TOYOTO JIDOSHA KABUSHIKI KAISHA versus MIS PRIUS AUTO INDUSTRIES LTD. & ORS.

Citation: [2017] 12 S.C.R. 805 · Decided: 14-12-2017 · Supreme Court of India · Bench: RANJAN GOGOI · Disposal: Dismissed

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Judgment (excerpt)

[2017] 12 S.C.R. 805 
TOYOTO JIDOSHA KABUSHIKI KAISHA 
v. 
MIS PRIUS AUTO INDUSTRIES LTD. & ORS. 
(Civil Appeal Nos. 5375-5377 of2017) 
DECEMBER 14, 2017 
[RANJAN GOGOi AND NAVIN SINHA, JJ.] 
Trade Marks Act, 1999 - Foreign claimant - Action for 
passing off - Maintainability of - Appellant-plaintifj; an automobile 
manufacturer incorporated in Japan, flied suit against respondent-
defendant seeking permanent injunction restraining the respondents 
from using appellant '.Y unregistered trade mark 'Prius '. of which 
the plaintiff claimed to be a prior use1-, so as to prevent the 
respondents from passing off their goods as that of the appellant -
Single Judge of High Court restrained the respondents from using 
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B 
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the mark 'prius' in respect of auto accessories manufactured by D 
them - Division Bench set aside the order of Single Judge - On 
appeal, held: Plaintiff launched the world'.Y first commercial hybrid 
car called 'Prius' in Japan in I 997 - Said car was introduced in 
India in 2009-I 0 and until that point of time appellant had not 
obtained registration of the mark 'Prius' in India - Howeve1-, 
defendants were continuously using the mark 'Prius' since 2001 
and they had obtained registration of the same in the year 2002 -
Though, trade mark 'Prius' had acquired a great deal of goodwill 
in several otherjurisdictions in the world, but there must be adequate 
evidence to show that appellant had acquired a substantial goodwill 
for its car under the brand name 'Pri11S' in the Indian market also -
Furthe1; appellants advertisements in automobile magazines, 
international business magazine, availability of data on information 
disseminating portals like Wikipedia etc., even if accepted, are not 
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a safe basis to hold the existence of necessary goodwill and 
reputation of the product in Indian market at the relevant point of 0 
time - The brand name of appellants car Prius had not acquired 
the degree of goodwill, reputation and market or popularity in Indian 
market so as to vest in appellant the necessary attributes of the 
right of a prior user and to successji1lly maintain an action of passing 
off against respondent, the registered owner. 
805 
H 
806 
SUPREME COURT REPORTS 
[2017] 12 S.C.R. 
A 
lntellec/l/al Property Rights - Trademark - Passing ufl -
Proof/or estahlishing - Trinity test - Held: Three 111gredienls 
required to be prul'ecl by the plai11ti/Jfi1r establishing w1 action uf 
passing (?ff arc his goodwill, misrcprcse11/alion and damages. 
lntellect11af Properly Righrs - Trademark - Passing off -
13 
Misrepresentation - Test of likelihood of co11/i1sio11 vis-a-vis actual 
co11/i1sion -B11rde11 to prove - Discussed. 
c 
D 
E 
F 
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H 
fmclfect11al Property Rights - Trademark - Action for passing 
off- Territoriality principle - Disrnssed - D0<:trincs!Pri11cipfcs. 
Dismissing the a1>peals, the Court 
HELD: l. l According to the trinity test, to prove and 
establish i111 i1ction of passing off, three ingredients arc re11uired 
to be proved by the plaintiff, i.e., his goodwill, misrepn:sentation 
and damages. (Para 211[82l~CJ 
S. Si:ed Mohideen 
v. 
P. S11/odw11a Bai (2016) 2 SCC 
683 - relied on. 
1.2 The test of whether a foreign claimant may succeed in a 
passing-off action is whether his business has a goodwill in a 
particular jurisdiction, which criterion is broader than the 
"obsolete'' test of whether a claimant has a business/place of 
business in that jurisdiction. If there arc customers for the 
claimant's products in that jurisdiction, then the claimant stands 
in the same position as a domestic trader. The overwhelming 
judicial and academic opinion all over the globe, therefore, seems 
to be in favour of the territori:1lity principle (a trade mark being 
recognized as having a separate existence in each sovereign 
country). There is no reason why the same should not apply to 
this country. !Paras 27, 281(823-E-FI 
Pr<?( Cristopher Wadlow in his book "The Law of Passing-
Off 5'" Edn. Sweet & Maxwell" - relied on. 
1.3 To give effect to the territoriality principle, the courts 
must necessarily have to determine if there has been a spill over 
of lhe reputation and goodwill of the mark used by the claimant 
who has brought the passing off action. In the course of such 
determination it may be necessary to seek and ascertain the 
existence of not necessarily a real market but the presence of 
TOYOTO JIDOSHA KABUSHIKI KAISHA v. M/S PRIUS AUTO 
807 
INDUSTRIES LTD. 
the claimant t

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