Transborder Reputation-Final Draft.docx - Transborder...

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Transborder Reputation Under Trademark Law “When you brand yourself properly, the competition becomes irrelevant” - Dan Schawbel 1 Reputation is presumably the most contorted phrase in IP. Lacking a statutory description, reputation depends upon the manner in which the brand has been utilized by the merchandise or services concerned. However, in General Motors Corporation v. Yplon 2 the court of justice has defined reputation as knowledge of the products and services covered under the trademark which in turn must be known to a significant part of the concerned public. In this era of digitalization, where physical boundaries between countries have become blurred, brand identity is the essence of any successful business. Brands today not just validates the origin of a merchandise or service but also determine their reputation. Hence, it doesn’t matter if the local café makes yummy coffee, a Starbucks coffee will still be considered better owing to the reputation that the brand possesses. Therefore, safeguarding a brand from misappropriation is of utmost importance in this time of immense competition. Safeguarding a brand is not an easy task, especially in today’s global economy with endless access to internet, easy travel, availability of cheap counterfeiting technology and brand obsessed consumers, impersonation of brands have become an easy way of making money. Although brand owners are safe within the country where they have originally acquired trademark registrations, however when it comes to enforcing their claims in countries where their brands have not been registered, the proprietors find their marks being diluted, which may turnout to be malefic to their business. On numerous instances, renowned businesses are shocked to learn that they have been restrained from opening in another country because their brands have been misappropriated by third parties having zero association with the brand. In such situations, the proprietors of misappropriated brands have to depend on their brand’s trans-border reputation and goodwill to validate their claim that the brand has spilled over to the area of dispute heedless of the fact that their brand is well known in other parts of the world, additionally such a claimant has to depend upon common law action of passing off instead of infringement action as they don’t possess trademark registrations at the place of dispute. India, having transformed into a global economy and with its citizens becoming more and more conscious about foreign brands, enforcement of claims by foreign proprietors have become less burdensome. Following the new liberal manner adapted by the Indian courts, such claimants can now claim trans-border reputation for their marks and seek remedy for passing-off by bringing forth evidence in the form of circulation in any form in the place of dispute. For this purpose, in NR Dongre v. Whirlpool Corporation 3 , trans-border reputation has been defined as, “a product and its name transcending the physical boundaries of the

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