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TMI Blog2010 (9) TMI 1226X X X X Extracts X X X X X X X X Extracts X X X X ..... t 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 substa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tracts 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 ' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rotect 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 Pfizer Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr. 2004(28) PTC 456 (Del) to support the submission that the worldwide reputation of the trademark of the plaintiff 'PRIUS' has been established by his sale turnover. 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 good ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aintiff 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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... w 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Khoday India Limited) v. The Scotch Whisky Association and Ors. AIR 2008 SC 2737 the long delay of 14 years in filing the application for rectification had been held to be fatal as causing immense prejudice to the appellant whose sale figures in the meantime had gone up manifold. 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 I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ered to be such an activity which could lead to the conclusion that the defendant had built up a reputation in the field of goods sold by him. Plea of acquiescence raised by the defendant had been rejected. 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 ₹ 3.54 crores only; cumulatively, the net profit, partner's salary and interest on capital added up to be ₹ 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 ₹ 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 su ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s honest and bona fide. 26. In Beiersdorf A.G. v. Ajay Sukhwani and Anr. 2009 (39) PTC 38 (Del.) the court had inter alia held: ...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 malafide 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 Benc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 wer ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 allo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Mc Donald's Corporation and Anr. v. Sterling's Mac Food Represented by its Partner John Mathew ILR 2007 Kar 3346 the plaintiff had adopted its registered trade mark BIG MAC in 1968 in the USA. He had been registered in India in 1993 but had started using the trademark in October, 1996. Defendant on the other hand had been carrying on its business since 1983; it was held that the plaintiff having sowed the business much later could not find fault with the defendant in using its trademark in its business. 42. Similar obs ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark '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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ped 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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/ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 under Section 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 defend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 clos ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X
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