Translation of literary work and copyright protection

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Section 14 of the Copyright Act (‘Act’) includes the exclusive right of authors to either make a translation of literary work, or authorize to make any translation or adaptation of the work, reproduce the work, issue copies, perform and make cinematographic films/sound recordings. Translations are secondary or derivative works. The derivative work becomes a second, separate work independent in form from the first, provided the transformation, modification or adaptation of the secondary work is substantial to be protected by copyright. However, if a copyright in the original work persists, only the author of the original copyrighted work has the right to authorize or grant a permission/license to the author of the derivative work i.e. a translation of the original work.

On February 8, the Bombay High Court passed an interim injunction to restrain distribution of a translated version of the Bhagavad Gita by Thomson Press.

History and Facts

Plaintiff, Bhaktivedanta Book Trust (“BBT’) holds the copyright in the translation of the Bhagwat Gita under the title “Srimad Bhagvatam” which is a reprinted version of the Bhagavad Gita. There are copyright registrations issued to the Plaintiff. Plaintiff had alleged Defendant, Thomson Press of reprinting a ‘classic’ version of Srimad Bhagvatam, a translation in which the Plaintiff held copyright. The Plaintiff's representative took photographs of the work being reprinted. The odd thing about this reprint is that it does not even claim to be an independent copyright. It is in fact, a reprint and a reproduction of the Plaintiff's work because it says it is a “classic edition of Srimad Bhagavatam”, which in reality is the Plaintiff's work. Defendant Thomson Press claimed having a license agreement for the publication of this work and several other works with the Plaintiff, which was not true and no such evidence of license agreement existed.

Order

The Bombay High Court had passed an interim order and stated that this order will operate till 22nd March 2017. The Court, in its order had ruled that the Defendants, by themselves, partners, distributors, dealers, stockists, servants, subordinates, representatives, agents, licensee, and all other persons claiming under them, be restrained from printing/publishing using any means such as reproducing, displaying, advertising, exporting, selling, offering to sell and promoting impugned works in any manner, which violates and infringes copyright of the plaintiff in their work of Srimad Bhagavatam.

Read the order here 

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India National Intellectual Property Awards 2017

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Though the Intellectual Property Rights in India was fully stable from a legal, judicial and administrative point of view, it was not until recent that the individuals and legal entities within India started taking it seriously. The importance of obtaining IPRs and enforcing them have caught on quickly with the Indians, in recent years. Indian IP offices have also undergone some major upgradation in terms of infrastructure, human resources, computerization of IP offices, databases and websites among others.

National IP Awards, intended to encourage creativity and innovation and management of intellectual property portfolio that influences the success of business in different industry segments, has only added to the growing repute of IPRs in India. The main purpose behind this is to make Indians recognize their own IPRs and also respect others’ IPRs.

Every year, the Office of Controller General of Patents, Designs and Trademarks (CGPDTM) recognizes individuals and enterprises who have done exceptionally well or achieved something great in the field of IPR, like creation and commercialization of IP and confers them with the National Intellectual Property (IP) Awards.

This year too, the Office of Controller General of Patents, Designs and Trademarks (CGPDTM), in association with the Confederation of Indian Industry (CII), will be presenting the awards at an event in Delhi on the 26th of April, coinciding with the World IP Day.

There has been a total of ten (10) categories included this year in the national intellectual property awards programme. They are as follows:

  1. Top Individual for Patents & Commercialization
  2. Top Indian Academic institution for Patents & Commercialization
  3. Top R & D Institution/Organization for Patents & Commercialization
  4. Top Public Limited Company/Private Limited Company for Patents & Commercialization in India:

4(a). Indian owned company

4(b). MNC/Foreign owned company

  1. Top Indian MSME for Patents & Commercialization:
  2. Top Start-up for IP Commercialization
  3. Top Indian Company/Organization for Designs and Commercialization
  4. Top Indian Company for creating Global Brand (s)
  5. Top Individual/organization for Best facilitation of Registration of GI and Promotion of Registered GI in India.
  6. Best Police Unit (Police District/Zone in a commissionerate) for Enforcement of IP in the Country.

Each award (including categories under 4 (a) and 4 (b) separately) will carry a cash prize of Rs. 1,00,000/- and citation.

The World Intellectual Property Organization (WIPO), under the WIPO Awards Program, has proposed the idea to link three annual awards with certain categories of the National IP Awards 2017. The WIPO Awards are as follows:

1.   WIPO Medal for Inventors – Top Individual for Patents & Commercialization

2.   WIPO IP Enterprises Trophy – Top Indian Public Limited Company/ Private Limited Company

3.   WIPO Users Trophy – Top Indian Company for creating Global brand

The number of Intellectual Property Rights registered/granted will not be the sole basis for zeroing in on the awardees. Instead, the utilization of these IPRs as a strategic tool in commerce and industry, along with the contribution they bring to the society, will be taken into consideration as well. Performance in the last 3 calendar years, i.e., 2014-16 will be taken into consideration for the purpose of National IP Awards 2017.

The following parameters will be considered for selection:

1.   Number of IPRs filed/granted/registered.

2.   Growth in IPR portfolio in the last three calendar years.

3.   Leveraging of IPRs for achieving commercial goals (manufacturing, licensing, launching of new products/processes associated with granted/registered IPRs marketing / export etc.)

4.   Enforcement of IPR by police, actions such as IPR- related FIR filed, raids/seizures made, and charge-sheets filed for IP infringements.

5.   In case of Top Indian Company for creating Global Brand(s), brand value, turnover outside India under the brand where it has worked, number of such global brands and global acceptance

An applicant, to be eligible for an IP Award, should be either an Individual or a Legal Entity. MSME, Startups, major industries, firms and societies registered in India, Indian subsidiary of a transnational corporation, Indian Academic institutions and R&D institutions registered as a legal entity in India are also eligible for the IP Awards.

Awardees will be selected by a jury comprising IP professionals, industry association, academia, R&D professionals and representative(s) of the Government of India. Also, in case of any specific issue, the jury reserves the right to co-opt a suitable person as a special invitee.

The details to all of this can be found here

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Delhi High Court: Swiss Pharma cannot hang on to its drug

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Trastuzumab, a drug to treat breast cancer, was developed by Roche. The court heard pleas from Roche and Indian pharma firms Biocon, Mylan and Reliance Life Sciences, on the issue of the sale and marketing of biosimilar drugs based on Trastuzumab.

Roche argued that it spent years of research and funding in developing Trastuzumab and conducting related tests and studies. Roche accused the Indian firms of including a copy of its research and studies in the package of their drugs. Roche further asserted that those companies should not be allowed to name their medicine as Trastuzumab, and they need to call it Biocon’s Trastuzumab or Mylan’s Trastuzumab.

Biocon and Mylan responded by saying that the Drugs Controller General of India (DCGI) asked them to quote the clinical data of Roche’s Trastuzumab in their respective package inserts. Biocon also stated that it manufactures the medicine for both companies, wherein Biocon sells it under the name Canmab and Mylan sells it under the name of Hertraz.

However, as Roche claimed that Biocon and Mylan’s package inserts were not approved by the DCGI, the bench asked to check and inform the court regarding the DCGI’s approval. Further, the bench was of the opinion that since the biosimilar medicine was made through an abbreviated process, companies like Biocon and Mylan need not go through the entire testing process again. Further, in a hearing on March 2nd, the DCGI confirmed that the medicines and package inserts of Biocon and Mylan were granted approval. Hence, the court told Roche that it cannot have a say against the sale and marketing of the biosimilar drugs once the DCGI has given an approval.

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Adding inventors to or removing inventors from an India Patent Application

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Listing correct inventors in a patent application is important. An incorrect listing may not only lead to emotional issues, but also loss of rights, among other issues. Incorrect listing may have occurred by omitting names of individuals, who should have been named as inventors in the patent application. On the other hand, incorrect listing may have occurred by including names of individuals, who should not have been named as inventors in the patent application. In any case, such lapse can be set right. 

Procedure for adding an inventor to a patent application

Section 28 of The Patents Act, 1970 deals with addition of inventor(s) to a patent application, and the corresponding rules are 66, 67, 68 and 69 of The Patent Rules, 2003. A request to add an inventor to the patent application can be made by any of the below listed entities, based on the circumstances.

  1. Applicant for the patent
  2. Applicant for the patent and the person who has to be added as the inventor
  3. The person who wishes be added as the inventor

1. Request by applicant for the patent

The applicant for the patent can make a request to the Controller to add a person as one of the inventors, if the person who has to be added as the inventor is also the applicant or is at least one of the applicants.

As best practice, it would be wise to submit to the Controller, consent of all the applicants, in case of joint applicants.

2. Request by applicant for the patent and the person who has to be added as the inventor

The applicant and the person who has to be added as one of the inventors can make a request to the Controller, if the person who has to be added as the inventor is neither the applicant nor one of the joint applicants.

3. Request by the person who wishes to be added as the inventor

The person who wishes to be added as the inventor can make a request by himself. Such a scenario might occur when the person in not an applicant for patent on record, and the applicant on record is not willing to make the request to the Controller. On receiving a request of this nature, the Controller will give notice of the claim and the statement made by the person to every applicant for the patent and to any other person whom the Controller may consider to be interested. The Controller may, if required, provide opportunity to be heard to any person to whom he had sent the notice, before deciding.  

Procedure for deleting an inventor from a patent or patent application

Section 28(7) of The Patents Act, 1970 deals with deletion of inventor(s) from a patent application, and the corresponding rule is 68 of The Patent Rules, 2003. Under Section 28(7), only those who were added as inventors as a consequence of the request(s) discussed earlier, can be removed. Such a request may be made by any person, and at any time. On receiving a request to certify that such a person should not have been named as the inventor, the Controller may, if required, provide opportunity to be heard to any person whom he thinks might be interested, before taking a decision.

The above discussed requests to add or remove an inventor should be made in Form 8 with the prescribed fee.

It shall be noted that, the Act does not have exclusive provisions for removing inventors who were named while filing the patent application. However, a petition can be filed by relying on sections relevant to inventorship to request the Controller to remove an inventor who was named at the time of filing the patent application.

Apart from addition or deletion of inventors, correction of names of inventors who are already on record is also possible. Such corrections may be required because of clerical errors while filing the patent application, or by reason of change in a person’s name. Request to make such corrections should be made using Form 13 with the prescribed fee. 

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Adding or removing applicants from an Indian patent application

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Organizations often face situations wherein the names of applicants may need to be added or removed from an Indian patent application. The Indian Patent Act envisages addition or removal of applicants to occur broadly in three scenarios. The scenarios are dealt under Section 20 (1), (4) and (5), and the corresponding Rules are 34(1), 35(1), 36(1).

Section 20(1) and Rule 34 deal with a scenario wherein one or more applicants need to be added or removed by virtue of an assignment, an agreement or operation of law. The assignment or agreement has to be made in writing by the existing applicant of the patent. Further, in case there are two or more joint applicants currently on file, then consent of each of the joint applicants is required. In case a new applicant is being added, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to the rights of the existing applicant. Alternatively, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to an undivided share in the patent. The request for addition or removal of applicant should be accompanied with original assignment, agreement, an official copy or notarized copy for inspection by the Controller. The Controller may, at his discretion request further proof of title or written consent.

Moving on, Section 20(4) and Rule 35 deal with a situation wherein an applicant, among joint applicants, dies before the patent is granted. The surviving applicant(s) may request the application to proceed in their name alone. However, the application can proceed in the name of the surviving applicant(s) only if there is consent, to that effect, given by the legal representative of the deceased. The request must be accompanied by proof of death of the joint applicant and consent by the legal representative of the deceased. Additionally, documentary evidence to prove that the person giving the consent is the legal representative of the deceased applicant has to be provided. The documentary evidence can be in the form of a certified copy of the will of the deceased applicant or letters of administration in respect of the estate of the deceased applicant.

Section 20(5) and Rule 36 deal with dispute arising between joint applicants of a patent. The dispute may be related to whether the application should be proceeded with or the manner in which the application should be proceeded with. In case of such disputes, any of the applicants can make a request to the Controller seeking direction. The request to the Controller must be accompanied by a statement which fully discloses the facts which the applicant making the request relies on. The request must also set out the outcome or direction sought by the applicant. The Controller will send a copy of the application and the statement to every other joint applicant giving them an opportunity to respond. The Controller will also give all the concerned parties an opportunity to be heard, and then give direction as he thinks fit. The Controller may give directions to enable the application to proceed in the name of one or more of the parties, or to regulate further proceedings as needed.

An application to the Controller to add or remove applicants under the provision of any of the above discussed sections should be made in FORM 6 with the prescribed fee. The form is used for providing details such as, names of applicant(s) to be added or removed, names of original applicants and reason for change, among other details that are to be entered.

Form 6 may also be used to add or remove an applicant from an Indian national phase application where change in applicant has occurred after the international filing date, and the change is not reflected in a notification from the International Bureau (Form PCT/IB/306).

It shall be noted that adding or removing an applicant is not the same as changing or correcting the name of an applicant. In case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13.

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Place of business: How important is it for instituting a suit of infringement?

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In an order dated 22nd July, 2016, a single Judge of the Delhi High Court delivered his Judgement over a suit of infringement of trademark. The single Judge believed that the Court had territorial jurisdiction to entertain the suit. However, the alleged act of infringement took place in Kolkata (where the Defendant’s Office is located), while the Plaintiffs do not even have an Indian presence. A permitted user of the Plaintiff’s trademark has a presence in Delhi. In light on this, can the permitted user institute the suit? Does the Delhi Court have the authority to provide judgement on this matter? Let’s see.

History and Facts

This dispute arose when US based Exxon Mobil Corporation (“EMC”) alleged infringement of its registered trademark “Exxon” by Kolkata based “Exon Engineering Corporation” (“EEC”), and filed an action before the Delhi High Court. Exxon Mobil Corporation (Plaintiff 1), does not have an office in India. However, a wholly owned subsidiary (Plaintiff 2) of Exxon Mobil Corporation has an office in Delhi and is a permitted user of the trademark “Exxon”. Kolkata-based Exon Engineering Corporation (Defendant) is the registered proprietor of the trademark “Exon Engineering Corporation” and has an office in Kolkata. Section 134(2) of the Act empowers a plaintiff to institute a suit for trademark infringement at any place where its office is located. The plaintiffs here contended that the Delhi High Court was vested with the jurisdiction to adjudicate upon the matter as Plaintiff 2, being the permitted user of the trademark, has its presence in Delhi. On the other hand, the Defendant argued that it was carrying on business in Kolkata, so a court in Delhi would not have jurisdiction to adjudicate upon the matter. Further, the Defendant argued that in light of Section 53 of the Act, Plaintiff 2, by being a permitted user, could not institute the suit. Further, the Defendant was of the opinion that Section 134(2) could not come to the aid of Plaintiff 2, since Plaintiff 1 does not have an office in India.

The judge held that the explanation to Section 134(2) of the Act allowed this, and ruled that a “permitted user” would be empowered to institute a suit. The judge based this judgement on a case which involved an interpretation of Section 62(2) of the Copyright Act. The judge also accepted Plaintiff 2’s contention that Plaintiff 1 would be deemed to use the mark in Delhi owing to its use by its wholly owned subsidiary. The Defendant appealed before the Division Bench against this judgment, resulting in the judgment under consideration.

Division Bench Ruling

The Division Bench first looked into whether or not Plaintiff 2 could institute a suit in this case. The Division Bench held that Section 53 of the Trademarks Act clearly prohibits a permitted user from instituting a suit for infringement. The Bench pointed out the difference between a permitted user and a registered user and how, under the provisions of the Trademarks Act, a registered user and not a permitted user of a trademark can institute a suit.  Hence, the Bench ruled that Plaintiff 2 was not legally empowered to institute the suit.

Next, the Court went on to decide whether the Delhi High Court had jurisdiction to adjudicate upon the suit. For this, the Bench relied on the case of Ultra Home Construction vs. Purushottam Kumar Chaubey. The Bench assumed Plaintiff 2’s office in Delhi to be a subordinate (branch) office. Further, referring to Sections 134(2) and 62(2) of the Trademarks Act, 1999, the Bench contemplated that when the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place, the Plaintiffs could institute a suit at the place of its principal office but not at the place of its subordinate office. The Bench then ruled that the Plaintiff 1's principal office is in USA and its assumed subordinate office is in New Delhi, but the cause of action has arisen in Kolkata. Unfortunately, the place where the plaintiff No.1 could sue under Section 134(2) would then be in USA which is not available to it because Section 134(2) is in respect of the suits filed in India alone. Consequently, the Delhi Court would not have territorial jurisdiction to entertain the present suit. Therefore, the Bench reversed the single judge’s decision and rejected the plaint for lack of jurisdiction.

The court order can be found here

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Delhi High Court suspends ban on Ajanta for export of Bayer’s Patented Drug

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In a recent court order, Delhi High Court gave a setback to German company Bayer, by lifting a suspension order that restrained an Indian drug company, Ajanta, from producing and selling overseas a generic version of Bayer’s erectile dysfunction drug, vardenafil.

The patents filed by Bayer, that form the basis of the case, were originally applied for in 1998, after which they came into effect from 2003 for one salt of the drug and since 2008 for another. Ajanta had appealed to lift the stay order by claiming that Bayer was not manufacturing the drug in India and that Bayer’s interest could be protected by payment of royalty to Bayer consisting of some percentage of the amount gained by Ajanta from the exports. In fact, Ajanta also agreed to provide a track of its records regarding sales and profit received from exports of Bayer’s drug.

In furtherance, Bayer accepted that it has not exploited its drug commercially in India. Based on all this, the court said "In these circumstances, though the non-user cannot be set up as a defence to the suit for infringement, upon the self-interest of the patentee being balanced against the larger public interest, equity demands that absolute or unconditional temporary injunction be not granted inasmuch as it would result in the manufacturing activity and the resultant exports of the impugned products of the defendant being ground to a halt resulting possibly in not only loss of employment but revenue to the State as well.”

The court also indicated that the stay order was suspended subject to the condition that Ajanta shall provide the court with all records of the production and export of the drug on a quarterly basis. In addition, Ajanta cannot distribute or sell the drug in India until a patent infringement lawsuit that was filed by Bayer is resolved. Thus, the application by Ajanta was disposed of and the infringement suit by Bayer remains due for hearing.

Read the court order here.

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Delhi High Court settles Domain Mark Dispute For Thoughtworks

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Nowadays, many companies are setting up websites to create an online presence. However, quite often, a company looking to use its trademark as a domain name will find that another entity owns/uses that domain name. In such cases, complaints can be filed at the Indian Domain Name Dispute Resolution Policy (INDRP), wherein an arbitrator resolves such disputes.

The same incident occurred with ThoughtWorks, a U.S-based company founded in 1993. ThoughtWorks claimed that in March, 2015, they became aware the domain name ‘ThoughtWOrks.in’ was registered by another company, Super Software, when a ThoughtWorks analyst accessed Super Software’s website after mistaking it to be ThoughtWorks Inc.’s website. Subsequently, ThoughtWorks had filed an INDRP complaint in order to recover the domain name ‘thoughtworks.in’ from. However, in their defence, Super Software claimed that the ‘ThoughtWorks’ trademark was generic in nature, and hence they did not infringe on any existing trademark or copyright. Further, Super Software pointed out that it had registered the domain prior to the complaint and that ThoughtWorks had not registered that domain even though it had been available for a long time.

In this case, the INDRP Arbitrator denied ThoughtWorks’ complaint due to various reasons. The Arbitrator stated that ThoughtWorks was not able to provide sufficient evidence regarding its incorporation and the registration of its trademarks. Further, the Arbitrator mentioned that the addresses of the entities that owned the trademarks were different. The Arbitrator also mentioned that ThoughtWorks had not objected when Super Software registered the domain of ‘thoughtworks.in’.

ThoughtWorks challenged the arbitral award, and won the case when it was brought before the Delhi High Court. The Delhi High Court found that the Arbitrator’s proceedings were in violation of the principles of natural justice. Further, the Delhi High Court reversed the decision of the Arbitrator by highlighting the fact that since the domain mark included the entire name of the US Company, it is obvious that the trademark most definitively belonged to ThoughtWorks, and that it was deceptively similar to the company’s name.

The case file of ThoughtWorks Inc vs Super Software Pvt Ltd. & Anr can be found here

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Proactive steps taken by the Indian Patent office in engaging and addressing issues raised by stakeholders

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The Controller General of Patents, Designs & Trademarks (CGPDTM) Office had called for a stakeholders Meeting on the 14th of December, 2016. The details of this meeting were published on the website on January 11, 2017.

There were a quite a few issues raised and suggestions received from the stakeholders at the meeting. Subsequently, the CGPDTM gave clarity on the steps being taken to resolve some of the issues and the improvement of some of the processes.

Some of the details are as follows:

Responding to a query on attorneys having to pay an exorbitant fee for their address change, CGPDTM responded saying that the prescribed fee had to be paid for changing the address. CGPDTM added saying that provision has been made for providing an additional email address.

Responding to another query on patent applications being abandoned even after filing a timely response, CGPDTM acknowledged the fault saying that the electronic entry of the timely response was recorded under incorrect category and that necessary action is being taken. CGPDTM also said that the wrongfully abandoned applications have been recalled.

Another important query was with regards to the inconsistency at the Delhi Patent office regarding the implementation of the CRI related guidelines. The CGPDTM said that a committee had been already formed by the Government to look into the issue and that the committee has already submitted their report.

Also, an enquiry was made at the meeting in relation to the newly introduced three-month extension in Patents Rules. The query was regarding whether the extension may be taken thrice for one month each or whether it should be taken at once for 3 months. The CGPDTM clarified that a single request for an extension, subject to a maximum of three months, is expected as per the rules.

Responding to the allegations of Controllers, in some instances, not examining the divisional application if the parent application has been rejected or withdrawn, the CGPDTM said that necessary directions are being issued to examine a divisional application in accordance with the Patents (Amendment) Rules, 2016.

The CGPDTM were also asked to explain their official stand on PPH (Patent Prosecution Highway), to which the CGPDTM responded by saying that the Government, at present, is not considering it.

The stakeholders were of the opinion that a notice period of two weeks for a hearing was too short. In response, the CGPDTM stated that instructions have been issued to increase the hearing notice, probably to 4 weeks.

Regarding a query related to expediting the examination of applications related to volatile technologies which have a short life, the CGPDTM said that technology-based expedited examination was not possible as per the existing rules.

Details of the issues and responses discussed at the meeting can be found here

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Huge relief for Prius Auto Industries – Judgement on trademark infringement given against Toyota motor corp.

We had earlier written on how Toyota Motor Corp. won case against Prius Auto Industries for the infringement of trademark “Prius”. Prius Auto Industries, a Delhi based automotive accessories company, were found guilty of using Toyota Motor Corp.’s “well-known” trademarks. The single-judge Bench of Justice Manmohan, on July 8, 2016, had given an order preventing Prius Auto Industries from manufacturing, selling or using the Toyota Motor Corp.’s trademarks such as “Prius”, “Toyota” and “Innova”. In addition to this, the court had also directed Prius Auto Industries to pay INR 10 lakhs, to Toyota Motor Corp. as compensation for trademark infringement.

Aggrieved, Prius Auto Industries appealed against the judgement. The appeal was heard by justice Pradeep Nandrajog of the division bench of the Delhi High Court, on 23rd December 2016. Upon hearing both the parties, judgement was given favouring Prius Auto Industries saying that the use of “Prius” by Prius Auto Industries does not infringe on Japanese car maker Toyota Motor Corp.’s trademarks.

Prius Auto Industries had appealed saying that trademarks should be determined in context to a similar class of goods and in a relevant geographical market. Accepting Prius Auto Industries arguments, Delhi high court gave judgement in favour of Prius Auto Industries that,

“Toyota is a big company. It has had a presence in India for over two decades when the suit was filed. It was well entrenched in the Indian market in the year 2001. Obviously no consumer of Toyota car or buyer of an auto part sold by Toyota was ever confused by the appellants selling their products under the trade mark Prius, for if this was so, in ten years somebody would have complained to Toyota or at least would have made known said fact to Toyota.”

The judgement also quashed Toyota Motor Corp.’s argument that Prius Auto Industries had been benefited from the trans-border reputation. Toyota Motor Corp. relied on reports in the Indian newspapers, that published news about Toyota’s new hybrid car “Pirus” in Japan in 1997. The Court, however, held that,

“Though published in a newspaper, the publication is in the nature of an article written and thus the weight of its evidentiary worth in the context of an explosive news on a fact of history being made known to the public would be minimal.”

Regarding trans-border reputation, the judgment states,

“The weight of the evidence led by Toyota would be that it has simply established that when it launched the hybrid car Prius in the market in Japan in 1997, the event was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. The law on trans-border reputation requires two facts to be established. The first is reputation in foreign jurisdictions of the trade mark. The second is knowledge of the trade mark due to its reputation abroad in a domestic jurisdiction.”

“There being no advertisements published by Toyota for its car Prius in India and coupled with the fact that not all cars marketed under different trade marks by Toyota acquire a global reputation and much less in India, internet penetration as of the year 2001, being low in India, the weight of the evidence leans in favour of the view that by April 2001 Toyota had not established a global reputation in its trade mark Prius which had entered India.”

Read the full division bench judgement here.

Read the single judge judgment here.

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