| CASE NAME AND CITATION | TOYOTA JIDOSHA KABUSHIKI KAISHA VERSUS M/S PRIUS AUTO INDUSTRIES LTD. & ORS. C.A. No. 005375 – 005377 / 2017 , SLP(C) No. 011505 – 011507 / 2017 |
| DECIDED BY [COURT] | SUPREME COURT OF INDIA |
| JUDGE/S NAME | Hon’ble Chief Justice Ranjan Gogoi (Retired) & Hon’ble Mr. Justice Navin Sinha |
| DATE OF JUDGEMENT/ ORDER | 14-12-2017 |
| HEADNOTE | The case addresses the question of establishing a trans-border reputation in India by the Plaintiff and emphasises the principle of Territoriality rather than being governed by the Universality doctrine to establish goodwill and reputation in the Indian market. |
| ISSUES ADDRESSED | The issues addressed in the impugned case are as follows: Whether the Plaintiff’s mark ‘Prius’ had spill over reputation and goodwill in the Indian market and has established trans-border reputation.Whether the said name ‘Prius’ used in the market of automobile spare parts manufactured by the Defendants pass off the products of the same name of the Plaintiff’s and injure their reputation in the market. |
| BRIEF FACTS | The Plaintiff is a renowned automobile manufacturer having a presence around the globe. It acquired trademark registration in India in different classes for its marks TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVIC’ during the years 1989-2003. Plaintiff had registered its trade mark ‘Prius’ in different countries as early as the year 1990 in Japan and eventually in other jurisdictions all over the globe. The Plaintiff however did not possess any trademark for its hybrid car “PRIUS” in India until that car was launched in India in 2009. However, the car was displayed in the car shows in Delhi and Bangalore held in the year 2009 and it was formally launched in India in the year 2010. Plaintiff had advertised through news reports and publications in car magazines in India. Thus, has made ‘Prius’ well – a known trade mark within the meaning of the said expression under Section 2(1)(zg) of the Trade Marks Act, 1999. It was in the year 2009, Plaintiff discovered that the Defendants had registered the mark ‘Prius’ in 2002-2003 for all types of auto parts and accessories. They have been regularly supplying auto accessories to various automobile giants like Hyundai Motors, and General Motors. Thus, the Plaintiff approached Trade Mark Registry for the cancellation of the registered mark of the Defendants and claimed injunction and damages for infringement of their well-known trade mark. |
| ARGUMENTS ADVANCED | The trial court granted an ad-interim injunction in favour of the Plaintiff and further, for the mark ‘Prius’ the prior use principle was relied on by the judge and whereas the Division bench of the Delhi High Court rejected the view taken up by the trial court and decided in favour of the Defendants. The Plaintiff filed an appeal in the hon’ble Supreme Court and contended that they are entitled to an injunction against the Defendants for the use of the trademark ‘Prius’. They put on record the global sales of Prius Cars and hike in the sales from 1997 to 2008. Plaintiff further contended the car Prius was widely publicized and advertised in leading newspapers and magazines with wide circulation all over the world since the year 1997. Plaintiff argued that the recognition and reputation of a trademark are not conditional upon the sale of goods in India. Plaintiff urged that to establish goodwill it is not necessary that the mark should be recognized by every member of the public and it would be sufficient if persons associated with the industry are aware of the mark.He has also 25 urged that the test of passing off always rests upon a likelihood of confusion irrespective of the stage at which the matter may be considered. The fact that the trade mark ‘Prius’ was registered in favour of the defendants was irrelevant insofar as the plaintiff’s claim for passing off is concerned. The Defendants argued that – They as manufacturers of spare parts are entitled to inform the consumers of the name of the specific vehicles for which a particular spare part is suitable. This was protected under S.30 of the Trade Marks Act, 1999.The ‘Prius’ was registered by the Defendants in 2002-2003 and the Plaintiff adopted the mark only in 2009 and the car in issue was launched in 2010. The documentary evidence presented by Plaintiff is post-2001 only.Territoriality Principle should be relied upon as opposed to the Universality Doctrine that has been accepted by the courts all over the world as a test to determine goodwill established in a particular jurisdiction over the world.Thus, the Defendants urged that the evidence of the spill over reputation of Plaintiff’s mark ‘Prius’ is unavailable before April 2001. |
| REASONED DECISION BY THE COURT | The court held that though the Plaintiff’s mark ‘Prius’ has acquired a lot of goodwill and reputation in the global market, the territoriality principle is to govern the matter and there should be enough evidence to substantiate the goodwill for its car under the brand name ‘Prius’ in the Indian market. Thus, Plaintiff could not sufficiently provide enough evidence to show their spill over reputation in the Indian market before 2001. The car itself was introduced in the Indian market in the year 2009-2010. The advertisements in automobile magazines, and on the information-disseminating portals- Wikipedia and Britannica are not enough to prove the existence of goodwill and reputation of the product in the Indian market at the relevant point in time. As well, people at that time had limited exposure to such online platforms. Additionally, the evidence of the Plaintiff’s witnesses is suggestive of a very limited sale of the product in the Indian market and virtually the absence of any advertisement of the product in India prior to April 2001. This, in turn, would show either a lack of goodwill in the domestic market or a lack of knowledge and information about the product amongst a significant section of the Indian population. “Thereby, the court agreed with the view taken by the Division Bench of the High Court that the brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market to vest in the plaintiff the necessary attributes of the right of a prior user to successfully maintain an action of passing off even against the registered owner.” Further, Plaintiff’s delayed approach to the Courts will not be disadvantageous to the Defendants who have been using their registered mark during the period of silence maintained by Plaintiff. |
| LINK TO FULL JUDGEMENT | https://main.sci.gov.in/supremecourt/2017/9646/9646_2017_Judgement_14-Dec-2017.pdf |
