I. Supreme Court: A trademark passing off action can succeed
only if goodwill and reputation in India is established
The Supreme Court ("the Court") in
Toyota Jidosha Kabushiki Kaisha v. M/s Prius Auto
Industries Limited and Others (decided on December
14, 2017) while holding that the use of the mark "Prius"
by M/s Prius Auto Industries Limited and Others ("the
Defendants") did not amount to passing off, also held
that reputation and goodwill in a trademark existing overseas does
not necessarily mean that such reputation and goodwill exists in
India as well. Separate proof has to be submitted to that effect in
an action for passing-off.
Facts
Toyota Jidosha Kabushiki Kaisha ("the
Plaintiff") is a famous Japanese automobile
manufacturer that instituted a trademark infringement and
passing-off suit against the Defendants. The Plaintiff alleged the
infringement of its registered trademarks "TOYOTA, TOYOTA
INNOVA and TOYOTA DEVICE" and passing-off of its
