Safiya Malik

The High Court of Delhi Single Bench of Justice Saurabh Banerjee has directed the cancellation and removal of the trademark "BLUE-JAY" from the Register of Trade Marks. The Court concluded that the registration was obtained with dishonest intent, and the adoption of the impugned mark was tainted with bad faith. Accordingly, it held that the petitioner's rights as the prior adopter and user of the trademark "BLUE JAYS" took precedence over the respondents' subsequent registration. The Court found that the respondents failed to provide any cogent or plausible explanation for adopting a mark deceptively similar to that of the petitioner. Furthermore, the court accepted the petitioner's evidence of international goodwill, including in India, and held that the registration was liable to be cancelled under Section 57 of the Trade Marks Act, 1999. The Registrar of Trade Marks was directed to remove the mark from the register. The petition was accordingly allowed.

The petitioner, a company incorporated under the laws of the State of New York, United States of America, serves as the intellectual property holding company of Major League Baseball (MLB). The petitioner controls licensing and merchandising for all MLB Clubs and affiliated entities. It adopted the trademark "BLUE JAYS"/"TORONTO BLUE JAYS" in 1976 in relation to its MLB franchise based in Toronto, Canada.

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The petitioner has continuously used the "BLUE JAYS" marks in various iterations and holds registrations in multiple jurisdictions including the USA, UK, EU, Australia, Brazil, China, and South Korea. The petitioner maintains its official websites, namely https://www.mlb.com and https://www.mlb.com/bluejays, and has a significant presence on social media platforms. It has also secured registrations and filed applications for the "BLUE JAYS" marks in India under various classes.

Respondents Nos.1 and 2 are partners of M/s. PMS Creations, operating at Rama Road Industrial Area, New Delhi. They are engaged in manufacturing and trading garments under the mark "BLUE-JAY." Respondent No.3 is the Registrar of Trade Marks.

The dispute originated from the adoption of the impugned mark "BLUE-JAY" by Mr. Ajay Kumar Gupta and Mr. Sumit Vijay, trading as A.S. Creation. They applied for the registration of the mark on a "proposed to be used" basis on 19.08.1998 under Application No. 815236 in Class 25. The mark was published in the Trade Marks Journal on 25.08.2003.

Upon becoming aware of the publication, the petitioner filed a Notice of Opposition on 03.02.2004. A Counter Statement was filed by the original applicants on 09.11.2004. The original applicants later assigned the mark to M/s. PMS Creations via an Assignment Deed dated 22.07.2011.

The petitioner failed to file evidence supporting the opposition within the prescribed time and filed an Interlocutory Petition seeking condonation of delay. The Deputy Registrar of Trade Marks dismissed the petition on 08.10.2015, deeming the opposition to have been abandoned.

The petitioner appealed the order before the erstwhile Intellectual Property Appellate Board (IPAB). After the IPAB's abolition, the matter was transferred to the High Court and renumbered as C.A. (COMM.IPD-TM) 152/2022. Subsequently, on 25.09.2023, the Court permitted the petitioner to pursue cancellation under a separate petition, resulting in the present proceedings.

The petitioner's counsel argued that the "BLUE JAYS" marks were adopted in 1976 and had since acquired global reputation and goodwill. Citing international use, online presence, and availability of merchandise in India, the petitioner contended that their marks are well-known in India. Reliance was placed on precedents including Milmet Oftho Industries v. Allergan Inc. and N.R. Dongre v. Whirlpool Corporation.

It was argued that the respondent's mark "BLUE-JAY" is deceptively similar and was adopted with dishonest intention, as their application was filed 22 years after the petitioner’s first use. The petitioner further asserted that the explanation provided by the respondents for the adoption—based on a restaurant at a Haryana resort—was a fabrication introduced for the first time during these proceedings.

The respondents’ counsel denied any influence from the petitioner’s marks. He claimed the mark was independently adopted in good faith in 1998 and had developed substantial goodwill in India. The respondents contended that the petitioner’s trademarks had no spillover reputation in India due to baseball's limited popularity in the country. They pointed out that the petitioner did not maintain operations or offices in India and lacked valid registration in Class 25 at the time the respondents adopted their mark.

They also stated that the petitioner’s applications in Class 25 were not renewed, whereas the respondent's registration had been valid since 1998. To support their case, the respondents referred to decisions in Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries, Trustees of Princeton University v. Vagdevi Educational Society, and Pioneer Nuts & Bolts v. Goodwill Enterprises.

In response, the petitioner maintained that the abandonment of earlier applications did not preclude their claim as prior user. They submitted that the "BLUE JAYS" mark had been used in India through online platforms, merchandise availability, and televised MLB games since 1996-1997. The petitioner relied again on Trustees of Princeton University v. Vagdevi Educational Trust to argue that "proposed to be used" applications do not bar claims of prior use when backed by evidence.

The Court observed that "the adoption per se of the impugned mark 'BLUE-JAY' by the respondent nos.1 and 2 was/ being shrouded under a dark cloud of suspicion, the same was/ is bad and without any cogent/ plausible reason(s)/ justification(s)."

The Court recorded that in their original pleadings, the respondents had claimed that the mark was inspired by a bird native to North America. However, in the current proceedings, a new explanation involving a Haryana resort was presented. The Court remarked: "This shows that the respondent nos.1 and 2 have now concocted an entirely new explanation/ story about the reason/ justification for adoption of the impugned mark 'BLUE-JAY'."

It noted the inconsistency as raising "a credible doubt in the mind of this Court as to the reliability of the adoption of the impugned mark 'BLUE-JAY'." The court stated: "It, prima facie, seems to be an afterthought since the respondent nos.1 and 2 were failing to provide any cogent and convincing reason/ justification for adopting the impugned mark."

Regarding similarity, the Court recorded: "the only distinction between the rival marks, 'BLUE JAYS' of the petitioner and 'BLUE-JAY' of the respondent nos.1 and 2, is that the respondent nos.1 and 2 have merely omitted letter 'S' from 'JAYS' and inserted a hyphen '-' between the words 'BLUE' and 'JAY'."

On prior use, the Court noted: "the petitioner has also applied for registration of the trademark 'BLUE JAYS' in Class 25, much before the respondent nos.1 and 2's application for the impugned mark 'BLUE-JAY'." The Court found it "highly unlikely" that the respondents were unaware of the petitioner’s trademark.

The Court held that "the petitioner has placed sufficient material like the presence of 'BLUE JAYS' marks on its websites, which are accessible in India since the year 1996... and the broadcasting of the MLB matches in India at least since the year 1997."

Citing Neon Laboratories Ltd v. Medical Technologies Ltd., the Court held: "The right of a 'prior user' is superior to a registrant of the trademark." It added that "rights in a passing-off action emanate from common law and not from statutory provisions."

The Court rejected documents submitted by the respondents, observing: "the other documents like the Chartered Accountant certificate, advertisement in magazines, and Invoices bearing the impugned mark 'BLUE-JAY' are all post 2011" and thus not contemporaneous with adoption.

Referring to the principle of bad faith, the Court quoted from BPI Sports LLC v. Saurabh Gulati: "Bad faith may be interpreted as unfair practices involving lack of any honest intention on the part of the applicant."

The Court further stated: "If the 'purpose' of adoption of a trademark is found to be in doubt, it can be inferred that the registration of the trademark is tainted in 'bad faith'."

The Court concluded that "the petitioner has made out a prima facie case for cancellation of the impugned mark under Section 57 of the TM Act."

It held that "the petitioner is the undisputed 'prior user' of the trademark 'BLUE JAYS'." The Court also observed that "the petitioner certainly has a better/ superior right over the respondent nos.1 and 2, who, in any event, have come with half-baked truth with hardly any supporting document(s) qua its adoption."

It stated that the facts regarding the petitioner's abandoned registration in Class 25 or that the application was filed on a "proposed to be used" basis, or that the respondents later obtained registration, were "meaningless, in fact, of no relevance."

The Court also recorded that: "Abandonment of an application for registration of a trademark by an Opponent/ Person Aggrieved like the petitioner, per se, cannot be a bar/ impediment for it to proceed for cancellation/ rectification of any mark (wrongly) remaining in the Register of Trade Marks."

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Accordingly, it directed: "The Registrar of Trade Marks is directed to cancel and remove the registration of the impugned mark 'BLUE-JAY' registered vide application no.815236 in Class 25 from the Register of Trade Marks."

The petition was allowed and disposed of with no order as to costs. The Court further ordered that a copy of the judgment be sent to the Registrar of Trade Marks for compliance.

Advocates Representing the Parties:

For the Petitioners: Mr. Urfee Roomi, Ms. Janki Arun, and Mr. Jaskaran Singh, Advocates

For the Respondents: Mr. Mohan Vidhani, Ms. Nidhi Pandey, Mr. Saurabh Kumar, Ms. Shreya Jain, Ms. Mokshita Gautam, Advocates for R-2; Ms. Nidhi Raman, CGSC with Mr. Arnav Mittal and Mr. Akash Mishra, Advocates for R-3/UOI

Case Title: Major League Baseball Properties Inc v. Manish Vijay & Ors.

Neutral Citation: 2025: DHC:5103

Case Number: C.O. (COMM.IPD-TM) 279/2023

Bench: Justice Saurabh Banerjee