One of the largest car manufacturer in the world, Toyota lost a legal battle to a Haryana based manufacturing unit named Prius Auto. This could mean that Toyota would not be able to sell their best-selling hybrid car, which is globally known as ‘Prius’, by using the name ‘Prius’ in India.
Though Toyota had launched Prius back in 1997, the name was not registered in India. Instead, Haryana based Prius Auto registered the name ‘Prius’ in India in 2001. In India, Toyota registered the name Prius in 2010. This is the main reason Toyota lost the battle in Supreme Court.
Prius Auto website screenshot.
Toyota maintained that they were the first to register the name Prius in the world. Prius was trademarked in Japan in 1990. But as the name was not registered in India before 2010, Supreme Court gave the ruling in favour of Haryana’s Prius Auto.
In the present appeal, P. Chidambram, who appeared on behalf of the Appellants, argued that recognition and reputation of a trade mark is not dependant on the actual sale of goods in India bearing the mark in question. Advertisement and promotion of the mark through different forms of media is sufficient to establish reputation and goodwill within a particular geographical area. He also urged that “the test of passing off always rest upon a likelihood of confusion irrespective of the stage at which the matter may be considered.” The fact that the trade mark ‘Prius’ was registered in favour of the Respondents was irrelevant insofar as the plaintiff’s claim for passing off is concerned.
The Court concluded the judgment by stating the below:
“If goodwill or reputation in the particular jurisdiction (in India) is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off that it had brought against the defendants in the Delhi High Court. Consequently, even if we are to disagree with the view of the Division Bench of the High Court in accepting the defendant’s version of the origin of the mark ‘Prius’, the eventual conclusion of the Division Bench will, nonetheless, have to be sustained. We cannot help but also to observe that in the present case the plaintiff’s delayed approach to the Courts has remained unexplained. Such delay cannot be allowed to work to the prejudice of the defendants who had kept on using its registered mark to market its goods during the inordinately long period of silence maintained by the plaintiff.”
This is not the first time something like this has happened in India. Audi lost battle to TT underwear (Audi TT not on sale in India), Skoda lost battle to Monte Carlo sweaters (Skoda Rapid Monte Carlo discontinued), Ford lost battle to Everest Masala (Ford Everest is renamed Ford Endeavour in India).
Toyota’s Official Holding Statement:
We regret to note the Hon’ble Supreme Court order on usage of trademark “PRIUS” by Prius Auto Industry, a Delhi based automotive accessories company. We are currently reviewing the contents of the order to decide on our next action.