Toyota, one of the leading giants in the automobile industry, sensed a huge relief when the Delhi High Court on 8th of July, 2016 delivered its judgment in its favour. This trademark dispute was pending in the court for seven long years, before the court found the defendants conduct to be dishonest. One of the most heated trademark battles of the Delhi High Court was finally brought to an end when Hon’ble Justice Manmohan Singh delivered the much awaited trademark judgment in Toyota Jidosha Kabushiki Kaisha versus Deepak Mangal & Ors., CS (OS) 2490 of 2009, in favour of the Japanese automobile giant Toyota.
In 2009, Toyota had filed a case against a proprietary firm and a company (amongst others) by the name of Prius Auto Industries and Prius Auto Accessories Private Limited – the Defendants. Toyota had found serious objection with the Defendants’ use of its trademark, which is the name of its first hybrid car in the world-, the Prius. The Defendants were also selling indigenously manufactured spare parts under the trademarks Toyota, Toyota company logo, Innova and Qualis. Interestingly, the Defendants had secured registrations for the mark Prius in India, while Toyota did not have such a registration to its name in the country. However, convinced that the Defendants had taken unfair advantage of the reputation of its vehicles in order to expand their own business in India. The Delhi High Court in the case of Toyota Jidosha Kabushiki Kaisha vs Deepak Mangal & Ors., CS (OS) 2490 of 2009, also known as the Prius Trademark case, found the defendants conduct to be dishonest, who was carrying on the business of selling indigenously manufactured spare parts in the name of Prius Auto Industries and Prius Auto Accessories Private Ltd. They were also using the trademark PRIUS as part of their business name. The trademark PRIUS was first used by Toyota for their hybrid car, Toyota Prius, way back in 1995, a first of its kind and was later launched in the Indian market in 2010. The word ‘Prius’ is a Latin word meaning “first” or “original” .Toyota vehemently objected to the use of their trademark by the defendants. The defendants had registered their trademark in India. It is pertinent to note that Toyota had not registered the word ‘PRIUS’ in India, when the matter was brought before the court of law.
However, Hon’ble Justice Manmohan Singh rejected the contention of the defendants that the plaintiff’s car was launched in India much after the business of the defendants and held that Toyota’s first use in 1995 was sufficient for deciding the case in their favour. The court also said that the defendant’s use of the mark was adversely affecting the business and reputation of the plaintiff.
The Court in its final order asked the defendants to drop the name PRIUS as a part of their trademark name within a period of two months from the date of the judgment. The court also acknowledged Toyota’s claim to be monetarily compensated and consequently asked the defendants to pay a sum of INR 10 lakhs as damages. This amount was decided on basis of the statement of accounts filed by the Defendants for their business under the PRIUS mark which showed sales up to INR 20 crores.
Keywords: Toyota, Trademark, Unfair competition, Prius Trademark, Trademark infringement.
