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SUPREME COURT OF INDIA
Ranjan Gogoi, Navin Sinha, JJ.
Toyoto Jidosha Kabushiki Kaisha – Appellants
Versus
M/s Prius Auto Industries Ltd. & Ors. – Respondents
Civil Appeal Nos.5375-5377 of 2017
Decided On : 14-12-2017
(b) Trade Marks Act, 1999 – Section 2(1)(zg) r/w Section 11(6) & 11(9), and section 30 – Passing off – Likelihood of confusion – Preponderance of probabilities sufficient. (Para 31)
(c) Trade Marks Act, 1999 – Section 2(1)(zg) r/w Section 11(6) & 11(9), and section 30 – Defendant registering trade mark 'Prius' in India in 2001 – Plaintiff introducing its car named 'Prius' in 2009-2010 – Aware of defendant’s trade mark – Limited online exposure of plaintiff’s car in 2001 – Plaintiff unable to show acquiring a substantial goodwill for its car under the brand name 'Prius' in Indian market also – Plaintiff failing to establish acquisition and existence of goodwill and reputation of its brand name in Indian market – Plaintiff does not have attributes of right of a prior user – To prove and establish an action of passing off, the plaintiff must prove his goodwill, misrepresentation and damages – Held, plaintiff cannot successfully maintain an action of passing off against the defendant. (Para 21, 32, 33)
(2016) 2 SCC 683; (1996) 5 SCC 714; 1990 (1) All E.R. 873 – Relied upon
(2004) 12 SCC 624; 2012 SCC Online Delhi 596; (1992) 23 IPR 193; 2015 UK SC 31; (1980) R.P.C. 343; 1981 60 FLR 60; 1901 2 Ch. 513; 1901 18 RPC 361; 1976 I.R. 198 (Irish) – Referred
Facts of the case:
Civil Suit [CS (OS) No. 2490 of 2009] was instituted by the plaintiff in the Delhi High Court seeking a decree of permanent injunction for infringement of trade mark, passing off and for damages against the respondents (hereinafter referred to as 'the defendants') in order to protect the plaintiff's trade marks 'TOYOTA', 'TOYOTA INNOVA', 'TOYOTA DEVICE' and the mark 'Prius' of which the plaintiff claimed to be a prior user.
The trial Judge held that the impugned acts of the defendants constituted infringement of the trade marks 'TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE' registered in favour of the plaintiff. The Judge also held that such acts of the defendants amounted to passing off of the defendants' goods under the trade name 'Prius', which, though registered in favour of the defendants in the year 2002-2003, the plaintiff was the first user thereof having marketed its hybrid car all over the globe under the name 'Prius' at least from the year 1997. Consequently, the learned trial Judge restrained the defendants from using the plaintiff's trade marks ('TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE' marks) except in accordance with the terms of the conditional injunction order passed by the Division Bench dated 10.08.2010.
The Division Bench of the High Court took the view that grant of injunction in favour of the plaintiff insofar as the trade name 'Prius' is concerned was not justified. Accordingly the aforesaid part of the order of the learned trial Judge was set aside. Consequently, the appeal filed by the plaintiff with regard to quantum of damages was also dismissed.
Finding of the Court:
Plaintiff does not have attributes of right of a prior user. Cannot successfully maintain an action of passing off even against the registered owner.
Result: Appeal dismissed.
JUDGMENT
Ranjan Gogoi, J.
The appellant (hereinafter referred to as 'the plaintiff') is an automobile manufacturer incorporated under the laws prevailing in Japan. The first respondent is a partnership firm engaged in the manufacture of automobile spare parts of which the second and third respondents are partners. The partnership firm of the respondents was constituted in the year 2001. The fourth respondent is a Private Limited Company in which the second and third respondents are majority shareholders.
2. Civil Suit [CS (OS) No. 2490 of 2009] was instituted by the plaintiff in the Delhi High Court seeking a decree of permanent injunction for infringement of trade mark, passing off and for damages against the respondents (hereinafter referred to as 'the defendants') in order to protect the plaintiff's trade marks 'TOYOTA', 'TOYOTA INNOVA', 'TOYOTA DEVICE' and the mark 'Prius' of which the plaintiff claimed to be a prior user.
3. In the plaint filed, it was averred by the plaintiff that it is a renowned carmaker having its presence in many countries across the world. The plaintiff claimed an enviable goodwill and reputation as one of the foremost automobile manufacturers in the world. According to the plaintiff it had acquired registration in India in different classes for its trade marks 'TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE' during the years 1989-2003. It was specifically averred by the plaintiff that the goods manufactured and sold by the defendants bore the plaintiff's registered trade marks thereby clearly constituting infringement of the said registered marks.
Furthermore, according to the plaintiff, it had launched the world's first commercial hybrid car called 'Prius' in Japan in the year 1997 and in other countries like U.K., Australia, the U.S.A. etc. during the year 2000-2001. The plaintiff also claimed registration of the trade mark 'Prius' in different countries as early as the year 1990 (in Japan) and eventually in other jurisdictions all over the globe. So far as India is concerned, however, the car was released in the year 2009 and until that point of time the plaintiff had not obtained registration of the mark 'Prius' in the Indian jurisdiction. However, the car was displayed in the car shows in Delhi and Bangalore held in the year 2009 and it was formally launched in India in the year 2010.
The plaintiff claimed that various advertisements and news reports about 'Prius' and publications in car magazines in India and across the globe has made 'Prius' a well known trade mark within the meaning of the said expression under Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act'). According to the plaintiff, in the year 2009, it discovered that the defendants not only had got the mark 'Prius' registered way back in the year 2002-2003 for all types of auto parts and accessories but that they had also been using the said trade mark in carrying out their trade in such auto parts and accessories. The plaintiff, therefore, approached the Trade Mark Registry for cancellation of the registered trade mark of the defendants and also filed the suit in question on the ground that the defendants had been using the well known trade marks of the plaintiff without any authorization thereby taking an unfair advantage of the reputation and goodwill of the plaintiff which it had earned over a period of time across the globe. Accordingly the plaintiff prayed for:
(i) Permanent injunction restraining the defendants from using the plaintiff's registered trade marks ('TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE'); and
(ii) Permanent injunction restraining the defendants from using the well known (unregistered) trade mark 'Prius' so as to prevent passing off the defendants' goods as that of the plaintiff.
4. The defendants contested the claim of the plaintiff by contending that they have been using the words 'TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE' on the packaging materials in which the auto parts manufa
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