Toyota squander trademark battle over Prius issue
Prateek Sharma 21 Dec 2017

Toyota squander trademark battle over Prius issue


Concept of trans-border reputation brings back copyright rules and regulations to its inception in India, such was the judgement in case Toyota Jidosha Kabushiki Kaisha V. M/S Prius Auto Industries Limited[1] where supreme court held that registration of a trademark is of importance simultaneously with its local or town reputation. Fact of the case being plain and simple, where plaintiff Toyota Jidosha Kabushiki Kaisha did not register trademark ‘PRIUS’ in their domain but defendant M/S Prius Auto Industries Limited did. Toyota claimed that they were the first users of ‘PRIUS’ and had every right to claim trademark but the court ruled their judgement in favor of defendant holding that Toyota motor corporation could not produce enough local customers for their minimum local reputation, also they didn’t have any registration with the name ‘PRIUS’.


Analysis of court ruling:

Worldwide reputation of trademark became a question of fact in various cases of apex court, N.R. Dongre v. Whirlpool Corporation[2], where supreme court ruled their judgement in favor of corporation enlightening the concept of trans-border reputation, here as “Whirlpool’ was deemed to have trans-border reputation therefore its trademark was protected in India as well irrespective of its market base or registration in India. In Pfizer Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr[3] petitioner pleaded that opposition was infringing their registered trade mark ‘ANTI THYROX’, to which court said that it is upon the will of trademark owner to have a territorial/local reputation of the same for it to have a trademark ownership.

In a landmark judgement delivered by supreme court in Ruston & Hornby Ltd. v. Zamindara Engineering Co. [4] held that “there does not seem to be any requirement that the plaintiff must carry on business in India before bringing an action for passing off for he can prove that he has otherwise acquired reputation in the country.”

In the case of Milmet Oftho Industries & Ors. Vs. Allergen Inc[5]. supreme court finally said that "the mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market”. This judgement rules out every possible protection that may be granted to Toyota motor corporation due to their world-wide reputation, a local reputation must be established on part of Toyota corporation so that to attain protection of trademark in Indian market or soil.

These decisions were upheld in further cases stating that, delay in approaching the court could not justify the use of the trademark which was a worldwide famous name Daimler Benz Aktiegesellschaft and Anr. v Hybo Hindustan[6].

In this present case, as presence of internet was not there back in year 2001 when Toyota started selling cars in name of ‘PRIUS’ therefore not many people would have known of its existence. Also having appearance of same in various news article would not suffice the conditions of having a goodwill in its local territory, minimum number of customers within that local jurisdiction is necessary which was stated in Starbucks Limited and another v British Sky Broadcasting Group PLC and others[7] case as well.



Shifting of copyright laws to US law ground is happening with respective to trans-border reputation as was in the prime case involving ITC and its BURKHA mark, to which court stated that as ITC did not use its BURKHA mark in United States therefore they had no trademark protection there and a possible territorial reputation must be maintained so was the application of ruling in our present case here.

In my view supreme court ruling is very well reasoned in every way possible in this case, where it gives a true example of sweat of brow concept. Plaintiff even being on the upper hand couldn’t protect their own inventive product ‘PRIUS’ trademark name which redefines law in a good way and give true hope to various such defendant organizations around globe which is in turn the beauty of law.


[1] Civil Appeal Nos.5375-5377 of 2017

[2] 1996 5 SCC 714

[3] 2004(28) PTC 456(Del)

[4] 1970 2 SCR 222

[5] (2004) 12 SCC 624

[6] AIR 1994 Delhi 239

[7] [2013] EWCA Civ 1465-Appeal

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