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2. Civil Suit [CS (OS) No. 2490 of 2009] was instituted by the plaintiff in the Delhi High Court seeking a decree of permanent injunction for infringement of trade mark, passing off and for damages against the respondents (hereinafter referred to as ‘the defendants’) in order to protect the plaintiff’s trade marks ‘TOYOTA’, ‘TOYOTA INNOVA’, ‘TOYOTA DEVICE’ and the mark ‘Prius’ of which the plaintiff claimed to be a prior user.

3. In the plaint filed, it was averred by the plaintiff that it is a renowned carmaker having its presence in many countries across the world. The plaintiff claimed an enviable goodwill and reputation as one of the foremost automobile manufacturers in the world. According to the plaintiff it had acquired registration in India in different classes for its trade marks ‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE’ during the years 1989-2003. It was specifically averred by the plaintiff that the goods manufactured and sold by the defendants bore the plaintiff’s registered trade marks thereby clearly constituting infringement of the said registered marks.

4. The defendants contested the claim of the plaintiff by contending that they have been using the words ‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE’ on the packaging materials in which the auto parts manufactured by them are/were packed for the purpose of item identification and nothing more. According to the defendants, since they were in the business of manufacturing spare parts of automobiles, they are/were entitled to indicate the cars for which the spare parts have been manufactured by displaying the same name on the packaging of the products. The use of the words ‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE’ etc. were, therefore, for the purpose of honest use in an industrial matter and thus protected under Section 30 of the Act.

8. At the conclusion of the trial, the learned trial Judge by judgment dated 08.07.2016 held that the impugned acts of the defendants constituted infringement of the trade marks ‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE’ registered in favour of the plaintiff. The learned Judge also held that such acts of the defendants amounted to passing off of the defendants’ goods under the trade name ‘Prius’, which, though registered in favour of the defendants in the year 2002-2003, the plaintiff was the first user thereof having marketed its hybrid car all over the globe under the name ‘Prius’ at least from the year 1997. Consequently, the learned trial Judge restrained the defendants from using the plaintiff’s trade marks (‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE’ marks) except in accordance with the terms of the conditional injunction order passed by the Division Bench dated 10.08.2010. So far as the mark ‘Prius’ is concerned, on the basis of the finding that the plaintiff was the prior user of the mark ‘Prius’ in various countries, if not in India, and that goodwill and reputation of the plaintiff so far as the mark ‘Prius’ is concerned having permeated to the Indian jurisdiction, it was held that the plaintiff was entitled to an injunction against the defendants restraining them from passing off the said mark. Punitive damages quantified as Rupees ten lakhs was also awarded in favour of the plaintiff.