Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 27(2)Section 29

Provisions considered: Passing off under the Trade Marks Act, 1999, involving the marks TOYOTA, INNOVA and PRIUS.

Brief facts

Toyota held Indian registrations for TOYOTA and INNOVA and had launched its hybrid car PRIUS globally in 1997, but applied to register PRIUS in India only in 2009 and began Indian sales of that car only in 2010. The respondent, an Indian manufacturer of automobile spare parts, had used and registered PRIUS in India since 2001-2002. Toyota sued for infringement and passing off; the Single Judge granted an injunction, which the Division Bench substantially set aside on the PRIUS passing off claim while upholding relief for TOYOTA and INNOVA.

Issues before the Court

1. Does the universality doctrine or the territoriality doctrine govern passing off in India?
2. Had Toyota shown Indian goodwill for PRIUS before the respondent's adoption of the mark in 2001?
3. Was denying relief on PRIUS while granting it for TOYOTA and INNOVA correct?

Court's findings

The Court held that the territoriality doctrine, and not the universality doctrine, governs the law of passing off in India, meaning that a plaintiff must establish actual goodwill and reputation for its mark among the relevant class of purchasers within the Indian market, and cannot rely solely on reputation generated abroad or on incidental spill-over through international media.

The Court observed that mere global reputation of a mark, however substantial, does not automatically translate into protectable goodwill in India absent proof that a significant section of the Indian public associated the mark with the plaintiff's goods at the relevant point in time.

Applying this principle, the Court found that Toyota had failed to establish that PRIUS had acquired the necessary goodwill among Indian consumers before the respondent adopted the mark in 2001, since the car was not sold in India until 2009-2010 and the evidence of prior media reports was insufficient to establish a distinct Indian market reputation at the relevant date.

Decision

Appeal dismissed; Toyota's passing off claim in respect of the mark PRIUS was rejected, confirming the Division Bench's order.

Cases cited

• N.R. Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 5 SCC 714

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Goodwill Passing Off Prior User Transborder Reputation Well-known Trade Mark