Delhi High Court Sets Aside Cancellation of ‘BLUE-JAY’, Says Baseball Lacks Indian Popularity

Delhi High Court Sets Aside Cancellation of ‘BLUE-JAY’, Says Baseball Lacks Indian Popularity

Introduction

The Delhi High Court has restored an Indian apparel brand’s ‘BLUE-JAY’ trademark, holding that the global fame of baseball and of the Toronto Blue Jays cannot be presumed to translate into consumer recognition in India. Emphasising cultural context, the Court memorably observed that “Baseball, in India, is not cricket.”

Factual Background

The appellant, owner of the ‘BLUE-JAY’ apparel brand, applied for registration in Class 25 (clothing) on August 19, 1998, with the mark eventually proceeding to registration on June 8, 2017. The respondent, Major League Baseball Properties Inc (MLB), asserted ownership of the marks “BLUE JAYS” and “TORONTO BLUE JAYS”, used by its Canadian baseball club established in 1976. MLB contended that these marks enjoyed worldwide fame that had percolated into India via broadcasts, international publications, and internet accessibility.

Procedural Background

MLB filed a rectification petition under Section 57 of the Trade Marks Act seeking cancellation of the Indian mark. A Single Judge allowed the petition in 2025, holding that the Indian firm had adopted ‘BLUE-JAY’ in bad faith to capitalise on MLB’s global reputation. On appeal, a Division Bench comprising Justices C. Hari Shankar and Om Prakash Shukla examined whether MLB’s marks qualified as earlier trademarks and whether trans-border reputation in India had been established as of 1998.

Issues

1. Whether MLB’s “BLUE JAYS” marks qualified as earlier trademarks in India at the time of the appellant’s 1998 filing.

2. Whether MLB had proved trans-border goodwill and reputation in India, particularly in the 1990s.

3. Whether the Indian appellant’s adoption of ‘BLUE-JAY’ was in bad faith.

Contentions of the Parties

Appellant: The appellant argued that MLB had no subsisting registration or pending application in India in 1998 and had abandoned its earlier Indian filings (1983 and 1988) well before the appellant’s application. It contended that baseball lacked popularity in India during the relevant period, negating any presumption of consumer recognition or goodwill.

Respondent: MLB asserted that its marks had attained global fame and that reputation had reached India through media exposure and online accessibility. It alleged bad-faith adoption by the Indian firm to trade on MLB’s international standing.

Reasoning and Analysis

The Division Bench held that MLB’s marks did not qualify as earlier trademarks because there was no valid registration or pending application in India when the appellant filed in 1998. The Court stressed that trans-border reputation must be positively proved, especially where the activity associated with the mark is not popular in India.

The Court observed that mere availability of websites or mentions in international magazines does not establish goodwill in India. It underscored that goodwill and reputation are relational and consumer-centric, not self-proclaimed. In a pointed articulation, the Court noted that reputation requires evidence of Indian consumer recognition, which was absent—particularly given that baseball is not a widely followed sport in India.

On bad faith, the Court found the allegation untenable, noting MLB’s abandonment of its own Indian applications years earlier. The Bench concluded that there was no basis to infer that the appellant sought to capitalise on a reputation that had not been shown to exist in India at the relevant time.

Decision

The Delhi High Court set aside the order cancelling the ‘BLUE-JAY’ mark and directed its restoration to the Trade Marks Register in Class 25. The Court reaffirmed that global reputation cannot be presumed domestically without proof, and that trans-border goodwill must be established with concrete evidence of Indian consumer recognition.

In this case the appellant was represented by Mr. C.M. Lall, Sr. Adv and Mr. J. Sai Deepak, Sr. Adv. with Mr. Rupin Bahl, Mr. Karan Bajaj, Ms. Aastha Arora, Mr. Avinash and Ms. Annanya Mehan, Advocates. Meanwhile the respondent was represented by Mr. Urfi Roomi, Ms. Janaki Arun, Mr. Jaskaran Singh, Ms. Angela Arora, Advs. for R-1 Mr. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Arnav Mittal and Mr. Mayank Sansanwal, Advs. for R-2