The Supreme Court of India has affirmed the order of the Division Bench of the Delhi High Court, permitting use of the mark PRIUS by Prius Auto Industries Ltd.
[Order dated December 14, 2017 accessible here]
Background leading up to Supreme Court Appeal –
In 2009, Plaintiff (‘Toyota’ Jidosha Kabushiki Kaisha) sought an injuction against Defendant’s (Prius Auto Industries Ltd. – ‘PAI’) use of the marks TOYOTA, TOYOTA INNOVA, TOYOTA Device and PRIUS. The Delhi High Court eventually granted Toyota an injunction with respect to TOYOTA, TOYOTA INNOVA, TOYOTA Device, but not PRIUS. Toyota appealed to the Supreme Court; the scope of the appeal was limited to the mark PRIUS.
Toyota had launched its hybrid car under the name PRIUS in Japan in 1997, and in some other countries (including U.K., Australia, U.S.A etc.) in 2001. In India, the car was released much later, in 2009.
At the time the suit was instituted, Toyota did not own any trademark registration for PRIUS in India, nor had it applied for registration of PRIUS.
PAI, on the other hand, had been using the mark PRIUS since April 2001 for its automobile parts and accessories. It also owned a trademark registration for as of 2002.
The Delhi High Court Judge granted Toyota the injunction. It held that PAI’s use amounted to passing off of Toyota’s goods under the mark PRIUS, which, even though registered in favour of the defendants as of 2002, was first used by Toyota through its marketing of its hybrid car outside India since 1997.
PAI appealed to the Division Bench of the Delhi High Court. The Division Bench examined whether Toyota had established, as was required for it to succeed, that its reputation in the mark PRIUS had spilled over to the Indian market prior to April 2001 (when PAI started using the mark). The Division Bench decided against Toyota and set aside the injunction so far as the mark PRIUS was concerned. It did so on the grounds that the publicity and advertisement surrounding the launching of the car in the international market was scanty, and internet penetration in India back in 2001 was limited, therefore it could not be said that as of April 2001 Toyota had established goodwill and reputation in the PRIUS mark in India which PAI had taken advantage of.
Toyota consequently appealed to the Supreme Court.
Supreme Court’s Ruling –
The Supreme Court observed (in its December 14, 2017 order available at) that “Positive evidence of spill over of reputation and goodwill of the Plaintiff’s mark ‘Prius’ to the Indian market, prior to April, 2001, is absent.” Viewing the core of the controversy to be a matter of appreciation of the evidence adduced by the parties, the Supreme Court observed “Indeed, the trade mark ‘Prius’ had undoubtedly acquired a great deal of goodwill in several other jurisdictions in the world…but…there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also…The news items relating to the launching of the product in Japan isolatedly and singularly in the Economic Times…also do not firmly establish the…goodwill and reputation of the brand name in the Indian market. Coupled with the above, the evidence of the plaintiff’s witnesses themselves would be 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.” The Supreme Court accordingly dismissed Toyota’s appeal.