Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors.

The “Prius” trademark battle – testing transborder reputation of global brands in India.

Short Description :

Toyota, the Japanese automobile giant, filed a trademark infringement suit against Delhi-based Prius Auto Industries for using the name “Prius” for auto parts. The case revolved around whether Toyota’s hybrid car “Prius,” launched abroad but not in India at that time, enjoyed transborder reputation in India.

Facts :

⦁ Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation) launched the world’s first hybrid car “Prius” in Japan in 1997 and later globally.

⦁ Toyota claimed that “Prius” had attained worldwide recognition and therefore qualified as a well-known trademark even in India.

⦁ Prius Auto Industries Ltd., a Delhi-based company, began using the trademark “Prius” in India for auto spare parts and accessories from 2001.

⦁ Toyota alleged this caused confusion and amounted to passing off and trademark infringement.

⦁ Toyota filed a suit in the Delhi High Court in 2009 seeking permanent injunction, damages, and delivery up of infringing goods.

⦁ Prius Auto argued that Toyota had no prior use or registration of the mark “Prius” in India when they adopted it.

Findings :

⦁ The Delhi High Court initially ruled in favor of Toyota, holding that “Prius” had acquired transborder reputation and that the defendant was misusing the goodwill.

⦁ However, on appeal, the Supreme Court of India (2017) reversed this, noting that:

⦁ Toyota failed to prove that the Indian public in 2001 was aware of the Prius brand.

⦁ Evidence of advertisements in foreign journals and internet availability was not enough to establish knowledge and reputation in India at that time.

⦁ Thus, Prius Auto’s use was not infringing since Toyota had no reputation in India when the mark was first adopted.

Suggestions (Legal Significance) :

⦁ To succeed on transborder reputation, companies must show actual awareness and goodwill in India at the relevant time, not just global fame.

⦁ Internet availability alone cannot prove brand reputation in India unless supported by evidence like sales, Indian advertisements, or surveys.

⦁ This case is a landmark in Indian trademark law, setting stricter standards for foreign companies to claim protection before formally entering the Indian market.

Judgment :

⦁ Supreme Court of India, 14 December 2017

⦁ Held that Toyota failed to establish that the trademark “Prius” enjoyed reputation in India in 2001.

⦁ Verdict: In favor of Prius Auto Industries Ltd. → Toyota’s suit dismissed.

Judgment Date : 14 December 2017

Court : Supreme Court of India