Introduction
The decision delivered by the High Court of Judicature at Bombay in Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors., Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025, decided on 7 May 2026, is an important judgement concerning the principles of transborder reputation, passing off, territorial goodwill, and copyright protection in artistic label works.
The judgement was delivered by Justice Sharmila U. Deshmukh and extensively discusses the legal standards applicable when foreign entities seek protection of unregistered trademarks in India.
Core Dispute in the Case
The dispute arose between UAE-based perfume manufacturers claiming global reputations in marks such as “Ahmed Al Maghribi”, “Bin Shaikh”, “Kaaf”, “Oud & Roses” and “Marj”, and Indian defendants who were allegedly using deceptively similar marks and artistic labels in India.
The plaintiffs sought interim injunctions alleging passing off and copyright infringement.
The Court, however, drew a clear distinction between trademark goodwill and copyright ownership.
- While the Court refused interim relief for passing off due to lack of proof of substantial goodwill in India,
- It granted protection against infringement of artistic label works after finding that some of the impugned labels were slavish reproductions of the plaintiffs’ artistic works.
Importance of the Judgment
The judgement is significant because it reiterates that mere worldwide reputation or internet presence is not sufficient to establish transborder reputation in India.
At the same time, it clarifies that artistic works incorporated in labels can independently enjoy copyright protection even if trademark rights are disputed.
| Legal Issue | Court’s Observation |
|---|---|
| Transborder Reputation | Mere global reputation or online presence is insufficient without substantial goodwill in India. |
| Passing Off | Relief denied due to lack of adequate proof of Indian customer base and goodwill. |
| Copyright in Artistic Labels | Protection was granted where labels were found to be slavish reproductions. |
| Unregistered Trademarks | Foreign entities must establish an actual market reputation within India. |
Factual and Procedural Background
The plaintiffs, Ahmed Perfumes LLC and another entity incorporated in the United Arab Emirates, were engaged in the manufacture and sale of perfumes and fragrance products internationally.
They claimed ownership and worldwide goodwill in several perfume brands and label marks, including “Ahmed Al Maghribi”, “Ahmed Perfumes”, “Bin Shaikh”, “Kaaf”, “Oud & Roses”, and “Marj”.
The plaintiffs asserted that these marks had acquired substantial international recognition through:
- Global sales,
- Social media presence,
- Websites,
- Exhibitions,
- Promotional activities, and
- Customer goodwill.
Plaintiffs’ Claims Regarding Indian Market
According to the plaintiffs, their products had entered the Indian market since at least November 2021 through Indian customers purchasing products abroad and bringing them into India.
The plaintiffs further claimed that they subsequently entered into distribution arrangements for direct sales in India from July 2024 onwards.
They also relied upon:
- Domain names,
- Websites,
- Instagram pages,
- Facebook pages,
- LinkedIn accounts,
- Online advertisements,
- Promotional campaigns, and
- Publicity materials
to establish spillover reputation in India.
Allegations Against the Defendants
The defendants were Indian entities and individuals alleged to have adopted deceptively similar marks and artistic labels in relation to perfume products.
The plaintiffs alleged that the defendants had dishonestly copied not only their brand names but also sub-brands and artistic packaging.
The plaintiffs argued that such conduct amounted to the following:
- Passing off, and
- Copyright infringement.
Defendants’ Contentions
The defendants opposed the interim application by contending that the plaintiffs had failed to establish actual goodwill or a customer base in India.
They argued that:
- The plaintiffs did not possess registered trademarks in India.
- The evidence merely showed sales abroad to customers who later brought products into India.
- The defendants had prior adoption and use of certain marks in India, and
- The plaintiffs failed to establish transborder reputation within the Indian market.
Dispute Before The Court
The principal issue before the Bombay High Court was whether the plaintiffs had established sufficient transborder reputation and goodwill in India to maintain an action for passing off despite being foreign entities without substantial direct business operations in India.
The Court was also required to determine whether the defendants’ use of allegedly similar labels and artwork constituted copyright infringement under Indian copyright law.
The dispute therefore involved two separate but related legal questions.
- Trademark passing off based on transborder reputation and spillover goodwill.
- Ownership and infringement of artistic works embodied in perfume labels and logos.
Reasoning And Analysis Of The Judge
The court emphasised that in passing-off actions involving foreign entities, the claimant must establish not merely global reputation but actual goodwill and customer recognition within India.
The court first examined the classic trinity of passing off, namely:
| Essential Element | Description |
|---|---|
| Goodwill | Existence of reputation and customer recognition in the market. |
| Misrepresentation | False representation likely to deceive consumers. |
| Damage | Likelihood of injury to the claimant’s business or reputation. |
Since the plaintiffs were foreign entities and their trademarks were unregistered in India, the court observed that the plaintiffs were required to establish spillover reputation and goodwill in India before any passing-off claim could succeed.
Reliance On Whirlpool Case
The Court extensively relied upon the Supreme Court judgement in N.R. Dongre and Ors v. Whirlpool Corporation and Anr, (1996) 5 SCC 714, where the Supreme Court recognised that even advertisement of a trademark without actual sales could constitute use sufficient to establish transborder reputation.
The Bombay High Court noted that Whirlpool represented an early recognition of spillover reputation through advertisements circulating in India.
Reference To Milmet Ortho Case
The Court also referred to Milmet Oftho Industries and Ors v. Allergan Inc. (2004) 12 SCC 624, where the Supreme Court held that international reputation and medical literature circulating in India could support passing off claims in pharmaceutical products.
The Court noted, however, that pharmaceutical products constitute a special category because doctors and medical professionals regularly rely upon international journals and literature.
Importance Of Toyota Prius Judgment
The most significant reliance was placed upon the landmark Supreme Court judgement in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd and Ors., (2018) 2 SCC 1.
In Prius, the Supreme Court strongly favoured the “territoriality principle” over the “universality principle”.
The Court reproduced and analysed the Supreme Court’s reasoning that a claimant must establish actual goodwill and customer recognition within India rather than merely relying upon global reputation.
The court highlighted that the mere existence of a worldwide reputation is insufficient unless the claimant proves a substantial presence of the mark in the Indian market.
UK Supreme Court Starbucks Principle
The Court further referred to Starbucks (HK) Ltd and Anr v. British Sky Broadcasting Group Plc and Ors, (2015) 1 WLR 2628, where it was held that mere reputation is insufficient and that a claimant must demonstrate customers within the jurisdiction.
Justice Deshmukh emphasised that Indian courts have consistently followed this principle while dealing with foreign trademark owners seeking passing-off protection.
Athlete’s Foot Case Analysis
The court also discussed Athlete’s Foot Marketing Associates Inc. v. Cobra Sports Ltd, [1980] RPC 343, where it was observed that no trader can complain of passing off in a territory where it has no customers or trade relations.
Bolt Technology Case Reference
The Court relied upon the Delhi High Court decision in Bolt Technology OU v. Ujoy Technology Pvt. Ltd and Anr., (2023) 96 PTC 155, which summarised the principles flowing from Toyota Prius and clarified that a claimant must show significant goodwill in India and not merely worldwide reputation.
Major League Baseball Case Discussion
Another important precedent discussed by the Court was Sumit Vijay and Another v. Major League Baseball Properties Inc., 2026 SCC OnLine Del 2.
In that case, the Delhi High Court held that mere accessibility of websites or availability of products on e-commerce platforms does not establish a transborder reputation unless there is evidence of substantial Indian customers, viewership, circulation, or purchases within India.
Justice Deshmukh expressly agreed with this reasoning and applied it to the present dispute.
Findings On Plaintiffs’ Evidence
Applying these principles, the Court found serious deficiencies in the plaintiffs’ evidence.
The court observed that most invoices relied upon by the plaintiffs reflected sales made in the UAE to customers who subsequently brought products into India.
Such sales did not establish that the plaintiffs had customers in India.
The court emphasised that the law distinguishes between
- Customers who purchase goods abroad.
- Customers who purchase goods within India.
The court also found that the plaintiffs had failed to produce reliable evidence regarding:
- Indian distributors.
- Circulation of advertisements in India.
- Social media followers from India.
- Targeted Indian promotional campaigns.
- Substantial sales turnover in India.
The Court noted that the promotional expenditure shown for India through Meta and Google advertisements was extremely insignificant and did not support the claim of extensive market penetration.
Court Conclusion On Passing Off
The court therefore concluded that the plaintiffs had failed to establish prima facie goodwill and reputation in India necessary for a passing-off action.
The court held that:
- There were no genuine documented local sales.
- There were no substantial advertisements targeted at Indian consumers.
- There was no convincing evidence showing that the plaintiffs’ marks had permeated the Indian market.
Copyright Infringement Findings
However, on the issue of copyright infringement, the court reached a different conclusion.
The plaintiffs had specifically pleaded that certain artistic labels and logos were conceived and designed in-house in 2015 and that copyright protection extended to India through the International Copyright Order, 1999, because the UAE is a WTO Convention country.
The court found that the defendants had failed to explain the adoption of identical artistic labels and had not produced material showing prior authorship or ownership of the artwork.
The Court observed that the impugned labels were “slavish reproductions” of the plaintiffs’ artistic works.
Accordingly, the Court held that the plaintiffs had established a prima facie case for copyright infringement.
Final Decision of the Court
The Bombay High Court refused interim relief in respect of passing off and trademark claims after holding that the plaintiffs had failed to establish sufficient transborder reputation and goodwill in India.
However, the Court granted an interim injunction against copyright infringement and restrained the defendants from reproducing, printing, publishing, or using the plaintiffs’ artistic label works and logos or any colourable imitation thereof. The interim application was therefore partly allowed only to the extent of copyright protection.
Point of Law Settled in the Case
The judgement reinforces the territoriality principle in trademark passing off actions involving foreign entities. It clarifies that worldwide reputation, internet accessibility, social media presence, and isolated overseas sales to Indian customers are insufficient to establish transborder goodwill in India.
A foreign claimant must demonstrate the following:
- Substantial customer recognition in India
- Market penetration within India
- Advertisements targeting Indian consumers
- Commercial presence within India
The judgement also clarifies that copyright in artistic label works can independently receive protection even where trademark passing-off claims fail due to lack of territorial goodwill.
Case Details
| Particulars | Details |
|---|---|
| Case Title | Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors. |
| Date of Judgment | 7 May 2026 |
| Case Number | Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025 |
| Neutral Citation | 2026:BHC-OS:11828 |
| Court | High Court of Judicature at Bombay |
| Honourable Judge | Justice Sharmila U. Deshmukh |
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
