Breaking News: Toyota Loses Trademark Battle over Prius at Indian Supreme Court

The plaintiff, in this case, is Toyota Jidosha Kabushiki Kaisha and they seek to prevent the defendant, a spare parts supplier by the name M/S Prius Auto Industries Limited, from the usage of the trademarks- “Toyota”, “Innova”, and “Prius”.

According to the finding of the court, two of the three trademarks mentioned, namely Toyota and Innova were registered trademarks of the plaintiff and the lower court hearing the case had no issue in finding the favor of Toyota in this count. Interestingly, the defendants did not contest these findings in the Supreme Court.

The contest was over the trademark, “Prius” in which the plaintiff claimed that it belonged exclusively to them. According to the finding, the plaintiff had no trademark registration for “Prius” in India and on the other side, the defendant had their registration with the same name dating back to 2002 in India. The plaintiff Toyota challenged that they had been using the trademark as early as 1997 and that the defendants had wrongly and dishonestly registered the same name in India.

The Supreme Court has to decide upon if the plaintiff could still claim the trademark of being a prior user of the name despite the defendants’ registration of Prius as their trademark.

The Supreme Court ruled in favor of the defendant with the view that the Plaintiff had not supplied enough evidence of the reputation of the mark “Prius” in the Indian market. The court held that merely because Prius is a well-known name outside India, it does not necessarily mean that it enjoys a reputation in India as well. Its reputation in the local milieu needs to be proved as well.

The court’s ruling took the trademark law to its foundational roots by blunting the pervasive overreach of the trans-border reputation doctrine. Besides, there are other two things worth noting from the above ruling of the court.

• The court sticks strongly to the view that mere reputation alone does not suffice for a passing off action and one needs to demonstrate local goodwill, which at the least means that there must be some customers within the local jurisdiction.
• The apex court ruled that proof of actual confusion is often difficult to adduce and therefore the likelihood of confusion was the appropriate test, even at the interim stage.

This particular case on the context of legal legibility, the decision is supposedly quietly high,however, on certain legal aspects, the decision could have done far better.