‘Blue Jays’ Trademark: Court Allows Cancellation Petition

 In a judgment dated July 1, 2025, the Delhi High Court held that Major League Baseball Properties, Inc. was the prior user of the ‘BLUE JAYS’ trademark and ordered cancellation and removal of the registration of the mark ‘BLUE-JAY’ from the Register of Trade Marks.[1]

Background

The trademark ‘BLUE JAYS’/‘TORONTO BLUE JAYS’ was adopted by the petitioner company in the 1970s in connection with the MLB franchise based in Toronto.

In 2004, upon noticing the advertisement of the impugned mark, the petitioner filed a notice of opposition. A counter-statement was filed later that year. In 2011, the original applicants assigned the impugned mark to a New Delhi-based partnership firm. However, due to a delay in filing evidence in support of the notice of opposition, the Deputy Registrar of Trade Marks, in an October 2015 order, held that the notice of opposition was deemed to have been abandoned.

Aggrieved, the petitioner approached the erstwhile Intellectual Property Appellate Board (IPAB), challenging the said order. Following its abolition, the appeal was transferred to the Delhi High Court.[2] Meanwhile, the registration certificate for the impugned mark was granted, leading the Court to dispose of the appeal with liberty to file a cancellation petition.

A fresh cancellation petition was then filed against two partners of the New Delhi-based partnership firm (the mark’s new assignee) and the Registrar of Trade Marks, seeking cancellation of registration of the impugned mark in Class 25.

Key Observations by the Delhi High Court

The Delhi High Court made the following key observations:

• Dishonest Intention Behind Adoption: The inconsistencies between the respondents’ statements before the Trade Marks Registry and those made in the present proceedings were highlighted. It was held that such conduct reflected a dishonest intention to ride upon the goodwill and reputation of the petitioner.

• Prior Use by the Petitioner: The Court noted the petitioner’s trademark had a worldwide presence, appeared consistently on franchise uniforms and goods and services associated with the club, and was registered in India under various classes. It also considered the mark’s presence on Indian-accessible websites, product availability in India since 1996, and MLB broadcasts in India since 1997.

Whereas, the respondents adopted the impugned mark nearly 22 years after the petitioner had already adopted the ‘BLUE JAYS’ trademark. As the prior adopter and user, the petitioner was held to have a superior right over the respondents.

• Right to Seek Cancellation Maintained: The Court clarified that the earlier abandonment of the petitioner’s application for registration in Class 25 did not prevent it from seeking cancellation/rectification of a mark (wrongly) remaining in the Register of Trade Marks. The petitioner had, in any case, provided a plausible justification for the same.

With this, the Court allowed the petition and directed the Registrar of Trade Marks to cancel and remove the registration of the impugned mark ‘BLUE-JAY’ registered vide application no.815236 in Class 25 from the Register.

[1] Major League Baseball Properties Inc v. Manish Vijay & Ors. [C.O. (COMM.IPD-TM) 279/2023].

[2] C.A.(COMM.IPD-TM) 152/2022.