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TORONTO BLUE JAYS<\/strong> \u2013 App\/Reg No. 499182, Class 25, Date of Filing: 11.10.1983<\/p>\n<\/li>\n
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TORONTO BLUE JAYS<\/strong> \u2013 App\/Reg No. 499209, Class 16, Date of Filing: 11.10.1988<\/p>\n<\/li>\n
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![\"Logo](\"https:\/\/www.bananaip.com\/intellepedia\/wp-content\/uploads\/2025\/08\/499156.png\")
<\/div>\n\u00a0\u2013 App\/Reg No. 499156, Class 16, Date of Filing: 11.10.1988<\/p>\n<\/li>\n
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![\"Logo](\"https:\/\/www.bananaip.com\/intellepedia\/wp-content\/uploads\/2025\/08\/499259.png\")
<\/div>\n\u00a0\u2013 App\/Reg No. 499259, Class 25, Date of Filing: 11.10.1988<\/p>\n<\/li>\n
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BLUE JAYS<\/strong><\/p>\n
![\"Logo](\"https:\/\/www.bananaip.com\/intellepedia\/wp-content\/uploads\/2025\/08\/5245514.png\")
<\/div>\n\u2013 App\/Reg No. 5245514, Class 41, Date of Filing: 13.12.2021<\/p>\n<\/li>\n
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BLUE JAYS<\/strong><\/p>\n
![\"Logo](\"https:\/\/www.bananaip.com\/intellepedia\/wp-content\/uploads\/2025\/08\/5245513.png\")
<\/div>\n\u2013 App\/Reg No. 5245513, Class 41, Date of Filing: 13.12.2021<\/p>\n<\/li>\n
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![\"Logo](\"https:\/\/www.bananaip.com\/intellepedia\/wp-content\/uploads\/2025\/08\/5319401.png\")
<\/div>\n\u2013 App\/Reg No. 5319401, Class 25, Date of Filing: 08.02.2022<\/p>\n<\/li>\n<\/ul>\n
Respondents:<\/h6>\n
The respondents in this case, Mr. Ajay Kumar Gupta and Mr. Sumit Vijay, are partners of a partnership firm trading as M\/s PMS Creations, based at New Delhi. Their business involves manufacturing and trading in shirts, blazers, suits, waistcoats, pants, trousers, jeans, jackets, and other readymade garments and allied products under the trademark \u2018BLUE-JAY\u2019.<\/p>\n
The Respondents\u2019 mark \u2018BLUE-JAY\u2019 was applied for in India in 1998 for apparel and was registered in 2017.<\/p>\n
Timeline of Events<\/h6>\n
The chronological sequence of events leading to the present rectification petition is outlined below:<\/p>\n
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- 19th August 1998: The respondents (originally as A.S. Creation) applied for registration of \u2018BLUE-JAY\u2019 on a \u2018proposed to be used\u2019 basis via application no. 815236, Class 25.<\/li>\n
- 25th August 2003: The mark was advertised and published.<\/li>\n
- 03rd February 2004: MLB, on learning of the advertisement, filed a Notice of Opposition.<\/li>\n
- 09th November 2004: The erstwhile applicants (A.S. Creation) filed their Counter Statement.<\/li>\n
- 22nd July 2011: The mark \u2018BLUE-JAY\u2019 was assigned to M\/s PMS Creations, the Respondents\u2019 partnership firm.<\/li>\n
- MLB was unable to file its evidence in support of the Notice of Opposition within the statutory period. MLB then filed an Interlocutory Petition seeking condonation of delay.<\/li>\n
- 08th October 2015: The Deputy Registrar of Trade Marks ordered that the Opposition stood abandoned due to the delay and dismissed the same.<\/li>\n
- MLB appealed this abandonment order (OA\/6\/2016\/TM\/DEL) before the Intellectual Property Appellate Board (\u201cIPAB\u201d). After abolition of the IPAB, the appeal was transferred to the High Court and renumbered as C.A.(COMM.IPD-TM) 152\/2022.<\/li>\n
- 08th June 2017: The the mark \u2018BLUE-JAY\u2019 proceeded to registration, while the appeal before the High Court was pending.<\/li>\n
- 25th September 2023: The High Court passed an order (in C.A.(COMM.IPD-TM) 152\/2022) permitting MLB to pursue remedies by way of a cancellation (rectification) petition.<\/li>\n
- MLB subsequently filed the present rectification petition under Section 57 of the Trade Marks Act. MLB’s claim was based on prior adoption, transborder reputation and goodwill, and allegations of dishonest adoption by the Respondents.<\/li>\n<\/ul>\n
Issues<\/h6>\n
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- Whether MLB\u2019s adoption and use of the mark ‘BLUE JAYS’ grants it superior rights over the Respondents\u2019 registered \u2018BLUE-JAY\u2019 mark.<\/li>\n
- Whether the Respondents adopted \u2018BLUE-JAY\u2019 dishonestly and in bad faith.<\/li>\n
- Whether the registration of \u2018BLUE-JAY\u2019 should be cancelled from the Trade Marks Register.<\/li>\n<\/ol>\n
Analysis<\/h6>\n
The Court analysed submissions against the issues and stated as follows:<\/p>\n
A. On Adoption and Good Faith<\/strong><\/p>\n
The Court found the respondents\u2019 story for adopting the mark \u201cBLUE-JAY\u201d inconsistent and unreliable. It reiterated the principle that dishonest adoption cannot be legitimised by later commercial success or extended use.<\/p>\n
“18. …where the very adoption of the mark is tainted with dishonest intention, no subsequent user or volume of sales can clean the vices of dishonesty…<\/p>\n
19. …the respondent nos.1 and 2 claimed to have adopted the said impugned mark \u2018BLUE-JAY\u2019, drawing inspiration from the North American bird of the same name. However, surprisingly, and to the contrary, in the present cancellation proceeding, the respondent nos.1 and 2 have sprung up with a story that… the impugned mark was inspired from a resort in Panipat, Haryana, which was never their case and is a new introduction for the first time. \u2026This shows that the respondent nos.1 and 2 have now concocted an entirely new explanation\/ story about the reason\/ justification for adoption of the impugned mark \u2018BLUE-JAY\u2019.<\/p>\n
20. \u2026It, prima facie, seems to be an afterthought since the respondent nos.1 and 2 were failing to provide any cogent and convincing reason\/ justification… The same, primarily, reflects the respondent nos.1 and 2\u2019s mala fide and dishonest intentions to appropriate and ride upon the worldwide reputation and goodwill associated with the petitioner.\u201d<\/p>\n
B. On Similarity of Marks<\/strong><\/p>\n
While examining the similarity, the Court observed that the two marks were almost identical, with only minimal typographical differences.<\/p>\n
\u201c21. …the only distinction between the rival marks, \u2018BLUE JAYS\u2019 of the petitioner and \u2018BLUE-JAY\u2019 of the respondent nos.1 and 2, is that the respondent nos.1 and 2 have merely omitted letter \u2018S\u2019 from \u2018JAYS\u2019 and inserted a hyphen \u2018-\u2019 between the words \u2018BLUE\u2019 and \u2018JAY\u2019.\u201d<\/p>\n
C. On Prior User Rights<\/strong><\/p>\n
The Court noted that MLB was the undisputed prior adopter and user of the \u2018BLUE JAYS\u2019 mark, with sufficient evidence of its presence in India well before the respondents\u2019 registration.<\/p>\n
\u201c24. …respondent nos.1 and 2 have nowhere denied nor is it their case, that they were unaware of the petitioner and\/ or its trademark \u2018BLUE JAYS\u2019, or that petitioner is not a prior world-wide user of the trademark \u2018BLUE JAYS\u2019… It is thus highly unlikely that the respondent nos.1 and 2 were unaware of the petitioner\u2019s trademark \u2018BLUE JAYS\u2019 when they were applying for registration of the impugned mark \u2018BLUE-JAY\u2019.\u201d<\/p>\n
\u201c26. \u2026the petitioner has placed sufficient material like the presence of \u2018BLUE JAYS\u2019 marks on its websites, which are accessible in India since the year 1996\u2026 and the broadcasting of the MLB matches in India at least since the year 1997. The same are sufficient\u2026 to have established \u2018use\u2019, which need not be actual\/physical, in India.<\/p>\n
27. Even otherwise, it is well established that the rights of a \u2018prior user\u2019 override the right of a subsequent user, even if it involves a registered trademark. The rule of being a \u2018first user\u2019 is a seminal part of the TM Act and, in fact, has been recognized. So much so, the Hon\u2019ble Supreme Court held in Neon Laboratories Ltd v. Medical Technologies Ltd. & Ors. … that the right of a \u2018prior user\u2019 is superior to a registrant of the trademark…\u201d<\/p>\n
D. On Bad Faith<\/strong><\/p>\n
The Court found that the respondents\u2019 inability to give a credible origin for \u2018BLUE-JAY\u2019, coupled with its close resemblance to MLB\u2019s mark, demonstrated a dishonest intent and adoption in bad faith.<\/p>\n
\u201c23. …the adoption per se of the impugned mark \u2018BLUE-JAY\u2019 by the respondent nos.1 and 2 was\/ being shrouded under a dark cloud of suspicion, the same was\/ is bad and without any cogent\/ plausible reason(s)\/ justification(s).\u201d<\/p>\n
\u201c32. If the \u2018purpose\u2019 of adoption of a trademark is found to be in doubt, it can be inferred that the registration of the trademark is tainted in \u2018bad faith\u2019 and the same may be taken off the Register of Trade Marks.<\/p>\n
33. …there is no shred of doubt that the same was indeed dishonest and in \u2018bad faith\u2019 and is thus liable to cancelled and removed from the Register of Trade Marks.\u201d<\/p>\n
E. On Registrant\u2019s Lack of Supporting Evidence<\/strong><\/p>\n
The Court observed that the respondents had no evidence to justify or support their adoption of the mark, reinforcing MLB\u2019s position as the undisputed prior user:<\/p>\n
\u201c34. …there is\/ are \u2018no document(s)\u2019 in support of the adoption of the impugned mark by the respondent nos.1 and 2, particularly since they themselves have claimed user after 22 years of the petitioner\u2019s trademark. The aforesaid, are thus sufficient for this Court to conclude that the petitioner is the undisputed \u2018prior user\u2019 of the trademark \u2018BLUE JAYS\u2019.\u201d<\/p>\n
F. On Registration in the same Class<\/strong><\/p>\n
The Court clarified that under Section 57 of the Trade Marks Act, a cancellation action is not dependent on the opponent holding a registration in the same class as the impugned mark.<\/p>\n
\u201c36. …it is also not mandatory under Section 57 of the TM Act that an Opponent\/ Person Aggrieved like the petitioner, has to be a Registered Proprietor of a trademark in the same Class as the Registrant like the respondent nos. 1 and 2.\u201d<\/p>\n
Order<\/h6>\n
The High Court passed the order in favour of the petitioner and directed the Registrar of Trade Marks to cancel and remove the registration of the respondent\u2019s mark \u2018BLUE-JAY\u2019 from the Register of Trade Marks. The parties were left to bear their own costs.<\/p>\n
Citation: Major League Baseball Properties Inc. v. Manish Vijay & Ors., C.O. (COMM.IPD-TM) 279\/2023, dated 1st July, 2025 by Justice Saurabh Banerjee, Delhi High Court.<\/em><\/strong><\/p>\n","protected":false},"excerpt":{"rendered":"
The Delhi High Court has struck down the \u2018BLUE-JAY\u2019 trademark, siding with Major League Baseball against PMS Creations. The Court held that MLB\u2019s prior use and transborder reputation trumped the respondents\u2019 registration, which was tainted by dishonesty and bad faith.<\/p>\n","protected":false},"author":2,"featured_media":145319,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":58,"footnotes":""},"categories":[5495,6,11],"tags":[12261,12262,12263,12260,5856,12264,5569],"class_list":["post-145307","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-case-reviews","category-intellectual-property","category-trademarks","tag-blue-jay-trademark","tag-delhi-high-court-ip-cases","tag-dishonest-adoption","tag-mlb-trademarks","tag-prior-user-rights","tag-section-57-tm-act","tag-trademark-rectification"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/145307","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=145307"}],"version-history":[{"count":6,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/145307\/revisions"}],"predecessor-version":[{"id":145320,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/145307\/revisions\/145320"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media\/145319"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=145307"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=145307"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=145307"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}
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