In a major setback to Toyota, the Apex Court has dismissed the appeal of the company for the use of the mark “PRIUS”. The court has agreed with the judgment of the Delhi High Court and has stated that mere reputation would not be sufficient for constituting a passing off action but is required to reveal the local goodwill which means there must be some customer within the local market.

UK Apex Court in Starbucks vs SKY BROADCASTING 2015 wherein Lord Neuberger observed that: As to what amounts to a sufficient business to amount to goodwill it seems clear that mere reputation is not enough. The claimant must show that it has a significant goodwill in the form of customers, in the jurisdiction.

Although the trans-border reputation is a part of Indian law after the whirlpool case but the reputation should not be assertive only it must be proved within the territory. Thereby the court has upheld the theory of territoriality principle against the universality principle.

The apex court also stated that it is very difficult to prove proof of actual confusion and thus, the test of appropriate test is sufficient.

The court while further examining the evidence in the matter stated that the advertisements in the automobile magazines, international business magazines, availability of data in information disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet if accepted will not be a safe basis to hold market at relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001.

Thus, the court stated that this in turn, it shows either lack of goodwill in the domestic market or lack of knowledge and information of the product amongst a significant section of Indian population. Also, the apex court while dismissing the appeal has talked about the inordinate delay by Toyota while filing the suit is remained unexplained.

This judgement has definitely set the precedent in the era where the new rules (Trademark Rules 2017) has arrived which provide the provision for Indian Trademark Registry to recognise a mark as well-known mark under the Act of 1999. Brand names will have to provide the documentary evidence not only of earliest possible as laid down by the divisional bench and upheld by the apex court but also of substantiating its goodwill in the territory of Indian market itself.

By : APARNA JAIN, HARINDER NARVAN & SHAISHAV MANU

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