The Supreme Court of India recently clarified that for a trademark to be considered as well-known in India, the proprietor must establish that the trademark has acquired a substantial goodwill in relation to the goods in Indian market.
Japanese car maker Toyota claimed that their brand name Prius is a well-known trademark in India since 2000-01 due to trans-border reputation and defendant infringed their trademark by using it for the sale of its auto parts products. Defendant claimed that they have trademark rights in the word Prius since 2001 when they started using the trademark on their products.
Agreeing that territoriality principle should be applied to judge the goodwill attained by a trademark, the Court said, “the brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market so as to vest in the plaintiff [Toyota] the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off even against the registered owner.”
“…there must be adequate evidence to show that the plaintiff [Toyota] had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also. The car itself was introduced in the Indian market in the year 2009-2010. The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001,” the Court reasoned and upheld Delhi High Court ruling that ordered that injunction granted in favor of Toyota for the use of trademark Prius by defendant is not justified.