March 19, 2010 was probably a day Delhi-based automotive parts businessman Deepak Mangal will never forget. That day, he won a landmark ruling against Toyota Motor Corp, world's largest car maker, for the use of its brand name Prius.
Mangal's company Prius Auto Industries was incorporated in 2002 and ironically is in the business of supplying spare parts to consumers including those of Toyota.
The point of contention was the name of Mangal's firm that was the same as Toyota's largest-selling hybrid vehicle till date, one for which it has patents in many markets.
However, the car was launched in India only in 2010 and by then the registration of the brand rested with Mangal. It presented a curious puzzle to the Japanese company and on that fateful Friday, the Delhi High Court set aside an earlier December 2009, ex parte interim injunction order in favour of Toyota.
Ever hungry for a story where a David triumphs over a Goliath, the local media lapped it up. Mangal was all over the newsprint and airwaves over that March weekend. Toyota India had an unnecessary distraction in their hands. One that has continued to haunt for a good six years.
Earlier this week, the High Court delivered its final verdict in favour of Toyota ordering Mangal to give up using Prius as a trading name within two months.
Further the court also ordered Mangal to pay Rs 10 lakh as compensation for the loss of goodwill through the years. It is a sobering indictment for Mangal with the court quashing all his arguments.
The brand's existence since the mid 90s and its success world over with around 6 million cars were enough to convince the court that Mangal was aware of the brand and used its name in India only to benefit from it.
In an earlier order, the court had already retrained Mangal from using patented names like Toyota and Innova. That precedent may have helped the Japanese company's case.
"Negating the defendants' claims that the trademark had no reputation and goodwill in India, the court held that the reputation of the world's first hybrid car in India was not only stellar, but undeniable. This principle called the judicial notice principle of evidence law has rarely been put to use in trademark law in India. Hence, the Court held that PRIUS was a well-known trademark in India, warranting the highest form of protection," law firm Anand and Anand that represented Toyota in the case said in a detailed statement.
"This finding will have a far reaching impact since it is rare for unregistered trademarks to be bestowed with such recognition. The Court went on to hold that the Defendants failed to provide any justification for their reason for using PRIUS for their automobile-parts business. In absence of sound reasoning, the Court held it certain for the Defendants to use the trademark only to benefit from the extensive goodwill of Toyota PRIUS. Re-visiting trademark basics, the Court held that Toyota's first use of Prius in 1995 globally was sufficient to trump the defendants' Indian use since 2002," the statement adds.
Trademark and patent laws in India are relatively lax compared to the developed world and is still evolving in nature with each precedent.
The automobile and consumer durables industry are replete with examples where companies have been forced to alter the names of their global products in India as the trademark for it rested with somebody else.
Car market leader Maruti Suzuki for example had to change the name of its global small car Splash to Ritz in India as that name was already registered with Ford India. That the American company has not used the nameplate in India yet is equally ironical.
In the end, it took Toyota more than 7 years in India to call Prius its own, while Deepak Mangal's luck and two minutes of spotlight has finally run out.