Trademark precedents: An evolving landscape

Supreme Court decisions in 2017 were instrumental in shaping India’s evolving trademark law. In the passing-off case of Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd & Ors the court confirmed the trend of “territoriality” over “universality”, observing that Toyota was unable to prove trans-border reputation in India for the mark Prius before the mark’s adoption and use by Prius Auto Industries.

Although Toyota was first in the world to use the mark (in 1997), its use in India commenced only in 2010, after applying for its registration in 2009 on a “proposed to be used” basis. Prius Auto Industries had been using the mark in India since 2001 in respect of automobile parts and accessories and had obtained trademark registration in 2002. As internet connectivity was low in 1997 and only two news items in India mentioned Toyota’s launch of its Prius brand of cars in Japan, the evidence to support the existence of reputation in India was insufficient. This decision reflects the trend of jurisprudence in India to redefine trans-border reputation and also shows the importance of a thorough inquiry, scrutiny and appreciation of evidence led by the parties.

The Supreme Court also ruled last year on a longstanding dispute between Royal Orchid Hotels and Kamat Hotels, which began as opposition proceedings before the Trade Marks Registry. The court decided in favour of Kamat Hotels in a case over the mark Orchid.

Dheeraj Kapoor is a senior associate and Shilpi Jain is an associate at LexOrbis.