One of the most heated trademark battles of the Delhi High Court was finally brought to an end earlier today, when Hon’ble Justice Manmohan Singh delivered the much awaited trademark judgement in Toyota Jidosha Kabushiki Kaisha versus Deepak Mangal & Ors., CS (OS) 2490 of 2009, in favour of the Japanese automobile giant Toyota.
In 2009, Toyota had filed a case against a proprietary firm and a company (amongst others) by the name of Prius Auto Industries and Prius Auto Accessories Private Limited – the Defendants. Toyota had found serious objection with the Defendants’ use of its trademark, which is the name of its first hybrid car in the world– the PRIUS. The Defendants were also selling indigenously manufactured spare parts under the trademarks TOYOTA, Toyota Logo, INNOVA and QUALIS.
Interestingly, the Defendants had secured registrations for the mark PRIUS in India, while Toyota did not have such a registration to its name in the country. However, convinced that the Defendants had taken unfair advantage of the reputation of its vehicles in order to expand their own business in India, Toyota filed the suit in the Delhi High Court through the law firm Anand and Anand, with Mr. Pravin Anand and Ms Vaishali Mittal at the helm of affairs. What followed saw horns locked for seven years and a case which dug deep into the principles of trademark law, as it is practiced in India. A brief time-line describing the frequently shifting balance in the case is given below:
December 22, 2009 – The Delhi High Court had granted an ex parte ad interim injunction to Toyota, restricting the Defendants from using the mark PRIUS, Innova, Toyota and Toyota Logo for their auto-parts and related goods. In earlier part of the year 2010, the Delhi High Court vacated the injunction based on an application filed by the Defendants. Looking to set a seemingly erroneous order straight, Toyota preferred an appeal against this order before the Division Bench of the Delhi High Court.
August 10, 2010 – After extensive arguments, the Division Bench modified the previous order and struck a balance between the two parties. The Defendants were restricted from using the trademarks Innova, Toyota and Toyota Logo in relation to their products in the same manner as that of Toyota’s trade marks and were confined to use them only for identification purposes in the same font/manner as that of the other descriptive matter appearing on its packaging.
Further, the Defendants were also directed to file a statement of its accounts of its business every 6 month with the court registry and expedited the trial to be completed within a period of 4 months. In a time where one couldn’t talk about the legal system without lamenting at the huge backlog of cases, this order was a big leap in the right direction and was the first order passed by the Delhi High Court the speed up the litigation within a condensed period of 4 months.
July 08, 2016 –After advancing extensive arguments, HMJ Manmohan Singh delivered the final verdict completely in favour of Toyota, ending its long wait for victory. The judgement re-affirms basic principles of trademark law, while establishing possibly landmark ones too, such as:
The High Court has admitted Toyota’s reputation as the world’s leading automobile (and resultant parts’) manufacturer and consequently, the reputation of its trademarks TOYOTA, INNOVA and Toyota Logo. Besides, it owned registrations for these marks in India. The Defendants’ use of these trademarks on their products was giving an impression to consumers that the products emanated from Toyota instead. Therefore, the Defendants were in infringement of these trademarks.
The real gem of the judgement however, lies in the Court’s findings on the trademark PRIUS. Negating the Defendants’ claims that the trademark had no reputation and goodwill in India, it held that the reputation of the world’s first hybrid car in India was not only stellar, but undeniable. Not only did it hold that Toyota had filed voluminous evidence in support, but it also held that the Court could come to this conclusion by its own motion
through a simple reading of the tremendous news reports and media attention that the Toyota PRIUS had received in India (and the world). This principle called the judicial notice principle of evidence law has rarely been put to use in trademark law in India. Hence, the Court held that PRIUS was a well-known trademark in India, warranting the highest form of protection. This finding will have a far reaching impact since it is rare for unregistered trademarks to be bestowed with such recognition.
The Court went on to hold that the Defendants failed to provide any justification for their reason for using PRIUS for their automobile-parts business. In absence of sound reasoning, the Court held it certain for the Defendants to use the trademark only to benefit from the extensive goodwill of Toyota PRIUS. Re-visiting trademark basics, the Court held that Toyota’s first use of PRIUS in 1995 globally was sufficient to trump the Defendants’ Indian use since 2002, even if the car was launched in India only in 2010. Thus, the Court has directed the Defendants to give up using PRIUS as part of their trading name within a period of 2 months. The fact that the Defendants had a registration was irrelevant considering this case was a passing off action.
Finally, the Court judged the Defendants’ conduct to be dishonest and acknowledged Toyota’s claim to be compensated monetarily due to the loss of goodwill caused to it through the years. The statement of accounts filed by the Defendants for their business under the PRIUS mark showed sales up to INR 20 crores. Using this base, the Court directed the Defendants to pay Toyota INR 10 lakh as damages for violating its rights and taking unfair advantage of the goodwill residing in its trademarks.
In the end, the case came a full circle and awarded Toyota the victory that it sought over infringers for many years. Having stuck to its guns, the Japanese company through Anand and Anand ensured that what many considered a bitter pill, resulted in sweet success instead.