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Associate
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A seven year-long battle[1] between the Japanese car-maker Toyota and traders of automobile spare parts has culminated in a decision, which positions itself as a landmark precedent in trademark law.
I. Brief Facts
The Defendants used the mark PRIUS as part of their trade-name (Prius Auto Industries, Prius Auto Accessories Private Limited). They also sold spare parts using the trademarks TOYOTA, INNOVA and 
. Interestingly, while Toyota didn’t have an Indian registration for PRIUS, the Defendants had secured two of them. Toyota filed a civil suit for passing off the mark PRIUS and infringement of the other trademarks.
II. The Judgement: Victory for Toyota!
The Court held that PRIUS’ global reputation as the world’ first hybrid car had spilled-over to India, so much so that it was a wellknown mark. Finding the Defendants’ adoption of PRIUS to be dishonest, it granted reliefs against passing off, infringement along with damages worth INR 1 million.
III. A Landmark Decision
This decision is arguably the first from India’s most IP-savvy court, where a final finding on trans-border-reputation is given after the conclusion of trial. It also ranks high in the history of Indian trademark litigation on several counts:
- It saw the Court pass one of its first ever orders to expedite the trial;
- The reputation of an unregistered mark triumphed over the Defendants’ registrations;
- Very rarely does an unregistered trademark qualify for wellknown declaration;
- Calculation of damages was performed on the basis of the statement-of- accounts submitted by the Defendants;
The decision’s strongest pillars reside in its analysis of trans-border reputation and the Defendants’ dishonest adoption.
While it acknowledged that Toyota filed extensive documents in support of PRIUS’ reputation, independent cognizance was also taken by the Court through books, magazines available in public. This principle of judicial notice[2] finds rare application in trademark litigation. Moreover, the Court dug deep into the cross-examination of each witness to hold the Defendants’ reasons for adopting PRIUS as dishonest and contradictory.
IV. The Impact
Trademark proprietors have reasons to celebrate this decision since it holds that unregistered marks warrant equally strong protection as registered ones. Well-planned strategies on highlighting dishonesty and calculating damages based on the Defendants’ accounts will make decisions more rewarding than they have ever been.
1 Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Ors., CS (OS) 2490 of 2009
2 Section 57, Indian Evidence Act, 1872
