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11. Mr. Kirpekar has also placed reliance on invoice dated 31st January 2019, whereunder the petitioner‟s products under the brand BPI SPORTS, were shipped from Hollywood to New Jersey, as well as the consequent invoice dated 2nd March 2019, whereby they were further transported to Pearl International, Mumbai, who was the petitioner‟s selling agent in India. As such, he submits that the petitioner was enjoying transborder reputation in India even as far back as in January 2019 to the knowledge of Respondent 1.

32. On analysing the material cited by Mr. Kirpekar to substantiate his case of transborder reputation of the petitioner‟s mark in India, I am unable to convince myself that such a case exists, on the anvil of the standards laid down in Toyota12. Mr. Kirpekar has placed, on record, a sole invoice, through which goods bearing the petitioner‟s mark were imported into India. All other invoices, from pages 33 to 124 of the documents filed with the petition on which Mr. Kirpekar relied, are invoices in which the goods have been sold within the US.

34. Volvo4 was a case in which, on the basis of extensive discussion over several paragraphs, the High Court of Bombay came to the conclusion that the Volvo brand name had acquired worldwide reputation and goodwill. For ready reference, paras 61 to 67 of the said decision may be reproduced thus:

"61. Taking into consideration the various cases cited by both sides we are of the opinion that the crux of the passing off action lies in actual or possible or probable deception. The plaintiff necessarily has to establish reputation and goodwill. In quia timet action he must also show the probability of the plaintiffs suffering damage either in trade or to his goodwill and reputation. Deception may be of several kinds, i.e. that the public may think that the goods manufactured by the defendants are in fact manufactured by the plaintiffs or that there is some trade connection or association of the defendants with the plaintiffs. It is also clear that the transborder reputation has been recognized by the Indian Courts and as a matter of law it is not necessary to prove the actual sale, if by other material, presence of the plaintiffs in India and goodwill and reputation in India is demonstrated. It is also clear to us that as a matter of law the "common field of activity" is not required to be established. However, as the crux of passing off action lies in Neutral Citation Number : 2023:DHC:2920 possible deception, the existence of common field of activity is always relevant consideration. If there is common field of activity, possibility of deception is very high and if there is common field of activity possibility may be less, but it cannot be laid down as a rule of law that there can be no possibility at all. Thirdly and more importantly, all these issues ultimately will depend on the facts and circumstances and the material on record of each particular case, as to whether the plaintiff has established the goodwill or reputation, whether the plaintiff has established the transborder reputation, whether the defendant has caused misrepresentation innocently or deliberately and whether the plaintiff has suffered damage or is likely to suffer damage in quia timet action. These will be questions of fact to be determined by the court. It is also clear that if it is shown that the defendant intended to deceive, the burden would be much lighter on the part of the plaintiff. The existence of unexpected and unexplained similarities between the goods of the defendant and the plaintiff or lack of explanation or false explanation for adoption of name by the defendant, may be extremely relevant.

35. Mr. Kirpekar has not placed on record any material, save certain invoices which dealt with transactions within the US, to make out a case of worldwide or global reputation of the BPI SPORTS mark asserted in the petition. The decision in Volvo4, therefore, cannot apply to the present case.

36. Milmet Oftho6 dealt with pharmaceutical products. The Supreme Court observed that pharmaceutical products often enjoyed a global reputation, especially because of free availability of medical literature as well as the discussions of such products in medical conferences, symposia and lectures, as well as sales, advertisements of the products in newspapers, periodicals, magazines and other media which are available in this country. No material to that effect has been placed on record by the petitioner in the present case. As such, it cannot be said, applying the tests in Milmet Oftho6, that a case of transborder reputation, i.e. of the reputation of the petitioner in the US have spilled over into India, can be said to be made out.