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12. The learned trial Judge in taking the view that the plaintiff was entitled to an injunction against the use of the trade mark ‘Prius’ by the defendants, took into account, inter alia, the global sales of Prius Cars (ranging upto over a million sales globally); the exponential hike in the sales of cars (300 units in 1997 to 285600 units in 2008); and that the plaintiff’s trade mark ‘Prius’ which had acquired an excellent global goodwill had already spilled over to India much before the direct sales of the car in India in the year 2010. The fact that the plaintiff’s web sites have been visited by many Indians seeking information about Prius cars was held by the learned trial Judge to be evidence of the fact that people in India were aware of the car and its popularity. The exhibitions of the car held in India and other countries; various advertisements published in different automobile magazines and cover stories published in international magazines and journals were taken into account by the learned trial Judge to hold that the car in question had a stellar reputation in the world market including India. The learned trial Judge also took into account the availability of information regarding the car in information-disseminating portals like Wikipedia and online Britannica dictionary. Consequently, it was held that the physical presence of the car in India at a later point of time was immaterial. In fact, the learned trial Judge went on to hold that the mark ‘Prius” had satisfied the definition of a “well-known trade mark” under Section 2(1)(zg) read with Section 11(6) & 11(9) of the Act. Relying on the decision of this Court in S. Syed Mohideen vs. P. Sulochana Bai 1, the learned trial Judge took the view that if the plaintiff could successfully prove that its case was covered by “passing off” the registered trade mark of the defendants would not remain protected under the Act. Proceeding further, the learned 1 2016 (2) SCC 683 trial Judge took the view that the plaintiff was the prior user/adopter of the mark ‘Prius’, though it may not have been such prior user so far as the Indian market is concerned. In this regard, the learned trial Judge relied on the decision of this Court in N.R. Dongre vs. Whirlpool Corporation2 wherein this Court had approved the views of the Delhi High Court holding that wide advertisement of a trade mark without the existence of the goods in the local market can well be considered as use of the trade mark in the said local market. Again, relying on the decision of this Court in Milmet Oftho Industries & Ors. vs. Allergan Incorporated3 the learned trial Judge held that the real test of establishing prior use is to determine who is the first in the world market. Adopting the tests laid in Reckitt and Colman Ltd. vs. Borden Incorporated4 the learned trial Judge came to the conclusion that the goods of the plaintiff 2 1996 (5) SCC 714 3 2004 (12) SCC 624 4 1990 (1) All E.R. 873 enjoy transborder reputation and goodwill which had permeated the Indian market and that as the defendants had used an identical mark in relation to more or less an identical product(s) having a common market, the likelihood of confusion was unavoidable. The learned trial Judge further held that, as both the parties had advertised their respective products in the same magazines and periodicals, any person reading such an advertisement would be bound to be misled to believe that the defendants goods emanates from the plaintiff’s organization and that there is a nexus between the two. Accordingly, the learned trial Judge came to the conclusion that the adoption of the mark ‘Prius’ by the defendants, though they were the registered proprietor thereof, was misleading, as the plaintiff was the true and first user of the trade mark all over the world and the reputation of the mark and the goodwill of the plaintiff on that basis had permeated to the Indian Market well before the use of the mark by the defendants in 2001 and its registration thereafter in 2002-2003. The trial Judge further held that the defendants had adopted the mark ‘Prius’ with the sole intention of enjoying the benefits from the use of the said mark. The explanation given as to why and how the defendants had adopted the name ‘Prius’ was found to be wholly untenable by the learned Single Judge. Accordingly, the finding that the defendants were guilty of passing off their goods under the mark, of which the plaintiff was the first user, was arrived at. Consequently, permanent injunction restraining the use of the mark ‘Prius’ by the defendants in order to prevent passing off the defendants’ goods as the plaintiffs’ was issued and damages quantified at 0.25% of the total sales, amounting to Rs.10 lakhs, was awarded.

13. In appeal, the Division Bench reversed the conclusion(s) of the learned Single Judge holding that the findings with regard to spread of the transborder reputation of the mark ‘Prius’ had not been correctly arrived at by the learned trial Judge as facts and materials beyond the relevant point of time i.e. first date of use (April, 2001) of the mark by the defendants in India was taken into consideration. The Division Bench of the High Court while holding that the launching of the car ‘Prius’ in the year 1997 was widely reported and advertised, however, held that such publication in the print media was not ground breaking and in fact in the issue of Economic Times dated 27.03.1997 and 15.12.1997, small news items with regard to the launching of the product in Japan had been published, which could not have impacted the Indian public at large. Relying on one of its own judgments in the case of Trans Tyres India Pvt. Ltd. vs. Double Coin Holdings Ltd. & Anr.5 the Division Bench of the High Court took the view that the 5 2012 SCC Online Delhi 596 Universality Doctrine (which posits that a mark signifies the same source all over the world) has not been accepted by courts. Modern day trade; globalization have brought in multi-channel modes of sale of goods in the market and therefore it is the Territoriality Doctrine (a trade mark being recognized as having a separate existence in each sovereign country) would hold the field. The Division Bench further held that prior use of the trade mark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to the said mark in another dominion. It was, therefore, necessary for the plaintiff in the case to establish that its reputation had spilled over to Indian market prior to April, 2001.

16. The arguments advanced on behalf of the rival parties may now be noticed.

17. Shri P. Chidambaram, learned senior counsel, who had argued the case of the appellant before us, submitted that recognition and reputation of a trade mark is not contingent upon the actual sale of goods in India bearing the mark in question. Advertisement and promotion of the mark through different forms of media is sufficient to establish reputation and goodwill within a particular geographical area, i.e., India. It is urged that in the present case the car Prius was widely publicized and advertised in leading newspapers and magazines with wide circulation all over the world since the year 1997. It is also urged that to establish goodwill and reputation it is not necessary that the mark should be recognized by every member of the public and it would be sufficient if persons associated with the industry/goods are aware of the mark. In this regard learned counsel has urged that the Division Bench of the High Court in the impugned judgment accepted the fact that the launch and sale of the car Prius had been widely advertised. However, the Division Bench took the view that such publications were not groundbreaking and did not have the necessary prominence to show that the public at large would be aware of the trade mark. Learned counsel has further urged that the Division Bench of the High Court did not deal with the issue of the trade mark ‘Prius’ being a well known mark. The entitlement of such a well known mark is to a higher statutory protection against misuse under the Act. The finding that the trade mark ‘Prius” did not have transborder reputation permeating into India is, therefore, incorrect. He has also urged that the test of passing off always rest upon a likelihood of confusion irrespective of the stage at which the matter may be considered. The fact that the trade mark ‘Prius’ was registered in favour of the defendants was irrelevant insofar as the plaintiff’s claim for passing off is concerned. The triple identity test laid down in Reckitt and Colman Ltd. (supra) would govern the instant adjudication. The use by the defendants of the multiple trade marks of the plaintiff (‘TOYOTA’, ‘TOYOTA INNOVA’ and ‘TOYOTA DEVICE MARKS’); the conditional injunction Order dated 10.08.2000; the violation thereof; all have been urged by Shri Chidambaram to contend that the aforesaid facts are strong evidence of dishonest intention on the part of the defendants to defraud the plaintiff to derive undue benefit from the goodwill and reputation of the trade mark of which the plaintiff is the first user.