Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Limited [SC, December 14, 2017]
FACTS:
- Toyota Jidosha Kabushiki Kaisha (“Toyota”) sued Prius Auto Industries (“Prius Auto”), a spare parts supplier, to prevent them from using the trademarks “Prius”, “Toyota”, and “Innova”. “Innova” and “Toyota” were registered trademarks of Toyota, which led the lower courts to rule in Toyota’s favour.
- Prius Auto did not protest against these rulings. Instead, they claimed that the trademark “Prius” was theirs and not Toyota’s. To back this, Prius Auto proved that Toyota had not registered the “Prius” trademark.
- However, Prius Auto had it registered as early as 2002. Toyota argued that it had used the trademark since 1997 and that Prius Auto had wrongfully registered a trademark that was not its own.
- Having been put through several appeals in the lower courts, this case was finally taken up by the Supreme Court of India.
- Use of a registered trademark for a product or service that is not similar to the goods or services for which the trademark is registered is not trademark infringement.
ISSUE:
- Whether Prius Auto is guilty of passing off their products through the “Prius” trademark, thereby harming Toyota’s market reputation?
HELD:
- The Supreme Court of India’s judgment in the case of Toyota Jidosha Kabushiki Kaisha
v. M/S Prius Auto Industries Limited, 2017 can be summarized in the following 5 points:
- The use of a registered trademark for a product or service that is not similar to the goods or services for which the trademark is registered is not trademark infringement.
- In determining whether two products or services are similar, the Court will consider their purpose, function, and target market.
- The Court will also consider the likelihood of confusion among consumers in determining whether there is trademark infringement.
- The Court will also consider the public interest in determining whether to prevent the use of a trademark.
- In the case of Toyota v. Prius Auto Industries, the Court found that the use of the “Prius” trademark for electric scooters was not trademark infringement because the two products were not similar, and there was no likelihood of confusion among consumers.