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2016 Supreme(Del) 2310
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN SINGH, J.
TOYOTA JIDOSHA KABUSHIKI KAISHA – Plaintiff
Versus
DEEPAK MANGAL AND ORS – Defendants
C.S. (OS) No. 2490 of 2009 & I.A. No. 14981 of 2014
Decided On : 08-07-2016
For the Plaintiff :Mr. Pravin Anand, Ms. Vaishali Mittal, Ms. D. Neha Reddy & Mr. Siddhant Chamola, Advocates.
For the Defendant :Ms. Prathiba M. Singh, Senior Advocate with Ms. Archana Sahadeva & Mr. Kapil Midha, Advocates.
Headnote:
Trade Marks Act, 1999 - Section 2(1)(zg), 11(6) - Registered proprietor - Goodwill and reputation - Effect of - Plaintiff is the registered proprietor of the trademark PRIUS in different countries - Plaintiff had been extensively advertising its cars bearing the trademark PRIUS throughout the world - Immense goodwill and reputation of the Toyota PRIUS enjoyed by plaintiff in several countries across the world - Its physical use in India commenced only in the year 2010 - Held, immense reputation and goodwill that it enjoyed globally, had also spilled over into India.
Trade Marks Act, 1999 - Section 2(1)(zg), Section 11 (6), 29, 135 - Indian Evidence Act, 1872 - Section 57 - Well-Known Trademark - Passing off the trademark PRIUS - Infringement of trademarks TOYOTA, INNOVA and - Damages - Infringement - Plaintiff is one of the leading manufacturers of automobiles in the world - Trademarks Toyota, Innova and are registered in India and several other countries - Defendants' use of the marks on the packaging of their spare parts for automobiles and brochures gives a false impression to consumers that products emanate from the Plaintiff as opposed to the Defendant and that they are genuine spare parts manufactured by the Plaintiff and sold by the Defendants through its consent - Defendants' use of these trademarks is in infringement and not in accordance with bona fide practices in the trade - Defendants' failed to prove that the use of the Plaintiffs' marks was a bona fide description of the quality, characteristics of the products and trademarks.
Trade Marks Act, 1999 - Section 2(1)(zg), Section 11 (6), 29, 135 - Indian Evidence Act, 1872 - Section 57 - Well- Known - Plaintiff's mark PRIUS registered in many countries of the world - The automobile PRIUS reached cumulative global sales of 1.43 million units in 2008 - Plaintiff's evidence in support of tremendous promotion and advertisement of the PRIUS automobile car across the world - Plaintiff failed an application for registration in India - Documentary evidence of Plaintiff reveals that launch of the PRIUS: world's first hybrid car was a matter of public history and undeniable fact as early as 1997 - Court can take judicial notice of reputation through books, magazines placed on record - The launch of the first hybrid car in the world under the mark PRIUS was significant and a well-established fact. The cognizance of this fact need not be established through documentary evidence - Such documents were easily available in India and the reputation of the PRIUS had spilled over into India in 2001, prior to Defendants' adoption - PRIUS satisfies requirements for well-known trademark.
Trade Marks Act, 1999 - Section 2(1)(zg), Section 11 (6), 29, 135 - Indian Evidence Act, 1872 - Section 57 - Passing Off - Defendants' registrations for PRIUS in India are irrelevant in an action for passing off - PRIUS enjoys tremendous goodwill and reputation in India - Defendants were using PRIUS as prominent part of trade name - Plaintiff was first in the world to adopt PRIUS - Defendants have given contrary justification for adopting the mark PRIUS - The Defendants' adoption was not honest or bona fide - Defendants' unauthorized and illegal adoption of PRIUS will cause confusion in the minds of consumers and members of the trade.
Trade Marks Act, 1999 - Section 2(1)(zg), Section 11 (6), 29, 135 - Indian Evidence Act, 1872 - Section 57 - Damages - Defendants sales amount to INR 40 crores - Even if punitive damages assessed at 0.5%, it amounts to INR 20 lakh. Award of INR 10 lakh given to Plaintiff in the facts and circumstances of the case.
Trade Marks Act, 1999 - Section 27 - Registered proprietors - Trademark - Passing off - Prior user - Goodwill made out - Defendants are guilty of infringement of trademarks - Plaintiff is the prior adopter of the mark - Plaintiff has been using the mark in many countries of the world except in India prior to the defendants - Plaintiff's claim for passing off pertains to the trademark PRIUS, which is used in relation to the world's first hybrid engine car in 1990's - Trans-border reputation in India of the plaintiff - Defendants have given contradictory justifications for adopting the trademark PRIUS - Since the defendants are in the same trade and knowledge of foreign mark can be gathered in a short span of time - Reason for adoption by the defendants is merely an after-thought - Held, plaintiff is the true and first proprietor of the well-known mark PRIUS all across the world, as well as in India - Defendants' adoption of the mark PRIUS is blatantly dishonest - Defendants are guilty of passing off their goods and services as those of the plaintiff.
Trade Marks Act, 1999 - Section 29 - Trademarks - Packaging - Uses - Violation - Infringement of - Defendants are not the registered proprietors of the trademarks TOYOTA, INNOVA and the TOYOTA DEVICE - Use of trademarks TOYOTA, INNOVA and the TOYOTA DEVICE, which are identical to the plaintiff's trademarks, in the course of trade - Use of the plaintiff's trademarks by the defendants on their product packaging, samples, brochures etc. is bound to mislead consumers into believing that the products actually emanate from the plaintiff itself - Actions of the defendants' amount to infringement of the plaintiff's trademark TOYOTA INNOVA and the TOYOTA DEVICE.
Trade Marks Act, 1999 - Section 29, 30 - Registered proprietor - Ownership - Scope of - Plaintiff's well-known trademark TOYOTA - Passing off of the mark PRIUS used by the defendants - Plaintiff is the registered proprietor of the said trademarks - These are old registrations and are still valid and subsisting - Plaintiff has established to be the owner of the trademark TOYOTA, INNOVA and TOYOTA device.
Trade Marks Act, 1999 - Section 30 - Trademark - Similarity - Unfair advantage, proved - Defendants are using as trademarks in the course of trade which are identical to the plaintiffs' reputed and registered trademarks TOYOTA, the Toyota Device, INNOVA and PRIUS in relation to goods which are same to those of the plaintiff's manufacture and without due authorization - Defendants are taking unfair advantage of the distinctive character and repute of the registered trademarks of the plaintiff.
Trade Marks Act, 1999 - Section 135(1) - Infringement - Punitive damages, awarded - Defendants conducted business under the plaintiff's trademark PRIUS - Business have been expanded from being a small business firm to a big company - Defendants' products are at best merely compatible with some vehicles manufactured by the plaintiff - These goods do not match up to the high finesse and quality achieved by the plaintiff for its automobiles as well as spare parts and accessories under the mark TOYOTA, INNOVA, PRIUS and TOYOTA Device - Defendants' adoption of the trademark PRIUS was malafide - Use by the defendants of the plaintiff's trademark has caused damage to the immense reputation enjoyed by the plaintiff over its hybrid automobile - Defendants were aware of the tremendous reputation enjoyed by the plaintiff's automobile PRIUS - Punitive damages was awarded a sum of Rs. 10 lakhs.
MANMOHAN SINGH, J.
1. The plaintiff has filed the suit for permanent injunction restraining infringement of trademark, passing off, damage, delivery up against four defendants, namely, Deepak Mangal, Sandeep Verma, M/s Prius Auto Industries and M/s Prius Auto Accessories Pvt. Ltd. in order to protect the plaintiff’s well-known trademark TOYOTA, the Toyota Device mark, TOYOTA INNOVA and for passing off of the mark PRIUS used by the aforesaid defendants.
2. The plaintiff is a corporation duly organised and existing under the laws of Japan having its registered office at 1, Toyota-Cho, Toyota-Shi, Aichi-Ken, Japan. It is claimed that the plaintiff is the 10th largest industrial corporation in the world dealing in the manufacture and sale of automobiles and parts thereof according to the Fortune magazine dated July 2009 titled “Fortune Global 500” which was established in 1937 and developed its business around the world by marketing its products in different countries including in India under the trademark TOYOTA.
3. It is mentioned in the plaint that the plaintiff had revenues of over US $220 billion and its products are widely marketed in India as also in over 80 other countries throughout the world. There is an enviable range of vehicles in the TOYOTA stable including models like the COROLLA, CAMRY, INNOVA, ALTIS, FORTUNER, LAND CRUISER PRADO, etc. in India. International car models of the plaintiff like the PRIUS, YARIS, HIGHLANDER, MATRIX, AVALON and VENZA sold in overseas markets are also very well known among the relevant class of consumers and the trade in India. The trademark TOYOTA was first used in India in the year 1957 in relation to vehicles, parts and fittings. It has acquired an enviable reputation and goodwill in India.
4. It is averred in the plaint that in the late 1994, the plaintiff’s team designed a concept car with a hybrid engine for the 1995 Tokyo Motor Show. The vehicle was named “PRIUS” derived from the Latin word meaning 'prior' or 'before'. The first PRIUS, model NHW10, went on sale in December 1997 in Japan. It was later imported privately to the United Kingdom, Australia and New Zealand. In the year 2000 PRIUS was marketed in United States followed by sales in Europe the same year. The California Air Resources Board (CARB) classified the car as a Super Ultra Low Emission Vehicle. The official launch of the PRIUS in Australia occurred in 2001 after the Sydney Motor Show.
5. It is also claimed that the mark PRIUS being a well-known trademark of one of the most reputed and trusted names in the automobile sector is entitled to protection across classes of goods as any misuse of the same is not only likely to cause confusion and deception, but also be contrary to the interest of public and trade and to their belief in the reputation of their chosen brand. Additionally, the use of such a well-known trademark as PRIUS in any other relation to goods by a third party would dilute the distinctiveness of the trademark and tarnish the reputation and goodwill that has been so diligently created and maintained by the plaintiff over the past many years.
6. With regard to cause of action for filing the present suit, it is alleged by the plaintiff that in the month of October 2009, the plaintiff was made aware of citations of the defendants' marks on the trademark register in the results of a trademark search for its mark PRIUS. On further inquiry the plaintiff learnt that defendant No.1 and defendant No.2 were trading in the name and style of "M/s Prius Auto Industries" defendant No.3, and had wrongly obtained registrations for the mark "PRIUS" under Nos.1163594 and 1086682 in Class 12 for "all types of auto parts and accessories. There is also a pending application bearing No. 1160353 in the name of defendant No.3 in
