Supreme Court gave its ruling on the subject of well known marks with regard to India through order dated 14.12.2017, in case titled as Toyota Jidosha Kabushiki Kaisha Vs. M/s Prius Auto Industries Ltd.
In the above mentioned case, Toyota filed a preventive suit against the Defendants for using the trademark ‘Prius’. Toyota did not get the mark ‘Prius’ registered in India, as a result of which lower courts felt difficulty in issuing a temporary injunction against the defendants.
Though, the twist in the case is that the defendants got the mark ‘Prius’ registered in India in the year 2002 and as a result of which were the owner of the mark ‘Prius’. Toyota claims that the mark ‘Prius’ is a well known mark which has been registered in other foreign countries.
The issue before the Hon’ble Supreme Court was: Whether the plaintiff’s claim (Well known Mark) is stronger than that of the defendant (Mark registered by them in India, prior user)?
The court ruled in favour of the Defendants, noting that the Plaintiff had not supplied enough proof of its “reputation” in the Indian market. In other words, although trans-border reputation was now very much a part of Indian law (ever since the Whirlpool decision), such reputation could not merely be asserted, but must be proved. And within the “territory” of India. The court notes:
“…if the territoriality principle is to govern the matter, and we have already held it should, there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also..”
In other words, although the mark may be very well known abroad, that by itself is not sufficient. Reputation in the local milieu must be proved as well. The court noted that in the year 2001(which, as per the Plaintiff, was the effective date on which a significant cross section of Indian consumers would have known of their mark), the Internet was still not in widespread use and therefore not many would have learnt of the mark:
“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.”
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