By Ananyaa Banerjee and Mandeep Singh
In a world where consumers discover brands on social media long before a product physically enters their market, trade mark strategy has become a front‑end business decision, not a back‑end legal formality. For international brands eyeing high‑growth markets like India, the question is no longer whether to protect their trade marks abroad, but how early, how broadly, and with what evidence. Missteps can force even global giants into costly coexistence arrangements or outright rebrands.
India is an especially enlightening example. It is a use‑based jurisdiction that recognises transborder reputation but still gives powerful protection to honest prior users from the local ground. This duality means a brand/trade mark can be globally well-known or famous and still find itself boxed in by a smaller local player who simply moved faster. This article explores how doctrines such as prior use and transborder reputation actually play out in practice and distils them into a concise playbook for brands planning cross‑border expansion into India and similar markets.
The Prior Use Landmine
At the heart of many brand expansion disputes lies a simple rule; i.e. in India, rights primarily flow from use, not just from registration. A party that has honestly and continuously used a trade mark in India can often assert stronger rights than a later‑entering global brand, even if the latter holds registrations in multiple other foreign jurisdictions. This is where multinationals frequently underestimate local risk.
The Timberland-Woodland episode is a classic illustration. A globally recognised outdoor footwear brand entered India only to find that a domestic company had been using since year 1992, and had already registered, a strikingly similar trade mark for footwear and leather goods. The result was not a clean sweep for either side, but a constrained co-existence in which the global brand’s freedom to build a distinct identity was significantly compromised. The legal principles are familiar; the commercial lesson is more brutal: delay converts into brand dilution.
The experience of Burger King underscores the same theme in a different way. In India, a local restaurant business using the “Burger King” name since 1992 was able to assert prior use when the American chain expanded into the country more than a decade later, even though they had registered its trade mark in India in the year 1979.
Courts gave considerable weight to long‑standing, honest use by the local business, showing that even a well‑known fast‑food chain cannot assume that its international reputation will automatically trump a domestic prior user. Hence, taking early action against the alleged use might have helped avert the dispute. In Australia, the brand went even further and rebranded as “Hungry Jack’s” because a similar trade mark had already been registered in the relevant class.
Key Takeaway
The takeaway is straightforward: if a country is on the medium‑ to long‑term roadmap, treat it as a “now” jurisdiction for clearance searches and filings. The cost of proactive filings is almost always lower than the cost of later litigation, co‑branding compromises, or rebranding.
Transborder Reputation: Promise and Limits
Balancing the prior use principle is the doctrine of transborder reputation. Indian courts have repeatedly recognised that certain foreign well-known trade marks, by virtue of extensive international use, advertising, and media presence, can enjoy protection in India even before the brand establishes physical operations or large‑scale sales locally. This is particularly important in an era where Indian consumers may be highly familiar with a brands/ trade marks via global campaigns, online content, and social media exposure.
The Whirlpool decision [N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714] remains a touchstone, affirming that a trade mark with substantial global reputation could be shielded in India against opportunistic local registration and use. Subsequent cases have extended that reasoning, acknowledging that a well‑known foreign trade mark can be protected when the evidence shows that Indian consumers associate the trade mark with the international proprietor and that local adoption is likely to be in bad faith.
However, later decisions have clarified that international fame alone is not a magic key. In disputes over marks like “Prius” [Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1], Courts have demanded concrete proof that the mark had actually spilled over into the consciousness of Indian consumers during the relevant period. Evidence such as targeted advertising, media coverage in India, participation in local auto shows, or demonstrable online engagement from Indian users has been treated as critical. The Bolt Technology OU v. Ujoy Technology Pvt. Ltd. (Delhi High Court, 2022) case exemplifies this hurdle, where the global ride-hailing app Bolt’s transborder reputation claim failed due to insufficient evidence of actual spillover into the Indian market, resulting in denial of the injunction despite its international prominence. The message is clear: transborder reputation is a shield, but only if backed by evidence tailored to the Indian market. The message is clear: transborder reputation is a shield, but only if backed by evidence tailored to the Indian market.
Forward‑looking brands have responded by filing trade marks early and building a documentary trail even before full‑scale launch. Pre‑emptive filings, notices to suspected infringers, and curated records of web traffic, media mentions, and social media engagement help tilt the balance when a dispute inevitably arises.
Likelihood of Confusion and Deceptive Similarity
Beyond questions of who was first and how well-known the trade mark is, courts still anchor their analysis in the likelihood of consumer confusion. In practice, this means looking at the overall impression of competing trade marks, the similarity of offered or applied-for goods and services, and the nature of the relevant consumer pool, rather than engaging in a letter‑by‑letter comparison.
The Starbucks/Sardarbuksh dispute [Starbucks Corporation v. Sardarbuksh Coffee & Co. (2018) 73 PTC 378 (Del)] is a telling example. A local café chain adopted a name and logo that evoked the famous coffee brand, combining a phonetically similar trade mark with similar visual elements. Even though the defendant altered certain aspects over time, the court concluded that the overall resemblance was such that a substantial segment of consumers could be misled. The remedy included a direction to adopt a sufficiently distinct name, reaffirming that small cosmetic changes are not enough if the core impression remains confusingly close.
These cases have two strategic implications for expanding brands. First, clearance searches should look beyond exact matches to capture phonetic equivalents, translations, and look‑alike logos, especially in a multilingual market like India where transliteration is common. Second, brand owners should be willing to refine their own trade marks and local adaptations early in the process to avoid confusion, rather than treating the global logo as untouchable in all markets.
Strategic Imperatives for India‑entry
Drawing the doctrinal and case threads together, international brands can approach India (and similar first‑to‑use or hybrid jurisdictions) with a concrete set of priorities.
- File Early and File Smart
Timing is everything. Once India appears in the business expansion pipeline, brands should trigger trade mark clearance and filing instructions rather than waiting for the first distribution agreement or store lease. Early filing reduces the window within which local infringers can register or start using confusingly similar or conflicting trade marks.Equally important is the scope of such filings. Limiting protection to a single “core” class may leave flanking spaces open for others to exploit. For example, a tech brand filing only for software might later find a third party using a similar or conflicting trade mark for related hardware, accessories, or retail services. Filing in logically adjacent classes, as well as for device marks and key taglines, helps create a defensive perimeter. - Use international systems, but respect local nuance
The Madrid System allows a brand to extend protection to multiple countries through a centralised trade mark application. For Indian‑bound brands, this can be an efficient route to secure trade mark rights while maintaining overall portfolio consistency. However, Madrid designations should not be treated as a substitute for local advice.India’s practice on specification, user claim, and opposition timelines may differ from that of the brand’s home jurisdiction. Coordinating Madrid filings with local counsel helps ensure that the specification, class coverage, and supporting documentary evidence are aligned with Indian expectations, and that any oppositions are handled promptly. - Build evidence of reputation from day one
If transborder reputation is to play a role in enforcement, brands need to plan their evidentiary record in advance. Helpful materials can include:- Advertising and promotional campaigns that target or reach Indian consumers, whether through conventional media, digital platforms, or sponsorships;
- Media coverage in Indian publications or portals, including tech, lifestyle, or industry press;
- Website analytics showing significant traffic and engagement from Indian IP addresses;
- Social media metrics reflecting Indian followers, interactions, and influencer collaborations.
Keeping this material curated and date‑stamped makes it easier to demonstrate that the brand/ trade mark had a meaningful presence in the minds of Indian consumers by a particular year. In disputes where timelines are crucial, this can be decisive.
- Monitor and respond to squatting and copycats
Trade mark squatting remains a live risk in markets where global brands are aspirational but have not yet launched. This includes both straightforward attempts to register the foreign mark in identical classes and more sophisticated strategies involving related goods or services. In the online space, domain names and social handles are frequent targets.A practical approach involves:- Setting up watch services for the Indian trade mark registry to flag similar applications in relevant classes;
- Reserving key domains, including country‑code domains, and important social media handles early;
- Issuing timely cease‑and‑desist communications where clear bad faith is apparent, coupled with opposition or cancellation actions as needed.
The Tesla example [Tesla Inc. vs Tesla Power India Pvt Ltd & Ors.], where pre‑emptive steps were taken even before a full commercial launch, shows how an early assertion of rights can strengthen the brand’s position when addressing local entities who attempt to capitalise on its fame.
- Align trade mark strategy with commercial deals
Brand and IP questions often become flashpoints in commercial negotiations. In franchise, distribution, and joint‑venture deals, unclear ownership of marks or a weak filing strategy can translate directly into less favourable terms, heavier indemnities, or valuation discounts.In practice, multinationals should:- Ensure that key trade marks are filed and, where possible, registered before signing major India‑facing agreements;
- Clarify ownership and licensing structures in contracts, including quality control, sub‑licensing, and post‑termination use;
- Audit local partners’ use of the trade marks to ensure it aligns with the brand’s enforcement strategy and does not weaken distinctiveness.
This integration of trade mark planning with commercial strategy reduces the risk of disputes both with local partners and third parties.
Action Points for Global Brands
For brands, the message is not to fear complex jurisdictions like India, but to approach them with informed urgency. India rewards brands that move early, document their footprint, and align legal protection with commercial plans. It penalises those that assume global fame is self‑executing.
In practical terms, every new high‑growth jurisdiction on the roadmap should immediately trigger three internal questions: Have clearance searches been run? Have filings been made in the right classes and form? Is there a plan to build evidence of reputation? The answers to these questions will often determine whether a brand enters a market on its own terms or negotiates from a position weakened by delay.
Specialist trade mark counsel can help design and execute that roadmap, turning a patchwork of national rules into a coherent international strategy that supports sustainable brand expansion rather than reacting to crises one jurisdiction at a time.