The Madras High Court Big Bite Trademark Case
The Madras High Court, in a detailed judgment on February 11, 2026, dismissed the appeals filed by 7-Eleven International LLC, a global convenience store chain based in the USA, thereby upholding the 2014 order of the Deputy Registrar of Trade Marks. The ruling affirmed the registration of the trademark “Big Bite” in Class 30 in favor of the Indian company Ravi Foods Private Limited (the substituted third respondent, following assignments from the original applicant Dukes Consumer Care Limited), while rejecting 7-Eleven’s competing application and opposition. This decision reinforces the territorial nature of trademark rights under Indian law and clarifies the limited role of international reputation and prior filing dates when no actual use or goodwill has been established in the Indian market.
Introduction: Trademark Principles In Cross-Border Disputes
Trademark disputes involving identical or highly similar marks often hinge on the fundamental principles of priority, goodwill, and territoriality. In cross-border conflicts, foreign entities frequently invoke their global reputation, extensive international use, and early filing dates to claim superior rights, especially when a local entity enters the scene later.
The present case exemplifies such a clash between a multinational giant and an Indian food products company over the mark “Big Bite” for goods in Class 30, encompassing confectionery, biscuits, bakery items, savoury snacks, and related food products.
- Confectionery
- Biscuits
- Bakery Items
- Savoury Snacks
- Related Food Products
The Madras High Court delved deeply into whether mere international fame, prior adoption abroad, or an earlier application date in India can override the established prior user status of a domestic party that has continuously used the mark in trade within India.
The judgment underscores that Indian trademark law, while recognizing trans-border reputation in exceptional cases, predominantly adheres to the principle of territoriality, requiring concrete evidence of goodwill and reputation spilling over into or being cultivated in the Indian jurisdiction for protection against local prior users.
Factual Background
7-Eleven’s Claims
7-Eleven International LLC, renowned for operating nearly 80,000 convenience stores worldwide under the “7-Eleven” brand (including some presence in India), claimed to have adopted and continuously used the formative mark “Big Bite” since August 1988, primarily for savoury food items such as hot dogs, pizzas, and potato chips sold in its stores.
The company asserted that through extensive global use, promotion, and registrations in multiple jurisdictions (including Classes 29, 30, and 43), the mark had acquired a trans-border reputation that extended to India.
| Party | Claim | Key Date | Details |
|---|---|---|---|
| 7-Eleven International LLC | Adoption & Global Use | August 1988 | Used for hot dogs, pizzas, potato chips and savoury food |
| 7-Eleven International LLC | Indian Trademark Application | August 16, 1994 | Application No. 636986 in Class 30 |
| 7-Eleven International LLC | Advertisement | September 16, 2007 | Published in Trade Marks Journal |
Indian Company’s Claims
On the other side, the original applicant (M/s. Dukes Consumer Care Limited, later renamed SWG Consumer Care Limited and eventually assigned to Ravi Foods Private Limited effective January 21, 2025) filed Application No. 1297871 in Class 30 on July 19, 2004, seeking registration of “Big Bite” for chocolates, biscuits, bread, pastry, confectionery, ice creams, spices, and other goods in the class.
- Chocolates
- Biscuits
- Bread
- Pastry
- Confectionery
- Ice Creams
- Spices
- Other Class 30 Goods
The mark was advertised on May 15, 2005. Ravi Foods (and its predecessors) claimed continuous, open, and extensive use of the mark in India since October 5, 2004, for various food products. 7-Eleven opposed the Indian application, while the Indian side opposed 7-Eleven’s earlier-filed but later-advertised application.
| Party | Application No. | Filing Date | Advertisement Date | Status |
|---|---|---|---|---|
| Dukes / Ravi Foods | 1297871 | July 19, 2004 | May 15, 2005 | Claimed Continuous Use From October 5, 2004 |
| 7-Eleven | 636986 | August 16, 1994 | September 16, 2007 | Opposed |
Procedural Background
The oppositions were adjudicated together by the Deputy Registrar of Trade Marks, Chennai, who passed a common order on July 18, 2014. In that order, the Deputy Registrar rejected 7-Eleven’s Application No. 636986 (opposed by the Indian side under Opposition No. MAS-720132) and accepted the Indian company’s Application No. 1297871 (opposing 7-Eleven’s opposition under No. MAS-211161).
The Registrar primarily relied on the Supreme Court’s decision in Milmet Oftho Industries v. Allergan Inc. (2004) to prioritize the first actual user in India, noting that 7-Eleven had not demonstrated any use or business presence in India under the mark, while the Indian party had established prior and continuous local use.
Aggrieved, 7-Eleven filed two appeals under Section 91 of the Trade Marks Act, 1999:
- (T)CMA(TM) No. 110 of 2023 challenging the acceptance of the Indian application
- (T)CMA(TM) No. 157 of 2023 challenging the rejection of its own application
During the pendency of these appeals, there were substitutions of parties due to corporate changes and assignments, culminating in Ravi Foods Private Limited being arrayed as the third respondent. The appeals were heard and reserved on January 22, 2026, and decided on February 11, 2026.
Reasoning And Decision Of Court
The High Court meticulously examined the arguments advanced by both sides. 7-Eleven contended that the Registrar erred by applying a narrow “prior user in India” test, ignoring its prior international adoption since 1988, global registrations, trans-border reputation, and earlier filing date in 1994. It argued that the Indian adoption in 2004 was mala fide, aimed at riding on its international goodwill, and that allowing identical use would cause confusion and association. Reliance was placed on numerous precedents, including N.R. Dongre v. Whirlpool Corporation (emphasizing trans-border reputation), S. Syed Mohideen v. P. Sulochana Bai, Milmet Oftho, and various High Court decisions supporting protection of well-known or spill-over reputation.
The Court, however, rejected these contentions after a thorough analysis. It held that Indian trademark law is fundamentally territorial, and rights are acquired primarily through use in India. Mere availability of the mark on a foreign website or international reputation does not automatically confer goodwill or reputation in India absent evidence of actual spillover or substantial business activity on Indian soil. The Court observed that 7-Eleven had not placed any material showing sales, business, or reputation-building efforts in India under “Big Bite” either at the time of its 1994 application or during opposition proceedings commencing in 2007. The mere filing date, while relevant under Section 11, could not override the established prior use by the Indian party since 2004.
Distinguishing the Milmet Oftho line of cases, the Court clarified that trans-border reputation protection is exceptional and requires clear proof of reputation in India, which was absent here. The mark was not shown to qualify as “well-known” under Section 2(1)(zg) or to warrant protection under Section 11(2) or 11(3) without local goodwill. The Court found no error in the Registrar’s reliance on territorial prior use and upheld the impugned order in its entirety, dismissing both appeals without costs.
Point Of Law Settled In The Case
This judgment reaffirms and strengthens the territoriality principle in Indian trademark jurisprudence, holding that international reputation and prior foreign use, without corresponding goodwill, reputation, or actual business presence in India, cannot defeat the rights of a prior bona fide user who has continuously used the mark in the Indian market. A foreign applicant’s earlier application date alone is insufficient to prevail over a local prior user’s established trade use, particularly when no spillover of reputation is proved. The decision clarifies the narrow scope for invoking trans-border reputation under Sections 11(2) and 11(3) of the Trade Marks Act, 1999, emphasizing that concrete evidence of Indian goodwill is essential, and mere global fame or website presence does not suffice.
Case Details
| Case Title | 7 – Eleven International LLC Vs The Deputy Registrar of Trade Marks. |
|---|---|
| Date of Order | 11.02.2026 |
| Case Number | (T)CMA(TM) Nos.110 & 157 of 2023 |
| Neutral Citation | 2026:MHC:542 |
| Name of Court | High Court of Judicature at Madras |
| Name of Hon’ble Judge | The Hon’ble Mr. Justice N. Anand Venkatesh |
