Robert A. Merry and Co. Ltd., an Irish company, has sold whisky under the WHISTLER mark internationally since 2005, but never held an Indian trademark registration for it. Piccadily Agro Industries Ltd., an Indian distiller, registered WHISTLER as a mark in India as early as April 2008 and went on to launch its own single malt under the name The Whistler in 2018. Once Piccadily's whisky was in the Indian market, Robert A. Merry sued, asking the Delhi High Court to injunct Piccadily from using the mark on the ground that Robert A. Merry's own international reputation in WHISTLER predated and outranked any Indian use. Piccadily resisted and filed its own suit, asserting its Indian registration and seeking to restrain Robert A. Merry from selling its whisky in India under the same name.
The two suits were heard together, and the central question was whether Robert A. Merry could succeed in a passing-off claim without ever having registered or sold its whisky in India. Indian trademark law recognises that a foreign mark's reputation can in principle extend into India even without local sales or registration, through what is called transborder reputation, but only if the claimant shows that reputation had actually spilled over into the Indian market and reached Indian consumers before the defendant's own use began. Justice Jyoti Singh applied the territoriality principle the Supreme Court set out in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries, under which a mark's standing in India is assessed by what Indian consumers associated the mark with at the relevant time, not by how well-known it was elsewhere in the world.
Robert A. Merry's evidence on this point consisted of its foreign trademark registrations, its history of international sales, award recognitions it had picked up abroad, and its visibility online. The Court found this insufficient to establish that its reputation in WHISTLER had actually reached Indian consumers before 2018, when Piccadily launched The Whistler. Holding registrations in other countries and winning awards overseas can support a claim of global reputation, but they do not by themselves prove that Indian buyers knew the Irish brand or associated the mark with it before the Indian company's own product appeared on Indian shelves.
Having found the passing-off case against Piccadily unmade out, the Court turned to Piccadily's own suit and found it in a materially stronger position, since Piccadily held an Indian registration for WHISTLER going back to 2008, a full decade before its own commercial launch and well before any proven spillover of Robert A. Merry's reputation into India. A registered proprietor asserting infringement does not have to establish spillover reputation the way a passing-off claimant does; registration itself gives a statutory right to use the mark in India, subject to the usual defences. The Court held that Piccadily had made out a prima facie case of infringement against Robert A. Merry's continued or prospective sale of its whisky here.
On that basis, the Court dismissed Robert A. Merry's application for an interim injunction against Piccadily and instead granted Piccadily an interim injunction restraining Robert A. Merry from selling its whisky in India under the WHISTLER or The Whistler names while both suits remain pending. The ruling leaves the underlying suits, including any final relief and damages, to be decided after trial, but for the interim period the practical effect favours the Indian registrant over the foreign brand owner who stayed out of the Indian register.
The case is a reminder to foreign liquor and consumer brands eyeing the Indian market that a reputation built abroad, however long-standing, does not travel into Indian courts on its own. A brand that delays registering or selling in India, while a local player registers the same or a similar mark and builds its own market presence, risks finding that an Indian court will protect the registered local user rather than the foreign original, unless the foreign owner can show with real evidence, not just global recognition, that Indian consumers already knew the mark before the local launch.