[TusharK]

The Supreme Court of India has rejected Toyota's plea for exclusive trademark rights over the 'Prius' brand name.



Toyota has been selling the Prius hybrid in Japan since 1997. The car was launched in UK, Australia and the US in 2000-01. However, Toyota didn't launch the Prius in India until 2010. By then, a Delhi-based auto spare parts maker was operating under the name - Prius Auto Industries. The company had been using the names Prius, Toyota, Toyota Innova and Toyota Device for its products.

Toyota had filed a case against Prius Auto Industries in a lower court, which ruled in favour of the Japanese carmaker but restrained the auto parts company from using the name Toyota, Toyota Innova and Toyota Devices. However, the court didn't object to the use of 'Prius'.

Toyota decided to pursue the case further and move the Supreme Court. However, the apex court found that Toyota had not registered the 'Prius' trademark in India till 2010 and neither did it seek cancellation of the trademark registered by Prius Auto Industries in 2002.

On the basis of 'territoriality principle', a bench comprising of Justices Ranjan Gogoi and Navin Sinha ruled that for a global brand to claim exclusive rights to a trademark of brand name in India, it must be able to prove that the name had acquired substantial popularity in the Indian market. The bench said that just an article in the local media about the launch of the Prius hybrid in 1997 does not firmly establish the acquisition of goodwill in the Indian market.

Source: The Economic Times

Link to Team-BHP News

[arunphilip]

Interesting ruling.

IANAL, but wouldn't intent also play a role here?

If it were 'Prius' used standalone, then I think the ruling is perfectly pragmatic in an Indian context.

However, seeing as how the auto parts company has not only used 'Prius' (a word/brand Toyota uses), but also the name Toyota itself, wouldn't that indicate a wider intent to misappropriate terms used by Toyota in various markets?

For instance, if I start an automotive component company called 'Bolt Industries' there'd be nothing wrong with it (assuming the name is unique!).

However, if I then start using names like 'Chevrolet', 'Camaro', etc. for the components I produce, wouldn't that also call into question the intent behind the name of my company?

[blackwasp]

This is hilarious!

The Court should take a look at both the companies and take a call based on the current status rather than on the basis of 'territoriality principle'! Whats stopping me today from registering unlaunched car names in India? e.g Renegade before they are brought out?

The Courts should also set a precedent for frivolous cases. IIRC there was a case of Audi TT as well as the recent Monte Carlo that was objected by the courts!

Folks, here is the website to check for trademarks in India. Class is 12 for automobiles. I searched for Renegade and turns out Mahindra owned it from 1979 - 2005. Then someone else tried for it in 2013 but the status says 'Objected'. If I apply for the trademark and get it, will Jeep pay me royalty to use it in their upcoming Renegade?





EDIT: In the 'well known marks' section of the same site, came across this-

Volvo - The Bombay High Court observed "Trans-border reputation is recognized by Indian courts and that actual sale in India is not necessary for a Plaintiff to establish its goodwill and reputation in India."