Supreme Court of India
TOYOTO JIDOSHA KABUSHIKI KAISHAversusMIS PRIUS AUTO INDUSTRIES LTD. & ORS.
- Citation
- 2017 INSC 1230
- Decided
- 14 December 2017
- Disposal
- Dismissed
- Bench
- RANJAN GOGOI
Holding
A foreign claimant must demonstrate substantial goodwill in India; absent such proof, a passing‑off claim fails and the territoriality principle prevails.
Summary
Toyota Jidosha Kabushiki Kaisha, a Japanese automobile manufacturer, sued M/s Prius Auto Industries and partners in Delhi High Court for infringement of its registered marks (Toyota, Toyota Innova, Toyota Device) and for passing off of the unregistered mark 'Prius'. The trial judge granted a permanent injunction against the defendants, holding that Toyota had prior worldwide use of 'Prius' and that the mark was well‑known in India. The Division Bench of the High Court set aside the injunction, finding that Toyota had not established sufficient goodwill in India for the 'Prius' mark and that the territoriality principle applied. On appeal, the Supreme Court affirmed the Division Bench, holding that the plaintiff failed to prove the requisite Indian goodwill, that the likelihood of confusion test, not actual confusion, governs passing‑off actions, and that the plaintiff’s delay barred relief. Consequently, the appeals were dismissed.
Issues considered
- Whether a foreign claimant can maintain a passing‑off action in India without establishing substantial goodwill in the Indian territory.
- Whether the mark 'Prius' qualifies as a well‑known trademark in India under the Trade Marks Act, 1999.
- Whether the trinity test (goodwill, misrepresentation, damages) and the likelihood of confusion test are applicable in this context.
- Whether the plaintiff’s delay and laches preclude the grant of injunction.
- Whether the defendants’ use of 'Prius' for auto‑accessories constitutes passing off of the plaintiff’s goods.
Legislation cited
- Trade Marks Act, 1999s. 11(6), s. 11(9), s. 2(1)(zg), s. 30
Subjects
Passing offTrademark infringementTerritoriality principleGoodwillWell‑known markLachesLikelihood of confusionForeign claimantIntellectual propertyTrade Marks Act 1999
Judgment
[2017] 12 S.C.R. 805
TOYOTO JIDOSHA KABUSHIKI KAISHA A
v.
MIS PRIUS AUTO INDUSTRIES LTD. & ORS.
(Civil Appeal Nos. 5375-5377 of2017)
DECEMBER 14, 2017 B
[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
c
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
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-,
E
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 - F
Furthe1; appellants advertisements in automobile magazines,
international business magazine, availability of data on information
disseminating portals like Wikipedia etc., even if accepted, are not
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 ofgoodwill, 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 ofpassing
off against respondent, the registered owner.
H
805
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.
fmclfect11al Property Rights - Trademark - Action for passing
off- Territoriality principle - Disrnssed - D0<:trincs!Pri11cipfcs.
Dismissing the a1>peals, the Court
c
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
D
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
E
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
F 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.
G 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
H 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 through its 1nark within a particular territorial A
jurisdiction in a more subtle form. [Para 29][823-F-GJ
1.4 Once the claimant who has brought the action of passing
off estal.itishcs his goodwill in the jurisdiction in which he claims
that the defendants arc trying to pass off their goods under the
brand name of the claimant's goods, the burden of establishing B
actual confusion as distinguished from possibility thereof ought
no! to be fastened on the claimant. The possibility or likelihood
of confusion is capable of being demonstrated with reference to
the particulars of the mark or marks, as may be, and the
circumst:rnces surrounding the manner of salc/nrnrketing of the
goods by the defendants and such other relevant facts. Proof of
c
actual confusion, on the other hand, would require the claimant
to bring before the Court evidence which may not be easily
forthcoming and directly available to the claimant. In a given
situation, there may be no complaints made to the clainrnnt that
goods marketed by the defendants under the impugned mark D
had been inadvertently purchased as that of the plaintiff/claimant.
The onus of bringing such proof, as an inv:1riable requirement,
would be to cast on the claimant an onerous burden which may
not be justified. Commercial and business morality which is the
foundation of the law of passing off should not be allowed to be
defeated by imposing such a requirement. In such a situation, E
likelihood of confusion would he a surer :rnd better test of proving
an action of passing off by the defendants. Such a test would also
he consistent with commercial and business morality which the
law of passing off seeks to achieve. In the last resort, therefore,
it is preponclcnmce of probabilities that must be left to judge the F
claim. (Para 31 [[824-G; 825-A-D[
1.5 Indeed, the trade mark 'Prius' had undoubtedly acquired
a great deal of goodwill in several other jurisdictions in the world
and that too much earlier to the use and registnition of the same
by the defendants in India. Uut if the territoriality principle is to G
govern the matter, which it should, there must be acle<1uate
evidence to show that the plaintiff had acquired a substantial
goodwill for its car under the brand name 'Prius' in the Indian
nrnrkl·t also. The car itself was introduced in the Indian market
in the year 2009-2010. The advertisements in automobile
H
808 SUPREME COURT REPORTS [2017] 12 S.C.R.
A magazines, international business magazines; availability of data
in information-disseminating portals like Wikipcdia and online
Britannica dictionary and the information on the internet, even if
accepted, will not be a safe basis to hold the existence of the
necessary goodwill and reputation of the product in the Indian
market at the relevant point of time, particularly having regard
B
to the limited online exposure at that point of time, i.e., in the
year 2001. The news items relating to the launching of the product
in Japan isolatedly and singularly in the Economic Times (Issues
dated 27.03.1997 and 15.12.1997) also do not firmly establish
the acquisition and existence of goodwill and reputation of the
c brand name in the Indian market. Coupled with the above, the
evidence of the plaintiff's witnesses themselves would be
suggestive of a very limited sale of the product in the Indian
market and virtually the absence of any advertisement of the
product in India prior to April, 2001. This, in turn, would show
either lack of goodwill in the domestic market or lack of
D
knowledge and information of the product amongst a significant
section of the Indian population. While it may be correct that the
population to whom such knowledge or information of the product
should be available would be the section of the public dealing
with the product as distinguished from the general population,
E even proof of such knowledge and information within the limited
segment of the population is not prominent. The brand name of
the car Prius had not acquired the degree of goodwill, reputation
and the market or popularity in the Indian market so as to vest in
the plaintiff the necessary attributes of the right of a prior user
so as to successfully maintain an action of passing off even against
F
the registered owner. In any event the core of the controversy
between the parties is really one of appreciation of the evidence
of the parties; an exercise that this Court would not undoubtedly
repeat unless the view taken by the previous forum is wholly and
palpably unacceptable which does not appear to be so in the
G present premises. Further, in the present case the plaintiff's
delayed approach to the Courts has remained unexplained. Such
delay cannot be allowed to work to the prejudice of the defendants
who had kept on using its registered mark to market its goods
during the inordinately long period of silence maintained by the
plaintiff. [Paras 32, 33][825-E-H; 826-A-G]
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. M/S PRIUS AUTO 809
INDUSTRIES LTD.
N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC A
14 : [1996) Suppl. SCR 369; Mi/met Oftho Industries
& Ors. v. Allergan Incorporated (2004) 12 SCC 624 :
[2004] Suppl. SCR 586; Trans Tyres India Pvt. Ltd. v.
Double Coin Holdings Ltd. & Am: 2012 SCC Online
Delbi 596 - referred to.
B
Athletes' Foot Marketing Associates Inc. v. Cobra Sports
Ltd. (1980) R.P.C. 343; Starbucks v. British Sky
Broadcasting 2015 UK SC 31; Reckitt and Colman Ltd.
v. Borden Incorporated 1990 (1) All E.R. 873; ;
ConAgra v. McCain Foody (1992) 23 IPR 193; Taco
Bell v. Taco Co. of Australia 1981 60 FLR 60; SA c
Anciens Etablissements Panhard et Levassor v. Panhard
Levassor Motor Co. 1901 2 Ch. 513; Grant v. Levitt
1901 18 RPC 361; C&A Modes v. C&A (Waterford)
1976 I.R. 198 (Irish) - referred to.
Kerly:~ 'Law ofTrade Marks and Trade Nam~s' I4'1' Edn., D
1'ho111so11, Sweet & .Maxwell South Asill11 Edition - relied
on.
Case Law Reference
(2004] Suppl. SCR 586 referred to Para 12 E
1990 (1) All E.R. 873 referred to Para 12
(1992) 23 IPR 193 referred to Para 19
(2016) 2 sec 683 relied on Para 21
[1996) Suppl. SCR 369 referred to Para 21 F
2015 UK SC 31 referred to Para 24
(1980) R.P.C. 343 relied on Para 25
1981 60 FLR 60 referred to Para 26
1901 2 Ch. 513 referred to Para 30 G
1901 18 RPC 361 referred to Para 30
1976 I.R. 198 (Irish) referred to Para 30
H
810 SUPREME COURT REPORTS [2017) 12 S.C.R.
A CIVIL APPELLATE JURISDICTION: Civil Appeal No. 5375-
5377of20I7.
From the Judgment and Order dated 23.12.2016 in RFA (OS)
No. 62 of2016 and 12.01.2017 in RFA(OS) No. 69 of2016 of the High
Court of Delhi at New Delhi.
B P. Chidambaram, Mukul Gupta, Sr. Advs., Pravin Anand. Ms.
Vaishali Mittal, Aditya Verma, Siddhant Chamola, Ms. Mrinali Menon,
Ms. Jennifer Rohita Xavier, Ms. S. Lakshmi, Sumit Kumar Mishra, Ad vs.
for the Appel !ant.
Sai Krishna, Ms. Archana Sahadeva, Kapil Midha, Nikhil Lal,
c Advs. for the Respondents.
The Judgment of the Court was delivered by
RAN.JAN GOGOI, .J. I. The appellant (hereinafter referred to
as 'the plaintiff') is an automobile manufacturer incorporated under the
laws prevailing in Japan. The first respondent is a partnership firm engaged
D in the manufacture of automobile spare parts of which the second and
third respondents arc partners. The partnership firm of the respondents
was constituted in the year 2001. The fom1h respondent is a Private
'jmited Company in which the second and third respondents arc majority
sharcholde~·s.
E 2. Civil Suit [CS (OS) No. 2490 of 2009) was instituted by the
plaintiff in the Ddhi High Court seeking a decree ofpennanent 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 plaintiff's trade marks 'TOYOTA', 'TOYOTA INNOVA',
'TOYOTA DEVICE' and the mark 'Prius' of which the plaintiff claimed
F to be a prior user.
3. In the plaint filed, it was averred by the plaintiff that it is a
renowned carmaker having its presence in many countries across the
world. The plaintiff claimed an enviable goodwill and reputation as one
of the foremost automobile manufacturers in the world. According to
G 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. It was specifically averred by
the plaintiff that the goods manufactured and sold by the defendants
bore the plaintiff's registered trade marks thereby clearly constituting
infringement of the said registered marks.
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. M/S PRIUS AUTO 81 l
INDUSTRIES LTD. [RANJAN GOGOi, J.]
Furthermore, according to the plaintin: it had launched the world's A
first commercial hybrid car called 'Prius' in Japan in the year 1997 and
in other countries like U.K .. Australia, the U.S.A. etc. during the year
2000-200 l. The plaintiff also cluimed regrntration ofthe trade mark 'Prius'
in different countries as early as the year 1990 (in Japan) and eventually
in other jurisdictions all over the globe. So far as India is concerned. ll
however, the car was released in the year 2009 and until that point of
time the plaintiff had not obtained registration of the mark 'Prius' in the
Indian jurisdiction. However, the car was displayed in the car shows in
Delhi and Bangalore held in the yc<Jr 2009 and it was formally launched
in India in the year 20 I 0.
The plaintiff claimed that various advertisements and news reports
c
about 'Prius' and publications in car magazines in India and across the
globe has made 'Prius' a well known trade mark within the meaning of
the said expression under Section 2( I )(zg) of the Trade Marks Act, 1999
(hereinafter referred to as 'the Act'). According to the plaintiff, in the
year 2009, it discovered that the defendants noi only had got the mark D
'Prius' registered way back in the year 2002-2003 for all types of auto
parts and accessories but that they had also been using the said trade
mark in carrying out their trade in such auto parts and accessories. The
plaintiff, therefore, approached the Trade Mark Registry for cancellation
of the registered trade mark of the defendants and also filed the suit in
E
question on the ground that the defendants had been using the well known
trade marks of the ph1intiffwithout any <wthorization thereby taking an
unfair advantage of the reputation and goodwill of the plaintiff which it
had earned over a period of time across the globe. Accordingly the
plaintiff prayed for:
F
(i) Permanent injunction restraining the defendants from using
the plaintiff's registered trade marks ('TOYOTA', 'TOYOTA
INNOVA' and 'TOYOTA DEVICE'); and
(ii) Permanent injunction restraining the defendants from using
the well known (unregistered) trade mark 'Prius' so as to
Ci
prevent passing off the defendants' goods as that of the plaintiff.
4. The defendants contested the claim of the plaintiff by
contending that they have bc1:11 using the words 'TOYOTA', 'TOYOTA
INN OVA' and 'TOYOTA DEVICE' on the packaging materials in which
H
812 SUPREME COURT REPORTS [2017) 12 S.C.R
A the auto parts manufactured by them are/were packed for the purpose
of item identification and nothing more. 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. The use of the words 'TOYOTA',
B
'TOYOTA INNOVA' and 'TOYOTA DEVICE' etc. were, therefore,
for the purpose of honest use in an industrial matter and thus protected
under Section 30 of the Act.
5. Insofar as the mark 'Prius' is concerned, according to the
defendants, they had obtained registration of the said mark in the year
c 2002 and have been continuously using the same since the year 2001.
They have been regularly supplying auto accessories to various
automobile giants like Hyundai Motors, General Motors. The defendants
claimed that, over a period of time, they have built up a considerable
market reputation. According to the defendants, the mark 'Prius" had
D not been registered in favour of the plaintiff for any of its products; nor
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. As the product
itself was not in existence in the Indian market, according to the
defendants, it was impossible for the people in India to identify and
E recognize or associate the defendants' registered trade mark 'Prius"
with any of the products of the plaintiff. 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 conceptualized
their attempt as 'pehe/a prayas' (Hindi word meaning first attempt). It
was on that basis that they had adopted the name 'Prius' and got the
F same registered in the year 2002 as 'PRIUS' (Registration No. 1086682
dated 13.03.2002) and 'PRIUS -The name you can trust' (Registration
No. 1163594 dated 2.1.2003}.
6. The learned trial Judge of the High Court by Order dated
22.12.2009 granted ex-parte ad-interim injunction restraining the
G 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. This order was vacated on 19 .03.2010 on the basis of an
application filed by the defendants. Aggrieved, the plaintiff had filed an
appeal before t~c Division Bench of the High Court and by Order dated
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. MIS PRIUS AUTO 813
INDUSTRIES LTD. [RANJAN GOGOI, J.]
10.08.2010, the Division Bench permitted the defendants to use the A
registered as well as un-registered trade marks of the plaintiff subject to
the following conditions:
"(i) The defendants were restrained from using the plaintiff's
registered trade marks (TOYOTA, INNOVA) except for the
purpose of identifying that the defendants' products can be B
used in these cars;
(ii) the defendants were to ensure that the words 'TOYOTA' and
'INNOVA' were not written in the same font as written by the
plaintiff and the logos of the plaintiff;
(iii) the defendants would have to replace the words "Genuine C
Accessories" with "Genuine Accessories of PRIUS Auto
Industries Limited;
(iv) the defendants were to ensure that the words - "the vehicle
name (i.e. the appellant's trade mark) is used for item
identification only." D
7. It docs not appear that the defendants had carried the aforesaid
Order dated J 0.08.2010 of the Division Bench of the High Court in any
further appeal. Consequently, the said order governed the parties during
the pend ency of the suit. Allegations of the breach of the order were,
however, brought before the Court by the plaintiff. E
8. At the conclusion of the trial, the learned tria!Judge by judgment
dated 08.07.2016 held that the impugned acts of the defendants
constituted infringement of the trade marks 'TOYOTA', 'TOYOTA
INNOVA' and 'TOYOTA DEVICE' registered in favour of the plaintiff.
The learned Judge also held that such acts of the defendants amounted F
to passing off of the defendants' goods under the trade name 'Prius ',
which, though registered in favour of the defendants in the year 2002-
2003, the plaintiff was the first user thereof having marketed its hybrid
car all over the globe under the name 'Prius' at least from the year
1997. Consequently, the learned trial Judge restrained the defendants
G
from using the plaintiff's trade marks ('TOYOTA', 'TOYOTA INNOVA'
and 'TOYOTA DEVICE' marks) except in accordance with the terms
of the conditional injunction order passed by the Division Bench dated
10.08.2010. So far as the mark 'Prius' is concerned, on the basis of the
finding that the plaintiff was the prior userofthe mark 'Priris' in various
H
814 SUPREME COURT REPORTS [2017] 12 S.C.R.
A countries, tf not in India, and that goodwill and reputation of the plamtitf
so far as the mark 'Prius' is concerned 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.
Punitive damages quantified as Rupees ten lakhs was also awarded in
favour of the plaintiff.
B
9. Both sides appealed against the aforesaid order of the learned
Single Judge. 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. However,
in the course of hearing of the appeal filed by the defendants, the
c grievance with regard to the conditional use of the trade marks
'TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE' (in terms
of the interim Order dated I 0.08.20 I0) was not 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
D 'Prius'.
10. The Division Bench of the High Court by the impugned
judgment datc.d 23.12.2016,.on grounds and reasons, that will be noticed
in the course of deliberations and discussions that follow, took the view
that grant of injunction in favour of the plaintiff insofar as the trade
E name 'Prins' is concerned was not justified. Accordingly the aforesaid
part of the order of the learned trial Judge was set aside. Consequently,
the appeal filed by the plaintiff with regard to quantum of damages was
also dismissed. Aggrieved, the plaintiff has fikd the instant appeal.
11. At the very outset it must be clarified that in view of the virtual
F acceptance of the conditional order of injunction with regard to the
'TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA DEVICE MARKS'
by the defendants, the truncated scope of the present appeal would be
confined to the correctness of the views of the Division Bench of the
High Court with regard to the use of the name 'Prins' and specifically
whether by use of the said name/mark to market the automobile spare
G pa11s manufactured by them, the defendants arc guilty of passing off
their products as those of the plaintiff thereby injuring the reputation of
the plaintiff in the market.
12. The learned trial Judge in taking the view that the plaintiff
was entitled to an injunction against the use of the trade mark 'Prius' by
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. MIS PRIUS AUTO 815
INDUSTRIES LTD. [RANJAN GOGOi, J.]
the defendants, took into account, inter alia, the global sales of Prius A
Cars (ranging upto over a million sales globally); the exponential hike in
the sales of cars (300 ilnits in 1997 to 285600 units in 2008); and that the
plaintiff's trade mark 'Prius' which had acquired an excellent global
goodwill had already spilled over to India much before the direct sales of
the car in India in the year 2010. The fact that the plaintiff's web sites B
have been visited by many Indians seeking information about Prius cars
was held by the learned trial Judge to be evidence of the fact that people
in India were aware of the car and its popularity. The exhibitions of the
· car held in· India and other countries; various advertisements published
in different automobile magazines and cover stories published iii
international magazines and journals were taken into account by the c
learned trial Judge to hold that the car in question had a stellar reputation
in the world market including India. 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. Consequently, it was held that the physical presence of the D.
car in India at a later point of time was immaterial. In fact, the learned
trial Judge went on to hold that the mark 'Prius" had satisfied the definition
of a "well-known trade mark" under Section 2( I)(zg) read with Section
11 (6) & l l (9) of the Act. Relying on the decision of this Court in S. Syed
Mohidcen vs. P. Sulochana Bai 1, the learned trial Judge took the view
that ifthe plaintiff could successfully prove that its case was covered by E
"passing off' the registered trade mark of the defendants would not
remain protected under the Act.Proceeding further, the learned trial Judge
'
took the view that the plaintiff was the prior user/adopterofthe mark
'Prius', though it may not have been sucli prior user so far as the Indian
m:.irket is concerned. In this reg:.ird, the le:.irned trial Judge relied on the
F
decision of this Court in N.R. Dongre vs. Whirlpool Corporation 2 wherein
this Com1 had approved the views of the Delhi High Court holding that
wide advertisement ofa trade mark witho'ut the existence of the goods
in the local market can well be considered as use of the trade mark in
the said local market. Again, relying on the decision of this Court in
Milmet Oftho Industries & Ors. vs. Allergan Incorporated 3 the learned G
trial Judge held that the rea·l test of establishing prior use is to determine
who is the first in the world market. Adopting the tests l:.iid in Reckitt
1
2016 (2) sec 683
'I 99(i (5J sec 114
'2004<12) sec 624
H
816 SUPREME COURT REPORTS . [2017] 12 S.C.R.
A and Colman Ltd. vs. Borden Incorporated4 the learned trial Judge
came to the conclusion that the goods of the plaintiff enjoy transborder
reputation and goodwill which had permeated the Indian market and
that as the defendants had used an identical mark in relation to more or
less an identical product(s) having a common market, the likelihood of
c.onfusion was unavoidable. The learned trial Judge further held that, as
B
both the parties had advertised their respective products in the same
magazines and periodicals, any person reading such an advertisement
would be bound to be misled to believe that the defendants goods emanates
from the plaintiff's organization and that there is a nexus between the
two. Accordingly, the learned trial Judge came to the conclusion that the
C · adoption of the mark 'Prius' by the defendants, though they were the
registered proprietor thereot: was misleading, as the plaintiff was the
true and first userof the trade mark all over the world and the reputation
of the mark and the goodwill of the plaintiff on that basis had permeated
to the Indian Market well before the use of the mark by the defendants
I) in 2001 and its registration thereafter in 2002-2003. The trial Judge further
held that the defendants had adopted the mark 'Prius' with the sole
intention of enjoying the benefits from the use of the said mark. 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. Accordingly, the finding that the defendants were guilty of passing
E off their goods under the mark, of which the plaintiff was the first user,
was arriyed at. 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. l 0 lakhs, was awarded.
F 13. In appeal, the Division Bench reversed the conclusion(s) of
the learned Single Judge holding that the findings with regard to spread
of the transborder reputation of the mark 'Prius' had not been correctly
arrived at by the learned trial Judge as facts and materials beyond the
relevant point of time i.e. first date of use (April, 200 l) of the mark by
the defendants in India was taken into consideration. The Division Bench
G of the High Court while holding that the launching of the car 'Prius' in
the year 1997 was widely reported and advertised, however, held that
such publication in the print media was not ground breaking and in fact
in the issue of Economic Times dated 27.03.1997 and 15.12.1997, small
' 1990 (I) All E.R. 873
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. M/S PRIUS AUTO 817
INDUSTRIES LTD. [RANJAN GOGOI, J.]
news items with regard to the launching of the product in Japan had A
been published, which could not have impacted the Indian public at large.
Relying on one of its own judgments in the case of Trans Tyres India
Pvt. Ltd. vs. Double Coin Holdings Ltd. & Anr. 5 the Division Bench of
the High Court took the view that the Universality Doctrine (which posits
that a mark signifies the same source all over the world) has not been
B
accepted by courts. Modern day trade; globalization have brought in
multi-channel modes of sale of goods in the market and therefore it is
the Territoriality Doctrine (a trade mark being recognized as having a
separate existence in each sovereign country) would hold the field. The
Division Bench further held that prior use of the trade mark in one
jurisdiction would not ipsofacto entitle its owner or user to claim exclusive c
rights to the said mark in another dominion. It was, therefore, necessary
for the plaintiff in the case to establish that its reputation had spilled over
to Indian market prior to April, 2001.
14. The aforesaid issue was decided by the Division Bench of the
High Court against the plaintiff on the ground that not only the publicity D
and advertisement surrounding the launching of the product by the plaintiff
in the international market was scanty, internet penetration in India at
that point of time (prior to April 2001) was limited and, therefore, it
cannot be said that prior to April 2001 the plaintiff had established its
goodwill and reputation in the Indian market, which the defendants had
taken advantage of. The Division Bench of the High Court further held E
that the test of possibility/ likelihood of confusion would be valid at the
stage of quia timet actions and not at the stage of final adjudication of
the suit, particularly when the defendants had used the impugned mark
for a long period as in the instant case. The test, therefore, would be one
of actual confusion. No evidence was led by the plaintiff to show that F
any section of the consuming public was misled by the use of the trade
mark 'Prius' by the defendants.
15. Laches and delay on the part of the plaintiff in instituting the
suit in the year 2009 was also held against the plaintiff to reverse the
decree passed by the learned trial Judge. In this regard, the Division G
Bench held that the plaintiff was aware of the defendants' mark at least
from April, 2003. Publications in Pioneer magazines (like Autoear,
Overdrive) contained defendants' advertisements under the name 'Prius'
and in fact both the parties have been advertising their products in the
'2012 SCC Online Delhi 596
H
818 SUPREME COURT REPORTS [2017) 12 S.C.R.
A same magazines; In fact, the plaintiff, at no relevant 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'. The Division Bench of the High
Court in reversing the conclusion of the learned trial Judge also took the
view that the word 'Prius' is publici j uris and that the explanation given
B
by the defendants for adopting the said word as their trade mark is
logical and acceptable. 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.
1.6. The arguments advanced on behalf of the rival parties may
c now be noticed.
17. Shri P. Chidambaram, learned senior counsel, who had argued
the case of the appellant before us, submitted that recognition and
reputation of a trade mark is not contingent upon the actual sale of goods
in India bearing the mark in question. Advertisement and promotion of
D the mark through different forms of media is sufficient to establish
reputation and goodwill within a particular geographical area, i.e., India.
It is urged that in the present case the car Prius was widely publicized
and advertised in leading newspapers and magazines with wide circulation
all over the world since the year 1997. It is also urged that to establish
E goodwill and reputation it is not necessary that the mark should be
recognized by every member of the public and it would be sufficient if
persons associated with the industry/goods are aware of the mark. In
this regard learned counsel has urged that the Division Bench of the
High Court in the impugned judgment accepted the fact that the launch
and sale of the car Prius had been widely advertised. However, the
F Division Bench took the view that such publications were not
groundbreaking and did not have the necessary prominence to show
that the public at large would be aware of the trade mark. Learned
counsel has further urged that the Division Bench of the High Court did
not deal with the issue of the trade mark 'Prins' being a well known
G mark. The entitlement of such a well known mark is to a higher statutory
protection against misuse under the Act. The finding that the trade mark
'Prins" did not have transborder reputation permeating into India is,
therefore, incorrect. He has also urged that the test of passing off always
rest upon a likelihood of confusion irrespective of the stage at which the
matter may be considered. The fact that the trade mark 'Prius' was
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. M/S PRIUS AUTO 819
INDUSTRIES LTD. [RANJAN GOGOI, J.]
registered in favour of the defendants was irrelevant insofar as the A
plaintiff's claim for passing off is concerned. The triple identity test laid
down in Reckitt and Colman Ltd. (supra) would govern the instant
adjudication. The use by the defendants of the multiple trade marks of
the plaintiff ('TOYOTA', 'TOYOTA INNOVA' and 'TOYOTA
DEVICE MARKS'); the conditional injunction Order dated 10.08.2000; B
the violation thereof; all have been urged by Shri Chidambaram to contend
that the aforesaid facts are strong evidence of dishonest intention on the
part of the defendants to defraud the plaintiff to derive undue benefit
from the goodwill and reputation of the trade mark of which the plaintiff
is the first user.
18. Shri Chidambaram has additionally urged that the story put c
forward by the defendants surrounding the adoption of the word' Prius'
is on the face of it absurd. The possibility of conjuring a word in the
Hindi language and then looking for it in the English dictionary and finally
selecting a Latin word is too far fetched for acceptance as a bona fide
act of adoption of a mark. If the initial use of the mark 'Prius' by the. D
defendants in April, 2001 is dishonest, as it certainly is, no amount of
userofthe said mark after April, 2001, can sustain any claim of goodwill
and reputation of the defendants in the mark in question. Shri
Chidambaram has also struck an issue with regard to the trade mark
'Prius' being publici juris. It is urged that the said finding has been
arrived at without there being an issue before the Cow·t and without any E
evidence being led on the point.
19. In reply, Shri Sai Krishna, learned counsel for the respondents/
defendants has submitted that as a manufacturer of spare parts, the
defendants are entitled to inform the consumer the name of the specific
vehicles for which the particular spare part is suitable and useful. This is F
precisely what has been done and nothing more. Such action on the part
of the defendants is protected under Section 30 of the Act. It is urged
that the conduct of the plaintiff in belatedly moving the Registry ofTrade
Mark for registration and that too on a "proposed to be used basis" and
the amendment to the said prayer made, after filing of the suit, are crncial G
circumstances for determination of the plaintiff's claim. On the other
hand, the mark was adopted by the defendants in the year 2001 and
registration thereof was obtained in the year 2002-2003 whereas this
mark was adopted by the plaintiff in India in the year 2009 and the car in
question was launched in the year 2010. The documents proved by the
H
820 SUPREME COURT REPORTS [2017] 12 S.C.R.
A plaintiff to establish goodwill and reputation are all post April, 2001 (date
of adoption of the mark by the defendants). Furthermore, the evidence
of the plaintiff's witnesses make it clear that not only the mark was
adopted by the plaintiff for the first time in India in 2009 but also that no
advertisements were published by the plaintiff prior to April 2001. From
the evidence of the plaintiff's witnesses it is clear that since the launch
B
of the car in 2010, only 130 cars were sold. Learned counsel for the
defendants have further urged that it is the Territoriality Principle as
opposed to the Universality Doctrine which has been accepted by the
courts all over the world as the correct test to determine goodwill and
reputation within any particular jurisdiction. It is therefore necessary
c that· the trade mark is recognized and has a separate existence in each
sovereign Country. Positive evidence of spill over of reputation and
goodwill of the plaintiff's mark 'Prius' to the Indian market, prior to
April, 2001, is absent. In this regard reference is made to the several
passages in the book "The Law of Passing-Off' by Prof. Christopher
Wadlow to urge that the test whether a foreign claimant (in this case,
D
the plaintiff; Toyota) may succeed in a passing off action is whether his
business has a goodwill in India; that even the most internationally
renowned business owns not one goodwill, but a bundle of many different
ones. The nature of goodwill as a legal property with no physical existence
means that when a business is carried on in more than one country,
E there must be separate goodwill in each. It is submitted on the strength
of the decision of the Federal Court ofAustralia in ConAgra vs. McCain
Foods6 that in the last resort the test is whether the owner of the goods
has established a 'sufficient reputation' with respect to his goods within
the particular country in order to acquire a sufficient level of consumer
knowledge of the product and attraction for it to provide customers,
F
which if!ost, is likely to result in damage to him.
20. The delay and latches on the pm1 of the plaintiff in tolerating
the defendants using the trade mark 'Prins' since April, 200.l in spite of
due knowledge has also been urged to contend that the claim of the
plaintiff has been rightly rejected by the Division Bench of the High
G Cou11.
21. At the very outset, ce11ain principles that govern the law of
passing off may be usefully noticed. Such principles, in fact, have been
considered by this Court in its decision in S. Syed Mohideen (supra),
6
(1992) 23 !PR 193
H
\
TOYOTO JIDOSHA KABUSHIKI KAISHA v. MIS PRIUS AUTO 821
INDUSTRIES LTD. [RANJAN GOGOI, J.]
though in a somewhat different context, i.e., the right of a registered A
owner of a particular mark to bring an action for passing off against
another registered owner of an identical or largely similar trade mark. In
S. Syed Mohideen (supra), this Court on a collective reading of the
provisions of the Act held "that the action for passing off which is premised
on the rights of prior user generating a goodwill shall be unaffected by
8
any registmtion provided tinder the Act," which proposition actually stood
approved in an earlier decision of this Cou11 in N.R. Dongre (supra).
The trinity test laid down in Reckitt and Colman Ltd. (supra) was reiterated
by this Court in S. Syed Mohideen (supra) by holding that to prove and
establish an action of passing off, three ingredients are required to be
proved by the plaintiff, i.e., his goodwill, misrepresentation and damages. C
22. The following passage from Kerly's 'Law of Trade Marks
and Trade Namesn noticed in S. SyedMohideen (supra) may be reiterated
herein for a clear exposition of the principles laying down the test for
judging an action of passing off in the Indian jurisdiction. The provisions
in the Indian Trade Marks Act, 1999 incidentally are analogous to those D
in the U.K. Trade Mark~ct, 1994
"15-034. Subject to possibly one qualification, nothing in the Trade
Marks Act, 1994 affects a trader's right against another in an
action for passing off. It is, therefore, no bar to an action for
passing off that the trade name, get up or any other of the badges E
identified with the claimant's business, which are alleged to have
been copies or imitated by the defendant, might have been, but
are not registered as, trade marks, even though the evidence is
wholly addressed to what may be a mark capable of registration.
Again, it is no defence to passing off that the defendant's mark is
registered. The Act offers advantages to those who register their F
trade marks, but imposes no penalty upon those who do not. It .is
equally no bar to an action for passing off that the false
representation relied upon is an imitation of a trade mark that is
incapable of registration. A passing off action can even lie against
a registered proprietor of the mark sued upon. The fact that a G
claimant is using a mark registered by another pa11y (or even the
defendant) does not of itself prevent goodwill being generated by
the use of the mark, or prevent such a claimant from relying on
such goodwill in an action against the registered proprietor. Such
7
14'" Edn., Thomson, Sweet & Maxwell South Asian Edition
H
822 SUPREME COURT REPORTS [2017] 12 S.C.R.
A unregistered marks are frequently referred to as 'common law
trade marks'."
(Underlining is ours)
23. Whether a trade mark is to be governed by the territoriality
principle or by w1iversality doctrine? Prof. Cristopher Wadlow in his
B book 'The Law of Passing-Off!" has analysed the problem and its possible
resolution in the following words:
"in the worst case, an international company seeking to expand
into a new territory may find itself blocked by a small business
already trading under the same name or style, perhaps on a
c miniscule scale; and perhaps having been set up for the very same
purpose ofblocking anticipated expansion by the claimant or being
bought out for a large sum. On the other hand, a rule of law
dealing with this situation has to avoid the opposite scenario of
bona fide domestic traders finding themselves open to litigation at
D the suit of unknown or barely-known claimants from almost
anywhere in the world. Some of the more radical proposals for
changing the law to assist foreign claimants ignore the need for
this balancing exercise, without which the opportunities for abuse
are simply increased, and further uncertainty created"
E 24. The view of the courts in U.K. can be found in the decision of
the U.K. Supreme Court in Starbucks vs. British Sky Broadcasting9
wherein Lord Neuberger observed as follows:
"As to what amounts to a sufficient business to amount to goodwill,
it seems clear that mere reputation is not enough... The claimant
must show that it has a significant goodwill, in the Torm of
F
customers, in the jurisdiction, but it is not necessary that the claimant
actually has an establishment or office in this country. In order to
establish goodwill, the claimant must have customers within the
j w·isdiction, as opposed to people in the jurisdiction who happen to
be customers elsewhere. Thus, where the claimant's business is
G carried on abroad, it is not enough for a claimant to show that
there are people in this jurisdiction who happen to be its customers
when they are abroad. However, it could be enough if the claimant
could show that there were people in this jurisdiction who, by
'5"' Ecln., Sweet & Maxwell
92015 UK SC 31
H
TOYOTO JIDOSHA KABUSHIKI KAISHA v. MIS PRIUS AUTO 823
INDUSTRIES LTD. [RANJAN GOGOI, J.]
booking with, or purchasing from, an entity in this country, obtained A
the right to receive the claimant's service abroad. And, in such a
case, the entity need not be a part or branch of the claimant: it can
be someone acting for or on behalf of the claimant..."
25. It seems that in Starbucks vs. British Sky Broadcasting
(supra), the Apex Court of UK had really refined and reiterated an earlier B
view in Athletes' Foot Marketing Associates Inc. vs. Cobra Sports Ltd. w
to the following effect:
'" ... no trader can complain of passing-off as against him in any
territory... in which he has no customers, nobody who is in trade
relation with him. This will normally shmtly be expressed by stating c
that he docs not carry on any trade in that particular country... but
the inwardness of it will be that he has no customers in that
country ... "
26. A passing reference to a similar view of the Federal Court of
Australia in Taco Bell vs. Taco Co. ofAustralia 11 may also be made. D
27. Prof. Cristopher Wadlow's view on the subject appears to be
that 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 ofbusiness in that jurisdiction. If there are customers E
for the claimant's products in that jurisdiction, then the claimant stands
in the same position as a domestic trader.
28. The overwhelming judicial and academic opinion all over the
globe, therefore, seems to be in favour of the territoriality principle. We
do not see why the same should not apply to this Country.
F
29. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spill over of the
reputation and goodwill of the mark used by the claimant who has brought
the passing off action. In the course of suchdetcrmination it may be
necessary to seek and ascertain the existence of not necessarily a real
G
.market butthe presence of the claimant through its mark within a
paiticular territorial jurisdiction in a more subtle form which can best be
manifesteyl·by the following illustrations, though they arise from decisions
of Courts which may not be final in that particular jurisdiction.
10
(1980) R.P.C. 343
II 1981 60 FLR 60 H
824 SUPREME COURT REPORTS [2017] 12 S.C.R.
A 3.0. In SAAnciens Etablissements Panhard et Levassor v. Panhard
Lcvassor Motor Co 12 , the plaintiffs were French car manufacturers who
had consciously decided to not launch their cars in England (apprehending
patent infringement). Nevertheless, some individuals had got them
imported to England. It was seen that England was one of the plaintiff's
markets and thus, in this case, permanent injunction was granted. Similarly
B
in Grant v. Levitt 13 , a Liverpool business concern trading as the Globe
Furnishing Company, obtained an injunction against the use of the same
name in Dublin as it was observed that advertisements by the plaintiff
had reached Ireland and there were Irish customers. C&A Modes v.
C&A (Waterford) 14 , was a case where the plaintiffs operated a chain of
c clothes stores throughout the U.K. and even in Northern Ireland but not
in the Republic oflreland where the defendants were trading. The Court
held that, "a very substantial and regular custom from the Republic of
Ireland was enjoyed by this store. Up to that time an excursion train
travelled each Thursday from Dublin to Belfast, and so great was the
influx of customers from the Republic as a result of that excursion that
D
the store ordinarily employed extra part-time staff on Thursday on the
same basis as it did on Saturday which were normally the busiest shopping
days." The said view has since been upheld by the Irish Supreme Court.
31. Whether the second principle evolved under the trinity test,
i.e., triple identity test laid down in Reckitt and Colman Ltd. (supra)
E would stand established on the test of likelihood of confusion or real/
actual confusion is another question that seems to have arisen in the
present case as the Division Bench of the High Court has taken the
view that the first test, i.e., likelihood of confusion is required to be satisfied
only in quia timet actions and actual confusion will have to be proved
F when the suit or claim is being adjudicated finally as by then a considerable
period of time following the initiation of the action of passing off might
have elapsed. Once the claimant who has brought the action of passing
off establishes his goodwill in the jurisdiction in which he claims that the
defendants arc trying to pass off their goods under the brand name of
the claimant's goods, the burden of establishing actual confusion as
G distinguished from possibility thereof ought not to be fastened on the
claimant. The possibility or likelihood of confusion is capable of being
demonstrated with reference to the particulars of the mark or marks, as
"1901 2 Ch. 513
13 190118RPC361
14
1976 I.R. 198 (Irish)
H
TOYOTO JJDOSHA KABUSHIKI KAISHA v. MIS PRTUS AUTO 825
INDUSTRIES LTD. [RANJAN GOGOi, J.]
may be, and the circumstances surrounding the manner of sale/marketing A
of the goods by the defendants and such other relevant facts. Proof of
actual confusi<Jn, on the other hand, would require the claimant to bring
before the Court evidence which may not be easily forthcoming and
directly available to the claimant. In a given situation, there may be no
complaints made to the claimant that goods marketed by the defendants B
under the impugned mark had been inadvertently purchased as that of
the plaintiff/claimant. The onus of bringing such proof, as an invaril!-ble
requirement, would be to cast on the claimant an onerous burden which
may not be justified. Commercial and business morality which is the
foundation of the law of passing off should not be allowed to be defeated
by imposing such a requirement. In such a situation, likelihood of confusion C
would be a surer and better test of proving an action of passing off by
the defendants. Such a test would also be consistent with commercial
and business morality which the law of passing off seeks to achieve. In'
the last resort, therefore, it is preponderance of probabilities that must
be left to judge the claim.
D
. 32. The next exercise would now be the application of the above
princi pies to the facts of the present case for determination of the
correctness of either of the views arrived at in the two-tier adjudication
performed by the High Court of Delhi. Indeed, the trade mark 'Prius'
had undoubtedly acquired a great deal of goodwill in several other
jurisdictions in the world and that too much earlier to the use and E
registration of the same by the defendants in India. But ifthe territoriality
principle is to govern the matter, and we have already held it should,
there must be adequate evidence to show that the plaintiff had acquired
a substantial goodwill for its car under the brand name 'Prius' in the
Indian market also. The car itself was introduced in the Indian market in F
the year 2009-20 I 0. The advertisements in automobile magazines,
international business magazines; availability of data in information-
disseminating portals like Wikipedia and on line Britannica dictionary and
the information on the internet, even if accepted, will not be a safe basis
to hold the existence of the necessary goodwill and reputation of the
product in the Indian market at the relevant point of time, particularly G
having regard to the limited on line exposure at that point of time, i.e., in
the year 2001. The news items relating to the launching of the product in
Japan isolatedly and singularly in the Economic Times (Issues dated
27 .03.1997 and 15.12.1997) also do not firmly establish the acquisition
and existence of goodwill and reputation of the brand name in the Indian H
826 SUPREME COURT REPORTS (2017] 12 S.C.R..
A market. Coupled with the above, the evidence of the plaintiff's witnesses
themselves would be suggestive ofa very limited sale of the product in
the Indian market and vit1ually the absence of any advertisement of the
prodm:t in India prior to April, 200 L This, in turn, would show either lack
of goodwill in the domestic market or lack of knowledge and information
of the product amongst a significant section of the Indian population.
B
While it may be correct that the population to whom such knowledge or
information of the product should be available would be the section of
the public dealing with the product as distinguished from the general
population, even proof of such knowledge and information within the
limited segment of the population is not prominent. All these should lead
c to us to eventually agree with the conclusion of the Division Bench of
the High Court that the brand name of the car Prins had not acquired the
degree of goodwill, reputation and the market or popularity in the Indian .
market so as to vest in the plaintiff the rn!cessary attributes of the right
of a prior user so as to successfully maintain an action of passing off
t;ven. against -the registered owner: In any event the core of the
D
controversy between the parties is really one of appreciation of the
evidence of the parties; an exercise that this Court would not undoubtedly
repeat unless the view taken by the previous forum is wholly and palpably
unacceptable which does not appear to be so in the present premises ..
33. If goodwill or reputation in the particular jurisdiction (in India)
E is not established by the plaintiff, no other issue really would need any
further examination to determine the extent of the plaintiff's right in the
action of passing off that it had brought against the defendants in the
Delhi High Court. Consequently, even if we arc to disagree with the
view of the Division Bench of the High Court in accepting the defendant's ·
version of the origin of the mark 'Prius', the eventual conclusion of the
F
Division Bench will, nonetheless, have to be sustained. We cannot help
but also to observe that in the pres~nt case the plaintiff's delayed approach
to the Courts has remained unexplained. Such delay cannot be allowed
to work to the prejudice of the defendants who had kept on using its
registered mark to market its goods during the inordinately long period
G of silence maintained by the plaintiff.
34. For all the aforesaid reasons, we deem it proper to affirm the
ordcr(s) of the Appellate Bench of the High Court dated 23.12.2016 and
12.01.2017 and dismiss the appeals filed by the appellant/plaintiff.
Divya Pandey Appeals dismissed.
H
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