The Delhi High Court set aside permanent injunction granted in favor of Japanese car manufacturer Toyota for the use of word PRIUS by a local car accessories manufacturer.
Toyota claimed that the word PRIUS has attained a trans-border reputation and the local manufacturer has infringed former’s rights by using (since 2001) as well as getting the word registered as a trademark.
After going through the evidence on the issue of trans-border reputation presented by Toyota and rejecting the same, the Court reasoned, “The learned Single Judge has discussed the evidence on the issue of trans-border reputation by ignoring one vital fact. The same being that the appellants started using the trade mark Prius in April 2001 and also included the word in the trading name of defendant No.3 partnership firm. Thus, trans-border reputation having been acquired by Toyota in the trade mark Prius had to be determined as of April 2001 and evidence post-April 2001 had to be ignored.”
The Court said that the weight of the evidence leans in favour of the view that by April 2001 Toyota had not established a global reputation in its trade mark Prius which had entered India.
The Court also said that evidence of ‘actual’ and not ‘likely’ confusion is required where a person has been using a trademark for longer duration before a suit for injunction is filed by a party claiming trans-border reputation of its trademark.
“Toyota has failed to establish trans-border reputation of its trade mark Prius in India when appellants adopted the same. We have found credibility in the justification given by the appellants as to how they adopted the word Prius which was publici juris in the year 2001,” the Court said.