By Karen Lim
Prius Auto Industries Ltd v. Toyota Jidosha Kabushiki Kaisha (RFA (OS) 62/2016)
We update our previous article on the July 2016 ruling by a single judge of the High Court of Delhi recognizing Toyota’s unregistered PRIUS mark as well known worldwide:
On appeal by Prius Auto, the Division Bench of the Delhi High Court set aside the permanent injunction granted by the single judge prohibiting Prius Auto from using the PRIUS mark, holding that Toyota had failed to establish the trans-border reputation of its PRIUS mark in India when Prius Auto adopted the same name. In particular, the Division Bench noted that:
• Reports in the print media of Toyota’s launch of its PRIUS car in 1997 may not have been sufficiently prominent as to attract the attention of the public at large;
• Toyota provided no evidence of advertisements in India related to its PRIUS car before it was sold for the first time in the country in 2001;
• Internet penetration in India was low in 2001;
• Prius Auto had sold its cars in India for nearly ten years without confusion when Toyota filed suit.
This decision signals that plaintiffs could be required to make strong showings of trans-border reputation going forward.