In Sumit Vijay v. Major League Baseball Properties, the Delhi High Court recently held that the Toronto Blue Jays did not enjoy a trans-border trademark reputation in India in 1998, noting pointedly that baseball is not a popular sport in a cricket-centric country like India. Aditya Bhargava analyses how the Court uses this context to reinforce territoriality in trademark law, demanding strict, contemporaneous evidence of Indian reputation and rejecting global fame, internet presence, and abandoned registrations as substitutes. Aditya is a fourth-year student at the National Law School of India University, Bangalore.
Striking Out the Giant: Delhi HC Reaffirms Territoriality in MLB Trademark Dispute
By Aditya Bhargava
The Blue Jay (Cyanocitta cristata) is a bird native to Eastern North America. It is loud and aggressive. It belongs to the Corvidae family. It is often confused with the Indian Roller (Coracias benghalensis), which belongs to the Coraciidae family. In a recent judgment, Sumit Vijay & Anr. vs. Major League Baseball Properties Inc. & Anr, the Division Bench (“DB”) of the DHC began with this ornithological distinction before adjudicating a trademark dispute that was equally confusing.
The Court had to decide if the reputation of the Toronto Blue Jays baseball team was loud enough to be heard in India back in 1998. The Court held it was not. In doing so, Justices C. Hari Shankar and Om Prakash Shukla have established the evidentiary burden required to prove trans-border reputation.
In this post, I analyse the judgment. First, I will briefly address the argument regarding the definition of an “earlier trade mark” under Section 11(4). Second, I will dissect the Court’s rigorous application of the Toyota standard and the rejection of “internet presence” as a substitute for reputation. Third, I will analyse the distinction between statutory “use” and “reputation” while distinguishing the Milmet Oftho precedent. Finally, I will critique the “bad faith” findings and the “abandonment paradox.”
The Pitch (Brief Facts)
The dispute centers on the trademark “BLUE JAYS”. Major League Baseball (MLB), the Respondent, owns the “Toronto Blue Jays” club. They have claimed global use since 1976. However, MLB had no trademark registration in India in Class 25 (clothing). They had filed applications in 1983 and 1988 but abandoned them in 1990 and 1995 (Para 11.6).
The Appellants, Sumit Vijay & Anr., applied for the “BLUE-JAY” mark in Class 25 on August 19, 1998. This mark proceeded to registration in 2017 after MLB failed to prosecute its opposition (Para 6.1.1). In 2023, MLB filed a rectification petition under Section 57. The Single Bench (SB) allowed the petition on the grounds of trans-border reputation and bad faith. The DB reversed this decision and restored the Appellants’ mark (Para 17).
The Technical Knockout: What is an “Earlier Trade Mark”?
Before diving into reputation, the Court cleared a significant statutory hurdle. MLB argued that its mark was an “earlier trade mark” under Section 11(1) and 11(2). The DB rejected this at the outset.
Relying on the Explanation to Section 11(4), the Court clarified that an “earlier trade mark” must be a registered trademark or a pending application (Para 11.4). Since MLB had abandoned its applications prior to 1998, it had no standing under these subsections. This is crucial as you cannot invoke the relative grounds for refusal based on “similarity” alone if you have exited the registry. The battle, therefore, shifted entirely to Section 11(3)(a) (passing off) and Section 11(10)(ii) (bad faith).
The Evidentiary Void and the Toyota Wall
The most significant aspect of this judgment is its refusal to accept “global fame” as a proxy for “Indian reputation”. The DB relied heavily on the Supreme Court’s ruling in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd(Prof. Basheer’s Post Hyperlinked). The core requirement is that the reputation must exist in India at the relevant time.
The relevant date was August 19, 1998. The SB had relied on a plethora of documents to find its reputation. The DB systematically dismantled this evidence. They noted that documents from 1999 or 2016 were irrelevant for establishing reputation in 1998 (Para 12.23). For instance, an article from Sports Illustrated dated November 1999 was discarded as it post-dated the adoption (Para 12.23(i)).
The Court also took a hammer to the argument that “internet accessibility” equals reputation. MLB argued that their website was accessible in India since 1996. The Court held that mere accessibility is not enough (Para 12.9). If accessibility equaled reputation, then every mark on the internet would have trans-border reputation in every country. This would obliterate the territoriality principle. The Court demanded “positive assertions” regarding the number of times the website was accessed in India.
The Court also addressed the “Magazine Defense.” The Respondent argued that international magazines featuring the team were available in India. The Court dismissed this, noting that professional offices often stock magazines for waiting clients. The mere presence of a sports magazine in a dentist’s waiting room does not ipso facto indicate that the specific brands inside have acquired goodwill (Para 12.11).
Similarly, the availability of goods on e-commerce sites was insufficient without proof of actual orders from India (Para 12.10). The Court observed that “Goodwill and reputation… is a two-way street” (Para 12.12). One cannot claim it unless the consumer feels it. Thumping one’s own chest is “mere false hope.”
Baseball is Not Cricket: Distinguishing Milmet Oftho
MLB relied on Milmet Oftho Industries v. Allergan Inc to argue that being “first in the world” was enough. Milmet is often the refuge of foreign plaintiffs with no Indian use. In that case, the Supreme Court held that for medicinal products like ‘OCUFLOX’, the ‘first in the world market’ test applied, prioritizing global adoption to prevent confusion in the sensitive medical field.
The DB distinguished Milmet with precision (Para 12.8.8.4). First, Milmet involved pharmaceutical products where the medical community is globally connected. Second, the public interest in medicine is higher. Third, the marks were identical.
Crucially, the Court highlighted the “cautionary caveat” in Milmet itself: Multinational corporations with no intention of coming to India should not be allowed to “throttle” Indian companies (Para 12.8.8.3(ii)). This aligns perfectly with the facts here, where MLB had abandoned its attempts to enter the market.
Here, the product is clothing. The subject matter is baseball. The Court candidly observed that baseball is not a popular sport in India (Para 9.3). In a country where baseball has a negligible following, one cannot presume the reputation of a Canadian baseball team permeates the market.
This distinction limits the Milmet “universality” exception to specific sectors like medicine. For ordinary consumer goods, the strict “territoriality” test of Toyota applies. You must prove spillover reputation with hard evidence.
Bad Faith in the Graveyard of Abandoned Marks
The SB had cancelled the Appellants’ mark primarily on the ground of “bad faith” under Section 11(10)(ii). This was based on a supposed contradiction: the Appellants claimed the mark was named after a bird in one instance, and after a “Blue Jay Tourist Resort” in another.
The DB found no contradiction. They noted that the resort was likely named after the bird. Therefore, both explanations were consistent (Para 13.11). More importantly, the Court held that “no amount of suspicion makes out a case of bad faith” (Para 13.3). Bad faith must be definitively established.
The critical legal point here involves the status of MLB’s marks. In 1998, MLB had no registered marks in India, having abandoned its previous applications. The Court asked a logical question: Why would the Appellants be in bad faith for adopting a mark that the Respondent had voluntarily abandoned? (Para 13.12).
This creates a “use it or lose it” dynamic. You cannot abandon your applications, stay out of the market for decades, and then cry “bad faith” when a local player picks up the name. The Court noted that since the mark had no reputation in India in 1998, there was no commercial logic for the Appellants to “copy” it. The “Blue Jay” is a bird. It is an arbitrary mark for clothes. Without the reputation of the baseball team, it is just a bird.
Conclusion and Open Questions
The judgment in Sumit Vijay is a potential victory for the territoriality principle. It reinforces the hard boundaries of the Indian market. Global brands cannot assume that their fame travels instantly across borders. They must prove it. They must show that they had customers in India. They must show that their reputation existed before the local player adopted the mark.
The Court has also clarified that “internet presence” is not a magic wand. The digital world may be borderless. Trademark law is not. Unless a foreign brand can show that Indian consumers were actually engaging with their content and buying their products, they cannot stop Indian businesses from using similar marks.
However, open questions remain. If mere accessibility is insufficient, what quantum of digital engagement constitutes “reputation”? Does this judgment effectively signal the end of the “Universality” doctrine for all non-essential consumer goods? Another question is how this ruling impacts digital-first brands. If a brand exists solely on the metaverse or social media, would the Court still demand invoices of sales in India? For now, the message is clear: The Blue Jay may be a loud bird in Toronto. In New Delhi, however, it must sing for its supper.
