Toyota Jidosha Kabushiki Kaisha vs Deepak Mangal & Others
2010 Latest Caselaw 1536 Del

     *   IN THE HIGH COURT OF DELHI AT NEW DELHI

%                      Judgment Reserved on: 03.3.2010
                      Judgment Delivered on: 19.3.2010


         + I.A.Nos.16776/2009, 110/2010, 1156/2010 &
         Crl.M.A.No.1032/2010 in CS(OS) No.2490/2009

TOYOTA JIDOSHA KABUSHIKI KAISHA
                                                .............Plaintiff
                      Through:   Mr.Pravin Anand & Ms.Vaishali
                                 Mittal, Advocates.


                      Versus

DEEPAK MANGAL & OTHERS          ..........Defendants
            Through: Mr. Sandeep Sethi, Mr.Deepak
                     Jain & Mr.Nikhil Bhalla,
                     Advocates for defendants no.1 to
                     3.



CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

1.       Whether the Reporters of local papers may be allowed to
         see the judgment?

2.       To be referred to the Reporter or not?               Yes

3.       Whether the judgment should be reported in the Digest?

                                                              Yes

INDERMEET KAUR, J.

1. I.A.No.16776/2009: This is an application filed by the

plaintiff under order 39 Rule 1 & 2 CPC. Vide ex parte order

dated 22.12.2009 defendants had been restrained from using

the trademark/trading style TOYOTA, the toyota device,

INNOVA and PRIUS in respect of auto parts and accessories or

any other allied goods or to do anything which may cause

confusion or deception amounting to passing off defendant‟s

goods as that of the plaintiff.

2. I.A.No.110/2010: This is an application under Order

XXXIX Rule 4 CPC filed by the defendant; he has prayed that the

ex parte order dated 22.12.2009 be set aside.

3. I.A.No.1156/2010: This is an application under Order 39

Rule 2A CPC filed by the plaintiff; it has been prayed that the

defendant in spite of the ex parte injunction operating against

him is continuing user of the trademarks of the plaintiff and is

also guilty of passing off of the goods of the plaintiff as that of

his own.

4. Crl.M.A.No.1032/2010: This is an application filed by the

plaintiff under Order 340 Cr.P.C. and supplements the prayers

made in the application under Order 39 Rule 2A CPC. The

affidavit filed by the defendant along with his application under

Order 39 Rule 4 CPC has made false statements and

misrepresentation; defendant is liable for perjury.

5. Pleadings are complete in all the aforestated applications.

By this common order the aforenoted applications are being

disposed of.

6. The cause of action in this suit is two-fold. Plaintiff has

firstly sought a permanent injunction on an action of

infringement of his registered trademark; the registered

trademarks being „TOYOTA‟ „toyota device‟ and „INNOVA‟.

Second relief is a relief of permanent injunction in a case of

passing off. Plaintiff is stated to be the prior user of the mark

„PRIUS‟, he admittedly has no registration in India of the mark

„PRIUS‟.

7. Case of plaintiff:

To substantiate his plea of passing off on the use of the

mark „PRIUS‟ plaintiff has submitted as follows:

i. Plaintiff company is a company registered in Japan,

dealing in the manufacture and sale of automobiles and

parts thereof. In the year 1994 plaintiff designed a concept

car with a hybrid engine; vehicle was named „PRIUS‟

derived from the Latin word „prior‟ or „before‟. The first

„PRIUS‟ model was sold in December, 1997 in Japan.

Official launch of „PRIUS‟ was in 2001. Plaintiff company

has revenues of over U.S. 220 billion dollars and

its products are widely marketed in India as also in over

80 other countries throughout the world. Plaintiff is the

registered proprietor of the trademark „PRIUS‟ in 28

countries commencing from the year 1990. Defendants are

using the mark „PRIUS‟ as an essential and leading portion

of their trading name and the same appears on its

products. Such a use by the defendant is without

authorization or permission and amounts to passing off

and dilution of the plaintiff‟s trademark „PRIUS‟ which was

adopted by the plaintiff in the year 1990. Defendants are

adversely affecting the plaintiff‟s good-will.

ii. Plaintiff has pleaded his sale figures in foreign

countries. The sale units of the car show that the sale

figures have climbed enormously from 300 units in 1997 to

2,85,600 units in 2008. In May 2008 the global figure had

reached the one million mark and crossed over to the 1.43

million units in August 2008. Extensive advertisements of

the said vehicle both in national and international

publications have been placed on record.

iii. "Business Week" publications of 15.12.1997,

21.1.1998, 27.04.1998, 27.07.1998, 13.11.2000 and again

on 27.11.2000 had as far back as in 1997 depicted the

status of this compact car and the efforts of the plaintiff

i.e. the „TOYOTA‟ company to promote this venture. On

31.07.1998 and again on 8.11.2001, the "New York Times"

had reported and widely publicized this hybrid vehicle and

the advance technology put forward by „TOYOTA‟ in it.

Print outs from the web sites www.toyoto.com and

www.toyotabharat.com, the Encyclopedia Britannica and

Wikipedia on line edition attributing the source of the

„PRIUS‟ car to the plaintiff have been emphasized to

substantiate this argument. Print outs and copies of

extracts from the books titled as the „PRIUS that shook the

World‟ and „The Toyota Way 14 Management Principles

from the World‟s Greatest Manufacturer‟ published in the

year 2009 have been filed.

iv. Not only in the international circles but in Indian dailies

as well the association of „PRIUS‟ with „TOYOTA‟ being the

first hybrid car introduced by „TOYOTA‟ company had

received a far ranging publicity. Attention has been drawn

to the articles in the "Economic Times" dated 27.03.1997

and again on 15.12.1997. The features of this car were

again publicized on 23.09.2002 in "The Hindu". On

4.8.2004 the "Times of India" and on 19.2.2006 "The

Indian Express" had widely advertised the hybrid

technology of the „PRIUS‟ a Toyota venture. Popular

Indian magazines like the "Auto Car", "Over Drive" and

"Zigwheels" have given information on the revolutionary

progress made by the Toyota Company and its efforts to

create a hybrid system encompassed in this vehicle i.e. the

PRIUS. This was in the year 2009.

iv. In these circumstances, it is impossible to believe that

the defendant was not aware of the association of „PRIUS‟

with the „TOYOTA‟ company; that „PRIUS‟ is essentially an

invented word and being the trademark of the plaintiff, the

use of the same name by the defendant was nothing but

passing off the good of the plaintiff as those of his own.

The plaintiff has acquired a worldwide reputation and

goodwill; this reputation has spilled over to India and the

Indian public is aware of the same entitling the plaintiff to

his relief.

8. The observations of the Apex Court in N.R. Dongre v.

Whirlpool Corporation (1996) 5 SCC 714 have been relied upon

which had inter-alia had held: -

"The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A

trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off if should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trademark. He cannot represent his own goods as the goods of somebody else".

9. It is submitted that the ratio of the decision clearly

establishes that the registration of the trademark "PRIUS‟ in

favour of the defendant is no defence in his favour; by using the

identical mark „PRIUS‟, the defendant is selling his goods which

are auto part accessories as the goods of the plaintiff; the

unwary and layman purchaser is bound to be confused and

deceived into believing that what he is purchasing i.e. the auto

parts or the auto part accessories are those of the plaintiff.

10. In Jolen Inc. v. Doctor and Company (2002)2 C.T.M.R. 6 it was observed as under:-

"In modern world, advertisements, the newspapers travel beyond the country where party is engaged in business through overseas editions or otherwise. Even if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a world where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men. Whenever persons travelling abroad for business or pleasure or any

other purpose viz. Study or temporary postings come across an article of a trade name of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient.

11. Reliance has been placed upon Pfizer Ireland

Pharmaceuticals v. Intas Pharmaceuticals and Anr., 2004(28)

PTC 456(Del) to support the submission that the worldwide

reputation of the trademark of the plaintiff „PRIUS‟ has been

established by his sale turnover.

12. An advertisement of the trademark by itself without the

existence of goods in the market is also to be considered as a use

of the trademark even if the plaintiff is not using or marketing

the goods under the same trademark. This fact would be

irrelevant as admittedly the trademark „PRIUS‟ has been used by

the plaintiff in the world market much prior in time to the

defendant. For this proposition, reliance has been placed on

Milmet Oftho Industries and Ors. v. Allergan Inc. 2004(28)

PTC585(SC).

13. In Ford Motor Company of Canada Limited & Anr. v. Ford

Services Centre MANU/DE/1774/2008, rejecting the plea of the

defendant that the plaintiff had no presence/business in India

when the defendant had adopted the mark/name, it was held that

the plaintiff was naturally affected when it spread its wings in

India and found the defendant to be trespassing. The plaintiff

was the registered owner of the trademark „Ford‟. Defendant

who was engaged in the business of service of all vehicles also

had a filling station/petrol pump including allied services of

cleaning/policing of cars, wind screen, sale of lubricants, grease

and other automobile components at the filling station. Plaintiff

was found entitled to the interim relief.

14. On the defence of delay as set up by the defendant reliance

has been placed upon Daimler Benz Aktiegesellschaft and Anr. v

Hybo Hindustan, AIR 1994 Delhi 239. In this case the use of the

name „BENZ‟ by the defendant was under consideration;

defendant was using the trademark „BENZ‟ for undergarments;

plaintiff sought an injunction in passing off action alleging that

the term „BENZ‟ was associated with the finest engineered cars

in the world and there was a clear evidence for grant of an

injunction in favour of the plaintiff; the delay in approaching the

Court could not justify the use of the trademark which was a

worldwide famous name. It was inter-alia held as follows: -

"In my view, the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else‟s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name „Benz‟ should be not objected to".

15. On the plea of infringement of the trade marks TOYOTA,

toyota device and INNOVA plaintiff has submitted as follows:

i- Admittedly the plaintiff is a prior user and registered

owner of the said trade marks in more than 40 countries.

Trademark TOYOTA has been registered with the plaintiff

in 21 different classes from the year 1989. The toyota

device has been registered with the plaintiff in five classes

since 1989; INNOVA is also a registered trademark of the

plaintiff since September 2003. Registration certificates

have been placed on record. Extracts from Trademark

Journal have also been filed to support this submission.

These registrations in the favour of the plaintiff of its

registered trademarks TOYOTA, toyota device and

INNOVA are prima facie evidence of the plaintiff exclusive

user of the same; this is clear from Section 28(1) of the

Trademark Act 1999 (hereinafter referred to as the Act).

ii. Defence of the defendant that his use of the said

name for quality description of the goods of the plaintiff is

negatived by the documents. Attention has been drawn to

the packaging of the defendants‟ products showing use of

the Trademark TOYOTA, the toyota device, INNOVA and

PRIUS along with the invoices, brochures and price list. It

is submitted that the extensive use of the said marks on

these documents of the defendant prima facie evidence his

malafide intent; i.e. of the infringement of the trademarks

of the plaintiff and passing off his goods to the innocent

purchaser as that of his own; they are definitely not meant

for a character identification of the goods as pleaded by

the defendant.

16. Case of defendant:

i. Defendant has refuted these arguments by setting up

a defence of delay, waiver and acquiescence on the part of

the plaintiff. Defendant had become the registered owner

of the trademark „PRIUS‟ in 2002 on an application which

he had filed in the year 2001. By neither applying for

registration of the trademark „PRIUS‟ in India nor

opposing the application of the defendant for the said

registration, the plaintiff having approached the Court

only in December, 2009 when the defendant has a

continuous long user of the said mark „PRIUS‟ since 2002,

the plaintiff has given up all claims, if any, on this mark.

ii. Defendant a partnership firm incorporated on

01.04.2001, had on 06.03.2002 applied for the registration

of the trademark „PRIUS‟ which had been certified in his

favour on 11.10.2006 with effect from13.03.2002.

Bills/invoices filed by the defendant show that the

defendant company is doing business under its business

name „Prius Auto Industries‟ with the trademark „PRIUS‟

since 2003. Purchase orders from various companies

which include reputed auto companies i.e. Mahindra &

Mahindra evidence the orders placed upon the defendant

for supply of auto accessories. Similar orders placed by

Hyundai Motors Company as also the General Motors India

Pvt. Ltd have also been placed on record. Purchase orders

of General Motors India Pvt. Ltd. dated 07.01.2005 show

orders of more than 3600 items on one date. Balance-

sheet of the defendant company from March, 2002 upto

2009 has also been filed showing the enhancement of its

sale figures and corresponding profits. The sale figures

have swelled from 1,34,799 in 2002 to 53,60,869 in the

year ending 31.3.2009.

iii. The „Over Drive‟ described as India‟s No.1 Car and

Bike Magazine had as early as April 2003 published the

advertisements of the defendant under its trade name

„PIRUS - the name you can trust‟. "Auto Car", a pioneer

publication of automobiles has also been placed on record.

Publications for the months of January and December,

2004 show that the defendant company had advertised its

goods under its aforesaid trademark. It is submitted that

these advertisements clearly show that the defendant is

the supplier of garnish covers and auto accessories for

various vehicles which have been depicted in the said

picture which include the Maruti 800, Indica, Santro Xing,

Zen, Omni and Toyota Qualis. These pictures indicate that

the defendant is informing his purchaser that he is selling

auto accessories which are suitable for the aforenoted

various vehicles which also include the Toyota group i.e.

the „Qualis‟ as well. The „toyota device‟ and the mention of

the vehicle „Quails‟ is only for the purpose of the

identification of the item and its suitability to the wide

range of vehicles mentioned thereunder; it is definitely not

with the intent to deceive the purchaser or to confuse him

into believing that he is selling auto accessories of

„TOYOTA‟. It is submitted that this publication is in fact, a

publication which has also been relied upon by the plaintiff

and has been filed by him in his list of documents. Plaintiff

at page 192 of his documents has filed copies of this

publication evidencing his submission that as the way back

as in the year 2001, the Toyota Motor Show had sought to

introduce a similar car in India in future. Defendant also

placed a certificate dated 12.04.2003 which is a

registration certificate of the fact evidencing his

participation in the Auto 2006 enterprise under his

business name.

iv. These submissions substantiate the fact that the

plaintiff was as early as April, 2003 aware of the fact that

the defendant was registered as "PRIUS"; his

advertisements in these leading magazines with

advertisements of the defendant on the following page

show the implicit knowledge of the plaintiff about this fact.

Plaintiff thus being aware in April 2003 of the presence of

the defendant trading under the trade name „PRIUS‟ and

coming to the court in December, 2009 without giving any

explanation either good or bad as the reasons for this

delay clearly show that he had acquiesced his claim; if

any, which in turn amounts to a waiver of his right. This

unexplainable delay for more than six years from the date

of his knowledge qualified further by the dishonest

concealment of this fact before this court and intentionally

not giving the date of the registration of the trade mark of

the defendant at the time when he obtained his ex-parte

injunction dislodges all sympathetic considerations for the

plaintiff.

v. The courts while dealing with an interim application

for grant of injunction is dealing with an application based

on the principals of equity and fairplay; plaintiff in spite of

clear knowledge of the fact that the defendant was

registered with the trademark „PRIUS‟ in the year 2002

has failed to disclose this crucial fact in his plaint and this

is obviously with a dishonest and malafide intent; the court

while granting him the ad interim injunction was not made

aware that the defendant was registered owner of „PRIUS‟

as way back as year 2002. All these factors disentitle the

plaintiff to any relief whatsoever.

vi. Defendant has placed reliance upon a judgment of

the Supreme Court reported as Amritdhara Pharmacy v.

Satyadeo Gutpa 1963 SC 449. On the argument of

acquiescence the Supreme Court noted with approval the

order of Registrar of trademarks wherein he had held that

the opponents had stood by and allowed the applicant to

develop his business from a small beginning to sell

medicines to the extent of about Rs.43,000/- in 1949. This

was an acquiescence on the part of the defendant.

vii. In Khoday Distilleries Limited(Now known as Khoday

India Limited) v. The Scotch Whisky Association and Ors.

AIR 2008 SC 2737 the long delay of 14 years in filing the

application for rectification had been held to be fatal as

causing immense prejudice to the appellant whose sale

figures in the meantime had gone up manifold.

viii. In a case of passing-off, it is not only the identity of

the trademark which has to be considered by the court

which is only one facet but the font, colour scheme, trade

dress, advertisement, pattern, pricing of the goods, the

nature of client are all other considerations which have to

be kept in mind by the court while passing an order in the

grant or non-grant of an injunction.

ix. The word „PRIUS‟ is contained in the English

dictionaries i.e. both in the Oxford Dictionary as also the

Webster‟s Third New International Dictionary; relevant

extracts of the said words from the respective dictionaries

have been placed on record; plaintiff cannot claim a

monopoly over the word „PRIUS‟; in no manner, can it be

said to be invented.

x. Provisions of Section 30(1)(b), (2)(d) and Section 35

of the Act have been relied upon to advance the argument

that Toyota, toyota device and INNOVA have been used by

the defendant only to demonstrate the compatibility of his

auto accessories in the use of these vehicles, besides these

vehicles names of the other vehicles i.e. Alto, Maruti Zen,

have also ben mentioned in his advertisements.

xi. Reliance on 2008(36) PTC 290(Del) Hawkins Cooker

Ltd v. M/s Murugan Enterprises has been made wherein

the court while upholding the contention of the defendant

on the use of the words „suitable for Hawkins Pressure

Cookers‟ in front of his products had refused an

injunction to the plaintiff.

17. Rejoinder submissions by plaintiff:

In rejoinder, these arguments have been refuted by the

learned counsel for the plaintiff. It is submitted that the heavy

reliance placed by the defendant on the advertisement in the

„Auto Car‟ journal does not in any manner establish that the

plaintiff was aware of the existence of the defendant. A

distinction has to be drawn between constructive knowledge and

actual knowledge; extracts from the Black‟s Law Dictionary has

been placed on record to substantiate this submission.

Defendant has also not pleaded that the plaintiff had any actual

knowledge of the presence of the defendant; it is humanly

impossible to imagine that while going through a magazine a

reader would examine each and every page in meticulous detail.

At best, he would see his own advertisement on the relevant

page. The submission of the defendant that the plaintiff had

acquired knowledge of the presence of the defendant in terms of

advertisements effected by him in the same magazine are mere

inferences and surmises; it is a wild imagination.

18. In Automatic Electric Limited v. R.K.Dhawan & Anr. 1999

PTC (19) 81 this court while dealing with a magazine

advertisement of the defendants published on its cover page had

held that this by itself could not be deduced as a knowledge on

the part of the plaintiff; such a presumption could not be made.

It is relevant to state that in this case the plaintiff was the

registered owner of the trade mark „DIMERSTAT‟. Plaintiff in

the instant case admittedly does not have any registration of

„PRIUS‟.

19. For the same proposition reliance has been placed on M/s

Hidesign v. M/s Hidesign Creations AIR 1991 Delhi 243. In this

case, it had been held that a single insertion of an

advertisement, and participation in an exhibition cannot be

considered to be such an activity which could lead to the

conclusion that the defendant had built up a reputation in the

field of goods sold by him. Plea of acquiescence raised by the

defendant had been rejected.

20. Plaintiff has also placed on record an affidavit of

Mr.B.K.Anand, a Chartered Accountant who after analyzing the

sale figures of the defendant has calculated that the cumulative

sale of the defendant for the period of 2002-2009 was Rs.3.54

crores only; cumulatively, the net profit, partner‟s salary and

interest on capital added up to be Rs.28.36 lakhs per annum. It

is stated that this is a miniscule figure and cannot by any stretch

of imagination be said to be a well-established business. The

publicity campaign of the defendant shows that he has spent

Rs.1.22 lakhs in this entire period. In these circumstances it

cannot be said that the business of the defendant is either well

established or has earned a distinct reputation; he is man of

little worth; in such a case where infringement is negligible the

proprietor of the mark is even not bound to commence legal

proceedings immediately after he becomes aware of the

infringement.

21. It is further submitted that the defendant has all along

been dishonest and such a dishonest user by the defendant calls

for the case to be thrown out at the first instance. The

explanation furnished by the defendant as to how he came

across the word „PRIUS‟ is blatantly false and borders on a level

of falsehood which has reached the heights of malice. It would

be an understatement to state that it is merely dishonest.

22. In Ciba Ltd. Basle Switzerland v. M.Ramalingam and

S.Subramaniam Trading in the name of Sought Indian

Manufacturing Co., Madura and Another AIR 1958 Bombay 56

(V 25 C 21 ) on the use of word „Cibol‟; the explanation

furnished by the defendant that „C‟ stands for cuts, „I‟ for itches,

„B‟ for boils and "OL‟ for oil, the court rejected this explanation

as patently untrue and dishonest; it was held that at the time

when the application for registration had been made by the

respondent they were not thinking of curing humanity of cuts,

itches and boils, but only of ring worms.

23. In Altiebolaget Volvo v. Volvo Steels Limited 1998 PTC

(18) (DB) the court on the use of word „Volvo‟ had held that

although this latin word means „re-rolling‟, „to roll up‟, „to roll

together‟ and „form by rolling‟. Yet it required to be appreciated

that hardly anyone in India knows Latin and it is extremely

improbable that anybody would translate the word „volvo‟ when

one hears or reads the same. Latin being almost a dead and

obscure language in India; the word „Volvo‟ for an average

Indian would not mean anything and as such the submission of

the plaintiff that the word „Volvo‟ is invented and a fancy word

was accepted.

24. In Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. (2004)

6 SCC 145 the doubtful explanation given by the respondent for

the choice of the word „Siffy‟ coupled with the reputation of the

appellant had led the court to conclude that the respondent was

seeking to cash in on the appellant‟s reputation as a provider of

service on the internet. It was held to be a dishonest adoption of

the appellant‟s trade name by the respondent.

25. In L.D.Malhotra Industries v. Ropi Industries ILR 1976

Delhi 278, the court had held that if the origin or the adoption of

the mark is tainted it cannot be said that its adoption by the

trader is honest and bona fide.

26. In Beiersdorf A.G. v. Ajay Sukhwani and Another 2009 (39)

PTC 38 (Del.) the court had inter alia held:

"...... ...... When there is dishonesty or fraud in the initial adoption of a trade name, plea of laches and delay normally is rejected. If the initial adoption itself is maldafide and tainted, it does not become valid and legal with passage of time. The defendants were also always conscious of their wrong and had continued to use the mark NIVEA on their own peril and risk. In these circumstances, plea of delay, laches and acquiescence cannot be accepted to reject claim for injunction."

27. Safety measures adopted by the company also have to be

borne in mind and the purchaser cannot be put to a risk

especially keeping in view the nature of the goods i.e. auto

parts. A copy of a purchase agreement evidencing the various

safety clauses, the quality assurances, the safety measures at

time of packing, marketing and documentation of the goods has

been highlighted by the plaintiff.

28. Heavy reliance placed upon by the plaintiff on the

judgment in the Hawkins Cookers Limited‟s case (supra) is

misplaced as the said judgment has been stayed by the Division

Bench in its order dated 13.5.2008.

29. In Newton Chambers & Co. vs. Neptune Waterproof

Paper Co.Ltd., Volume LII Reports of PDTM Cases No.12, while

considering the medicated preparation „IZAL‟ the court on

examining the manner in which the plaintiff and the defendant

had used the mark and the defendant‟s claim on the use of

„IZAL‟ not as a trade mark but only as right to inform the public

was disallowed.

30. In Cadila Healthcare Ltd. vs. Gujarat Cooperative Milk

Marketing Federation Ltd. & Ors. 2008 36 PTC 168 ( Del) on

the use of words „Sugar Free‟ by the defendant which was the

registered trade mark of the plaintiff, his free use of the same

was curtailed and the defendant was restrained from expression

of „sugar free‟ in the same font size which was conspicuously

bigger than its trade mark „Amul‟. He had been permitted to use

it only as catchy legend or a part of sentence to describe the

characteristic feature of its product.

31. Findings:

Trade name under challenge is „PRIUS‟. Plaintiff is

registered with the said mark in more than 40 countries. This is

with effect from the year 1990. Plaintiff has no registration of

the mark „PRIUS‟ in India. The defendant on the other hand is

the registered proprietor of the trademark „PRIUS‟ with effect

from March 2002. He had commenced his business in April

2001 under the firm name M/s Prius Auto Industries and he was

using the mark „PRIUS- the name you can trust‟ since then.

Defendant has been registered with this mark under class-12 for

auto parts and accessories but he is using it for auto accessories

only. He is making „Add-On Chrome Plated Accessories‟. There

are four accessories which are common to both the plaintiff and

the defendant i.e. the front grill chrome, back door garnish, the

fog lamp kit and the door handle.

32. Claim of the plaintiff on the mark „PRIUS‟ is a claim based

on the common law remedy of passing off. Foreign magazines

i.e. the "Business Week" and the "New York Times" have

advertised the products of the plaintiff i.e. the hybrid car

„PRIUS‟ from December 1997. These are, however, stray

publications only. The "New York Times" is priced at more than

Rs.300/-; "Business Week" has since been discontinued; these

magazines are not available off the rack as a reading material

for an average Indian. Publications of „PRIUS that shook the

world‟ and „The Toyota Way 14 Management Principles from the

Worlds Greatest Manufacturer‟ also fall in the same category;

they do not fall in the hands of an average Indian reader. In

Indian dailies the "Economic Times" in March 1997 had first

published an article on the features of this car i.e. the „PRIUS‟.

Thereafter another random publication in December 1997

followed by advertisements in the „Times of India‟ and „Indian

Express‟ dated 23.9.2002, 4.8.2004 and 19.2.2006 have been

relied upon. Only in 2009 the Auto Indian Magazines i.e. the

„Auto Car‟ and the „Zigwheel‟ had published information on this

vehicle.

33. In Gillette Company vs. A.K.Stationery 2001 PTC 573

(Del) while recognizing the principle of a trans-border

reputation and the spill over of its international reputation from

foreign lands to the Indian boundaries, it had been held that its

application would depend upon the facts and circumstances of

each case. In the instant case, apart from these stray and

sparse advertisements effected in the foreign magazines which

even otherwise is doubtful if they were available to the common

man, there appears to be little material on record to hold that an

Indian purchaser of chrome plated auto accessories had become

aware that „PRIUS‟ is a manufactured hybrid vehicle of the

Toyota group. Plaintiff in the said case was challenging the use

of the word „FLEXGRIP‟ by the defendant. Plaintiff was

admittedly not a registered owner of the said trademark in

India; an action by the plaintiff had been filed in German court

but no action assailing the use of the trademark by the

defendant in India had been filed prior to the filing of the suit.

Plaintiff alleging in the plaint that it was only in the last week of

April, 1999 he learnt about this use of trademark by the

defendant was clearly falsified by his own acts as he had way

back in 1997 filed a case in the German Court; this false

concealment by the plaintiff had worked against him.

34. In Sakalain Meghjee v. B.M.House (India) Ltd. 2002 (24)

PTC 207 (Del) the subject matter of the suit were two magazines

one published by the plaintiff and other by the defendant both

titled „Wedding Affair‟. Negativing the arguments of a trans-

boarder reputation in favour of the plaintiff as the foreign

magazine relied upon by the plaintiff was a publication of

London whereas the defendant was using the same in India

since 1999 and although the plaintiff was prior user of the

trademark since 1994 but being a foreign magazine the plaintiff

was to show that the said magazine was sold and known in India

for which there was no such document. Plaintiff was held not

entitled to the relief of an interim injunction.

35. In the instant case defendant on the other hand has

placed on record his registration certificate evidencing the

registration of this trademark „PRIUS‟ in his name with effect

from March 2002. This is prima facie proof of the exclusive use

of the said mark with effect from the said date in terms of

Section 28(2) of the said Act. The bills and invoices filed by him

further show that the defendant company is actively conducting

its business under the name PRIUS Auto Industries and using its

trade name „PRIUS‟ since then. The purchase orders from

reputed companies which include the General Motors,

Mahendra & Mahendra and Hyundai show that auto accessories

in bulk are being supplied to the manufacturers of the said

vehicles. Sale figures of the defendant have also risen and

swelled from a turnover of 1,34,799 in the year 2002 to

53,63,869 in the year 2009. Net profits have grown from

1,04,182 to 8,51,281 in the corresponding years. Business of

the defendant company may not be matching the turnover of the

plaintiff company but that is not a consideration for dealing with

the contentions raised in the present application.

36. The fact that the defendant had commenced its business

as early as 2002 became known to the defendant if not earlier

but definitely in April 2003. Publications in the "Auto Car" and

the "Over Drive" which are pioneer publications of automobiles

contain advertisements of the defendant under its trade name

„PRIUS‟. Argument of the plaintiff that this was only a

constructive knowledge and based on an inference is misplaced.

Plaintiff has relied upon the same auto magazine i.e. the "Auto

Car". Both parties are admittedly aware of this publication and

are advertising their products in the said journal. This is evident

from the publications for the months of December and January

2004.

37. In the Amrit Dhara Pharmacy case (supra) where the

plaintiff had stood as a silent spectator and allowed the

defendant to expand his business; the plea of acquiescence

raised by the defendant had been upheld. The Supreme Court

had quoted with approval a passage from the Halsbury‟s Laws of

England, Vol.32 (second edition) pages 659-675, paragraph 966

which inter alia reads as follows:

"If a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even be debarred from himself using such name or work. But even long user by another, if fraudulent, does not affect the plaintiff‟s right to a final injunction; on the other hand prompt warning or action before the defendant has built up any goodwill may materially assist the plaintiff‟s case."

38. In Khoday Distilleries Limited‟s case (supra) the Supreme

Court had quoted with the approval a passage from the Power

Control Appliances and Ors. v. Sumeet Research and Holdings

(1994) 1 SCR 708 on the aspect of acquiescence and had held as

follows:

"Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as involved in laches. In Harcourt v. White Sr. John Romilly said: „It is important to distinguish mere negligence and acquiescence.‟ Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson(J.G.) & Co. v. Boehm. The acquiescence must be such as to lead to the inference of a license sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill. "

39. In Ramdev Food Products(P) Ltd. v. Arvindbhai Rambhai

Patel and Ors.2006 (33) PTC 281 Supreme Court had held:

"Acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allowing another to invade the rights and spending money on it; (ii) it

is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name etc."

40. In Halsbury‟s Laws of England, Fourth Edition, Vol. 16

para 1505, it is stated: -

"Where a person has by words or conduct made to another a clear unequivocal representation of fact, either with knowledge of its falsehood or with the intention that it should be acted upon, or has so conducted himself that another would, as a reasonable man, understand that a certain representation of fact was intended to be acted on, and that the other has acted on the representation and thereby altered his position to his prejudice an estoppels arises against the party who made the representation, and he is not allowed to aver that the fact is otherwise than he represented it to be"

41. In Mc Donald‟s Corporation and Anr. v. Sterling‟s Mac

Food Represented by its Partner John Mathew ILR 2007 Kar

3346 the plaintiff had adopted its registered trade mark BIG

MAC in 1968 in the USA. He had been registered in India in

1993 but had started using the trademark in October, 1996.

Defendant on the other hand had been carrying on its business

since 1983; it was held that the plaintiff having sowed the

business much later could not find fault with the defendant in

using its trademark in its business.

42. Similar observations were made by a Coordinate Bench of

this court in Allied Blenders and Distillers P. Ltd. v. Paul P.John

and Ors. 2008 (38) PTC 568 (Del). In this case also the sale

figures of the product of the defendant had shown the growth of

the defendant in the market; the plaintiff was aware that the

defendant had entered the market which was established from

the opposition made by the defendant before the Excise

Commissioner. In these circumstances, the inordinate delay in

bringing the action had held the plaintiff disentitled to the

discretionary relief of an injunction.

43. In Procter & Gamble Company v. Satish Patel and Ors.

1997 (1) ARBLR 158 (Del) the trademark used by the plaintiff

and thereafter by the defendants was „SAFEGUARD‟ for

manufacture of an Ayurvedic Antiseptic cream. Defendant s had

been selling its products since 1984. Suit had been filed in

1995. The unexplained delay of 11 years by the plaintiff was

held fatal to the case of the plaintiff; plaintiff was held not

entitled to the discretionary relief of an injunction.

Acquiescence, waiver and delay had come in his way.

44. In Standard Electricals Limited v. Rocket Electricals and

Anr. 2004 (72) DRJ 794 the delay of 10 years on the part of the

plaintiff in filing his suit in an action of passing off on the use of

the trademark „Max Standard‟ used by the defendant; trademark

of the plaintiff being „MS standard‟, had disentitled the plaintiff

to relief.

45. Plaintiff has come to the court in December 2009. He has

pleaded knowledge with effect from 2009; this is negatived by

documentary evidence placed on record. It is impossible and

unimaginable to believe that the plaintiff who is a reputed and

worldwide established business name in automobiles and is

advertising and publishing its product in pioneer auto car

magazines including the „Auto Car‟ journal and the „Zigwheel‟

had no knowledge that the plaintiff was operating under the

trade name ‟PRIUS‟. Plaintiff has come to the court after a long

and inordinate delay i.e. a delay of more than seven years for

which there is no explanation. His submission that he learnt

about the defendant only in 2009 on a stray web search is

patently false.

46. Plaintiff has also not come clean to the court. Although in

his plaint he has averred that the defendant is the registered

owner of the trademark „PRIUS‟ yet he has failed to disclose the

date of the registration when the defendant was registered with

the said mark i.e. from March 2002. This would have been a

crucial factor weighing in the mind of the Court at the time

when the ex parte injunction was granted in his favour. In Old

Navy (ITM) Inc. and Ors., GAP (ITM) Inc. and Ors. and Banana

Republic (Itm) Inc. and Ors. 2007(99) DRJ 571 it was held that

non-disclosure of material facts would work to the prejudice of

such a non-disclosing party disentitling him to a relief in equity.

47. The word PRIUS also does not appear to be an invented

word. Apart from the fact that it finds mention in both the

english dictionaries i.e. the Oxford and the Webster‟s, the word

PRIUS itself is a suggestive of its meaning i.e. prior in time.

Explanation of the defendant that this was a „Pehla Prayas‟ i.e.

his first effort which had led him to use this word which he had

searched from a web search is fair and plausible. Defendant

cannot be charged with any dishonesty. PRIUS is a latin word

and although latin is not in great use or demand in India yet the

fact that this word finds mention in the english dictionary as also

the word itself being suggestive of its meaning the explanation

furnished by the defendant is reasonable. His use of the mark

PRIUS as an honest user is prima facie established. It is in fact

the plaintiff who had concealed the true picture from the Court;

it was incumbent upon him to have disclosed to the Court that

when he had come to the Court in the year 2009 defendant was

already registered with the said mark 7 years prior in time and

was carrying on business under the said name. Mere appending

of a document with the plaint is not by itself sufficient, specific

notice of the said fact should have been brought to the Court

which he did not do so. This was a dishonest concealment by

the plaintiff.

48. Delay, acquiescence and waiver clearly come in the way of

the plaintiff to obtain the discretionary relief prayed for by him.

He has from 2003 remained a silent spectator to the growth of

the defendant who has in relative terms scaled heights and has

grown from a mini business to a maxi business. His sale units

and net profits have climbed the rungs of the ladder of his

success.

49. The trade dress of the defendant is also distinctly

dissimilar. The packaging of the plaintiff‟s product is a bache

coloured rectangular carton having red writings describing its

product. Packaging of the defendant‟s carton is a blue coloured

square box having the writings in red colour. Not only is the

shape of the packaging material different but all visual

impressions and their getup including its colour scheme,

description of the words i.e. their font, size and alphabetical

array are also distinctly dissimilar. Prices of the articles are at

enormous variation. Whereas the articles of the plaintiff are

within the price range of Rs.2,500/- to Rs.23,503/-, the same

articles are priced by the defendant between a range of Rs.275/-

to a maximum outer limit of Rs.1600/-. Rs.1,600/- is the most

expensive auto accessory of the defendant for which the

corresponding price of the plaintiff is Rs.23,503/-. The class of

the purchaser of these auto accessories is not the low income

group; it is definitely the strata of the middle class and moreso

the higher group who has the financial capacity to buy a vehicle

in the segment of more than Rs.6 lacs. They are purchasing

auto accessories to decorate their vehicles which are already

equipped with the basic amenities/essential manufacturer

necessities. The purchaser is only adding accessories to his car.

He would most definitely be an educated and an intelligent

literate man who would be aware that the articles or the

accessories which he is purchasing are the accessories of the

defendant. Even applying the test of a man of average

intelligence and of imperfect recollection such a purchaser is

not likely to be confused or deceived that he would or could be

purchasing auto accessories manufactured by the plaintiff

company i.e. Toyota Group.

50. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna

Pharmaceutical Laboratories, 1965 (1) SC 737 the Supreme

Court while considering the registration of the words „Navaratna

Pharmacy‟ while rejecting the prayer of the plaintiff had inter

alia held as follows:

"... ... ... dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent‟s claim that the appellant has passed off his goods as those of the respondents. These matters which are of the essence of the cause of action for relief on the ground of passing of play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. ... ... "

51. In Khoday Distilleries Limited (supra) while dealing with

the nature of a purchaser of „Peter Scot‟ whisky the purchaser

being discerning and aware of the brand that he is purchasing of

a rich and wealthy class; keeping in view the nature of the

purchase i.e. scotch whisky, it was held that such a purchaser

was not likely to be easily confused or deceived merely by the

words „scot‟.

52. The defendant on the use of the registered marks Toyota,

the toyota device and the INNOVA is protected under the

saving clause of Section 30 which prevents user of a registered

trade mark for the purpose of identification of the goods; this of

course must be qualified by his honest user.

53. Section 30(1) (b) & 30(2)(d) of the said Act inter alia reads

as follows :

"30. Limits on effect of registered trade mark- (1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying foods or services as those of the proprietor provided the use-

.........................

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. .........................

(2) A registered trade mark is not infringed where- .........................

(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under his Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods of services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;................."

54. The European Court in an appeal against the order of a

Court of Appeal by the Gillette Group of Companies in the case

of Gillette Company vs. L.A.Laboratory 2005(37) FSR 808 had

inter alia given its finding as follows:-

1. Use of the trademark by a third party who was not its owner was necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constituted the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product. Thus the lawfulness or otherwise of the use of the trademark depended on the necessity of the use to indicate the intended purpose of a product.

.....................

3. The mere fact that third party used a trade mark of which it was not the owner in order to indicate the intended purpose of the product which it marketed did not necessarily mean that it was presenting it as being of the same quality as or having

equivalent properties to those of the product bearing the trade mark.

55. The conditions of an honest use within the meaning of

Article 1(1)(c) of the Directive 89/104 was held to be in

substance the expression of a duty to act fairly in relation to the

legitimate interests of the trade mark owner. The use is

dishonest only if:

"i. It is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;

ii. It affects the value of the trade mark by taking unfair advantage of its distinctive character or repute; iii. It entails the discrediting or denigration of that mark."

56. None of these have been established by the plaintiff. On

the other hand, it has been established by the defendant that the

use of the mark „PRIUS‟ by him is in accordance with the honest

practices in industrial and commercial matters. This user is not

taking any unfair advantage; his use is not detrimental to the

distinctive character or the repute of such a trademark; it does

not amount to an infringement/passing off. It is essentially for

describing the kind, quality and quantity of the goods which he

is proposing to sell and they are auto accessories for the various

vehicles mentioned in his packing carton and also in the

advertisements hosted by him. Packaging, getup, writing/marks

on the goods of the defendant are only indicative of the fact that

he is selling auto accessories which are suitable to a wide range

of vehicles including the „INNOVA‟ as also the „Qualis‟ which is

vehicle belonging to the Toyota Group. The mention of the word

„TOYOTA‟, „toyota device‟ and „INNOVA‟ on the said packaging

material are not the only vehicles mentioned in these

documents; they are in addition to the names of the other

vehicles i.e. Zen, Alto, they are further qualified by the words

"vehicle name and logo for item identification only" i.e. for the

description of the goods and can in no manner be said to be an

infringement upon the trademarks of the plaintiff. It is an honest

user in the commercial course of his trade.

57. Under Section 29 (2) of the said Act "a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses it in the course of trade .............. is likely to cause confusion on the part of the public or which is likely to have an association with the registered trademark."

Under sub-clause (4) (c) "a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which............ the registered trade mark has reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark."

The onus to prove that the mark of the plaintiff has been

infringed lies upon the plaintiff.

58. Section-30 lays down limitation on the provisions of

Section 29. A trademark is not infringed where it‟s use by

another is not unfair and is used only to indicate the kind, quality

and quantity of the goods. Further under Section 30(2)(d) the

use of the trade mark as in the instant case the use of „TOYOTA‟,

„toyota device‟ and „INNOVA‟ by the defendant in relation to his

goods i.e. the auto accessories is reasonably necessary to

indicate that the goods are adaptable and suited to the vehicles

mentioned therein i.e. the „TOYOTA‟ and „INNOVA‟; „the toyota

device‟ is also indicative of this purpose only. Protection under

the aforestated exception carved out is available to the

defendant. This is an indication by the defendant to show that

his product is compatible for use as an auto accessory in the

vehicles manufactured by the plaintiff i.e. „TOYOTA‟ and the

„INNOVA‟. Even otherwise the use of the word „INNOVA‟ is not

on all the packaging materials which has been produced in the

Court. It is only on the small rectangular carton where on either

side there is a sticker of „INNOVA‟. In some of the other cartons

which have been filed by the plaintiff a visual picture of the

„INNOVA‟ vehicle has been shown and the catch cover of

„PRIUS‟ has been described to be an accessory for the Toyota

INNOVA; this is qualified by the use of the words "vehicle name

and logo are used for items identification only". This is

sufficiently indicative of the fact that this catch cover is suitable

for the „INNOVA‟ vehicle. It is definitely not likely to deceive the

purchaser that he is purchasing an auto accessory manufactured

by the plaintiff group. Apart from the low pricing of the product

of the defendant in comparison with the price of the product of

the plaintiff the clarification given by the defendant that this

product is for an item identification only and the vehicle name

and the logo are used for this purpose only squarely covers the

case of the defendant in the exception carved out in Section 30

(2) (d) of the Act.

59. The judgments relied upon by the plaintiff are all

distinguishable on their own facts. In the Jolen Inc. case and

Ford Motors company case (supra), plaintiff had established its

reputation and goodwill in the country of its origin as also in

India. In the Milmet Oftho Industries case (supra) the Court

had in fact observed that multinational corporation who had no

intention of coming to India and introducing their products in

India should not be allowed to throttle an Indian company. In

the Daimler Benz case (supra) „BENZ‟ was registered in India

since 1951. In the N.R.Dongre case (supra) the plaintiff no.1 a

multinational incorporated in USA of whom plaintiff no.2 was its

licensee in India. The trade mark and trade name "Whirlpool"

had been registered in India in 1956; in 1978 the registration

lapsed on account of failure to apply for renewal; thereafter an

application for registration was filed in 1988. Defendant in

1986 applied for the registration of the trademark „Whirlpool‟.

The prior user of the mark „Whirlpool‟ claimed by the plaintiff

was upheld as he had a continuous registration in his name

right from 1956-1977 which had held him entitled to the interim

relief. It was only in the light of these facts that the plea of

trans-border reputation had been considered by the courts.

Word „PRIUS‟ finds its place in the english dictionary; not being

an invented word, it is clear that the judgments of Ciba Ltd., A.

Volvo & Satyam Infoway (supra) are also distinguishable.

60. Plaintiff is not entitled to the discretionary relief as prayed

for by him. He has not been able to make any prima facie case

in his favour for injuncting the defendant from using the

trademark „PRIUS‟ on which the defendant is admittedly the

registered proprietor and owner since the year 2002. Principles

of equity and fair play also do not find favour with the plaintiff.

The balance of convenience in fact lies in favour of the

defendant. If at this stage i.e. after business growth of more

than seven years the defendant is injuncted from using his trade

name under which he is selling his auto accessory products he

would suffer huge business loss which would probably bring to a

close not only his business reputation but all his legitimate

financial expectations. On the other hand no irreparable loss or

injury will be suffered by the plaintiff as admittedly the plaintiff

is not in the market; it has not launched the vehicle „PRIUS‟ on

the Indian roads. Plaintiff has himself conceded that certain

defects had been noted in the vehicle which had led to the

suspension of the production of the said vehicle.

61. The defendant is neither guilty of infringing the registered

trademark „TOYOTA‟, „toyota device‟ or „INNOVA‟. He is also

not guilty of the use of the word PRIUS in any manner which

would deceive a customer into believing that what he has

purchased are auto accessory parts of „PRIUS‟ which is an

associate group of the Toyota Company. Defendant is selling

auto accessories under his registered trade name „PRIUS‟ since

2002; his packaging material and trade dress are markedly

different as that of the plaintiff, his pricing is distinct, his colour

scheme and the size of the font of the alphabets are dissimilar,

shape of the packaging is different, class of purchasers is a

higher income group with a tested intelligence knowing and fully

able to understand the nature of the goods which he is

purchasing and thereby unlikely to be confused that he is

purchasing a product of the plaintiff. Defendant has grown in

business from 2001 to 2009 i.e. from a small stature to a big

business company operating through defendants no. 1 and 4. He

is advertising his products in leading car magazines and

participating in exhibition and auto shows of repute where other

pioneer manufacturer of automobiles i.e. the Toyota Group,

Hyundai Group, General Motors and Mahindra & Mahindra are

advertising their products and participating in such shows.

These reputed car manufacturer General Motors, Hyundai

Group and Mahindra & Mahihdra had placed bulk purchase

orders on the defendant who has been supplying auto

accessories to them to be fitted in their cars. The gradual

growth and reputation built up by the defendant cannot be

destroyed in a single stroke. Plaintiff has come to the court too

late in the day. He has not been able to explain that he gained

knowledge about the presence of the defendant in the market

only in October, 2009. Why he slept over the matter and idled

over it for such a long period? PRIUS is not the monopoly of the

plaintiff in India. It is not an invented word; the meaning of the

word can be deciphered from the word itself; meaning "prior to".

It finds mention in the english dictionary, how can it then be

termed as invented or coined? Association of this word and the

same having acquired a secondary meaning with the plaintiff

company has not been established. Plaintiff has given up all

claims if any on the use of the mark „PRIUS„ as he has knocked

the doors of the Court after an unexplainable delay of more than

six and half years. Plaintiff has also no business in India. He is

not recognized in India. His product has not come on the Indian

road. Production of his vehicle, due to technical reasons has

now been suspended. None of the ingredients for continuing of

the interim injunction in favour of the plaintiff arise. If

injunction is allowed to continue, the loss to be suffered by the

defendant would become irreparable as his business would come

to stand still. In these circumstances, balance of convenience is

also in favour of the defendant. The application of the defendant

under Order 39 Rule 4 CPC is accordingly allowed and the

interim ex parte injunction granted on 22.12.2009 is set aside.

62. I.A.No.16776/2009 and I.A.No.110/2010 are disposed off

accordingly.

63. Plaintiff has not produced any evidence to show that the

defendant has violated the order of this Court dated 22.12.2009;

ingredients of perjury have also not been established.

I.A.No.1156/2010 and I.A.No.1032/2010 are without any merit.

Dismissed.

(INDERMEET KAUR) JUDGE 19th MARCH, 2010 rb/dalip/nandan