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Home IP FLASH Toyota wins the ‘Prius’ trademark dispute

Toyota wins the ‘Prius’ trademark dispute

INTELLECT DESK
Toyota wins the ‘Prius’ trademark dispute

Seven years later, on 8th July 2016 Toyota received the final judgment from Delhi High Court in their favour on the use of its trademark “Prius”. Toyota Prius, is a full hybrid electric mid-sized hatchback, formerly a compact sedan, developed and manufactured by the automotive giant – Toyota. Prius gained international recognition and goodwill as it was the world’ first hybrid car. 

In 2009 Toyota brought a legal action against Prius Auto Industries and Prius Auto Accessories Private Limited, against their use of Toyota’s trademark “Prius”. Prius Auto Industries and Prius Auto Accessories Private Limited were also engaged in selling manufactured spare parts under the trademarks of Toyota, Innova and Qualis. The bone of contention behind the dispute, was the adoption of the mark “Prius” knowingly and dishonestly in order to gain unfair advantage of the reputation and goodwill associated with the mark.

Delhi High Court’s decision will potentially have a tremendous impact in Intellectual Property Law in India and perhaps the South Asia Sub-Continent. The most interesting aspect of this case, is the fact that the infringing company had registered “Prius” as its own trademark in India, whereas Toyota has no such registration in the country. The decision sets the legal precedence that whether trademarks are registered or not in a territory, will no longer effect or allow the misuse of it by other entities ; provided that the trademark carries a reputation in the same territory where real owner had prior use of. The existence of such reputation may be found through the documents filed by its proprietor or simply through documents that are accessible to the public or the Court  may take notice of such reputation its own motion. “Prior use” can also be established by the use of the trademark internationally by the same or associated entity. It is important to note that Toyota’s first use of the mark “Prius” was in 1995, while the infringer’s use of the mark was not until 2002. Therefore Toyota’s prior global use of the mark outdid the defendants’ use, even though the Toyota Prius was launched in India in 2010. 

The judgment will have an extremely positive impact on trademark cases and sheds light on the issue of trans-border reputation associated with a trademark, that can be felt even before the product or service under that mark is officially launched in India and also the fact that unregistered trademarks are not necessarily on weak footing. The Delhi High Court judgment mainly emphasizes on the analysis of the intention of the parties and maintains that the conduct of the parties plays a pivotal role in the dispute.     

The Prius judgment is likely to have a radical impact not only for the purpose of protecting Toyota’s trademark, but also for the protection of consumers, so as to ensure that consumers will no longer be tricked into believing that the sub-standard products are Toyota’s. The Court ordered the infringers to drop the name “Prius” within 2 months from the date of the judgment and pay a monetary compensation of INR 10 Lacs (equivalent to USD 15,000) as damages to Toyota.   

August 04, 2016
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