Trans-border reputation exists when public at large is aware of the trademark

Delhi High Court: While disposing of a passing off action, the Single Bench of Pradeep Nandrajog, J. held that to establish trans-border reputation of a trademark, it is to be proved that the trademark had reputation in foreign jurisdictions, and it was within the knowledge of public at large in the domestic jurisdiction, due to its reputation abroad.

In 1997, the automobile company Toyota launched World’s first hybrid car “Prius” in Japan. Toyota had obtained registration of the trademark Prius in different jurisdictions abroad. Toyota contended that the Appellants had passed off its trademark Prius and had dishonestly obtained its registration in India. Though the car was not sold in India, a trans-border reputation in the trademark was claimed on the strength of news articles, and publications. Toyota also pleaded that the appellants had been selling automobile parts using its registered trademarks, Toyota, and Innova. Appellants admitted using the words Toyota and Innova on the packaging material, but contended that the use was not as a trademark, but to inform the consumers that automobile parts were compatible with motor vehicles manufactured by Toyota. Concerning the trade mark Prius, appellants pleaded that since they were the first to manufacture ‘Add on Chrome Accessories’ in India, they considered the Hindi words ‘Pehla Prayas’ (first attempt) for their business. They added that since a trademark has to be catchy, they searched dictionaries for a word that can be associated with ‘Pehla Prayas’, and they chanced upon the word Prius, which means ‘prior’ or ‘former’.

The Court noted that the event of Prius’ launch was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. It also observed that the public confidence in the Prius car was feeble since the car had been recalled many times. Thus, the Court concluded that no trans-border reputation had been established by Toyota in the trademark Prius. It further added that the appellants were entitled to inform the consumer that the auto parts were adapted for use in Toyota cars, in conformity with Section 30(2)(d) of the Trade Marks Act, 1999. The Court also found that the appellant’s justification for adopting the trademark Prius was logical and credible, and held that if a word is publici juris and a person gives good justification as to how he appropriated it, unless the testimony of the person is discredited, a Court would have no option but to accept the statement made on oath. [Prius Auto Industries Ltd v. Toyota Jidosha Kabushiki Kaisha, 2016 SCC OnLine Del 6405, decided on December 23, 2016]

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