Global Reputation Alone Not Enough: Madras High Court Denies 7-Eleven’s ‘Big Bite’ Trademark Claim in India

Global Reputation Alone Not Enough: Madras High Court Denies 7-Eleven’s ‘Big Bite’ Trademark Claim in India

Introduction

The Madras High Court, in 7-Eleven International LLC v. Deputy Registrar of Trademarks, upheld the rejection of 7-Eleven’s application for registration of the mark “Big Bite” in India. The Court ruled that prior international use and global reputation, without demonstrable goodwill or commercial presence in India, are insufficient to sustain a passing off claim under the Trade Marks Act, 1999.

Factual Background

The appellant, 7-Eleven International LLC, claimed adoption and international use of the mark “Big Bite” since 1988 and filed a trademark application in India in 1994 on a proposed-to-be-used basis. It contended that its prior global use and reputation entitled it to protection in India and that subsequent use of the identical mark by an Indian entity was likely to cause confusion.

The rival applicant, originally Dukes Consumer Care Limited and later Ravi Foods Private Limited, asserted that it had been openly and continuously using the mark “Big Bite” in India since October 5, 2004 for food products falling under Class 30. 7-Eleven also relied on the accessibility of its website in India to argue trans-border reputation and goodwill.

Procedural Background

By a common order dated July 18, 2014, the Deputy Registrar of Trade Marks rejected 7-Eleven’s application and allowed the application of Ravi Foods Private Limited. Aggrieved, 7-Eleven filed an appeal under Section 91 of the Trade Marks Act before the Madras High Court.

Justice N. Anand Venkatesh examined the appeal and evaluated whether the rejection was legally sustainable, particularly under Section 11(3) of the Act concerning passing off.

Issues

1. Whether prior international use and global reputation of a mark are sufficient to establish goodwill in India for the purposes of a passing off claim.

2. Whether 7-Eleven had demonstrated actual use or goodwill in India under the mark “Big Bite.”

3. Whether mere accessibility of a foreign website in India constitutes use or establishes goodwill in the Indian market.

4. Whether a long-pending “proposed to be used” application without commercial activity satisfies the requirement under Section 18 of the Trade Marks Act.

Contentions of the Parties

7-Eleven contended that it had adopted and extensively used the mark internationally since 1988 and had filed an Indian application as early as 1994. It argued that its trans-border reputation and global goodwill were sufficient to restrain the Indian applicant. It further asserted that online visibility of its brand in India supported its claim of reputation and likely confusion.

Ravi Foods Private Limited maintained that it had been using the mark “Big Bite” continuously in India since 2004 and had built goodwill in the domestic market. It argued that 7-Eleven had neither traded in India nor established a commercial presence under the mark at the relevant time. The Deputy Registrar supported the view that the Indian entity was the prior user in India and entitled to registration.

Reasoning and Analysis

The Court emphasized that the essence of passing off lies in protection of goodwill, and goodwill is inseparable from a business operating within the relevant jurisdiction. It observed that goodwill cannot exist in abstraction and must be linked to demonstrable trade presence.

The Court held that 7-Eleven had not produced material to show sales, commercial operations, or actual business activity in India under the mark “Big Bite” at the relevant time. Mere international reputation, without tangible Indian market presence, was insufficient.

Addressing the website argument, the Court clarified that mere accessibility of a foreign website in India does not establish use, nor does it automatically confer goodwill within the Indian market.

The Court further noted that there was no evidence to show that “Big Bite” qualified as a well-known trademark within the meaning of Section 2(1)(zg) read with Section 11(8) of the Trade Marks Act.

With respect to Section 18, the Court observed that an application filed on a “proposed to be used” basis must reflect a definite and present intention to trade. The long gap between the 1994 application and absence of commercial activity in India weighed against 7-Eleven’s claim.

Accordingly, the Court concluded that the Deputy Registrar had correctly applied Section 11(3), and that 7-Eleven had failed to establish sufficient goodwill in India to maintain a passing off objection.

Decision

The Madras High Court upheld the 2014 order of the Deputy Registrar of Trade Marks, rejected 7-Eleven’s appeal, and confirmed registration of the mark “Big Bite” in favour of Ravi Foods Private Limited.

In this case the appellant was represented by Mr. K. Harishankar, Advocate. The Trademarks Registry was represented by Mr. Diwakar and Mr. Subbu Ranga Bharathi, Advocates. Meanwhile Ravi Foods was represented by Ms. Aanchal Nichani, Advocate.