Madras High Court Upholds Rejection of 7-Eleven’s ‘Big Bite’ Trademark, Says Global Reputation Alone Cannot Establish Goodwill in India
The Madras High Court has upheld the rejection of 7-Eleven’s application to register the trademark “Big Bite” in India. The Court ruled that a foreign company cannot depend only on its global reputation to claim trademark protection in the Indian market.
The decision came in the case of 7-Eleven International LLC v. Deputy Registrar of Trademarks. Justice N. Anand Venkatesh confirmed the 2014 order of the Trade Marks Registry, which had rejected 7-Eleven’s application and allowed the competing claim of Ravi Foods Private Limited.
Background of the Dispute
7-Eleven stated that it had been using the mark “Big Bite” internationally since 1988. It had also filed a trademark application in India in 1994. The company argued that its earlier international use and global reputation should protect its brand in India. It claimed that use of the same mark by an Indian company could create confusion among consumers.
On the other hand, Ravi Foods (earlier Dukes Consumer Care Limited) argued that it had been openly and continuously using the “Big Bite” mark in India since October 5, 2004 for food products under Class 30.
In July 2014, the Trade Marks Registry rejected 7-Eleven’s application and accepted the Indian company’s claim. 7-Eleven challenged this order before the High Court under Section 91 of the Trade Marks Act, 1999.
Key Legal Issue: Goodwill and Passing Off
The main issue before the Court was under Section 11(3) of the Trade Marks Act. This provision requires examination of whether the use of a mark would be prevented under the law of passing off.
The Court explained that passing off is based on goodwill. Goodwill, in simple terms, means the reputation and customer connection that a business builds in a particular market. The Court clearly stated that goodwill cannot exist without an actual business presence.
It observed that merely having a global reputation is not enough. It must be shown that the mark is so well known that people in India would associate it with the foreign company.
No Proven Business Presence in India
The Court found that 7-Eleven had not shown any real commercial activity in India under the “Big Bite” mark at the relevant time. There was no proof of sales or trade presence in the country.
Therefore, the Court held that 7-Eleven had not acquired sufficient goodwill in India to claim protection.
Not a Well-Known Trademark in India
The Court also examined whether “Big Bite” qualified as a well-known trademark under Sections 2(1)(zg) and 11(8) of the Act.
It noted that there was no material to prove that the mark had achieved the status of a well-known trademark in India. As a result, the case had to be decided strictly under the law of passing off.
Website Access Is Not Enough
One of 7-Eleven’s arguments was that the mark was displayed on its website, which was accessible in India. The Court rejected this submission.
It clarified that mere online visibility does not amount to use of a trademark in India. To claim protection, there must be real business activity or reputation in the Indian market.
“Proposed to Be Used” Applications
The Court also referred to Section 18 of the Trade Marks Act. It observed that when a trademark application is filed on a “proposed to be used” basis, the applicant must show a clear and present intention to use the mark.
In this case, although 7-Eleven had filed an application in 1994, it did not begin commercial activity in India for many years. This delay weakened its claim.
Final Outcome
The Court upheld the Registry’s order and confirmed that Ravi Foods’ application for the “Big Bite” mark would stand.
The ruling reinforces an important principle: foreign companies must demonstrate actual goodwill and business presence in India to claim trademark protection. Global fame alone is not sufficient.
