CHENNAI: In a significant order, the Madras High Court has ruled in favour of Hyderabad-based Ravi Foods Private Limited for registration of the trademark 'Big Bite' and dismissed appeals filed by the US-based 7-Eleven International LLC against an order of the Deputy Registrar of Trademarks.
Upholding the order of the deputy registrar, who refused to accept the claims of 7-Eleven for registration of 'Big Bite', Justice N Anand Venkatesh on Wednesday said the fact that the appellant had applied for registration in 1994, but had not commenced business or sale in this country either on the said date or on the date of commencement of opposition proceedings in 2007, is also an additional, though not decisive, factor that weighs in the balance while testing the order declining registration of the appellant’s mark.
"In the final analysis, this court is of the considered view that the conclusion arrived at by the registrar must be upheld, though for different reasons. This court is not convinced that the appellant has made out a case for interference,” he stated.
Referring to the Supreme Court’s ruling in the Toyota Jidosha Kabushiki Kaisha case, the judge said 7-Eleven had not acquired sufficient goodwill in India to claim protection.
On the other hand, Ravi Foods has been able to demonstrate actual sales and percolation of their products throughout the country with the mark Big Bite for a sufficiently long period so as to general goodwill and reputation entitling them to protection under the law of passing off.
The court also noted that while Section 18 of the Trademark Act permits registration of a mark that is used or proposed to be used, the applicant must show a definite and present intention to use the mark as on the date of application. The Deputy Registrar had, on July 18, 2014, rejected 7-Eleven’s application and accepted that of Ravi Foods. Challenging this order, the US-based company filed the appeals in the high court.