(This story originally appeared in on Dec 19, 2017)

Japanese automobile major Toyota lost a legal battle in the Supreme Court for exclusive trademark rights over ‘ Prius ’, the name under which it had launched its first mass produced hybrid car in Japan in 1997 and in the UK, Australia and the US in 2000-2001.The main reason for Toyota losing exclusive use of the ‘Prius’ trademark in India was the late launch in the country, in 2010. It found that an auto spare parts maker, Prius Auto Industries, had been using the name ‘Prius’ as well as ‘Toyota’, ‘Toyota Innova ’ and ‘Toyota Device’ for automobile parts it manufactured and supplied to the car manufacturing giant.After several rounds of litigation in the trial court, which Toyota had moved to protect its trademarks, and the Delhi HC, the auto parts maker was restrained from using the name ‘Toyota’, ‘Toyota Innova’ and ‘Toyota Devices’. However, the Delhi-based auto parts maker was permitted to use the ‘Prius’ trademark.Toyota moved the SC seeking to restrain the auto parts manufacturer from using the name ‘Prius’ and said it had obtained trademark registration of ‘Prius’ in Japan in 1990 and eventually in other countries. However, since the hybrid car was launched in India in 2010, Toyota had not registered the ‘Prius’ trademark in India till then.This delay in seeking cancellation of the ‘Prius’ trademark, registered by Prius Auto Industries in 2002 for all types of auto spare parts and accessories, played a vital role in Toyota losing the legal battle in the SC. A bench of Justices Ranjan Gogoi and Navin Sinha applied the ‘territoriality principle’ governing the field of trademarks and ruled that for a global brand to claim exclusive use of a trademark or brand name in India, it must be able to prove that the name had acquired substantial popularity in the Indian market when it got registered by another person or company.The bench said information available on the internet on use of ‘Prius’ trademark by Toyota and a lone mention of the world launch of its hybrid car in February-March 1997 in Economic Times “do not firmly establish the acquisition of goodwill and reputation of the brand name in the Indian market” as advertisements about ‘Prius’ in India were virtually absent prior to April 2001.Writing the judgment for the bench, Justice Gogoi said, “This would show either lack of goodwill in the domestic market or lack of knowledge and information of the product among a significant section of Indian population. Even proof of knowledge about Prius with that section of small population... is not prominent.”Agreeing with the HC, the bench said, “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 get Toyota the necessary attributes of the right of a prior user...”