Celebrating Trans-Border Reputation
In a landmark judgment the Delhi High Court accepts Toyota’s global reputation in PRIUS to have spilled-over sufficiently to India making it a well-known mark here too.
A seven year-long battle between the Japanese car-maker Toyota and traders of automobile spare parts culminated in a decision, which positions itself as a landmark precedent in trademark law. In the judgment spelling success for Toyota, the court held that PRIUS’ global reputation in the world’s first hybrid car had spilled-over to India, so much so that It was a well-known mark. Finding the Defendants’ adoption of PRIUS to be dishonest, it granted reliefs against passing off, Infringement along with damages worth INR 1 million (Rs. 10 lakhs).
The outcome of the case is particularly significant in light of the fact that Toyota did not have Indian for its PRIUS mark, while the defendants did. Nevertheless, Toyota pursued claims for passing off of that and other marks. In the final ruling not only did reputation in an unregistered mark tower over registration, but an unregistered mark was found to qualify as a well-known mark.
Authored by Pravin Anand, Vaishali Mittal and Siddhant Chamola.
This article was published in Asian Legal Business August 2016.