The Court held that MLB failed to prove prior use or reputation of the BLUE JAYS mark in India in 1998 and that the appellants’ adoption of BLUE-JAY was not shown to be dishonest. The earlier order cancelling the mark was set aside and the registration restored.

LEGAL ISSUE

The question before the Court was whether the registered trademark “BLUE-JAY” owned by the appellants could lawfully remain on the Register of Trade Marks, or whether it had been dishonestly adopted in bad faith so as to justify its removal under Section 57(2) read with Section 11(10)(ii) of the Trade Marks Act, 1999. The appeal challenged the Single Judge’s decision cancelling the appellants’ mark on the ground that it infringed the alleged prior rights and trans-border reputation of the respondent’s mark “BLUE JAYS.”

BRIEF FACTS

The respondents, proprietors of the intellectual property associated with Major League Baseball (MLB) and its Canadian club Toronto Blue Jays, filed proceedings under Section 57(2) seeking cancellation of the appellants’ registered mark BLUE-JAY in Class 25. They claimed long-standing global goodwill in the BLUE JAYS mark since 1976 and argued that the appellants had adopted a deceptively similar mark in bad faith to ride upon that reputation.

The learned Single Judge accepted these contentions, held that the appellants’ explanation for adoption of the mark was inconsistent and unconvincing, and concluded that the adoption was tainted with bad faith. The appellants’ trademark was accordingly struck off the Register. Aggrieved by this finding, the appellants filed the present appeal.

COURT’S ANALYSIS

The Division Bench examined the statutory framework of Sections 47 and 57 of the Trade Marks Act, noting that Section 57(2) can be invoked only where an entry wrongly remains on the Register or has been made without sufficient cause. The Court emphasised that a finding of bad-faith adoption must rest on clear evidence and cannot be inferred merely from differing explanations or speculative assumptions.

The Court observed that there was no contradiction of substance between the appellants’ explanation before the Trade Marks Registry and their explanation before the Single Judge regarding the origin of the mark. Even assuming some variation in narrative, such discrepancy did not amount to proof of dishonest adoption. On the date of adoption in 1998, the respondents had no subsisting registration in India, and their earlier Indian applications had already been abandoned. The abandonment of those applications, the Court noted, would reasonably indicate that other traders were free to adopt or apply for similar marks.

Crucially, the Court found that the respondents failed to prove use or reputation of the BLUE JAYS mark in India prior to 1998. The alleged goodwill existed primarily in the United States and Canada, and there was no cogent evidence of spill-over reputation into the Indian market at the relevant time. As such, the premise that the appellants were copying a reputed foreign mark was unsustainable.

The Bench held that the Single Judge’s findings on trans-border reputation, prior user, and bad-faith adoption were factually and legally untenable. Mere suspicion or moral disapproval of adoption could not justify rectification unless supported by concrete evidence demonstrating dishonest intent.

JUDGEMENT

The High Court concluded that no case had been made out for removal of the appellants’ mark “BLUE-JAY” from the Register under Section 57(2). The finding of bad faith was declared unsound, and the determination of prior user in favour of the respondent was held to be erroneous in the absence of proof of use in India.

Accordingly, the impugned judgment dated 1 July 2025 was quashed and set aside, and the appellants’ trademark “BLUE-JAY” was restored to the Register. The appeal was allowed, with no order as to costs.

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Case Title

Mr. Sumit Vijay & Anr. vs. Major League Baseball Properties Inc. & Anr.

Court

High Court of Delhi, New Delhi

Case Number

LPA 475/2025 with CM Applications 45526/2025 & 45579/2025

Judgment Reserved

17 September 2025

Judgment Pronounced

05 January 2026

Bench

Justice C. Hari Shankar & Justice Om Prakash Shukla