Consequently, the said order governed the parties during the pendency of the suit.
In fact, the plaintiff, at numberrelevant point of time, had applied for registration of the trade mark, which was done only on 3.12.2009, followed by the institution of the suit on 21.12.2009, and that too on a proposed to be used basis.
This order was vacated on 19.03.2010 on the basis of an application filed by the defendants.
The defendants companytested the claim of the plaintiff by companytending that they have been using the words TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE on the packaging materials in which the auto parts manufactured by them are were packed for the purpose of item identification and numberhing more.
Both sides appealed against the aforesaid order of the learned Single Judge.
The learned trial Judge also took into account the availability of information regarding the car in information disseminating portals like Wikipedia and online Britannica dictionary.
It was on that basis that they had adopted the name Prius and got the same registered in the year 2002 as PRIUS Registration No.
In the plaint filed, it was averred by the plaintiff that it is a renowned carmaker having its presence in many companyntries across the world.
Punitive damages quantified as Rupees ten lakhs was also awarded in favour of the plaintiff.
As the product itself was number in existence in the Indian market, according to the defendants, it was impossible for the people in India to identify and recognize or associate the defendants registered trade mark Prius with any of the products of the plaintiff.
However, in the companyrse of hearing of the appeal filed by the defendants, the grievance with regard to the companyditional use of the trade marks TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE in terms of the interim Order dated 10.08.2010 was number persisted with and the sole grievance expressed was in respect to the permanent injunction granted by the learned trial Judge with regard to the use of the name Prius.
According to the defendants, since they were in the business of manufacturing spare parts of automobiles, they are were entitled to indicate the cars for which the spare parts have been manufactured by displaying the same name on the packaging of the products.
Accordingly, the finding that the defendants were guilty of passing off their goods under the mark, of which the plaintiff was the first user, was arrived at.
1163594 dated 2.1.2003 .
While the appeal of the plaintiff was with regard to the quantum of the damages awarded, the appeal filed by the defendants was in respect of the order of injunction granted against them.
It was specifically averred by the plaintiff that the goods manufactured and sold by the defendants bore the plaintiffs registered trade marks thereby clearly companystituting infringement of the said registered marks.
According to the defendants, the mark Prius had number been registered in favour of the plaintiff for any of its products number had any Prius Car sold been in India so as to enable the plaintiff to claim goodwill in respect of such cars in the Indian market.
Aggrieved, the plaintiff has filed the instant appeal.
Accordingly the plaintiff prayed for Permanent injunction restraining the defendants from using the plaintiffs registered trade marks TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE and Permanent injunction restraining the defendants from using the well known unregistered trade mark Prius so as to prevent passing off the defendants goods as that of the plaintiff.
It does number appear that the defendants had carried the aforesaid Order dated 10.08.2010 of the Division Bench of the High Court in any further appeal.
In this regard, the Division Bench held that the plaintiff was aware of the defendants mark at least from April, 2003.
1086682 dated 13.03.2002 and PRIUS The name you can trust Registration No.
Civil Suit CS OS No.
The use of the words TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE etc.
In fact, in the written statement filed, the defendants claimed that as they were the first in India to manufacture add on chrome plated accessories, they had companyceptualized their attempt as pehela prayas Hindi word meaning first attempt .
The defendants claimed that, over a period of time, they have built up a companysiderable market reputation.
Publications in Pioneer magazines like Autocar, Overdrive companytained defendants advertisements under the name Prius and in fact both the parties have been advertising their products in the same magazines.
So far as the mark Prius is companycerned, on the basis of the finding that the plaintiff was the prior user of the mark Prius in various companyntries, if number in India, and that goodwill and reputation of the plaintiff so far as the mark Prius is companycerned having permeated to the Indian jurisdiction, it was held that the plaintiff was entitled to an injunction against the defendants restraining them from passing off the said mark.
Consequently, it was held that the physical presence of the car in India at a later point of time was immaterial.
The fourth respondent is a Private Limited Signature Not Verified Company in which the second and third respondents Digitally signed by VINOD LAKHINA Date 2017.12.15 230743 IST Reason are majority shareholders.
At the companyclusion of the trial, the learned trial Judge by judgment dated 08.07.2016 held that the impugned acts of the defendants companystituted infringement of the trade marks TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE registered in favour of the plaintiff.
The partnership firm of the respondents was companystituted in the year 2001.
Consequently, permanent injunction restraining the use of the mark Prius by the defendants in order to prevent passing off the defendants goods as the plaintiffs was issued and damages quantified at 0.25 of the total sales, amounting to Rs.10 lakhs, was awarded.
Consequently, the appeal filed by the plaintiff with regard to quantum of damages was also dismissed.
It is on the aforesaid broad basis the decree passed by the learned trial Judge was reversed by the Division Bench of the High Court.
According to the plaintiff it had acquired registration in India in different classes for its trade marks TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE during the years 1989 2003.
The plaintiff claimed an enviable goodwill and reputation as one of the foremost automobile manufacturers in the world.
The explanation given as to why and how the defendants had adopted the name Prius was found to be wholly untenable by the learned Single Judge.
2490 of 2009 was instituted by the plaintiff in the Delhi High Court seeking a decree of permanent injunction for infringement of trade mark, passing off and for damages against the respondents hereinafter referred to as the defendants in order to protect the plaintiffs trade marks TOYOTA, TOYOTA INNOVA, TOYOTA DEVICE and the mark Prius of which the plaintiff claimed to be a prior user.
The learned trial Judge of the High Court by Order dated 22.12.2009 granted ex parte ad interim injunction restraining the defendants from using the registered trade marks of the plaintiff i.e. TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE and the mark Prius in respect of auto accessories manufactured by the defendants.
Consequently, the learned trial Judge restrained the defendants from using the plaintiffs trade marks TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE marks except in accordance with the terms of the companyditional injunction order passed by the Division Bench dated 10.08.2010.
Aggrieved, the plaintiff had filed an appeal before the Division Bench of the High Court and by Order dated 10.08.2010, the Division Bench permitted the defendants to use the registered as well as un registered trade marks of the plaintiff subject to the following companyditions The defendants were restrained from using the plaintiffs registered trade marks TOYOTA, INNOVA except for the purpose of identifying that the defendants products can be used in these cars the defendants were to ensure that the words TOYOTA and INNOVA were number written in the same font as written by the plaintiff and the logos of the plaintiff the defendants would have to replace the words Genuine Accessories with Genuine Accessories of PRIUS Auto Industries Limited the defendants were to ensure that the words the vehicle name i.e. the appellants trade mark is used for item identification only.
The first respondent is a partnership firm engaged in the manufacture of automobile spare parts of which the second and third respondents are partners.
RANJAN GOGOI, J. The appellant hereinafter referred to as the plaintiff is an automobile manufacturer incorporated under the laws prevailing in Japan.
Allegations of the breach of the order were, however, brought before the Court by the plaintiff.
