Enforcing an unregistered mark is a challenge; more so when the mark is used and registered by another entity. Toyota found itself in a similar situation with regards to its trademark PRIUS.
In brief, Toyota sold its first PRIUS in the year 1997 in Japan, while PRIUS was launched in India only in 2010. In the year 2001, Deepak Mangal, the defendant in the case, adopted the mark PRIUS. The defendant even filed for registration of PRIUS in 2002, and the mark was registered subsequently. Toyota filed a suit to restrain the defendant from using the mark PRIUS, and came out victorious in a long drawn legal battle, which concluded in July, 2016.
One of the questions which the court tried to answer was whether Toyota's trademark PRIUS enjoyed the status of well-known mark in 2001 and whether the trademark PRIUS had spill over reputation in India way back in 2001.
The evidence put on record by Toyota convinced the court that Toyota's trademark PRIUS enjoyed the status of well-known mark and had spill over reputation in India way back in 2001. The evidence that proved the same is of importance, since similar evidence may be used in future by owners of marks who may never have adopted their marks in India, in the strict since. A brief overview of such evidence is provided below.
Registration of the trademark in several countries
Toyota had registered their trademark PRIUS in 27 countries by as early as 1998.
Website
Toyota's websites, which is accessible across the world, including India, were considered as one of the means by which the goodwill and reputation of the trademark PRIUS travelled in India.
Advertisements and articles
Books, advertisements and articles in trade magazines, write ups in newspapers and in other media were also considered to have spread awareness, knowledge and information amongst the Indian viewers about the trademark.
The judgement, apart from dealing with enforcing of unused and un-registered marks in India, also deals with concepts of passing off, which make it a judgement which must be read by everyone interested in trademark enforcement in India.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.