Toyota Jidosha kabushiki Kaisha. (plaintiffs) was using Toyota. Innova and Prius as its trademark. For the first two trademarks were its registered trademarks. There was a contest with respect to the trademark PRIUS whic

The problem is based on the Supreme Court decision in Toyota Jidosha Kabushiki Kaisha vs. M/S Prius Auto Industries Limited on 14 December, 2017. It was held that a passing off action can even lie against a registered proprietor of the mark sued upon. The Supreme Court ruled in favour of the defendants noting that the plaintiff had not supplied enough proof of its reputation in the Indian market. Although trans-border reputation was very much a part of Indian law, such reputation could not merely be asserted but must be proved with in the territory of India. There must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the name Prius in the Indian market also. Reputation in the local milieu must be proved as well. 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. Thus, the Supreme Court concluded that trademark rights are territorial and not global, thus one has to prove that one has acquired its reputation and goodwill in a territory, only through actual evidence. The mere appearance of the mark in the context of news stories would not suffice and don't firmly establish that acquisition and existence of goodwill and reputation of the brand name in the Indian market. The brand name of the car Prius had not acquired the goodwill, reputation and the market or popularity in Indian market so as to vest in the plaintiff the necessary attributes of the rights of a prior user so as to successfully maintain an action of passing off even against the registered owner. The Supreme Court held that "likelihood of confusion" would be a better test of proving a passing off action, which can only be established from evidentiary documents, which the Appellants failed to provide. In furtherance of this, the Supreme Court also insisted on the Trinity Test as laid down by Reckitt & Colman Products Ltd. v. Borden Inc. & Ors. The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors; The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and The claimant may suffer damages because of the misrepresentation.