Trans-border reputation: time to think!!!

Few days back the Delhi High Court has pondered upon the trans-border reputation and has laid down a detailed guideline for determining the trans-border reputation in India. There have been judgments penned down by the Court establishing trans-border reputation of the trade marks which are not registered. Indian Courts are already inclined in protecting the trans-border reputation of the trade marks on furnishing sufficient evidences in pursuance to such reputation.

In this case (Pirus Auto Industries Limited & Ors v. Toyota Jidosha Kabushiki) Toyota first used the word Prius and Toyota Prius for the first time in 1990 and thereafter acquired registrations in different countries. Furthermore, the first hybrid automobile was sold in 1997 in Japan. Toyota’s Application for the trade mark “Prius” is pending for registration since the year 2009. It was only in 2009 that Toyota learned about the registration of the trade mark “Prius” in class 12 for car parts and accessories in India. Toyota filed for the injunction against the Appellants from using any deceptively similar trade marks of Toyota like “Prius”. The Court also came across certain passing off suits filed against the Appellant in connection to the trade mark “Prius”.

In is in the above context that the Delhi High Court has pronounce the judgment. The Court has held that trade mark always protects not only the trade mark adopted by the firm/company but also the reputation of the firm which is the source of the trade mark. Again the trade mark even if it not present in India, the evidence of the print media, internet sources which transcends any jurisdictional border is sufficient to consider the trans-border reputation. In this era of internet the absence of the trade mark in India or any other country does not bar it from filing a suit. But, to acquire trans-border reputation calls for cogent evidences to be filed in the Court and hence considering this aspect the Division Bench has overruled the decision of the Single Judge Bench.