Transcending territorial limits: an Indian perspective on transborder reputation in trademark law

First published by The Trademark Lawyer

Written by Madhu Rewari and Kavya Chawla

Madhu Rewari and Kavya Chawla of Anand and Anand examine the continuing importance of transborder reputation in Indian trademark law. Drawing on multiple cases, they explain that courts increasingly require concrete evidence that a foreign brand’s reputation has reached Indian consumers before granting appropriate relief in a claim.

“At what point does reputation built in one jurisdiction translate into legally enforceable trademark rights in another?”

A trademark may be confined to a jurisdiction, but the goodwill behind it travels freely. A brand may become familiar to consumers in a jurisdiction long before it has any actual commercial presence. In the digital age, this phenomenon has become increasingly common. Streaming platforms, social media, cross-border e-commerce, international travel, and diaspora communities enable information about brands to travel instantly across national boundaries. Visibility is no longer dependent on physical market entry; a brand can acquire recognition and consumer goodwill in territories where it neither operates nor owns a registered trademark.

Against this backdrop, the doctrine of transborder reputation has assumed renewed significance. Indian courts have long developed and applied this doctrine, whose foundation was laid down in 1996 in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., where the Hon’ble Supreme Court established the founding principle that wide advertisement of a trademark, even without the goods themselves being sold in the local market, could constitute use of the trademark in that market. The Supreme Court upheld the injunction, holding that Whirlpool, although located outside India’s territorial boundaries, had the necessary transborder reputation which had spilled into India. The case remains, to this day, the foundational precedent for the doctrine, and has been relied upon in virtually every transborder reputation dispute.

Yet it is worth remembering the world in which Dongre was decided: one in which the internet and virtual marketplaces barely existed, and a brand’s reputation traveled, if at all, through print advertising, word of mouth, and the occasional cross-border traveler. Three decades on, that world is unrecognizable. Social media advertising, influencer marketing, and digital commerce now let a brand go from entirely unknown in a country to widely recognized there within months, with no local presence required. The old lines between a brand’s home market and every other market have blurred beyond recognition. This has brought into sharp focus a question – at what point does reputation built in one jurisdiction translate into legally enforceable trademark rights in another? The inquiry has become considerably more complex, compelling courts to assess the evidentiary thresholds for establishing transborder goodwill.

The doctrine of transborder reputation is therefore an evolving area of trademark law. Indian courts, while continuing to recognize the principle, have adopted a rigorous approach to determining whether a foreign mark has acquired sufficient reputation amongst Indian consumers to warrant protection. Courts increasingly require persuasive evidence demonstrating that the reputation has meaningfully penetrated the Indian market.

Implication: a changing environment

As the world grew more connected, and reputation became easier to build from a distance, brand owners were forced to confront a difficult question: how much of a claimed reputation was genuine, and how much was merely noise? In cases involving transborder reputation, this cannot be answered in the abstract – it has to be backed by evidence demonstrating that consumers in the jurisdiction were aware of and familiar with the brand at the time the defendant adopted or commenced use of the mark. This makes the cut-off date critical. The point at which the defendant began using the mark is the moment against which the brand owner must prove that goodwill had already crossed the border – the cases that follow trace how courts have tackled this question.

Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Limited (2017)

In 2017, Toyota Jidosha Kabushiki Kaisha sought to restrain the Defendants from using the mark PRIUS in relation to auto spare parts, contending that it was the prior adopter and owner of the mark, having launched its hybrid vehicle under this name in Japan in 1997 and subsequently in several other jurisdictions. The Defendants, who had obtained registration for PRIUS in India in 2002 and claimed use since 2001, argued that Toyota had no presence, sales, or registration for the mark in India until years after their own adoption. The Supreme Court held that the mere fact that a mark enjoys substantial reputation outside India does not, by itself, establish that such reputation has spilled over into the Indian market. Toyota’s evidence of advertisements in automobile and international business magazines, exhibition displays, website hits, and references on portals such as Wikipedia and the online Britannica dictionary was held insufficient to show that Indian consumers, as of the relevant date (prior to April 2001), were aware of or associated PRIUS with Toyota. The Supreme Court held that foreign companies must show a significant presence or reputation in India to succeed in a passingoff claim. The Court rejected the notion of universal goodwill and reaffirmed that trademark protection is inherently territorial.

“The point at which the defendant began using the mark is the moment against which the brand owner must prove that goodwill had already crossed the border.”

Bodhisattva Charitable Trust & Ors v. Mayo Foundation for Medical Education & Research (2025)

Another instance of transborder reputation was in the case of Bodhisattva Charitable Trust & Ors v. Mayo Foundation for Medical Education & Research, FAO(OS) (COMM) 73/2024. On July 28, 2025, the Division Bench of the Hon’ble Delhi High Court decided a matter involving Mayo Foundation, closely affiliated with the internationally renowned Mayo Clinic in the US, sued Bodhisattva Charitable Trust, which had been operating hospitals and medical colleges in India since 1995 under names including ‘Mayo Medical Centre’ and ‘Mayo Institute of Medical Sciences,’ without ever registering the mark itself.

Bodhisattva argued that Mayo had no presence in India when it adopted the name, and that a common surname like ‘Mayo’ could not be monopolized by one entity. The Division Bench disagreed, upholding the interim injunction granted by the Single Judge. What is notable is how it got there: the Court accepted that Mayo’s presence in India through its websites, news and health reports published and cited in Indian newspapers, academic collaborations, and online medical resources was sufficient to show that doctors, researchers, and medical students in India were aware of and associated the mark with the Mayo Foundation.

The likeliest explanation lies in what was at stake: healthcare carries a public-interest dimension that ordinary consumer goods do not, and a patient misled about a hospital’s affiliation risks a materially graver harm than others.

Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt. Ltd & Anr (2026)

The Division Bench’s decision in Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt. Ltd. & Anr. (May 4, 2026) is another case worth examining – it shows precisely what kind of evidence can carry the day when digital metrics alone are not enough. Toyota had adopted the mark ALPHARD for a luxury multi-purpose vehicle in 1986 and commercially launched it internationally in 2002 but had never formally launched the vehicle in India. The Respondent registered the identical mark in India in 2015 on a ‘proposed to be used’ basis. Toyota sought rectification, contending that its reputation had spilled over into India well before 2015 through independent imports by private buyers and automobile enthusiasts, and coverage in automotive blogs and online forums. Where the Single Judge had dismissed this claim for want of direct sales evidence, the Division Bench reversed, holding that for luxury and niche products the test of reputation cannot be confined to mass-market sales, and that unsolicited private imports of an expensive vehicle are themselves cogent evidence of existing goodwill. The Court took care to clarify that its earlier ruling in Prius had not rejected the doctrine of transborder reputation – it had simply found the evidence in that case insufficient. Here, the position was different. Toyota’s evidence of digital visibility, import data, and niche market recognition was held to be enough, and the Respondent’s registrations were ordered to be removed under Section 57. The Court also held that the mark ALPHARD was a well-known trademark as of the date of the Respondent’s application.

“The Court rejected the notion of universal goodwill and reaffirmed that trademark protection is inherently territorial.”

Conclusion

As the cases above show, the jurisprudence on transborder reputation has evolved considerably even as its central principle has held constant: a claimant must show that its global reputation had genuinely spilled over into India before it can claim protection there. The digital era has not narrowed how spillover can be shown, but for most claimants it is important to show evidence of use being circulated amongst the Indian consumers and relevant members of the trade. It must show, through clear and specific evidence, that Indian consumers were aware of the mark and associated it with the claimant before the domestic party’s own adoption.