Case Note & Summary
The appeals were filed under Section 91 of the Trademarks Act, 1999 against a common order dated 18.7.2014 by the Deputy Registrar of Trade Marks. The appellant, 7-Eleven International LLC, a US-based convenience store chain, had applied for registration of its 'Big Bite' trademark in Class 30 under Application No.636986. The appellant claimed continuous use of the mark since August 1988 internationally and had earlier registrations in multiple jurisdictions. Its application was advertised in 2007. The original third respondent, initially Dukes Consumer Care Limited (later renamed SWG Consumer Care Limited and subsequently assigned the mark to Ravi Foods Private Limited), had also applied for 'Big Bite' in Class 30 under Application No.1297871, claiming use since 2004. Both parties opposed each other's applications. The Deputy Registrar rejected the appellant's application and allowed the third respondent's, holding that only prior user in India counted, relying on the Supreme Court decision in Milmet Oftho Industries v. Allergan Inc. (2004). The appellant challenged this, arguing that the Deputy Registrar misapplied the prior user test by ignoring its prior international adoption, trans-border reputation, and goodwill in India. The appellant further contended that the third respondent adopted an identical mark mala fide to exploit its reputation, and that such use would cause confusion or association. The appeals sought to set aside the order, allow the appellant's application, and reject the third respondent's. The matter was heard and reserved for judgment. The final decision and ratio decidendi are not available in the provided text, as the judgment appears to be incomplete, ending during the submissions of counsel. Therefore, the court's ultimate holding and directions remain unknown.
Issue of Consideration
Whether the Deputy Registrar of Trade Marks erred in restricting the prior user test to use in India and disregarding the appellant's prior international adoption, use, and trans-border reputation of the 'Big Bite' mark, thereby wrongly rejecting the appellant's application and allowing the third respondent's application.
Case Details
2026 LawText (MAD) (02) 149
(T) CMA (TM) Nos.110 & 157 of 2023
K. Harishankar for M/s.Archer & Angel, S. Diwakar, K. Subbu Ranga Bharathi, Aanchal M. Nichani
7-Eleven International LLC
1. The Deputy Registrar of Trade Marks, 2. The Registrar of Trade Marks, 3. Ravi Foods Private Limited
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Nature of Litigation
Trademark opposition appeals against a common order of the Deputy Registrar of Trade Marks rejecting the appellant's application and allowing the third respondent's application for the 'Big Bite' mark in Class 30.
Remedy Sought
Appellant sought to set aside the impugned order dated 18.7.2014, allow its own application for registration of 'Big Bite' in Class 30, reject the third respondent's application, and award costs.
Filing Reason
The Deputy Registrar erroneously applied the prior user test by limiting it to use in India and ignored the appellant's prior international adoption and trans-border reputation, thus wrongly deciding the oppositions.
Previous Decisions
Impugned common order dated 18.7.2014 by Deputy Registrar of Trade Marks in Opposition No.MAS-211161 to Application No.1297871 and Opposition No.MAS-720132 to Application No.636986.
Issues
Whether the Deputy Registrar erred in restricting the prior user test to use in India and disregarding the appellant's prior international adoption, use, and trans-border reputation of the 'Big Bite' mark?
Whether the third respondent's adoption of the identical mark 'Big Bite' for allied goods was mala fide and likely to cause confusion or association with the appellant's well-known mark?
Submissions/Arguments
The appellant argued that the Deputy Registrar misapplied Milmet Oftho Industries v. Allergan Inc. by incorrectly holding that only prior user in India could be considered, ignoring the appellant's international adoption since 1988, global registrations, and trans-border reputation in India.
The appellant contended that the third respondent's adoption of 'Big Bite' in 2004 for identical and allied goods was mala fide, intended to ride on the appellant's international goodwill and reputation, and would cause consumer confusion and likelihood of association.
The appellant relied on several precedents, including S. Syed Mohideen, N.R. Dongre, Jolen Inc., Cadbury UK, Dalip Chand Aggarwal, and Drums Food International, to support the proposition that trans-border reputation and prior international adoption are relevant factors in trademark opposition proceedings.
The appellant submitted that it had prior Indian application dating back to 1994 and that the mark was advertised in 2007, establishing its claim, whereas the third respondent's application was later in 2004.
Judgment Excerpts
The appellant claims that the 'Big Bite' formative mark has been continuously used by them since August 1988 in respect of their goods and services.
The first respondent passed the impugned order solely on the basis of the judgment of the Hon’ble Supreme Court in Milmet Oftho Industries Vs. Allergan Inc.
The first respondent committed a fundamental mistake while passing the impugned order by assuming that the prior user test had to be applied only with respect to the usage in India and that the international usage could not be taken into consideration.
Procedural History
Appellant filed Application No.636986 for 'Big Bite' in Class 30 on 16.8.1994; advertised on 16.9.2007. Original third respondent (Dukes Consumer Care Limited) opposed on 18.2.2008. Third respondent filed Application No.1297871 for 'Big Bite' in Class 30 on 19.7.2004; advertised on 15.5.2005; appellant opposed. After name changes and assignment, Ravi Foods Private Limited was substituted as third respondent. Deputy Registrar of Trade Marks passed a common order dated 18.7.2014, rejecting appellant's application and allowing third respondent's application. Appellant filed appeals under Section 91 of the Trademarks Act, 1999 before the Madras High Court. Matter heard and reserved for judgment.
Acts & Sections
- Trademarks Act, 1999: Section 91, Section 20(1)
