Mr. Urfee Roomi, Ms v. MANISH VIJAY ORS

Judgment

1. The petitioner, by way of the present rectification petition filed under Section 57 of the Trade Marks Act, 19991, seeks cancellation of the trademark ‘BLUE-JAY’ registered in favour of the respondent nos.1 and 2 vide trademark application no.815236 in Class 25, and its consequent removal from the Register of Trade Marks. Brief Facts: 2. The petitioner is a company duly organised and existing under the laws of the State of New York, USA, having its address at 1271, Avenue 1Hereinafter referred as “TM Act” Signature Not Verified C.O. (COMM.IPD-TM) 279/2023 Digitally Signed By:BABLOO SHAH Signing Date:01.07.2025 17:21:19 of the Americas, New York, NY 10020, United States of America. The petitioner is the intellectual property holding company of Major League Baseball2 and controls the licensing and merchandising of all MLB Clubs as well as the affiliated entities of MLB. 3. The petitioner adopted the trademark ‘BLUE JAYS’/ ‘TORONTO BLUE JAYS’ in 1976 in connection with the MLB franchise based in the city of Toronto and has since continuously using the trademark and its variations. Moreover, the petitioner’s trademark has been registered in numerous jurisdictions and countries around the world, including the USA, UK, EU, Australia, Brazil, China, and South Korea, among others. 4. Relevantly, the petitioner being the owner of various iterations of BLUE JAYS mark(s)3 in India, has filed the following applications: S. No. 1. 2. 3. Mark TORONTO BLUE JAYS TORONTO BLUE JAYS App/ Reg. No. Class Date of Filing 25 16 16

11.10.1983 11.10.1988 11.10.1988 499182 499209 499156

6. 499259 25

11.10.1988 5245514 41

13.12.2021 5245513 41

13.12.2021 2Hereinafter referred as “MLB” 3Hereinafter collectively referred as “BLUE JAYS marks” Signature Not Verified C.O. (COMM.IPD-TM) 279/2023 Digitally Signed By:BABLOO SHAH Signing Date:01.07.2025 17:21:19

7. 5319401 25

08.02.2022

5. Additionally, the petitioner maintains its official websites viz. https://www.mlb.com and www.mlb.com/bluejays, through which its merchandise and services are made available to consumers all around the world. The petitioner also has a substantial presence across various social

media platforms. 6. The respondent nos.1 and 2 are the partners of a partnership firm trading as M/s. PMS Creations, having its address at 70B/32 A, Rama Road Industrial Area, New Delhi-110015 and are engaged manufacturing and trading of shirts, blazers, suits, waist coats, pants, trousers, jeans, jackets and readymade garments and other allied and cognate goods under the impugned mark ‘BLUE-JAY’. The respondent no.3 is the Registrar of Trade Marks. 7. The present dispute arises out of the adoption of the impugned mark ‘BLUE-JAY’ by Mr. Ajay Kumar Gupta and Mr. Sumit Vijay, trading as A.S. Creation4, who, after adopting the said mark, applied for its registration on a ‘proposed to be used’ basis vide application no.815236 on 19.08.1998 in Class 25. The said mark was subsequently advertised in Journal No.9999-0, and was published on 25.08.2003. 8. Upon becoming aware of the advertisement of the impugned mark ‘BLUE-JAY’, the petitioner filed a Notice of Opposition on 03.02.2004, in response to which the erstwhile applicants filed their Counter Statement on 09.11.2004. 4Hereinafter referred as the “erstwhile applicants” Signature Not Verified C.O. (COMM.IPD-TM) 279/2023 Digitally Signed By:BABLOO SHAH Signing Date:01.07.2025 17:21:19

9. In the meanwhile, the erstwhile applicants, by virtue of an Assignment Deed dated 22.07.2011, assigned the impugned mark ‘BLUE- JAY’ in favour of M/s. PMS Creations, of which respondents nos.1 and 2 are partners. 10. As the petitioner was unable to file its evidence in support of the Notice of Opposition within time, it filed an Interlocutory Petition seeking condonation of delay in filing the same. However, the Deputy Registrar of Trade Marks vide its order dated 08.10.2015, held that the Notice of Opposition was deemed to have been abandoned and accordingly dismissed the same. Aggrieved thereby, the petitioner preferred an appeal vide Appeal no.OA/6/2016/TM/DEL before the erstwhile Intellectual Property Appellate Board, however, after its abolition, the same was transferred to this Court and was numbered as C.A.(COMM.IPD-TM) 152/2022. 11. Meanwhile, since the impugned mark ‘BLUE-JAY’ proceeded for registration on 08.06.2017, this Court, vide its order dated 25.09.2023, while disposing of C.A.(COMM.IPD-TM) 152/2022, permitted the petitioner to pursue remedies by way of a cancellation petition. Hence, the present cancellation petition. Submissions of the petitioner: 12. Mr. Urfee Roomi, learned counsel for the petitioner submitted as under: 12.1. The petitioner, in the year 1976, honestly adopted the trademark ‘BLUE JAYS’ for the MLB franchise/ Club for the city of Toronto and has been continuously using the mark and its variations to identify, promote, and advertise the said Club. The said trademark has been Signature Not Verified C.O. (COMM.IPD-TM) 279/2023 Digitally Signed By:BABLOO SHAH Signing Date:01.07.2025 17:21:19 consistently depicted on the Club’s uniform, the Stadium, where the Club’s games were played, and is extensively used in relation to a wide variety of goods and services associated with the Club. 12.2. As a result, ‘BLUE JAYS’ marks of the petitioner have acquired substantial, irrefutable, and insurmountable reputation and goodwill globally and also attained the status of well-known trademark, and the reputation and goodwill thereof has spilled over into India through broadcast of MLB games, widespread media coverage and accessibility of the petitioner’s websites. Reliance in this regard was placed upon Milmet Oftho Industries v. Allergan Inc.5 and N.R. Dongre v. Whirlpool Corporation6. 12.3. Furthermore, the petitioner has secured/ filed for 170 trademark registrations for ‘BLUE JAYS’ marks all over the world, including in leading jurisdictions such as the USA, UK, EU, Australia, Brazil, China, South Korea, etc. In India, it has previously held/ currently holds and has applied for registration for the ‘BLUE JAYS’ marks under various Class(s). Notably, the earliest application for registration of the ‘BLUE JAYS’ mark was filed in the year 1983. 12.4. The petitioner is the ‘prior adopter’ and ‘prior user’ of the ‘BLUE JAYS’ marks, as the respondent nos.1 and 2’s application for registration of a deceptively similar/ nearly identical mark ‘BLUE-JAY’ was filed almost 22 years after the petitioner adopted and continuously using its mark. By that time, the petitioner’s ‘BLUE JAYS’ marks had already acquired significant reputation and goodwill in India and the only