A claim of passing off depends on demonstrating substantial goodwill and reputation within the domestic market at the time of a mark’s adoption. Global recognition is insufficient without objective evidence of spillover; bad faith must be proven specifically at the time of filing, not merely inferred through suspicion.

JUDGMENT

C. HARI SHANKAR, J.

1. The blue jay, a truly beautiful bird, is native to eastern North America. Though the appellants before us have sought to contend that the blue jay is also known as the Indian Roller and is the State bird of Karnataka, Andhra Pradesh and Odisha, this is incorrect. The blue jay and the Indian roller belong, in fact, to different avian families, with the former belonging to the Corvidae and the latter to the Coraciidae family. The illusion seems to have originated in the description, by the famous naturalist Carl Linnaeus, in 1758, of the Indian Roller as the “Jay from Bengal”.

2. Enough, however, of ornithology. The blue jay occupies our attention, in this appeal, not in its natural avian avatar, but as the much more suburban subject matter of a trade mark. And thus we descend, from the skies above to the earth below.

The lis

3. By a judgment dated 1 July 2025, a learned Single Judge of this Court has, in CO (Comm IPD-TM) 279/2023¹1 Major League Baseball Properties Inc v Manish Vijay & Ors. instituted by the respondent under Section 57(2)²2 (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit. of the Trade Marks Act, 1999, struck the registered BLUE-JAY trade mark of the appellants off, from the Register of Trade Marks.

4. Aggrieved thereby, the respondents before the learned Single Judge are in appeal before us.

5. The statutory scheme

5.1 Sections 47 and 57 are the only provisions, in the Trade Marks Act, under which a registered trade mark of one person can be removed from the Register of Trade Marks at the instance of another. Section 47 allows the mark to be removed on the ground of continuous disuse. Section 57(1) allows removal of a registered trade mark if any condition, in relation to the mark and entered in the Register, is contravened or not observed.

5.2 These provisions do not concern us. We are concerned with Section 57(2).

5.3 Section 57(2) can be invoked by any person who is aggrieved

(i) by the absence from the Register of any entry, or

(ii) by any entry made without sufficient cause, or

(iii) by any entry which wrongly remains on the Register, or

(iv) by any error or defect in any entry in the Register,

and empowers the Registrar, or the High Court, to make, expunge or vary the entry. Circumstances (ii) and (iii), if accepted, would naturally result in expunction of the entry, as has happened here.

5.4 The circumstances in which a trade mark can be said to be “wrongly remaining” on the Register are not elucidated in Section 57. Nor are they to be found elsewhere in the Trade Marks Act. In the circumstances, one has to refer, for the purpose, to Sections 9 and 11, which set out the grounds on which registration of a trade mark can be refused. If a mark ought not to have been registered in the first place, as it breached