Bombay High Court's Double Take: New Precedents on Trademark Acceptance and International Trade Jurisdiction.


13 June 2025 Trademark Laws in India >> Intellectual Property Rights  

The High Court of Judicature at Bombay recently delivered significant judgments on June 13, 2025, addressing complex legal issues in trademark law and international trade agreements. These cases highlight the judiciary's role in interpreting statutory provisions, assessing evidentiary standards, and navigating the interplay between international treaties and domestic law.

Trademark Application Refusal: The Case of Yamaha's 'WR' Mark

In the case of Yamaha Hatsudoki Kabushiki Kaisha v/s The Registrar of Trade Marks, the Bombay High Court deliberated on the refusal of Yamaha's application to register its 'WR' trademark. The Registrar of Trade Marks had refused the application, citing a likelihood of confusion with Honda Motor Company Ltd.'s registered 'WR-V' mark under Section 11(1) of the Trade Marks Act, 1999.
 
 

Yamaha, established in Japan in 1955, has a global presence as a leading manufacturer of motorcycles, marine products, and All-Terrain Vehicles (ATVs). The company asserted prior adoption and use of the 'WR' trademark since August 1990 for two-wheeler and three-wheeler products, parts, and accessories. Yamaha highlighted its extensive sales in 131 countries since 1999, currently selling in at least 62 countries, and the mark receiving a Red Dot Design Award in 2013. Furthermore, Yamaha emphasized that it had obtained 'WR' trademark registrations in numerous international jurisdictions, including the United States, European Union, Australia, New Zealand, and Japan, and that its presence on social media demonstrated Indian consumers' familiarity with the product.

Yamaha contended that the Registrar's refusal order was "cryptic" and lacked proper consideration of the detailed material submitted, which demonstrated prior use, international registrations, and significant sales figures. They argued that transborder reputation, as affirmed by the Supreme Court in Milment Oftho Industries & Ors. V/S. Allergan Inc., should have been considered.

The Registrar, represented by Mr. Abhishek Bhadang, maintained that Section 11(1) of the Trade Marks Act was correctly invoked due to the likelihood of confusion between the two marks, both registered in Class 12, which includes motorcycles. However, the High Court observed that while Section 11(1) could be invoked, the Registrar's order was indeed brief and failed to adequately consider the elaborate material presented by Yamaha, particularly concerning prior use and international market presence. The Court emphasized the importance of a detailed, reasoned order and highlighted the relevance of Section 20(1) of the Trade Marks Act, which allows for advertisement of an application before acceptance under certain circumstances.

Customs Dispute and the ASEAN-India Free Trade Agreement (AIFTA)

In another significant ruling, Purple Products Private Limited, Mumbai & Another v/s Union of India, the Bombay High Court addressed a challenge to show cause-cum-demand notices issued under Section 28 of the Customs Act, 1962. The notices pertained to the import of "Tin Ingots" from Malaysia, where the petitioners claimed benefits under Customs Notification No. 46 of 2011. The core of the dispute revolved around allegations that the petitioners misrepresented the Regional Value Content (RVC) of the imported Tin Ingots, claiming it was more than 35% when investigations by the Directorate of Revenue Intelligence (DRI) suggested otherwise.

The petitioners argued that the transaction was governed by the Free Trade Agreement dated August 30, 2009 (AIFTA) between India and ASEAN countries, with Malaysia being an ASEAN member. They contended that the Customs authorities lacked jurisdiction to initiate adjudication proceedings under the Customs Act without first resorting to the specific dispute resolution mechanism provided under Article 24 of AIFTA. They also highlighted that a 2020 amendment to the Customs Act, adding Chapter VAA and Section 28DA, suggested that prior to this amendment, customs authorities lacked jurisdiction over such country-of-origin disputes.

Conversely, the respondents, represented by Mr. Mishra, argued that international treaties are not directly enforceable in Indian courts unless explicitly incorporated into municipal law. They pointed out that the Customs Tariff (DOGPTA) Rules 2009, enacted to give effect to AIFTA provisions, did not reference Article 24. Therefore, the customs authorities were justified in issuing notices under the Customs Act due to substantial material indicating suppression and fraud regarding the RVC of the imported Tin Ingots.

The High Court noted that the Supreme Court had previously set aside a dismissal of these petitions, restoring them for a decision on their merits, specifically concerning the efficacy of Article 24 of the AIFTA. The Court's consideration underscored the fundamental distinction between the direct application of treaties in domestic law and the "act of transformation" principle, where an international treaty requires domestic legal provisions for its enforcement. While the DRI's investigation indicated inflated RVC, the central jurisdictional question remained regarding the prerequisite of invoking the AIFTA's dispute resolution mechanism before proceeding under domestic customs law.

These judgments underscore the intricate and evolving landscape of legal interpretation in India, particularly at the intersection of domestic statutes and international agreements.


  Section 11, TRADE MARKS ACT - 1999  

  TRADE MARKS ACT, 1999