The Issue Of Transborder Reputation Of Trademarks

With the rapid growth of technology, it is possible to be aware of the most significant and insignificant events in the world, be it political awareness, social awareness, entertainment as well as the reputation of a brand. The trans-Border reputation of brands in general means when a brand is gaining popularity not only in its place of origin but is growing worldwide; not taking into the fact whether such a mark apart from its place of origin is registered globally or not. The Indian Judicial system has periodically delivered judicial precedents regarding the multiple legal complications faced by well-known marks involving trans-border reputation. Some notable judgments are:

NR Dongre & Ors v. Whirlpool Corporation & An which explains that various forms of advertisements of the product, sale and purchase of the product, malicious adoption of the well-known mark are essential prerequisites to maintain a claim of passing off of a product which has multinational prominence. Milmet Oftho Industries & Ors v. Allergan Inc  opting universality principle observed that it is irrelevant whether the product is not being up for sale in India, for a claim of passing off if the parties were first in the world to adopt a particular mark. Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd of Gujarat  and ConAgra Inc. vs. McCain Food (Australia) Pty Ltd, the courts emphasized that it is sufficient if goodwill and reputation of the product in a particular country is evident and its sale is not necessarily to be proven in trans-border reputation claims. MAC Personal Care Pvt Ltd & Ors v. Laverana GMBH & Co KG & Or, gave prominence to information of a product available on the webpage’s as sufficient to show transborder reputation. The cases discussed above highlight that marketing and advertisements of products, the role of social media, dishonest adoption, acquired goodwill, better claim, and the title is sufficient to maintain a claim of passing off. And non-availability of the product in a country does not come in the way of establishing Trans-border reputation claims provided goodwill and reputation are evident.

TOYOTA JIDOSHA KABUSHIKI KAISHA vs. M/S PRIUS AUTO INDUSTRIES  LIMITED 

FACTS:

Plaintiffs manufactured the first commercially-available hybrid car in 1997 – 2001 called ‘Prius’ in the USA, United Kingdom, Australia, and Japan and registered the trademark in 1990. The plaintiff filed a permanent injunction against the defendant (Prius Auto Industries Ltd; registered its trademark in 2002-2003.) for using their well-known trademark dishonestly and argued that it was unjust and unjustified. The Single Chamber issued a judgment confirming the prior use and world reputation of the plaintiff’s product, ordered the defendants to pay damages, and issued a restraining order against the defendant preventing them from using the word Prius. The injunction against the respondent was deemed unjustified by the Division Bench and led to an appeal by the applicant to the Supreme Court. The Supreme Court relies on a decision of the U.K. Supreme Court on Starbucks v. British Sky Broadcasting where it endorsed the findings that a trader cannot complain of passing-off in a territory where he does not have any customers or anyone to whom he is in trade relations. Thus, applying the doctrine of territoriality versus the doctrine of universality, TOYOTA being well known internationally has not been able to prove the same in India without the goodwill and reputation enough to establish his case.

IMPACT

The ruling in the PRIUS will result in traders placing more emphasis on the scope of their products in India rather than on their international market awareness. Apart from the Classical Trinity test, that is to say, Misrepresentation, Damages, and Reputation laid down by Reckitt & Colman Ltd V Borden, Inc which is fundamental is proving passing off claims, the parties have many other essential elements to prove, such as the rationale for the trademark owners’ delay in protecting their trademark by applying to be registered in India. The ruling also raises the issue of whether the sale and purchase of a product in India would play a significant role in establishing cross-border reputation evidence as against decisions held in Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. Of Gujarat and ConAgra Inc. vs. McCain Food (Australia) Pty Ltd which pointed out that it is sufficient if the goodwill and reputation of the product in a particular country is obvious and the sale is not necessarily to be proven in trans-border reputation claim. As explained in the Paris Convention, Article 6, interested parties can apply for the prohibition of the use of trademarks that are confusingly similar to a well-known mark which further increases the threshold for parties to prove probable confusion between the users of a well-known trademark serving its purpose. Reaching local and domestic markets in India with a population of more than a billion people plays a very strong role in building goodwill, thus, traders have the burden not only to disseminate information about their products in certain states but also to expand and reach diverse local markets of different States having different languages, cultures, etc., which again affect evidence of goodwill. Thus, this decision paved the way for an examination of the territoriality of well-known trademarks while neglecting its worldwide reputation.

Author: Daksha Gowda S.N (intern) – a student of  Ramaiah College Of Law, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com  or at Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010