The purpose of requiring establishment of goodwill and reputation, in passing off actions, has to be remembered. They are not empty incantations. Passing off, in its very essence, involves misleading the consumer public into believing one’s goods or services, to be those of another. If the other has no goodwill or reputation, the very raison d’ etre of alleging passing off fails. Why would one pass off one’s goods as those of another, if the other has no goodwill or reputation? Ergo, questions Mr. Lall, “Why on earth would my client adopt a mark which belongs to a baseball club based out of Canada?”

13.6 It has to be remembered that bad faith, in order to constitute a basis to remove of mark from the register of Trade Marks has to be found to exist at the time when the applicant applied for registration of the mark. This is because bad faith must reside in the applicant who applies for registration of the mark and not in any other person. Section 11(10)(ii) envisages the taking into consideration, by the Registrar, of bad faith involved “either of the applicant or the opponent” affecting the rights relating to the trade mark.

13.7 The applicant must, therefore, be shown to have acted with bad faith. Either, therefore, the application made by the applicant must be tainted with bad faith or, after the application has been submitted, but before it is registered, the applicant must have acted with bad faith. No allegation of bad faith, howsoever serious, subsequent to the registration of the mark, can be relevant for the purposes of Section 11(10)(ii) of the Trade Marks Act.

Citation: Mr. Sumit Vijay & Anr. v. Major League Baseball Properties Inc. & Anr. Delhi High Court, LPA 475/2025, Decision dated 5 January 2026. Available at: https://indiankanoon.org/doc/50656483/.

Authored by Ms. Benita Alphonsa Basil.