ABC Ltd. is a global automobile manufacturing company having headquarters in Japan. In 1990, it launched a hybrid model car with the name PRIUS which got trademark registrations in various countries. It started selling i

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · June 2023
ABC Ltd. is a global automobile manufacturing company having headquarters in Japan. In 1990, it launched a hybrid model car with the name PRIUS which got trademark registrations in various countries. It started selling in USA and Europe in 2001 and 2002. M/s Pious Auto Industries Ltd. used to manufacture spare parts and accessories for cars in India since 2001 and got the trademark registered in 2002. In 2009 ABC Ltd. started promoting its PRIUS vehicle in India and launched the PRIUS in the year 2010. When ABC Ltd. discovered the fact that M/s Pious Auto Industries Ltd. has been using the mark "PRIUS" for autoparts and accessories, it approached the Trade Marks Registry for cancellation of the trademark and also brought a suit for infringement against the company, on the ground of claiming of passing off of its famous mark which led to an unfair advantage of their reputation and goodwill in the market. ABC Ltd. contented that various advertisements and news reports about the trademark in India and across the globe have made PRIUS a well-known trademark. These promotional tools are sufficient to establish reputation and goodwill within a particular geographical area. Since 1997, 'PRIUS' was widely publicised and advertised in leading newspapers. It added that the mark PRIUS was a well-known mark under section 2(1) (zg) read with sections 11(6) and 11(a) of the Trade Marks Act, 1999 as the mark PRIUS had acquired a great deal of goodwill in several other jurisdictions in the world much prior to Prius Auto's use and registration in India. M/s Pious Auto Industries highlighted the principle of territorial jurisdiction over universality principle. It also referred to the judgement of Starbucks vs. British Sky Broadcasting, wherein the court had held. "No trader can complain of passing off as against him in any territory ..... in which he has no customers, nobody who is in trade relation with him." M/s Pious Auto further contended that to establish goodwill and reputation in a particular jurisdiction, one has to show adequate evidence that he has acquired a substantial goodwill in India for its mark. Further, prior use of trade mark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to the said trade mark in other jurisdiction. Whether, using the mark PRIUS by M/s Pious Auto Industries Ltd. to market automobile parts manufactured by it amounts to infringement of reputation of ABC Ltd. in the market ?

Answer & Explanation:

In Toyota Jidosha Kabushiki Kaisha v M/S Prius Auto Industries Ltd. SC Civil Appeals No. 5375-7707 2017 of 2017 , Supreme Court observed that trademarks that have created a reputation in India in relation to any promotional instruments may be protected under trademark law but substantial evidence is required to show that the claimant has done so. Advertisements and articles in print media alone would not be enough to establish a trans-border reputation if they did not have an impact on the Indian population at large. The advertisements, even if accepted, will not be a safe barn to hold the existence of the necessary goodwill and reputation in India in 2001. There is no advertisement of the product in India prior to April, 2001. The brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market. So as lost in the company the necessary attributes of the right of a prior user so as to successfully maintain an action for passing off even against the registered user. Toyota's delayed approach to the courts has remained unexplained. Such delay cannot be allowed to work to the Prejudice of Prius Auto Industries Ltd who had kept using the trademark (registered) to market its goods during the Inadvertently long period of silence maintained by Toyota. It held that there has been no infringement of reputation by Prius Auto Industries Ltd.

Topics: Trademarks

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