The judgment emphasizes that goodwill must be established within the jurisdiction for trademark protection, rejecting claims based solely on international reputation without local business presence.

JUDGMENT :

N. Anand Venkatesh, J.

These appeals, filed under Section 91 of the Trademarks Act, 1999 (for short, the Act), are directed against a common order dated 18.7.2014 passed by the Deputy Registrar of Trademarks in (i) Trademark Opposition No.MAS - 211161 to Application No.1297871 in Class 30 and (ii) Trademark Opposition No.MAS - 720132 to Application No.636986 in Class 30, respectively.

2. Vide the impugned order, Application No.636986 filed by the appellant seeking registration of their mark “Big Bite” in Class 30 has been rejected on the basis of the opposition lodged by the 3^rd respondent and Application No.1297871 filed by the 3^rd respondent in seeking registration of their mark “Big Bite” in Class 30 has been accepted thereby rejecting the opposition lodged by the appellant herein.

3. The case of the appellant is as follows:

(i) The appellant operates convenience store chain, owning/ operating/franchising nearly 80,000 stores in 22 countries around the world under the 7 – Eleven mark and brand. The appellant also has a store chain in India. The appellant intended to make use of their “Big Bite” trademark with respect to savoury food items and more specifically hot dogs, pizzas and potato chips.

(ii) 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 and hence, the appellant is the original, genuine and bona fide adopter of “Big Bite” formative marks for more than three decades. In order to statutorily protect their rights, the appellant along with their affiliated/related companies, secured registration of “Big Bite” marks in numerous jurisdiction across the world in numerous classes namely Classes 29, 30 and 43.

(iii) By virtue of continuous and extensive use and promotion, which includes various global registrations, the appellant earned a reputation for the “Big Bite” mark, which transcends geographical boundaries including India. The appellant also submitted their earliest trademark application for the mark “Big Bite” on 16.8.1994 under No. 636986 in Class 30. The mark was advertised for registration under the Proviso to Section 20(1) of the Act in the trade marks journal dated 16.9.2007.

(iv) On 18.2.2008, the original third respondent - one M/s.Dukes Consumer Care Limited gave opposition and notice objecting to the registration of the mark. The appellant filed their counter statement for the opposition.

(v) The said M/s.Dukes Consumer Care Limited had, on 19.7.2004, submitted Application No.1297871 in Class 30 for the trade mark “Big Bite” in respect of chocolates, biscuits, bread, pastry, confectionery, ice creams, spices and all goods included in Class 30. The mark was advertised on 15.5.2005 and the appellant submitted their objections to the registration of the trade mark. A counter statement was filed for the opposition made by the appellant.

(vi) The said M/s.Dukes Consumer Care Limited was rechristened on 09.8.2023 as one M/s.SWG Consumer Care Limited, which, later assigned the mark to one M/s.Ravi Foods Private Limited with effect from 21.1.2025. Accordingly, the said M/s.Ravi Foods Private Limited was substituted