Acquiescence under the Trademark Law means the failure to take action against infringing parties. To support a plea of acquiescence in a trade mark case, it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to spend money in building up a business associated with the mark. The legal principle behind this concept is that the plaintiff must come to court with clean hands. He cannot be allowed to take advantage of the statutory rights guaranteed when he himself is approaching the Court after an unaccountable and unexplained delay.
This issue was brought before the Delhi High Court in the case of Toyota Jidosha Kabushiki Kaisha vs. Deepak Mangal & Ors. 2010 (43) PTC 161(Del.). In this case, the plaintiff, Toyota Jidosha Kabushiki Kaisha (hereinafter referred to as Toyota), is a company registered in Japan under the name of TOYOTA and is a leading manufacturer and seller of automobiles and parts. In 1994, Toyota designed a hybrid car by the name of PRIUS. The first model of this car was sold in December 1997 and it was officially launched in 2001. Toyota is the registered proprietor of the trade mark PRIUS in 28 countries, excluding India, and claims that the word PRIUS is derived from a Latin term meaning ‘prior’.
The defendant, Deepak Mangal & Ors (hereinafter referred to as Deepak Mangal), is a partnership firm registered in 2001. It had applied for registration of the trade mark PRIUS and this was certified in its favour with effect from March 2002. Deepak Mangal has carried on the business of the sale of auto parts in the name of ‘Prius Auto Industries’ with the trade mark PRIUS since 2003.
Toyota contended that Deepak Mangal used the mark PRIUS without prior permission or authorisation from it, and that this amounted to passing off and dilution of its trade mark thereby adversely affecting its goodwill. Toyota produced sales figures and articles published in leading national and international auto magazines and newspapers to substantiate the contention that its product PRIUS was well known among its customers. It alleged that in these circumstances it is impossible to believe that Deepak Mangal was not aware of the association of PRIUS with TOYOTA. Apart from this, Toyota also alleged the infringement of trade marks TOYOTA, Toyota device and INNOVA.
Deepak Mangal refuted the claims of Toyota on the grounds of delay, waiver and acquiescence on the part of Toyota. It stated that Toyota neither applied for registration in India nor did it oppose the registration and subsequent use of the mark by them. Toyota only approached the Court in December 2009 while the mark had been registered in India since March 2002.
Deepak Mangal also contended that publications dated January 2004 and December 2004 clearly showed Deepak Mangal advertising its goods under the trade mark. Auto accessories for various vehicles were depicted in it and Deepak Mangal submitted that these advertisements demonstrated that the company supplied auto accessories for these vehicles. Toyota contested the use of the mark in these advertisements, which clearly shows that Toyota was aware of the use since 2003. Toyota in its rejoinder stated that it is impossible for a reader to examine each and every detail while going through a magazine.
The Court held that the word PRIUS was not invented by Toyota as is claimed but is present in English dictionaries. The fact that Toyota had remained silent since 2003 also went against it. Furthermore, the trade dress of Deepak Mangal is distinctively dissimilar to that of Toyota. The packaging and its shape as well as colour scheme and description of words are all distinctively dissimilar. Also, there is a marked difference in the price of the products. The most expensive product of the defendant costs Rs. 1,600/- whereas the corresponding product of plaintiff costs Rs. 23,503/-. Target customers for each would therefore differ.
Toyota also could not establish dishonest use and unfair advantage. Further, Toyota had approached the Court after an inordinate delay of seven years for which there is no explanation. Moreover, it failed to disclose the date of registration when Deepak Mangal was registered with the said mark.
Deepak Mangal established that the marks were not used to gain unfair advantage but to describe kind, quality and quantity of the product as given under Section 30 of the Trademarks Act. Section 30(2)(d) supports use of the marks TOYOTA, Toyota device and INNOVA to indicate that the goods are adaptable and suited to the vehicles mentioned. They are used for identification only along with the marks of other companies. Therefore, Deepak Mangal is protected under the exception carved out under Section 30 (2) (d).
The Court stated that Toyota had not been able to make a prima facie case. The principles of equity and fair play also do not favour it. The Court also added that the balance of convenience is lies in favour of Dipak Mangal because, if at this stage injunction is granted, the company would suffer huge losses since its business has grown tremendously over the past seven years. On the other hand, Toyota will not suffer any irreparable injury since it is not in the market. Deepak Mangal is therefore not guilty of infringement.
Manisha Singh Nair
Lex Orbis
manisha@lexorbis.com