Trademark

Protecting Wal-Mart’s Trademark in India


India’s first Wal-Mart store isn’t slated to open until next August. Yet the battle lines for protecting intellectual capital are already being drawn. The Delhi High court has injuncted a Delhi based Indian firm from using Wal-Mart as either their trademark or trade name on the ground that the same infringes the trademark of Wal-Mart.

The Delhi based Indian firm used Wal-Mart as their trademark in the Indian market. Aggrieved by this, Wal-Mart filed an injunction petition before the Delhi High Court for restraining Indian firm from further using Wal-Mart as their trademark or conducting any business under the corporate name of “Wal-Mart Stores Pvt. Ltd.”. The Delhi High Court bench headed by Justice Vipin Sanghi held that “They (the Indian firm) will not use Wal-Mart either as trademark or tradename. They have applied to Registrar of the Companies for change of the name.”

It is interesting to note that the basis of this injunction is the trans–boundary reputation of Wal-Mart in international market. Wal-Mart is yet to establish its trademark goodwill in Indian retail market. However, it can be considered that the trademark reputation of Wal-Mart was traveling trans-border to India as well through commercial publicity made in magazines which are available in or brought in India. The doctrine of trans-boundary reputation was first recognized by Indian courts in the case of N. R. Dongre and Ors v. Whirlpool Corpn. and Anr., 1996(6) SCALE 276. Since then, Indian Courts have granted injunction for trademark infringement on the basis of trans-boundary reputation. The injunction order can be considered as a significant victory for Wal-Mart in the initial battle of protecting its trademark in India during its ‘gestation period’.

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