Indermeet Kaur, J.@mdashI.A. No. 16776/2009: This is an application filed by the plaintiff under order 39 Rule 1 & 2 CPC. Vide ex parte order dated 22.12.2009 defendants had been restrained from using the trademark/trading style TOYOTA, the toyota device, INNOVA and PRIUS in respect of auto parts and accessories or any other allied goods or to do anything which may cause confusion or deception amounting to passing off defendant''s goods as that of the plaintiff.
2. I.A. No. 110/2010: This is an application under Order XXXIX Rule 4 CPC filed by the defendant; he has prayed that the ex parte order dated 22.12.2009 be set aside.
3. I.A. No. 1 156/20 10: This is an application under Order 39 Rule 2A CPC filed by the plaintiff; it has been prayed that the defendant in spite of the ex parte injunction operating against him is continuing user of the trademarks of the plaintiff and is also guilty of passing off of the goods of the plaintiff as that of his own.
4. Crl.M.A. No. 1032/2010: This is an application filed by the plaintiff under Order 340 Cr.P.C. and supplements the prayers made in the application under Order 39 Rule 2A CPC. The affidavit filed by the defendant along with his application under Order 39 Rule 4 CPC has made false statements and misrepresentation; defendant is liable for perjury.
5. Pleadings are complete in all the aforestated applications. By this common order the aforenoted applications are being disposed of.
6. The cause of action in this suit is two-fold. plaintiff has firstly sought a permanent injunction on an action of infringement of his registered trademark; the registered trademarks being ''TOYOTA'' ''toyota device'' and ''INNOVA''. Second relief is a relief of permanent injunction in a case of passing off. plaintiff is stated to be the prior user of the mark ''PRIUS'', he admittedly has no registration in India of the mark ''PRIUS''.
7. Case of plaintiff:
To substantiate his plea of passing off on the use of the mark ''PRIUS'' plaintiff has submitted as follows:
i. plaintiff company is a company registered in Japan, dealing in the manufacture and sale of automobiles and parts thereof. In the year 1994 plaintiff designed a concept car with a hybrid engine; vehicle was named ''PRIUS'' derived from the Latin word ''prior'' or ''before''. The first ''PRIUS'' model was sold in December, 1997 in Japan. Official launch of ''PRIUS'' was in 2001. plaintiff company has revenues of over U.S. 220 billion dollars and its products are widely marketed in India as also in over 80 other countries throughout the world. plaintiff is the registered proprietor of the trademark ''PRIUS'' in 28 countries commencing from the year 1990. Defendants are using the mark ''PRIUS'' as an essential and leading portion of their trading name and the same appears on its products. Such a use by the defendant is without authorization or permission and amounts to passing off and dilution of the plaintiff''s trademark ''PRIUS'' which was adopted by the plaintiff in the year 1990. Defendants are adversely affecting the plaintiff''s good-will.
ii. plaintiff has pleaded his sale figures in foreign countries. The sale units of the car show that the sale figures have climbed enormously from 300 units in 1997 to 2,85,600 units in 2008. In May 2008 the global figure had reached the one million mark and crossed over to the 1.43 million units in August 2008. Extensive advertisements of the said vehicle both in national and international publications have been placed on record.
iii. "Business Week" publications of 15.12.1997, 21.1.1998, 27.04.1998, 27.07.1998, 13.11.2000 and again on 27.11.2000 had as far back as in 1997 depicted the status of this compact car and the efforts of the plaintiff i.e. the ''TOYOTA'' company to promote this venture. On 31.07.1998 and again on 8.11.2001, the "New York Times" had reported and widely publicized this hybrid vehicle and the advance technology put forward by ''TOYOTA'' in it. Print outs from the web sites www.toyoto.com and www.toyotabharat.com, the Encyclopedia Britannica and Wikipedia on line edition attributing the source of the ''PRIUS'' car to the plaintiff have been emphasized to substantiate this argument. Print outs and copies of extracts from the books titled as the ''PRIUS that shook the World'' and ''The Toyota Way 14 Management Principles from the World''s Greatest Manufacturer'' published in the year 2009 have been filed.
iv. Not only in the international circles but in Indian dailies as well the association of ''PRIUS'' with ''TOYOTA'' being the first hybrid car introduced by ''TOYOTA'' company had received a far ranging publicity. Attention has been drawn to the articles in the "Economic Times" dated 27.03.1997 and again on 15.12.1997. The features of this car were again publicized on 23.09.2002 in "The Hindu". On 4.8.2004 the "Times of India" and on 19.2.2006 "The Indian Express" had widely advertised the hybrid technology of the ''PRIUS'' a Toyota venture. Popular Indian magazines like the "Auto Car", "Over Drive" and "Zigwheels" have given information on the revolutionary progress made by the Toyota Company and its efforts to create a hybrid system encompassed in this vehicle i.e. the PRIUS. This was in the year 2009. iv. In these circumstances, it is impossible to believe that the defendant was not aware of the association of ''PRIUS'' with the ''TOYOTA'' company; that ;''PRIUS'' is essentially an invented word and being the trademark of the plaintiff, the use of the same name by the defendant was nothing but passing off the good of the plaintiff as those of his own. The plaintiff has acquired a worldwide reputation and goodwill; this reputation has spilled over to India and the Indian public is aware of the same entitling the plaintiff to his relief.
8. The observations of the Apex Court in
The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off if should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trademark. He cannot represent his own goods as the goods of somebody else.
9. It is submitted that the ratio of the decision clearly establishes that the registration of the trademark ''PRIUS'' in favour of the defendant is no defence in his favour; by using the identical mark ''PRIUS'', the defendant is selling his goods which are auto part accessories as the goods of the plaintiff; the unwary and layman purchaser is bound to be confused and deceived into believing that what he is purchasing i.e. the auto parts or the auto part accessories are those of the plaintiff.
10. In Jolen Inc. v. Doctor and Company (2002)2 CTMR 6 it was observed as under:
In modern world, advertisements, the newspapers travel beyond the country where party is engaged in business through overseas editions or otherwise. Even if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a world where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men. Whenever persons travelling abroad for business or pleasure or any other purpose viz. Study or temporary postings come across an article of a trade name of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient.
11. Reliance has been placed upon
12. An advertisement of the trademark by itself without the existence of goods in the market is also to be considered as a use of the trademark even if the plaintiff is not using or marketing the goods under the same trademark. This fact would be irrelevant as admittedly the trademark ''PRIUS'' has been used by the plaintiff in the world market much prior in time to the defendant. For this proposition, reliance has been placed on
13. In
14. On the defence of delay as set up by the defendant reliance has been placed upon
In my view, the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else''s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name ''Benz'' should be not objected to
15. On the plea of infringement of the trade marks TOYOTA, toyota device and INNOVA plaintiff has submitted as follows:
i. Admittedly the plaintiff is a prior user and registered owner of the said trade marks in more than 40 countries. Trademark TOYOTA has been registered with the plaintiff in 21 different classes from the year 1989. The toyota device has been registered with the plaintiff in five classes since 1989; INNOVA is also a registered trademark of the plaintiff since September 2003. Registration certificates have been placed on record. Extracts from Trademark Journal have also been filed to support this submission. These registrations in the favour of the plaintiff of its registered trademarks TOYOTA, toyota device and INNOVA are prima facie evidence of the plaintiff exclusive user of the same; this is clear from Section 28(1) of the Trademark Act 1999 (hereinafter referred to as the Act).
ii. Defence of the defendant that his use of the said name for quality description of the goods of the plaintiff is negatived by the documents. Attention has been drawn to the packaging of the defendant''s products showing use of the Trademark TOYOTA, the toyota device, INNOVA and PRIUS along with the invoices, brochures and price list. It is submitted that the extensive use of the said marks on these documents of the defendant prima facie evidence his malafide intent; i.e. of the infringement of the trademarks of the plaintiff and passing off his goods to the innocent purchaser as that of his own; they are definitely not meant for a character identification of the goods as pleaded by the defendant.
16. Case of defendant:
i. Defendant has refuted these arguments by setting up a defence of delay, waiver and acquiescence on the part of the plaintiff. Defendant had become the registered owner of the trademark ''PRIUS'' in 2002 on an application which he had filed in the year 2001. By neither applying for registration of the trademark ''PRIUS'' in India nor opposing the application of the defendant for the said registration, the plaintiff having approached the Court only in December, 2009 when the defendant has a continuous long user of the said mark ''PRIUS'' since 2002, the plaintiff has given up all claims, if any, on this mark.
ii. Defendant a partnership firm incorporated on 01.04.2001, had on 06.03.2002 applied for the registration of the trademark ''PRIUS'' which had been certified in his favour on 11.10.2006 with effect from13.03.2002. Bills/invoices filed by the defendant show that the defendant company is doing business under its business name ''Prius Auto Industries'' with the trademark ''PRIUS'' since 2003. Purchase orders from various companies which include reputed auto companies i.e. Mahindra & Mahindra evidence the orders placed upon the defendant for supply of auto accessories. Similar orders placed by Hyundai Motors Company as also the General Motors India Pvt. Ltd have also been placed on record. Purchase orders of General Motors India Pvt. Ltd. dated 07.0 1.2005 show orders of more than 3600 items on one date. Balance- sheet of the defendant company from March, 2002 upto 2009 has also been filed showing the enhancement of its sale figures and corresponding profits. The sale figures have swelled from 1,34,799 in 2002 to 53,60,869 in the year ending 3 1.3.2009.
iii. The ''Over Drive'' described as India''s No. 1 Car and Bike Magazine had as early as April 2003 published the advertisements of the defendant under its trade name ''PIRUS - the name you can trust''. "Auto Car", a pioneer publication of automobiles has also been placed on record. Publications for the months of January and December, 2004 show that the defendant company had advertised its goods under its aforesaid trademark. It is submitted that these advertisements clearly show that the defendant is the supplier of garnish covers and auto accessories for various vehicles which have been depicted in the said picture which include the Maruti 800, Indica, Santro Xing, Zen, Omni and Toyota Qualis. These pictures indicate that the defendant is informing his purchaser that he is selling auto accessories which are suitable for the aforenoted various vehicles which also include the Toyota group i.e. the ''Qualis'' as well. The ''toyota device'' and the mention of the vehicle ''Quails'' is only for the purpose of the identification of the item and its suitability to the wide range of vehicles mentioned thereunder; it is definitely not with the intent to deceive the purchaser or to confuse him into believing that he is selling auto accessories of ''TOYOTA''. It is submitted that this publication is in fact, a publication which has also been relied upon by the plaintiff and has been filed by him in his list of documents. plaintiff at page 192 of his documents has filed copies of this publication evidencing his submission that as the way back as in the year 2001, the Toyota Motor Show had sought to introduce a similar car in India in future. Defendant also placed a certificate dated 12.04.2003 which is a registration certificate of the fact evidencing his participation in the Auto 2006 enterprise under his business name.
iv. These submissions substantiate the fact that the plaintiff was as early as April, 2003 aware of the fact that the defendant was registered as "PRIUS"; his advertisements in these leading magazines with advertisements of the defendant on the following page show the implicit knowledge of the plaintiff about this fact. plaintiff thus being aware in April 2003 of the presence of the defendant trading under the trade name ''PRIUS'' and coming to the court in December, 2009 without giving any explanation either good or bad as the reasons for this delay clearly show that he had acquiesced his claim; if any, which in turn amounts to a waiver of his right. This unexplainable delay for more than six years from the date of his knowledge qualified further by the dishonest concealment of this fact before this Court and intentionally not giving the date of the registration of the trade mark of the defendant at the time when he obtained his ex-parte injunction dislodges all sympathetic considerations for the plaintiff.
v. The courts while dealing with an interim application for grant of injunction is dealing with an application based on the principals of equity and fairplay; plaintiff in spite of clear knowledge of the fact that the defendant was registered with the trademark ''PRIUS'' in the year 2002 has failed to disclose this crucial fact in his plaint and this is obviously with a dishonest and malafide intent; the court while granting him the ad interim injunction was not made aware that the defendant was registered owner of ''PRIUS'' as way back as year 2002. All these factors disentitle the plaintiff to any relief whatsoever.
vi. Defendant has placed reliance upon a judgment of the Supreme Court reported as Amritdhara Pharmacy v. Satyadeo Gutpa 1963 SC 449. On the argument of acquiescence the Supreme Court noted with approval the order of Registrar of trademarks wherein he had held that the opponents had stood by and allowed the applicant to develop his business from a small beginning to sell medicines to the extent of about Rs. 43,000/- in 1949. This was an acquiescence on the part of the defendant.
vii. In
viii. In a case of passing-off, it is not only the identity of the trademark which has to be considered by the court which is only one facet but the font, colour scheme, trade dress, advertisement, pattern, pricing of the goods, the nature of client are all other considerations which have to be kept in mind by the court while passing an order in the grant or non-grant of an injunction.
ix. The word ''PRIUS'' is contained in the English dictionaries i.e. both in the Oxford Dictionary as also the Webster''s Third New International Dictionary; relevant extracts of the said words from the respective dictionaries have been placed on record; plaintiff cannot claim a monopoly over the word ''PRIUS''; in no manner, can it be said to be invented.
x. Provisions of Section 30(1)(b), (2)(d) and Section 35 of the Act have been relied upon to advance the argument that Toyota, toyota device and INNOVA have been used by the defendant only to demonstrate the compatibility of his auto accessories in the use of these vehicles, besides these vehicles names of the other vehicles i.e. Alto, Maruti Zen, have also ben mentioned in his advertisements.
xi. Reliance on
17. Rejoinder submissions by plaintiff:
In rejoinder, these arguments have been refuted by the learned Counsel for the plaintiff. It is submitted that the heavy reliance placed by the defendant on the advertisement in the ''Auto Car'' journal does not in any manner establish that the plaintiff was aware of the existence of the defendant. A distinction has to be drawn between constructive knowledge and actual knowledge; extracts from the Black''s Law Dictionary has been placed on record to substantiate this submission. Defendant has also not pleaded that the plaintiff had any actual knowledge of the presence of the defendant; it is humanly impossible to imagine that while going through a magazine a reader would examine each and every page in meticulous detail. At best, he would see his own advertisement on the relevant page. The submission of the defendant that the plaintiff had acquired knowledge of the presence of the defendant in terms of advertisements effected by him in the same magazine are mere inferences and surmises; it is a wild imagination.
18. In Automatic Electric Limited v. R.K. Dhawan and Anr. 1999 PTC (19) 81 this Court while dealing with a magazine advertisement of the defendants published on its cover page had held that this by itself could not be deduced as a knowledge on the part of the plaintiff; such a presumption could not be made. It is relevant to state that in this case the plaintiff was the registered owner of the trade mark ''DIMERSTAT''. plaintiff in the instant case admittedly does not have any registration of ''PRIUS''.
19. For the same proposition reliance has been placed on
20. plaintiff has also placed on record an affidavit of Mr. B.K. Anand, a Chartered Accountant who after analyzing the sale figures of the defendant has calculated that the cumulative sale of the defendant for the period of 2002-2009 was Rs. 3.54 crores only; cumulatively, the net profit, partner''s salary and interest on capital added up to be Rs. 28.36 lakhs per annum. It is stated that this is a miniscule figure and cannot by any stretch of imagination be said to be a well-established business. The publicity campaign of the defendant shows that he has spent Rs. 1 .22 lakhs in this entire period. In these circumstances it cannot be said that the business of the defendant is either well established or has earned a distinct reputation; he is man of little worth; in such a case where infringement is negligible the proprietor of the mark is even not bound to commence legal proceedings immediately after he becomes aware of the infringement.
21. It is further submitted that the defendant has all along been dishonest and such a dishonest user by the defendant calls for the case to be thrown out at the first instance. The explanation furnished by the defendant as to how he came across the word ''PRIUS'' is blatantly false and borders on a level of falsehood which has reached the heights of malice. It would be an understatement to state that it is merely dishonest.
22. In Ciba Ltd. Basle Switzerland v. M. Ramalingam and S. Subramaniam Trading in the name of
23. In Altiebolaget Volvo v. Volvo Steels Limited 1998 PTC (18) (DB) the court on the use of word ''Volvo'' had held that although this latin word means ''re-rolling'', ''to roll up'', ''to roll together'' and ''form by rolling''. Yet it required to be appreciated that hardly anyone in India knows Latin and it is extremely improbable that anybody would translate the word ''volvo'' when one hears or reads the same. Latin being almost a dead and obscure language in India; the word ''Volvo'' for an average Indian would not mean anything and as such the submission of the plaintiff that the word ''Volvo'' is invented and a fancy word was accepted.
24. In
25. In
26. In
...When there is dishonesty or fraud in the initial adoption of a trade name, plea of laches and delay normally is rejected. If the initial adoption itself is maldafide and tainted, it does not become valid and legal with passage of time. The defendants were also always conscious of their wrong and had continued to use the mark NIVHA on their own peril and risk. In these circumstances, plea of delay, laches and acquiescence cannot be accepted to reject claim for injunction.
27. Safety measures adopted by the company also have to be borne in mind and the purchaser cannot be put to a risk especially keeping in view the nature of the goods i.e. auto parts. A copy of a purchase agreement evidencing the various safety clauses, the quality assurances, the safety measures at time of packing, marketing and documentation of the goods has been highlighted by the plaintiff.
28. Heavy reliance placed upon by the plaintiff on the judgment in the Hawkins Cookers Limited''s case (supra) is misplaced as the said judgment has been stayed by the Division Bench in its order dated 13.5.2008.
29. In Newton Chambers and Co. v. Neptune Waterproof Paper Co. Ltd., Volume LII Reports of PDTM Cases No. 12, while considering the medicated preparation ''IZAL'' the court on examining the manner in which the plaintiff and the defendant had used the mark and the defendant''s claim on the use of ''IZAL'' not as a trade mark but only as right to inform the public was disallowed.
30. In
31. Findings:
Trade name under challenge is ''PRIUS''. plaintiff is registered with the said mark in more than 40 countries. This is with effect from the year 1990. plaintiff has no registration of the mark ''PRIUS'' in India. The defendant on the other hand is the registered proprietor of the trademark ''PRIUS'' with effect from March 2002. He had commenced his business in April 2001 under the firm name M/s Prius Auto Industries and he was using the mark ''PRIUS- the name you can trust'' since then. Defendant has been registered with this mark under class-12 for auto parts and accessories but he is using it for auto accessories only. He is making ''Add-On Chrome Plated Accessories''. There are four accessories which are common to both the plaintiff and the defendant i.e. the front grill chrome, back door garnish, the fog lamp kit and the door handle.
32. Claim of the plaintiff on the mark ''PRIUS'' is a claim based on the common law remedy of passing off. Foreign magazines i.e. the "Business Week" and the "New York Times" have advertised the products of the plaintiff i.e. the hybrid car ''PRIUS'' from December 1997. These are, however, stray publications only. The "New York Times" is priced at more than Rs. 300/-; "Business Week" has since been discontinued; these magazines are not available off the rack as a reading material for an average Indian. Publications of ''PRIUS that shook the world and ''The Toyota Way 14 Management Principles from the Worlds Greatest Manufacturer'' also fall in the same category; they do not fall in the hands of an average Indian reader. In Indian dailies the "Economic Times" in March 1997 had first published an article on the features of this car i.e. the ''PRIUS''. Thereafter another random publication in December 1997 followed by advertisements in the ''Times of India'' and ''Indian Express'' dated 23.9.2002, 4.8.2004 and 19.2.2006 have been relied upon. Only in 2009 the Auto Indian Magazines i.e. the ''Auto Car'' and the ''Zigwheel'' had published information on this vehicle.
33. In Gillette Company v. A.K. Stationery 2001 PTC 573 (Del) while recognizing the principle of a trans-border reputation and the spill over of its international reputation from foreign lands to the Indian boundaries, it had been held that its application would depend upon the facts and circumstances of each case. In the instant case, apart from these stray and sparse advertisements effected in the foreign magazines which even otherwise is doubtful if they were available to the common man, there appears to be little material on record to hold that an Indian purchaser of chrome plated auto accessories had become aware that ''PRIUS'' is a manufactured hybrid vehicle of the Toyota group. plaintiff in the said case was challenging the use of the word ''FLEXGRIP'' by the defendant. plaintiff was admittedly not a registered owner of the said trademark in India; an action by the plaintiff had been filed in German court but no action assailing the use of the trademark by the defendant in India had been filed prior to the filing of the suit. plaintiff alleging in the plaint that it was only in the last week of April, 1999 he learnt about this use of trademark by the defendant was clearly falsified by his own acts as he had way back in 1997 filed a case in the German Court; this false concealment by the plaintiff had worked against him.
34. In
35. In the instant case defendant on the other hand has placed on record his registration certificate evidencing the registration of this trademark ''PRIUS'' in his name with effect from March 2002. This is prima facie proof of the exclusive use of the said mark with effect from the said date in terms of Section 28(2) of the said Act. The bills and invoices filed by him further show that the defendant company is actively conducting its business under the name PRIUS Auto Industries and using its trade name ''PRIUS'' since then. The purchase orders from reputed companies which include the General Motors, Mahendra & Mahendra and Hyundai show that auto accessories in bulk are being supplied to the manufacturers of the said vehicles. Sale figures of the defendant have also risen and swelled from a turnover of 1,34,799 in the year 2002 to 53,63,869 in the year 2009. Net profits have grown from 1,04,182 to 8,51,281 in the corresponding years. Business of the defendant company may not be matching the turnover of the plaintiff company but that is not a consideration for dealing with the contentions raised in the present application.
36. The fact that the defendant had commenced its business as early as 2002 became known to the defendant if not earlier but definitely in April 2003. Publications in the "Auto Car" and the "Over Drive" which are pioneer publications of automobiles contain advertisements of the defendant under its trade name ''PRIUS''. Argument of the plaintiff that this was only a constructive knowledge and based on an inference is misplaced. plaintiff has relied upon the same auto magazine i.e. the "Auto Car". Both parties are admittedly aware of this publication and are advertising their products in the said journal. This is evident from the publications for the months of December and January 2004.
37. In the Amrit Dhara Pharmacy case (supra) where the plaintiff had stood as a silent spectator and allowed the defendant to expand his business; the plea of acquiescence raised by the defendant had been upheld. The Supreme Court had quoted with approval a passage from the Halsbury''s Laws of England, Vol.32 (second edition) pages 659-675, paragraph 966 which inter alia reads as follows:
If a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even be debarred from himself using such name or work. But even long user by another, if fraudulent, does not affect the plaintiff''s right to a final injunction; on the other hand prompt warning or action before the defendant has built up any goodwill may materially assist the plaintiff''s case.
38. In Khoday Distilleries Limited''s case (supra) the Supreme Court had quoted with the approval a passage from the
Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as involved in laches. In Harcourt v. White Sr. John Romilly said: ''It is important to distinguish mere negligence and acquiescence.'' Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) and Co. v. Boehm. The acquiescence must be such as to lead to the inference of a license sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill.
39. In
Acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allowing another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name etc.
40. In Halsbury''s Laws of England, Fourth Edition, Vol. 16 para 1505, it is stated:
Where a person has by words or conduct made to another a clear unequivocal representation of fact, either with knowledge of its falsehood or with the intention that it should be acted upon, or has so conducted himself that another would, as a reasonable man, understand that a certain representation of fact was intended to be acted on, and that the other has acted on the representation and thereby altered his position to his prejudice an estoppels arises against the party who made the representation, and he is not allowed to aver that the fact is otherwise than he represented it to be
41. In
42. Similar observations were made by a Coordinate Bench of this Court in
43. In
44. In
45. plaintiff has come to the court in December 2009. He has pleaded knowledge with effect from 2009; this is negatived by documentary evidence placed on record. It is impossible and unimaginable to believe that the plaintiff who is a reputed and worldwide established business name in automobiles and is advertising and publishing its product in pioneer auto car magazines including the ''Auto Car'' journal and the ''Zigwheel'' had no knowledge that the plaintiff was operating under the trade name ''PRIUS''. plaintiff has come to the court after a long and inordinate delay i.e. a delay of more than seven years for which there is no explanation. His submission that he learnt about the defendant only in 2009 on a stray web search is patently false.
46. plaintiff has also not come clean to the court. Although in his plaint he has averred that the defendant is the registered owner of the trademark ''PRIUS'' yet he has failed to disclose the date of the registration when the defendant was registered with the said mark i.e. from March 2002. This would have been a crucial factor weighing in the mind of the Court at the time when the ex parte injunction was granted in his favour. In Old Navy (ITM) Inc. and Ors., GAP (ITM) Inc. and Ors. and Banana Republic (Itm) Inc. and Ors. 2007(99) DRJ 571 it was held that non-disclosure of material facts would work to the prejudice of such a non-disclosing party disentitling him to a relief in equity. 47.
47. The word PRIUS also does not appear to be an invented word. Apart from the fact that it finds mention in both the english dictionaries i.e. the Oxford and the Webster''s, the word PRIUS itself is a suggestive of its meaning i.e. prior in time. Explanation of the defendant that this was a ''Pehla Prayas'' i.e. his first effort which had led him to use this word which he had searched from a web search is fair and plausible. Defendant cannot be charged with any dishonesty. PRIUS is a latin word and although latin is not in great use or demand in India yet the fact that this word finds mention in the english dictionary as also the word itself being suggestive of its meaning the explanation furnished by the defendant is reasonable. His use of the mark PRIUS as an honest user is prima facie established. It is in fact the plaintiff who had concealed the true picture from the Court; it was incumbent upon him to have disclosed to the Court that when he had come to the Court in the year 2009 defendant was already registered with the said mark 7 years prior in time and was carrying on business under the said name. Mere appending of a document with the plaint is not by itself sufficient, specific notice of the said fact should have been brought to the Court which he did not do so. This was a dishonest concealment by the plaintiff.
48. Delay, acquiescence and waiver clearly come in the way of the plaintiff to obtain the discretionary relief prayed for by him. He has from 2003 remained a silent spectator to the growth of the defendant who has in relative terms scaled heights and has grown from a mini business to a maxi business. His sale units and net profits have climbed the rungs of the ladder of his success.
49. The trade dress of the defendant is also distinctly dissimilar. The packaging of the plaintiff''s product is a bache coloured rectangular carton having red writings describing its product. Packaging of the defendant''s carton is a blue coloured square box having the writings in red colour. Not only is the shape of the packaging material different but all visual impressions and their getup including its colour scheme, description of the words i.e. their font, size and alphabetical array are also distinctly dissimilar. Prices of the articles are at enormous variation. Whereas the articles of the plaintiff are within the price range of Rs. 2,500/- to Rs. 23,503/-, the same articles are priced by the defendant between a range of Rs. 275/- to a maximum outer limit of Rs. 1600/-. Rs. 1,600/- is the most expensive auto accessory of the defendant for which the corresponding price of the plaintiff is Rs. 23,503/-. The class of the purchaser of these auto accessories is not the low income group; it is definitely the strata of the middle class and moreso the higher group who has the financial capacity to buy a vehicle in the segment of more than Rs. 6 lacs. They are purchasing auto accessories to decorate their vehicles which are already equipped with the basic amenities/essential manufacturer necessities. The purchaser is only adding accessories to his car. He would most definitely be an educated and an intelligent literate man who would be aware that the articles or the accessories which he is purchasing are the accessories of the defendant. Even applying the test of a man of average intelligence and of imperfect recollection such a purchaser is not likely to be confused or deceived that he would or could be purchasing auto accessories manufactured by the plaintiff company i.e. Toyota Group.
50. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories 1965 (1) SC 737 the Supreme Court while considering the registration of the words ''Navaratna Pharmacy'' while rejecting the prayer of the plaintiff had inter alia held as follows:
...dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent''s claim that the appellant has passed off his goods as those of the respondents. These matters which are of the essence of the cause of action for relief on the ground of passing of play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof....
51. In Khoday Distilleries Limited (supra) while dealing with the nature of a purchaser of ''Peter Scot'' whisky the purchaser being discerning and aware of the brand that he is purchasing of a rich and wealthy class; keeping in view the nature of the purchase i.e. scotch whisky, it was held that such a purchaser was not likely to be easily confused or deceived merely by the words ''scot''.
52. The defendant on the use of the registered marks Toyota, the toyota device and the INNOVA is protected under the saving clause of Section 30 which prevents user of a registered trade mark for the purpose of identification of the goods; this of course must be qualified by his honest user.
53. Section 30(1)(b) & 30(2)(d) of the said Act inter alia reads as follows:
30. Limits on effect of registered trade mark- (1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying foods or services as those of the proprietor provided the use-
...
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
...
(2) A registered trade mark is not infringed where-
...
(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under his Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods of services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;....
54. The European Court in an appeal against the order of a Court of Appeal by the Gillette Group of Companies in the case of Gillette Company v. L.A. Laboratory 2005(37) FSR 808 had inter alia given its finding as follows:
1. Use of the trademark by a third party who was not its owner was necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constituted the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product. Thus the lawfulness or otherwise of the use of the trademark depended on the necessity of the use to indicate the intended purpose of a product.
...
3. The mere fact that third party used a trade mark of which it was not the owner in order to indicate the intended purpose of the product which it marketed did not necessarily mean that it was presenting it as being of the same quality as or having equivalent properties to those of the product bearing the trade mark.
55. The conditions of an honest use within the meaning of Article 1(1)(c) of the Directive 89/104 was held to be in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use is dishonest only if:
i. It is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;
ii. It affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;
iii. It entails the discrediting or denigration of that mark.
56. None of these have been established by the plaintiff. On the other hand, it has been established by the defendant that the use of the mark ''PRIUS'' by him is in accordance with the honest practices in industrial and commercial matters. This user is not taking any unfair advantage; his use is not detrimental to the distinctive character or the repute of such a trademark; it does not amount to an infringement/passing off. It is essentially for describing the kind, quality and quantity of the goods which he is proposing to sell and they are auto accessories for the various vehicles mentioned in his packing carton and also in the advertisements hosted by him. Packaging, getup, writing/marks on the goods of the defendant are only indicative of the fact that he is selling auto accessories which are suitable to a wide range of vehicles including the ''INNOVA'' as also the ''Qualis'' which is vehicle belonging to the Toyota Group. The mention of the word ''TOYOTA'', ''toyota device'' and ''INNOVA'' on the said packaging material are not the only vehicles mentioned in these documents; they are in addition to the names of the other vehicles i.e. Zen, Alto, they are further qualified by the words "vehicle name and logo for item identification only" i.e. for the description of the goods and can in no manner be said to be an infringement upon the trademarks of the plaintiff. It is an honest user in the commercial course of his trade.
57. u/s 29(2) of the said Act "a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses it in the course of trade is...likely to cause confusion on the part of the public or which is likely to have an association with the registered trademark."
Under Sub-clause (4)(c) "a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which...the registered trade mark has reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark."
The onus to prove that the mark of the plaintiff has been infringed lies upon the plaintiff.
58. Section 30 lays down limitation on the provisions of Section 29. A trademark is not infringed where its use by another is not unfair and is used only to indicate the kind, quality and quantity of the goods. Further u/s 30(2)(d) the use of the trade mark as in the instant case the use of ''TOYOTA'', ''toyota device'' and ''INNOVA'' by the defendant in relation to his goods i.e. the auto accessories is reasonably necessary to indicate that the goods are adaptable and suited to the vehicles mentioned therein i.e. the ''TOYOTA'' and ''INNOVA''; ''the toyota device'' is also indicative of this purpose only. Protection under the aforestated exception carved out is available to the defendant. This is an indication by the defendant to show that his product is compatible for use as an auto accessory in the vehicles manufactured by the plaintiff i.e. ''TOYOTA'' and the ''INNOVA''. Even otherwise the use of the word ''INNOVA'' is not on all the packaging materials which has been produced in the Court. It is only on the small rectangular carton where on either side there is a sticker of ''INNOVA''. In some of the other cartons which have been filed by the plaintiff a visual picture of the ''INNOVA'' vehicle has been shown and the catch cover of ''PRIUS'' has been described to be an accessory for the Toyota INNOVA; this is qualified by the use of the words "vehicle name and logo are used for items identification only". This is sufficiently indicative of the fact that this catch cover is suitable for the ''INNOVA'' vehicle. It is definitely not likely to deceive the purchaser that he is purchasing an auto accessory manufactured by the plaintiff group. Apart from the low pricing of the product of the defendant in comparison with the price of the product of the plaintiff the clarification given by the defendant that this product is for an item identification only and the vehicle name and the logo are used for this purpose only squarely covers the case of the defendant in the exception carved out in Section 30(2)(d) of the Act.
59. The judgments relied upon by the plaintiff are all distinguishable on their own facts. In the Jolen Inc. case and Ford Motors company case (supra), plaintiff had established its reputation and goodwill in the country of its origin as also in India. In the Milmet Oftho Industries case (supra) the Court had in fact observed that multinational corporation who had no intention of coming to India and introducing their products in India should not be allowed to throttle an Indian company. In the Daimler Benz case (supra) ''BENZ'' was registered in India since 1951. In the N.R.Dongre case (supra) the plaintiff No. 1 a multinational incorporated in USA of whom plaintiff No. 2 was its licensee in India. The trade mark and trade name "Whirlpool" had been registered in India in 1956; in 1978 the registration lapsed on account of failure to apply for renewal; thereafter an application for registration was filed in 1988. Defendant in 1986 applied for the registration of the trademark ''Whirlpool''. The prior user of the mark ''Whirlpool'' claimed by the plaintiff was upheld as he had a continuous registration in his name right from 1956-1977 which had held him entitled to the interim relief. It was only in the light of these facts that the plea of trans-border reputation had been considered by the courts. Word ''PRIUS'' finds its place in the english dictionary; not being an invented word, it is clear that the judgments of Ciba Ltd., A. Volvo & Satyam Infoway (supra) are also distinguishable.
60. plaintiff is not entitled to the discretionary relief as prayed for by him. He has not been able to make any prima facie case in his favour for injuncting the defendant from using the trademark ''PRIUS'' on which the defendant is admittedly the registered proprietor and owner since the year 2002. Principles of equity and fair play also do not find favour with the plaintiff. The balance of convenience in fact lies in favour of the defendant. If at this stage i.e. after business growth of more than seven years the defendant is injuncted from using his trade name under which he is selling his auto accessory products he would suffer huge business loss which would probably bring to a close not only his business reputation but all his legitimate financial expectations. On the other hand no irreparable loss or injury will be suffered by the plaintiff as admittedly the plaintiff is not in the market; it has not launched the vehicle ''PRIUS'' on the Indian roads. plaintiff has himself conceded that certain defects had been noted in the vehicle which had led to the suspension of the production of the said vehicle.
61. The defendant is neither guilty of infringing the registered trademark ''TOYOTA'', ''toyota device'' or ''INNOVA''. He is also not guilty of the use of the word PRIUS in any manner which would deceive a customer into believing that what he has purchased are auto accessory parts of ''PRIUS'' which is an associate group of the Toyota Company. Defendant is selling auto accessories under his registered trade name ''PRIUS'' since 2002; his packaging material and trade dress are markedly different as that of the plaintiff, his pricing is distinct, his colour scheme and the size of the font of the alphabets are dissimilar, shape of the packaging is different, class of purchasers is a higher income group with a tested intelligence knowing and fully able to understand the nature of the goods which he is purchasing and thereby unlikely to be confused that he is purchasing a product of the plaintiff. Defendant has grown in business from 2001 to 2009 i.e. from a small stature to a big business company operating through defendants No. 1 and 4. He is advertising his products in leading car magazines and participating in exhibition and auto shows of repute where other pioneer manufacturer of automobiles i.e. the Toyota Group, Hyundai Group, General Motors and Mahindra & Mahindra are advertising their products and participating in such shows. These reputed car manufacturer General Motors, Hyundai Group and Mahindra & Mahihdra had placed bulk purchase orders on the defendant who has been supplying auto accessories to them to be fitted in their cars. The gradual growth and reputation built up by the defendant cannot be destroyed in a single stroke. plaintiff has come to the court too late in the day. He has not been able to explain that he gained knowledge about the presence of the defendant in the market only in October, 2009. Why he slept over the matter and idled over it for such a long period? PRIUS is not the monopoly of the plaintiff in India. It is not an invented word; the meaning of the word can be deciphered from the word itself; meaning "prior to". It finds mention in the english dictionary, how can it then be termed as invented or coined? Association of this word and the same having acquired a secondary meaning with the plaintiff company has not been established. plaintiff has given up all claims if any on the use of the mark "PRIUS" as he has knocked the doors of the Court after an unexplainable delay of more than six and half years. plaintiff has also no business in India. He is not recognized in India. His product has not come on the Indian road. Production of his vehicle, due to technical reasons has now been suspended. None of the ingredients for continuing of the interim injunction in favour of the plaintiff arise. If injunction is allowed to continue, the loss to be suffered by the defendant would become irreparable as his business would come to stand still. In these circumstances, balance of convenience is also in favour of the defendant. The application of the defendant under Order 39 Rule 4 CPC is accordingly allowed and the interim ex parte injunction granted on 22.12.2009 is set aside.
62. I.A. No. 16776/2009 and I.A. No. 110/2010 are disposed off accordingly.
63. plaintiff has not produced any evidence to show that the defendant has violated the order of this Court dated 22.12.2009; ingredients of perjury have also not been established. I.A. No. 1156/2010 and I.A. No. 1032/2010 are without any merit. Dismissed.
