RANJAN GOGOI,J. - (1.) The appellant (hereinafter referred to as the plaintiff) is an automobile manufacturer incorporated under the laws prevailing in Japan. The first respondent is a partnership firm engaged in the manufacture of automobile spare parts of which the second and third respondents are partners. The partnership firm of the respondents was constituted in the year 2001. The fourth respondent is a Private Limited Signature Not Verified Company in which the second and third respondents
(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 plaintiffs 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 plaintiffs registered trade marks thereby clearly constituting infringement of the said registered marks. Furthermore, according to the plaintiff, it had launched the worlds first commercial hybrid car called Prius in Japan in the year 1997 and in other countries like U.K., Australia, the U.S.A. etc. during the year 2000-2001. The plaintiff also claimed registration of the trade mark Prius in different countries as early as the year 1990 (in Japan) and eventually in other jurisdictions all over the globe. So far as India is concerned, however, the car was released in the year 2009 and until that point of time the plaintiff had not obtained registration of the mark Prius in the Indian jurisdiction. However, the car was displayed in the car shows in Delhi and Bangalore held in the year 2009 and it was formally launched in India in the year 2010. The plaintiff claimed that various advertisements and news reports about Prius and publications in car magazines in India and across the globe has made Prius a well known trade mark within the meaning of the said expression under Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as the Act). According to the plaintiff, in the year 2009, it discovered that the defendants not only had got the mark Prius registered way back in the year 2002-2003 for all types of auto parts and accessories but that they had also been using the said trade mark in carrying out their trade in such auto parts and accessories. The plaintiff, therefore, approached the Trade Mark Registry for cancellation of the registered trade mark of the defendants and also filed the suit in question on the ground that the defendants had been using the well known trade marks of the plaintiff without any authorization thereby taking an unfair advantage of the reputation and goodwill of the plaintiff which it had earned over a period of time across the globe. Accordingly the plaintiff prayed for: (i) Permanent injunction restraining the defendants from using the plaintiffs registered trade marks (TOYOTA, TOYOTA INNOVA and TOYOTA DEVICE); and (ii) Permanent injunction restraining the defendants from using the well known (unregistered) trade mark Prius so as to prevent passing off the defendants goods as that of the plaintiff. ;