Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. (2017)
Quick Summary
Toyota said Prius Auto was passing off by using the word “Prius”. Lower courts partly agreed for “Toyota” and “Innova”, but there was a dispute about “Prius”. The Supreme Court of India explained that if the goods/services are not similar and consumers are not confused, it is not infringement. On these facts, the “Prius” use did not amount to infringement.
Issues
- Did Prius Auto pass off its goods by using the mark “Prius”?
- Are the goods/services similar in purpose, function, and target market?
- Is there a likelihood of confusion among average Indian consumers?
Rules
- Using a registered mark on dissimilar goods/services is generally not infringement.
- Courts compare purpose, function, and target market to judge similarity.
- Likelihood of confusion is key: would an ordinary consumer link the two sources?
- Public interest and fair competition also matter in remedies.
Facts (Timeline)
Arguments
Appellant: Toyota
- “Prius” is their mark linked to Toyota’s hybrid car since 1997.
- Use by Prius Auto dilutes goodwill and may confuse buyers.
- Registration gap should not beat prior use and reputation.
Respondent: Prius Auto
- Registered “Prius” locally in 2002; acts in good faith.
- Goods and customers are different; no real confusion.
- Use is on dissimilar products; not infringement.
Judgment
Held: Using a registered mark on dissimilar goods is not infringement. The Court looked at purpose, function, target market, and whether an ordinary consumer would be confused. On the record, the “Prius” use did not cause actionable confusion.
- Similarity: Products not similar → weighs against infringement.
- Confusion: No proven likelihood of confusion in the market.
- Public Interest: Remedies must also respect fair competition.
Ratio Decidendi
Trademark protection tracks similarity of goods/services and consumer confusion. Where the goods are dissimilar and confusion is not shown, courts will not stop the use merely because the word is famous.
Why It Matters
- Confirms that fame alone is not enough; show confusion in the relevant Indian market.
- Shows limits of rights across non-similar product categories.
- Guides brand strategy: secure registrations early across key classes.
Key Takeaways
Different purpose/market means lower risk of infringement.
Prove likely confusion of an ordinary buyer.
Remedies balance rights with competition.
File in the right classes and markets in time.
Mnemonic + 3-Step Hook
Mnemonic: “S-C-P” — Similarity, Confusion, Public interest.
- Check Similarity: Compare purpose, function, target market.
- Test Confusion: Would average buyers likely mix up sources?
- Balance Policy: Protect goodwill without choking fair trade.
IRAC Outline
| Issue | Rule | Application | Conclusion |
|---|---|---|---|
| Is Prius Auto’s use of “Prius” passing off? | Dissimilar goods ≠ infringement; assess similarity + confusion. | Goods not shown similar; no persuasive evidence of confusion. | No passing off. Use not restrained on these facts. |
Glossary
- Passing Off
- Misleading the public into believing your goods are another’s, harming their goodwill.
- Likelihood of Confusion
- A real chance that average buyers may think two brands come from the same source.
- Similarity of Goods
- How close the goods are in purpose, function, and market.
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