Supreme Court of India denies protection to mark “Prius” for Toyota

Last week the Supreme Court of India has pronounced its judgment in this regard. The present judgement may have a direct and binding effect on majority pending trademark oppositions / litigations in India. In the present matter the Supreme Court has reiterated and upheld the following important principles / points:

  • intellectual property rights areterritorial’ and notglobal’;
  • merely because Prius (the brand under which Toyota sells its leading “hybrid” car) is well known outside India does not mean that it enjoys a ‘reputation’ in India as well, it has to be independently established; and
  • unexplained delay on the part of the Plaintiff (Toyota Jidosha Kabushiki Kaisha) cannot be allowed to work to the prejudice of the Defendants (M/S Prius Auto Industries Limited) who kept on using its registered mark to market its goods during the inordinately long period of silence maintained by the Plaintiff.

Brief Facts of present matter are as follows:

This matter was initiated by the Plaintiff in 2009 before the Single Bench of the Delhi High Court, wherein a permanent injunction was sought for infringement of trade mark, passing off and for damages against the Defendants in order to protect the Plaintiff’s trademarks ‘TOYOTA’, ‘TOYOTA INNOVA’, ‘TOYOTA DEVICE’ and the mark ‘Prius’ of which the Plaintiff claimed to be a prior user. An ex parte ad interim injunction was granted in favour of the Plaintiff restraining the Defendants from using trademark/trading style TOYOTA, the Toyota Device, Innova and Prius in respect of auto parts and accessories or any other allied goods or to do anything which may cause confusion and deception amounting to passing off Defendant’s goods as that of Plaintiff. The Court also awarded punitive damages quantified as Rupees Ten Lakhs in favour of the Plaintiff.

Both sides appealed against the aforesaid order of the learned Single Judge. While the appeal of the Plaintiff was with regard to the quantum of the damages awarded, the appeal filed by the Defendants was in respect of the order of injunction granted against them.

The Division Bench of the Delhi High Court by judgment dated 23.12.2016 took the view that grant of injunction in favour of the Plaintiff insofar as the trade name ‘Prius’ is concerned was not justified. Accordingly the aforesaid part of the order of the learned trial Judge was set aside. Consequently, the appeal filed by the Plaintiff with regard to quantum of damages was also dismissed.

Aggrieved, the Plaintiff had filed the instant appeal before the Supreme Court. In this appeal, the Plaintiff contested the registration of the trademark ‘Prius’ by the Defendants (registration dating back to 2002), claiming that it was the first user of Prius (and began using this mark as early as 1997) and that the Defendants had wrongly and dishonestly registered the same in India.

Ruling:

  • While ruling in favour of the Defendants the Supreme Court held that:

If goodwill or reputation in the particular jurisdiction (in India) is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off that it had brought against the defendants in the Delhi High Court.

  • The Supreme Court also noted that in the year 2001(which, as per the Plaintiff, was the effective date on which a significant cross section of Indian consumers would have known of their mark), the Internet was still not in widespread use and therefore not many would have learnt of the mark:

The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001.”

Disclaimer: Views / opinions expressed in present update are for explanatory / update purposes only and which cannot be quoted in any legal proceedings and will have no legal purpose. Further, same may vary from time to time and case to case. For any clarification and further information, you may contact us at mehta@mehtaip.com.