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 M/s Pious Auto Industries Ltd. is guilty of passing off its products as those of ABC Ltd.? Give reasons and case law, if any in support of your answer.

Answer & Explanation:

The principle of passing off, i.e., "Nobody has the right to represent his goods as the goods of somebody else" was decided in the case of Perry v Truefitt (1842) . The passing off law has changed over time. Previously it was restricted to depicting one person's goods as another. Later it was extended to trade and services. This was later expanded to business and non-business activities. Now, it applies to many forms of unfair trade and unfair competition where one person's activities harm the goodwill associated with the activities of another person or group of individuals. The problem is based on Supreme Court judgement in Toyota Jidosha Kabushoki Kaisha vs M/S Prius Auto Industries Ltd Civil Appeal No. 5375-7707 of 2017 . The Supreme Court accepted Prius Auto Industries Ltd's arguments on Territorial Principle and stated that there needs to be substantial evidence to show that a mark has acquired a huge goodwill in India even if it already has acquired a huge goodwill in the jurisdictions. Also, the importance of having customers within a particular jurisdiction from a brand specific perspective was a key factor for establishing goodwill within that jurisdiction. The Supreme Court held in order successfully continue action for passing off, there must be a spillover of worldwide reputation and goodwill into Indian markets. Prius has undoubtedly acquired a great deal of goodwill in other jurisdictions and that too much earlier than by Toyota. The Supreme Court held that there has not been any passing off by Prius Auto Industries Ltd.

Topics: Trademarks

Open in Interactive Practice Hub · Full Practice Hub · Chapter Weightage · More in this subject

Related Questions in this Topic