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India: Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries

In this Supreme Court judgment, the appellant claimed that they were the proprietor of the well-known marks Toyota, Innova and Prius and that the respondents were selling auto-parts and accessories in India by using the appellant's registered marks especially the mark "PRIUS" on their products. The appellant had no registration of the mark 'PRIUS' in India, whereas the respondents had a registration for the same in India since 2001. The Appellant however claimed that their mark 'PRIUS' was registered in numerous other jurisdictions since 1990. The Division Bench of Delhi HC vide its order dated January 12 2017 held that even though 'PRIUS' was a well-known mark outside of India, the trans-border reputation of the said mark had to be proved in India. Since the Appellants could not furnish necessary evidence to prove that the mark 'PRIUS' was also well-known in India, the Court ruled in favour of the Respondents. Aggrieved by the said order, the Appellant had filed a special leave petition.

The Supreme Court vide its order dated December 14 2017 ruled in favour of the Respondents by stating that the Appellants had not supplied enough proof of its 'reputation' in the Indian market. The Court agreed with the ruling of the Division Bench and held that the mark "PRIUS" had not acquired the degree of goodwill, reputation or popularity in the Indian markets so as to vest in the appellant the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off even against the registered owner/the respondents.

The Court further held that the evidences submitted by the appellant, i.e. advertisements in international magazines, availability of information on internet portals, would not be a safe basis to prove the existence of the necessary goodwill and reputation of a product in India at the relevant point of time (in the year 2001) due to the limited online exposure at that point of time.

R Parthasarathy

Lakshmi Kumaran & SridharanB6/10 Safdarjung EnclaveNew Delhi 110029, IndiaTel: +91 11 41299800Fax: +91 11

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