This article is published by:
- Pragya Vaishnav, Indore Institute of Law
Trademarks helps people all around the world to recognize and select the product or service of their own choice and convenience. It takes a lot of hardship and ample of time to establish goodwill in a market and product to get good reputation & popularity in market. In today’s world everyone wants quick success and benefits which results in copying name or choosing similar or identical mark to get the benefit from the well know trade mark.
The Pirus trade mark battle which was going on for long period has finally ended with unexpected pronouncement. Toyota which is Japanese Company in 1997 has first register their trade mark name in japan thereafter in USA and UK. In 2009 they have introduced their model Pirus in India.
In 2002 a Local company in India a manufacturer of automobile spare parts has register the name Pirus as their trade mark. Toyota has not launched Pirus in India when domestic company has registered their trade name. In 2009 Toyota [1]applied for the registration for their trade name Pirus and filed a case of trade mark infringement against the local company. The appellant argued that product was not available in India at that point of time but the data of the product available in print media, magazine and in internet site Wikipedia, Britannica.
After their long battles in lower courts the Supreme Court came with the final decision and in the present case doctrine of territorial jurisdiction prevailed. The court said that who acquired the market first in particular jurisdiction will be considered as prior user, not who has gained goodwill in international market. Court has held that if goodwill and reputation is not established by the plaintiff no other issue needs any further examination. Delay is also unexplained by the plaintiff, as no action taken by plaintiff on due time and non-availability of their product in Indian market defendant has gained reputation and honest customer in local market.
The court has emphasis on following points while pronouncing the Judgement:-
1) Unexplained delay by the plaintiff is taken as prime factor in the present case the court has highly emphasis on the same. Delay has been turned as deficits of the plaintiff case.
2) Claimant needs to provide cogent evidence of presence in the Indian market and customer in particular jurisdiction.
3) The product is unknown to certain class of public
4) Merely on the basis of cross border reputation they can’t claim goodwill in local jurisdiction
5) High price of the product
The court has made following point imperative for application of doctrine of territorial jurisdiction in any case:-
a) Necessary to determine if there is spill over of reputation of claimant mark in passing of case.
b) Plaintiff necessarily needs to show that they have acquired substantial goodwill in particular jurisdiction.
c) Availability of data and information regarding the product in online portal and in few magazine is not secure a basis to prove their presence, this limited exposure doesn’t provide any cogent evidence of presence of plaintiff product in Indian market.
d) Lack of knowledge and information regarding the product to the significant section of the society.
e) Plaintiff not acquire sufficient degree of reputation and goodwill in Indian market
Legislation:-
Well known trade mark mean mark which has become the part of the common knowledge of public.[2] Use of the mark in continues basis and the mark which could be easily recognize by the substantial section of the society.
Section 11(6)[3] :- this section discuss factor determining whether the product is well known
a) The product should be recognized by the relevant section of public including India.
b) The duration, extent and geographical area of use of the trade name.
c) Advertisement and publicity of the particular trade name.
d) The recognition of trade name, duration and geographical area of registration and application of registration
e) Record of considered as a well-known trade mark in India
Section 29 (4):-
It can be said that a registered trade mark infringed when the registered mark is well known and used by the other party which disturb the market of plaintiff badly and satisfy the following points:-
a) Prima-facie strong resemblance of the two marks,
b) Prior registered mark must have reputation in India,
c) Mark for dis-similar goods/services,
d) The use of the second mark is without due cause, and such use amounts to taking unfair advantage of or is injurious to the reputation & distinctive character of the mark.
Before Toyota Judgment:-
Previous to the Toyota case, India comes under those country where the trade mark which has gained popularity in the international market but doesn’t have presence in Indian market feel safe and secure. Now, this judgement has brought sweeping change in the realm of trade mark protection. Indian judiciary has shifted its way from universality doctrine to territorial doctrine.
This has impacted number of foreign well known trade mark who have not registered their trademark in India. Previously in number of cases the judiciary has made it very clear that the well-known trade mark will be protected in India even if the product not present in India.
For instance in Milmet Of tho Industries and Ors. vs. Allergan Inc.[4] court held in the favor of the defendant in spite of the fact that the mark is not registered and have presence in India. Supreme Court state that since they are the first to enter in the world market and adopted the trade name they are entitled to protect their trade name in India even if they aren’t using the same in India.
In Daimler Benz Aktiegesellschaft and Anr. V Hybo Hindustan[5] delay in filing the suit for trade mark infringement doesn’t justified or validate the use of worldwide popular trade name.
In Capital One Financial Corporation v. Capital One Private Limited & other[6] it was held that it’s immaterial whether the plaintiff has existences in particular jurisdiction, the relevant point is whether the action of the defendant is to deceive and intended to take advantage of the goodwill of plaintiff’s trade name. it was also said that to initiate passing off action in India it’s sufficient that mark has gained reputation in international market even if does not have existence in Indian market.
Alfred Dunhill Ltd v Kartar Singh Makkar[7] this the similar case as Toyota in this the defendant was using trade Dunhill in India for past 11 year and has gained number customer and reputation in particular jurisdiction. In the contrary to the present judgement its was held that since the trade name Dunhill of plaintiff has acquired reputation in international market and company has right to protect its global reputation even though they don’t have presence in the particular jurisdiction.
S.C. Cambatta & CO Private Ltd., v. CEPT the reputation of mark needs not to always measure by the volume of turn over.[8]
For filing suit of passing off having reputation and goodwill in international market is sufficient, previously having presence in Indian market or having customer/ reputation wasn’t a prime factor in the case of prior user. It was undeviating and simple whoever is first in global market will be considered as prior user in Indian jurisdiction as well.
Universality principle: –
In many of the past cases Indian judiciary has followed the universality principle and has made India a paradise for the trade mark owner. In the case NR Dongre v Whirlpool Corporation[9] and Milmet oftho Industries and Ors. vs. Allergan Inc In these judgement court has made its stand clear that irrespective of the datum that the product has established its market in India or has used the mark in India, the ownership of the trade mark will go to the owner who has adopted the trade name first in the world market and has gained popularity.
In Apple Computer Inc. vs. Apple Leasing and Industries[10] in passing of case it’s not necessary for the plaintiff to carry business in India. For more technological advancement and to give boost collaboration it’s necessary to avoid unfair trade practice and protect well known trade name.
Haw Par Bros. International Ltd v. Tiger Balm Co. (P) Ltd & Ors[11]. in this case it was held that non-registration of the plaintiff in Indian jurisdiction does not take their trade mark reputation. Prior user of the trade name has more importance than registered one.
In S. Syed Mohideen v P. Sulochana Bai[12] supreme court acknowledged the right of prior user is higher than right of registered trade name owner.
All the above discussed judgement support the trade name who has gained reputation in world market in few case it’s held that prior user has more importance then registered on irrespective of the fact of their presence in Indian market.
Classical Trinity Test: –
For remedy in passing of cases court apply this test, the plaintiff needs to satisfy the condition provided in the test
In Reckitt and Colman Ltd. v. Borden Incorporated[13] in order to succeed plaintiff needs to proof following element:-
I. Firstly he needs substantiate that his product has reputation and people can identify the product or service they provide.
II. Claimant needs to show that defendant has wrongfully using the trade mark for earning profit and want to deceives honest customer of the claimant
III. Due to misrepresentation of the defendant plaintiff has or might incurred loss
The reputation and goodwill in international market is not the key factor in passing of case:-
In number of the judgement court has said that to obtain remedy available for passing off or for grant of injunction the claimant needs to proof various element. Having goodwill in world market doesn’t validate the case of spill over they need to show sufficient number of customer available in the particular jurisdiction.
E.I. Du Pont De Nemours & Co V. Gemini Distilleries Ltd.[14] Having reputation and goodwill outside the India does not give any substantiate proof of the presence of the goodwill India. The claimant needs to prove that they have sufficient number of costumer in the particular jurisdiction. Sale and continues use of the product and service is an also key factor which claimant primarily needs to proof. The most important factor which is irrefutable in all of the passing of cases to demonstrate spill over they need show genuine number of customer.
Peps Industries Private Limited v Kurlon Ltd.[15] prior user needs to show continues and regular use of his trade mark. Prior user also need to substantiate their sale in the particular jurisdiction.
Federal Court of Australia in ConAgra v. McCain Foods[16] the last resort test is whether the product has gained popularity in the particular jurisdiction and has gained sufficient number of customer, or if it’s trade name infringed or used the company may suffer great loss.
Starbucks v. British Sky Broadcasting[17] this case has particular focused on the customer even if the company not established in particular jurisdiction the claimant needs to show that they have sufficient number of customer in particular jurisdiction. Simply reputation is not sufficient.
Trans Tyres India Pvt. Ltd. v. Double Coin Holdings Ltd.[18] modern trade globalization multiple moods of selling goods & therefore territoriality jurisdiction should be given prime importance.
Now Indian Judiciary has coming up with new interpretation and approaches with regard to protection of trade mark. In one of the recent case of Pathanjali Ayurved Ltd[19]where the dispute was on trade mark name Coronil the plaintiff company who has registered the trade name 20 year prior to the defendant, plaintiff filed suit for trade mark infringement. The defendant company introduce medicine called Coronil which prevent cold and cough and work as immunity booster against the corona virus. The court relied on the fact that as the market and business style of both the company is entirely different and customers of plaintiff is heavy industries and customer of defendant are common public. It was reported that after being 20 year in market the plaintiff has only 31customers globally. The plaintiff failed to provide any substantial prove of their goodwill in the market. The court said that in the present case section 29(4) of the TMA haven’t invoked and there is no infringement as the present case doesn’t satisfied the condition given in the act and the other hand the plaintiff doesn’t have any cogent evidence which can prove that the Ayurveda Company intention is to deceive the product of plaintiff and want to gain the benefit of goodwill established by the plaintiff. For trade mark infringement it needs to be proved that the plaintiff product has gained huge reputation in the market and their higher chances of customer get confused or defendant want to take advantage of the well-known trade mark.
Issue of determination: –
The technology has developed and people are acquainted with the use of the same. Nowadays everything spread with speed of wind and most of the population is in touch with advertisement media. It won’t be pertinent to say that people are not familiar with the digitalisation in the present time. Now it’s easy for people to travel and purchase product of their choice via online mode. Most of companies spend a lots amount in advertising their product and to establish and maintain their goodwill nationally and internationally. Therefore it becomes imperative to protect the right of the trademark owner who has invest oceans of hardship and money to build their goodwill, good market and customers.
It can’ be said that there were no user and people of India were not aware of the Toyota’s Pirus launch. In every country in India as well number of motor car enthusiast keep track on new launch of their favorite or popular brand and the people who keep interest in new model of car are aware of the product and about their goodwill and reputation. As not all class of the people are interested in purchasing the car. In this case there was number of point where more diagnosis and attention was required.
Impact
The unexpected move of the court in the present matter has left number of trademark holder in surprise. The Pirus judgement has put the international brand who has gained popularity and goodwill outside the Indian jurisdiction and not India in greater dismay. Even after getting popularity their trademark or identical mark might be utilized by other who haven’t invested time and money to earn the reputation but grabbed the easiest and shortest way to earn profit by using trade mark of established brand. This judgement has created pandemonium situation and this will only settle when the judiciary will come with the uniform approach for trade mark infringement cases. Present judgement has great impinged on the foreign trade mark owner who are planning to establish their product in India or have really good number of user and follower of the product all over world but not established in India. Now it will be riveting to see further pathway of the judiciary. This judgement has put a biggest dilemma in the mind of common that for now with which approach such trade mark cases will be adjudicated. It has created a lot of uncertainty and dubiety in the mind of trade mark owner. Now it’s become highly vital for the trade owner to register their trade name in India in order to protect their goodwill.
As there is always two sides of one coin similarly the present case also has its two side, one side encourage and protect domestic trade and safeguard the right to of Indian corporations who has adopted marks with a bona-fide intention which is identical to the other mark. On the other side this might affect technological advancement and collaboration with big international companies. For future industrial advancement it will be pertinent to protect genuine trade mark.
Conclusion:
Courts are now progressively moving to safeguard the right of trade mark owner not only who has gained popularity but also have sufficient number of customer in the particular jurisdiction. In number of recent judgement court has made its viewpoint explicit that now only having prior registration and reputation outside the jurisdiction does not give you right to file a suit for infringement. The company needs to demonstrate valid number of customer in India and knowledge of the product to common public. In the recent judgment of madras high court the judgement indicate that even your trade name register for the year doesn’t count the use of trade name if you don’t have good number of customer and popularity in the jurisdiction.
The court go through numerous of document and evidence with facts and arguments of the parties. Thereafter the judiciary come to any conclusion, we cannot made any comment on justifiability of the judgement on Prius case. But sudden shift of the universality principle to territoriality principle has left number of trademark owner in surprise who haven’t launched their product in India.
The whole debate was no two principle universality and territoriality principle. Many countries in the world adopted concept of territorial jurisdiction for trade mark issue. Now Indian judiciary has also taken the route of doctrine of territorial jurisdiction. In passing off cases various key factor taken into consider whether the plaintiff intention were bona-fide, due cause, customer in particular jurisdiction, knowledge of the product to the certain section of society, prior and continues user of the identical mark in the local jurisdiction, which party will incur loss or damage. In the present case balance of convenience was in favour the defendant as he has gained good number customer and popularity in the local jurisdiction. If defendant prevented from using the trade name he might incur great loss.
Refence
[1] AIR2018SC167
[2] Section 2(1)(zg) in The Trade Marks Act, 1999
[3] Section 11(6) in The Trade Marks Act, 1999
[4] 2004 (12) SCC 624
[5] 1995 ( 1 ) ARBLR 180 ( Delhi )
[6] (2004) 3 CALLT 450 HC
[7] (1999 (19) PTC 294 (Del))
[8] AIR 1961 SC 1010
[9] AIR 1995 Delhi 300, 1995 (34) DRJ 109
[10] 1992 (1) ALR 93
[11] Haw Par Bros. International Ltd. vs. Tiger Balm Co. (P) Ltd. and Ors. (MADHC)
[12] ( 2016 ) 2 SCC 683
[13] [ 1990 ] 1 All ER 873
[14] MANU / IC / 0093 / 2004
[15] Peps Industries Private Limited vs. Kurlon Limited (16.03.2020 – DELHC)
[16] (Aust) P. Ltd., 1993 (23) IPR 193
[17] [2015] UKSC 31
[18] 2012 ( 49 ) PTC 209 ( Del )
[19] Pathanjali Ayurved Ltd ors vs. Arudra Engineers Pvt. Ltd. (02.02.2021 – MADHC)
