Toyota-Prius Trademark case: Del HC holds no infringement by Prius Auto [Read judgment]

A division Bench of the Delhi High Court today held that use of the trademark “Prius” by a Delhi based automobile accessories company, Prius Auto Industries, does not violate the trademark owned by Toyota Motors in the same..The decision was rendered by a bench of Pradeep Nandrajog and Yogesh Khanna, JJ. which set aside the order passed by single-judge Bench of Justice Manmohan on July 8..Senior Advocates Prathiba Singh and Sandeep Sethi appeared for Prius Auto Industries. They were briefed by Sudeep Chatterjee, Archana Sahadev and Kapil Midha of Singh & Singh Lall & Sethi and Pravin Anand for Toyota Motor Corps..It was the case of Prius Auto that the word “Prius” is a word of Latin origin meaning “prior” and since they were introducing in India for the first time chrome-plated motor parts, they adopted the trademark from the Hindi words “Pehle prayas” (first attempt)..The Court ruled in favour of Prius Auto holding that,.“Toyota is a big company. It has had a presence in India for over two decades when the suit was filed. It was well entrenched in the Indian market in the year 2001. Obviously no consumer of Toyota car or buyer of an auto part sold by Toyota was ever confused by the appellants selling their products under the trade mark Prius, for if this was so, in ten years somebody would have complained to Toyota or at least would have made known said fact to Toyota.”.The judgment also extensively deals with the evidence relied upon by Toyota concerning acquisition of trans-border reputation. Toyota had relied on several newspaper reports in India which announced Toyota’s new hybrid car “Prius” in Japan in 1997. The Court, however, held that,.“Though published in a newspaper, the publication is in the nature of an article written and thus the weight of its evidentiary worth in the context of an explosive news on a fact of history being made known to the public would be minimal.”.Regarding trans-border reputation, the judgment states,.“The weight of the evidence led by Toyota would be that it has simply established that when it launched the hybrid car Prius in the market in Japan in 1997, the event was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. The law on trans-border reputation requires two facts to be established. The first is reputation in foreign jurisdictions of the trade mark. The second is knowledge of the trade mark due to its reputation abroad in a domestic jurisdiction.”.“There being no advertisements published by Toyota for its car Prius in India and coupled with the fact that not all cars marketed under different trade marks by Toyota acquire a global reputation and much less in India, internet penetration as of the year 2001, being low in India, the weight of the evidence leans in favour of the view that by April 2001 Toyota had not established a global reputation in its trade mark Prius which had entered India.”.Speaking to Bar & Bench, Senior Advocate Prathiba Singh had this to say:.“Unlike most jurisdictions, India protects well known foreign marks, however, every foreign mark is not well known. The reputation of a foreign mark needs to be established with evidence which in this case the court found to be insufficient. The Indian company is the registered owner of the mark and has been doing business for fifteen years!”.Read the full division bench and single judge judgments here.