The Delhi High Court has once again weighed in on the evolving doctrine of transborder reputation, this time in a dispute over the mark ‘Whistler’ between an Irish whiskey producer and an Indian liquor company. In this post, Vikram Raj Nanda examines how the Court reaffirmed the territoriality principle, the evidentiary threshold it set for proving transborder reputation in the digital age, and what this could mean for future trademark disputes. Vikram is a third-year student at National Law School of India University, Bengaluru, with a keen interest in IP law, Competition Law, and Arbitration.
When Reputation Travels but Goods Do Not: The Delhi HC on Transborder Reputation in the ‘Whistler’ Dispute
By Vikram Raj Nanda
Can a trademark’s reputation travel across borders even when its products do not? The Delhi High Court recently revisited this question in a trademark dispute between an Irish whiskey producer trading using the mark ‘The Whistler’ and an Indian liquor company selling whiskey under the mark ‘Whistler’. This judgement is a successor to a long line of cases that gave grappled with the issue of transborder reputation in trademark disputes (see Prof Basheer’s post here, and other posts here and here).
In this post, I shall map out some of the key aspects of the case and seek to demonstrate what it may have to offer for future cases, especially in a fast-paced digital age where information about products, brands and market reputation becomes increasingly porous across territorial borders.
Background
The dispute arose in this case when Robert A. Merry & Co. Ltd, an Irish whiskey manufacturer, (‘plaintiff’) sought to distribute its products in India under the mark ‘The Whistler’ in 2025. This move was opposed by Piccadily Agro Industries Ltd., an Indian company (‘defendant’) also selling whiskey under the mark ‘Whistler’ in India. The plaintiff alleged that it enjoyed significant global goodwill and reputation in the mark, having secured trademark registrations for ‘Whistler’ in the UK as far back as 2005, and later for ‘The Whistler’ in 2016. Admittedly, it held no trademark registrations in India.
On the other hand, Piccadily claimed to have independently conceived the mark ‘Whistler’ in 2007, drawing inspiration from the Whistler Warbler, a songbird indigenous to the Indian subcontinent. It obtained registration for the mark in India in 2008 and commercially launched its whiskey under the ‘Whistler’ brand in 2018, going on to establish significant market presence. Following the plaintiff’s attempt to foray into the Indian markets in 2025, both parties ended up instituting suits against each other, alleging passing off and infringement which were disposed of through the present common judgement.
Given the lack of domestic registration, the central question before the Court was whether the passing off action could be sustained on the basis of the plaintiff enjoying transborder reputation and goodwill. In the absence of such reputation, the Court would then have to consider whether the defendant could exercise its rights as the registered proprietor and prior user of the mark, and whether the use of such identical marks would result in ‘likelihood of confusion’ among consumers.
The Court answered these questions decisively in favour of the defendant Indian company. First, and in what formed the crux of the judgement, the Court held that the plaintiff failed to establish the existence of such goodwill and reputation in India sufficient to sustain a passing off action based on transborder reputation (discussed in greater detail below) [I]. Second, it was held that the defendant Indian company was the registered proprietor of the ‘Whistler’ trademark since 2008 and had further placed adequate evidence of commercial use, promotion and sales since 2018 [II]. Lastly, given the similarity in the nature of the goods, the Court held that there was likelihood of confusion among consumers, despite the stated price differential between the plaintiff’s products and those of the defendant. This was attributed to the ‘hand-in-hand-out’ retail model of purchasing whiskeys, where consumers would predominantly rely on oral articulation of brand names rather than visually inspecting each product and given the sharp phonetic and visual similarities in the marks, even the most discerning consumers would likely be confused [III].
Transborder Reputation: Two Sides of the Debate
The principal issue in the present case concerned the doctrine of transborder reputation. To provide some background, trademark law has traditionally been anchored in the territoriality principle, wherein trademark rights are protected only within the jurisdiction that grants recognition. Yet, courts have regularly been confronted with claims from foreign proprietors seeking protection of their marks despite having no registered trademarks in the host country. The doctrine of transborder reputation emerged as a response to this tension.
The evolution of this doctrine has been adequately discussed in the past (see a detailed article by Eashan Ghosh here). A brief recap, however, may be useful. In the years following liberalisation, courts would generally allow foreign claimants to seek domestic protection, even in the absence of a substantial domestic presence. For instance, in NR Dongre v Whirlpool, despite limited presence in India, the Court recognised that Whirlpool had acquired substantial reputation globally which would be harmed by the domestic company using its mark to sell lower priced products of an inferior quality.
This decision was followed by Milmet Oftho v. Allergan, wherein the ‘first-in-the-world-market’ test was laid down in the context of a pharmaceutical dispute. It was noted that the pharmaceutical market was interconnected globally, where doctors and companies were aware of foreign medicines and products. Consequently, to allow an Indian manufacturer to utilise a similar/deceptive brand name would lead to an anomalous situation. The inquiry, therefore, focused principally on determining which party had prior use of the mark on a global scale.
As Eashan points out, this position largely characterised the courts’ approach for several years. While courts occasionally required evidence of advertisements, sales or some degree of domestic market presence, the threshold remained relatively modest. In most cases, proof of substantial international reputation was deemed sufficient to secure protection.
This position received its first pushback with 2017 decision in Toyota v. Prius Industries, wherein the Supreme Court now posited that “there must be adequate evidence to show that the the plaintiff [foreign claimants] had acquired a substantial goodwill …… in the Indian market also”. In essence, the focus was now on a ‘spillover’ effect – whether the foreign entity possesses sufficient reputation and goodwill (in the form of customers and sales) in the domestic context (see here). Further, this decision was expressly based in the ‘territoriality’ principle, which now decisively applied to trademark law.
This position has since been solidified through a line of precedents. In VIP Industries v. Carlton Shoes the DHC held that the plaintiff must establish commercial presence in the host country, demonstrable through ‘advertisements’, ‘promotions’ etc. Yet, some uncertainty remains regarding the precise threshold. At various points, courts appear to suggest that mere proof of reputation among domestic consumers is sufficient. At others, they also insist upon the existence of goodwill, traditionally evidenced through sales. As Prof Basheer observed in his analysis of Toyota, the distinction between reputation and goodwill was never satisfactorily clarified by the Supreme Court and has ‘spilled over’ in subsequent decisions as well, including the case at hand.
Against this backdrop, it is worth pausing to see why these approaches emerge, and what instrumentally justifies them. On the one hand, the NR Dongre position can be justified as enabling foreign proprietors to prevent bad faith adoptions and free-riding, especially in cases of inferior products. Further, they can ensure that there are no falsely claimed associations between their products and the infringing products – this becoming more pronounced in public goods like pharmaceutical products, where such linkages can have deleterious public health consequences.
On the other hand, the position in Toyota position can be justified as opposing trademark expansionism, i.e., expanding the scope of trademark rights excessively to restrain more and more third-party uses. For instance, if mere proof of transnational reputation is required, one can imagine a situation where a foreign entity can simply restrain local users from using a similar mark, even if they have little to no presence in the domestic market, or any intention to do so. Eventually, this would take away from the linguistic commons available for usage, making it difficult for domestic entities to operate.
Further, what underpins trademark law is the goal to prevent consumer confusion. Is it really fair to restrain a domestic user even if a foreign company enjoys no domestic commercial presence, which consequently may translate into a lack of consumer awareness about its products and minimal likelihood of confusion? These questions may, however, now be more complicated with the expansion of the internet and publicly accessible information, allowing for significantly more consumer awareness across borders. Today, consumers are exposed to brands through websites, social media platforms etc. on a much larger scale. In such a word, the question may just be one of degree: to what extent can we balance the competing principles of trademark expansionism, with the genuine interests of foreign companies? At what point does likelihood of confusion arise among consumers? It is against this context that we must situate the present case.
Situating the Whistler case: Some Thoughts and Reflections
In reaching its conclusion, the DHC meticulously traced (and reproduced) some of the precedents mentioned above and firmly situated itself within the line of precedents from Toyota and Sumit Vijay, reaffirming the requirement of ‘spillover’ into Indian territory. It further expressly moved away from NR Dongre and Milmet Oftho, by noting that it must be established that the foreign entity is the prior user in the Indian market. Relying on Rolan Corporation v. Sandeep Jain (2021), the Court expressly held that the ‘first in the world market’ test is irrelevant and domestic reputation and goodwill must be established. It noted that Milmet Oftho ‘now has to follow the territoriality principle’.
More interesting, however, is the manner in which the Court assessed the evidence put forward by the plaintiff.
The plaintiff sought to establish domestic presence through its websites. Prima facie, the Court noted that these websites were not accessible in India. More interestingly, the Court observed that domain names in any case cannot be a yardstick – it must be shown how many times and by whom the websites were accessed (p. 49). This will be an interesting precedent in the future that may raise the threshold for establishing domestic reputation, as now not mere accessibility of websites must be shown but granular consumer data may also be needed to establish domestic presence and reputation. This understanding spilled over into how social media statistics were interpreted as well, wherein the Court refused to take into account the evidence in the absence of engagement counts or viewership statistics. Once again, the Court appeared less interested in the mere existence of a digital footprint and more concerned with measurable evidence of consumer association within India.
Other factors analysed included financial statements and evidence of sales, which the Court deemed inadequate. Further, the attempt to obtain excise approvals were only evident from 2025, destroying the plaintiff’s own claim that their whiskey products were sold in India prior to 2018.
Taken together, this case not only reaffirms the Toyota line of precedents but also gives the roadmap of what evidence may be needed for establishing domestic presence in the future. Whether this represents a desirable development may still be open for debate, as the Courts never really normatively justify why India must take this approach to transnational reputation. While expansionism may be a concern, is requiring granular consumer engagement data too high of a threshold for establishing reputation? Future cases will likely have to grapple with where precisely the threshold lies. For now, the message from the DHC is clear: global reputation alone is not enough. What matters is not whether consumers around the world know the mark, but whether consumers in India do.
