Toyota fails to obtain exclusivity over use of PRIUS mark
India - Nishith Desai Associates - Legal & Tax Counselling Worldwide
April 12 2010
The Delhi High Court has rejected Toyota's request for a permanent injunction preventing Prius Auto
Industries from using the PRIUS mark.
Toyota, the Japanese automobile giant, has owned registrations for the trademark PRIUS in over 40
countries since 1990. However, it did not own a registration for PRIUS in India. Prius, a partnership firm
incorporatedinIndiainApril2001,istheregisteredproprietorofthetrademarkPRIUSinIndiaforautomobile
parts and accessories in Class 12 of the Nice Classification. Prius has been using the mark since March
2002.
Toyotainitiallysoughtapermanentinjunctioninanactionforinfringementofitsregisteredtrademarks
TOYOTA, TOYOTA (and design) and INNOVA. It also sought a permanent injunction against use of the
PRIUSmarkinanactionforpassingoff.
Inparticular,Toyotaarguedasfollows:
l
It is the registered proprietor of the trademark PRIUS in numerous countries and adopted the mark
before Prius.
l
In1994itdesignedahybridcarcalledPrius,whichistheLatinwordfor‘
prior
’
or
‘
before
’
.
l
It has advertised the vehicle extensively in national and international publications.
l
PriuswasusingtheregisteredtrademarksTOYOTA,TOYOTA(anddesign)andINNOVA,aswell
asthenamePriusinitstradenameandonitsproducts,withoutToyota'sauthorization.
Thisamountedtoinfringement,passingoffanddilutionofToyota'strademarks.
l
Prius'sclaimthatToyotawasawareofPrius'sexistenceduetotheadvertisementofitsproductsin
various Indian automobile publications was unjustified.
In contrast, Prius raised the following arguments:
l
Bills and invoices showed that it had been doing business under the trade name Prius Auto
Industries since 2003. Further, reputed automobile companies, such as Mahindra & Mahindra,
Hyundai Motor Company and General Motors India
,haveplacedorderstopurchasePrius's
automobile accessories.
l
OverDrive and Auto Car, India
’
s leading automobile magazines, advertised Prius's products in 2003
and2004withthephrase“
Prius - the name you can trust
”
. The advertisements clearly showed that
Prius was supplying accessories for various vehicles, including Maruti 800, Indica, Santro Xing, Zen,
Omni and Qualis, which is manufactured by Toyota. Prius thus informed purchasers that it was
selling accessories which were suitable for these vehicles. This substantiated the assertion that, as
early as April 2003, Toyota was aware that Prius was using the name Prius. Hence, there was
considerable delay in filing suit on the part of Toyota.
Relyingonpreviousjudgments,andbasedontheargumentoftheparties,thecourtfirstobservedthat:
l
foreign magazines in which Toyota's Prius car was advertised were high-priced publications which
were not easily available to the average Indian reader; and
l
both parties were aware of the magazines OverDrive and Auto Car, and were advertising their
products therein.
ThecourtfurtherheldthatToyota'scontentionthatitbecameawareofPrius'spresenceonlyin2009was
contradicted by documentary evidence placed on record. If Prius was prevented from using the PRIUS mark
after more than seven years of use, it would suffer huge financial and reputational losses.
In addition, the court stated that Prius used the marks TOYOTA, TOYOTA (and design) and INNOVA on its
packaging mainly to demonstrate the compatibility of its products with certain vehicles and to identify its
goods, in accordance with honest commercial practices.
The court also held that Toyota, despite being aware that Prius was the registered proprietor of the
trademark PRIUS, had failed to disclose this fact in its complaint. Hence, the court was not aware of this
fact when it granted the interim injunction.
With respect to the meaning of 'prius', the court found that this word:
l
was a Latin term that was not commonly used in India;
l
wasincludedinEnglishdictionaries;and
l
was not an invented word.
Hence, Toyota could not claim to have a monopoly over use the word 'prius', as Prius has adopted its name
in good faith. The court further held that bills, invoices and purchase orders provided by Prius proved that it
was actively conducting business under the trade name Prius.
Finally,thecourtfoundthatPrius'stradedresswasdifferentfromthatofToyota,andthatthepurchasersof
the parties' goods were different.
Basedontheseobservations,thecourtconcludedthat:
l
Toyota would suffer no irreparable loss or injury, as it had not launched its Prius hybrid car in India;
l
Toyota had failed to make a prima facie case that Prius should be prevented from using the PRIUS
mark;
l
the balance of convenience lay in favour of Prius; and
l
the interim injunction in favour of Toyota should be set aside.
Accordingly, the action was dismissed.
Prerak Hora, Nishith Desai Associates - Legal & Tax Counselling Worldwide, Mumbai
Confusion
Dilution
Passing off
World Trademark Review (www.worldtrademarkreview.com) is a subscription-based, practitioner-led,
bi-monthly publication and daily email service which focuses on the issues that matter to trademark
professionals the world over. Each issue of the magazine provides in-depth coverage of emerging
national and regional trends, analysis of important markets and interviews with high-profile
trademark personalities, as well as columns on trademark management, online issues and
counterfeiting.
Toyota fails to obtain exclusivity over use of PRIUS mark
India - Nishith Desai Associates - Legal & Tax Counselling Worldwide
April 12 2010
The Delhi High Court has rejected Toyota's request for a permanent injunction preventing Prius Auto
Industries from using the PRIUS mark.
Toyota, the Japanese automobile giant, has owned registrations for the trademark PRIUS in over 40
countries since 1990. However, it did not own a registration for PRIUS in India. Prius, a partnership firm
incorporatedinIndiainApril2001,istheregisteredproprietorofthetrademarkPRIUSinIndiaforautomobile
parts and accessories in Class 12 of the Nice Classification. Prius has been using the mark since March
2002.
Toyotainitiallysoughtapermanentinjunctioninanactionforinfringementofitsregisteredtrademarks
TOYOTA, TOYOTA (and design) and INNOVA. It also sought a permanent injunction against use of the
PRIUSmarkinanactionforpassingoff.
Inparticular,Toyotaarguedasfollows:
l
It is the registered proprietor of the trademark PRIUS in numerous countries and adopted the mark
before Prius.
l
In1994itdesignedahybridcarcalledPrius,whichistheLatinwordfor‘
prior
’
or
‘
before
’
.
l
It has advertised the vehicle extensively in national and international publications.
l
PriuswasusingtheregisteredtrademarksTOYOTA,TOYOTA(anddesign)andINNOVA,aswell
asthenamePriusinitstradenameandonitsproducts,withoutToyota'sauthorization.
Thisamountedtoinfringement,passingoffanddilutionofToyota'strademarks.
l
Prius'sclaimthatToyotawasawareofPrius'sexistenceduetotheadvertisementofitsproductsin
various Indian automobile publications was unjustified.
In contrast, Prius raised the following arguments:
l
Bills and invoices showed that it had been doing business under the trade name Prius Auto
Industries since 2003. Further, reputed automobile companies, such as Mahindra & Mahindra,
Hyundai Motor Company and General Motors India
,haveplacedorderstopurchasePrius's
automobile accessories.
l
OverDrive and Auto Car, India
’
s leading automobile magazines, advertised Prius's products in 2003
and2004withthephrase“
Prius - the name you can trust
”
. The advertisements clearly showed that
Prius was supplying accessories for various vehicles, including Maruti 800, Indica, Santro Xing, Zen,
Omni and Qualis, which is manufactured by Toyota. Prius thus informed purchasers that it was
selling accessories which were suitable for these vehicles. This substantiated the assertion that, as
early as April 2003, Toyota was aware that Prius was using the name Prius. Hence, there was
considerable delay in filing suit on the part of Toyota.
Relyingonpreviousjudgments,andbasedontheargumentoftheparties,thecourtfirstobservedthat:
l
foreign magazines in which Toyota's Prius car was advertised were high-priced publications which
were not easily available to the average Indian reader; and
l
both parties were aware of the magazines OverDrive and Auto Car, and were advertising their
products therein.
ThecourtfurtherheldthatToyota'scontentionthatitbecameawareofPrius'spresenceonlyin2009was
contradicted by documentary evidence placed on record. If Prius was prevented from using the PRIUS mark
after more than seven years of use, it would suffer huge financial and reputational losses.
In addition, the court stated that Prius used the marks TOYOTA, TOYOTA (and design) and INNOVA on its
packaging mainly to demonstrate the compatibility of its products with certain vehicles and to identify its
goods, in accordance with honest commercial practices.
The court also held that Toyota, despite being aware that Prius was the registered proprietor of the
trademark PRIUS, had failed to disclose this fact in its complaint. Hence, the court was not aware of this
fact when it granted the interim injunction.
With respect to the meaning of 'prius', the court found that this word:
l
was a Latin term that was not commonly used in India;
l
wasincludedinEnglishdictionaries;and
l
was not an invented word.
Hence, Toyota could not claim to have a monopoly over use the word 'prius', as Prius has adopted its name
in good faith. The court further held that bills, invoices and purchase orders provided by Prius proved that it
was actively conducting business under the trade name Prius.
Finally,thecourtfoundthatPrius'stradedresswasdifferentfromthatofToyota,andthatthepurchasersof
the parties' goods were different.
Basedontheseobservations,thecourtconcludedthat:
l
Toyota would suffer no irreparable loss or injury, as it had not launched its Prius hybrid car in India;
l
Toyota had failed to make a prima facie case that Prius should be prevented from using the PRIUS
mark;
l
the balance of convenience lay in favour of Prius; and
l
the interim injunction in favour of Toyota should be set aside.
Accordingly, the action was dismissed.
Prerak Hora, Nishith Desai Associates - Legal & Tax Counselling Worldwide, Mumbai
Confusion
Dilution
Passing off
World Trademark Review (www.worldtrademarkreview.com) is a subscription-based, practitioner-led,
bi-monthly publication and daily email service which focuses on the issues that matter to trademark
professionals the world over. Each issue of the magazine provides in-depth coverage of emerging
national and regional trends, analysis of important markets and interviews with high-profile
trademark personalities, as well as columns on trademark management, online issues and
counterfeiting.