Toyoto Jidosha Kabushiki Kaisha v/s M/s. Prius Auto Industries Ltd. & Others
Name of the case- Toyoto Jidosha Kabushiki Kaisha v/s M/s. Prius Auto Industries Ltd. & Others
Civil Appeal Nos. 5375-5377 of 2017
Decided On, 14 December 2017 At, Supreme Court of India By, THE HONOURABLE MR. JUSTICE RANJAN GOGOI & THE HONOURABLE MR. JUSTICE NAVIN SINHA
For the Appearing Parties: Aditya Verma, Archana Sahadeva, Kapil Midha, Advocates.
ISSUE
Whether Toyota, which introduced the hybrid vehicle “Prius” globally in 1997 but started selling it in India only in 2009, would be able to hold the Indian defendants back from using the mark “Prius” (which they had adopted in 2001) based on transborder reputation and allege passing off.
RULE
In order to get succeed in an action for passing off, the following three elements have to be established:Goodwill or reputation in the jurisdiction;Misrepresentation by the defendant tending to confuse or lead the public astray;Damage to the goodwill of the plaintiff.
Indian courts have already accept the doctrine of transborder reputation (N.R. Dongre v. Whirlpool, Milmet Oftho v. Allergan), but the Territoriality Principle holds good as well , rights have to be established in the target market (India).
ANALYSIS
Toyota asserted that it had gained international goodwill in the brand “Prius” since 1997, and that international publicity had filtered through to Indian consumers through the media and internet. The defendants, however, had used and registered the mark “Prius” in India in 2001, long before Toyota arrived in India in 2009. The Court investigated whether Toyota’s reputation had actually spilled over into India prior to 2001. The Court concluded that:
There was not enough proof of Indian consumer consciousness of the “Prius” mark before 2001;
Magazine and internet articles produced by Toyota failed to establish actual recognition or goodwill in India;
Legal proceedings were delayed by Toyota despite being aware of use by the defendants since 2003.The Court applied the Territoriality Principle and held that worldwide fame does not automatically give rights in our country India in the absence of proof of prior local goodwill.
CONCLUSION
The Supreme Court has been rejected the Toyota’s appeal and also gave the judgement in the favour of the Indian company. It held that Toyota had not been able to establish any reputation in India prior to 2001, and as such, no passing off had taken place. The transborder doctrine of reputation could not apply unless there was adequate evidence of prior knowledge in the Indian market.
I Agree with the ruling, as it rightly preserves the territorial character of the trademark law so that rights are founded on the given proof of local market reputation, rather than worldwide notoriety.
