India: Supreme Court Applies Territoriality Principle And Eviscerates Toyota's Prius Victory

Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. & Ors, CS (OS) No. 2490 of 2009, Civil Appeal Nos. 5375- 5377 of 2017

In a major upset to Toyota Jidosha Kabushiki Kaisha ("Toyota"), the Supreme Court of Delhi has tightened the standard for enforcing a reputed mark in India, and signaled a major shift in Indian law. Specifically, the Supreme Court has adopted a "Territoriality Principle," and now requires that goodwill be shown within the territory of India to enforce a famous, unregistered mark there. It will no longer be sufficient to show a "trans-border" reputation abroad.


Toyota's first commercial use anywhere of the PRIUS mark was in 1995 at the Tokyo Motor Show. Sales of Toyota's PRIUS electric hybrid car began in 1997, in Japan, and PRIUS cars began to be sold in the United States and Europe in 2001 and 2002.

The Defendants, Deepak Mangal, Sandeep Verma, M/s Prius Auto Industries, and M/s Prius Auto Accessories Pvt. Ltd. (collectively, "Defendants"), began using the PRIUS mark in India in 2001 for all types of auto parts and accessories and for trade in these goods and obtained Indian registrations in 2002 and 2003. Subsequently, Toyota began promoting its PRIUS vehicle in India in 2009 and launched the PRIUS there in 2010. In 2009, Toyota brought suit against the Defendants, claiming passing off of its famous mark.

In 2016, a single judge of the High Court of Delhi held in favor of Toyota. The court recognized Toyota's unregistered PRIUS mark as a well-known mark worldwide, and enjoined the use of "PRIUS" by the defendants in connection with their auto parts business, notwithstanding the defendants' two Indian registrations for PRIUS in India predated the entry of Toyota's PRIUS vehicles into the Indian market. The single judge held that Toyota held superior rights in the PRIUS trademark, given that Toyota had been the first in the world to adopt the PRIUS mark. Upon a review of the evidence submitted by Toyota, as well as its independent review of additional books and articles, the Court concluded that PRIUS enjoyed an international reputation before the Defendants' adoption of PRIUS in 2001, and enjoined the Defendants from using the mark. Our detailed discussed can be viewed at September 2016 Newsletter.

That decision was set aside, however, in December 2016 by the Division Bench of the Delhi High Court, which held that, with respect to the PRIUS mark, the plaintiff's evidence was insufficient to establish the trans-border reputation of PRIUS in India at the time the Defendants adopted the mark. Our detailed discussion can be viewed at March 2017 Newsletter.

Supreme Court Decision

Toyota appealed the decision of the Division Bench to the Supreme Court of India. This past December 2017, the Supreme Court issued a decision rejecting Toyota's appeal. The Supreme Court noted that a central issue was whether it should adopt the "Universality Doctrine" which holds that a mark "signifies the same source all over the world," or alternatively whether to recognize the "Territoriality Doctrine," which posits that a trademark has a "separate existence" in every country, and that a claimant must show goodwill in a specific jurisdiction to be able to succeed on a passing-off claim there.

The Supreme Court decided to apply the Territoriality Principle, noting that the "overwhelming judicial and academic opinion all over the globe . . . seems to be in favour of the territoriality principle. We do not see why the same should not apply to this Country."

The Court further held that Toyota's evidence purporting to show goodwill and reputation all post-dated 2001, when the Defendants adopted the mark, and that no PRIUS advertisements were published in India before April 2001.

Under the territoriality analysis, it is not enough simply to show a wide international reputation. Instead, such reputation must be accompanied by evidence showing substantial goodwill in India. Here, the Supreme Court held that Toyota's advertisements in automobile magazines, international business magazines, and the availability of information about PRIUS on Internet portals such as Wikipedia, were insufficient to establish goodwill and reputation in the Indian market, particularly given the limited exposure of the Indian public to the Internet at the time Defendants began using PRIUS in 2001.

* * *

This decision marks a significant turning-point in Indian trademark practice. Going forward, rights owners will be required to show that they have acquired goodwill in the territory of India, in addition to a likelihood of confusion between the marks, in order to succeed on a passing off claim where they do not have prior registered rights. While international companies with an established presence in India, or with customers in the Indian market, should be able to meet this standard, it is now more imperative than ever that businesses contemplating use in India ensure that their trademarks are registered there as soon as possible.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions