TOYOTA JIDOSHA KABUSHIKI KAISHA Vs. BIJU

JUDGEMENT

(1.) This is a suit for permanent injunction, rendition of accounts and damages and delivering up of infringing material. The plaintiff is a corporation registered in Japan. Defendant No. 1 Mr. Biju is the proprietor of Defendant No. 2 Benz Auto Spares. The plaintiff claims to be the sixth largest industrial corporation in the world engaged in manufacture and sale of automobiles and auto-parts and is amongst Fortune Global 500 Companies. The plaintiff claims to have coined the trademark TOYOTA which has no meaning in India nor is a dictionary word or a word of any trade or usage. It is alleged that the trademark TOYOTA is being used by the plaintiff in India since 1957 in relation to vehicles, their parts and fittings. It is also alleged that on account of the quality of the products, which are being sold under the name TOYOTA and continuous use of the aforesaid trademark, it has acquired an enviable reputation and goodwill in the market. The trademark TOYOTA is registered in the name of the plaintiff company in the following classes: S.No. Trademark Registration/ Application No. Class Status 1. TOYOTA 506695 12 Registered and renewed upto 09.03.2013 2. TOYOTA 506690 05 Registered and renewed upto 09.03.2009 3. TOYOTA 506685 10 Registered and renewed upto 09.03.2009 4. TOYOTA 506697 18 Registered and renewed upto 09.03.2010 5. TOYOTA THS 1228330 12 Registered upto 28.08.2013 6. TOYOTA INNOVA 1232944 12 Registered upto 05.09.2013 7. TOYOTA 1243213 36 Registered upto 14.10.2013 8. TOYOTA 1243214 37 Registered upto 14.10.2013 9. TOYOTA 1243215 39 Registered upto 14.10.2013 10. TOYOTA DEVICE MARK 1243207 36 Registered upto 14.10.2013 11. TOYOTA DEVICE MARK 1243209 39 Registered upto 14.10.2013

(2.) The plaintiff claims sale of Yen15,501,553,000,000, Yen17,294,760,000,000 and Yen18,551,526,000,000 in the years 2003, 2004 and 2005, respectively. It is alleged that in automobile industry the mark TOYOTA qualifies as a source indicator of one the most reputed and trusted names in car makers and it is a well known mark under Section 11 of Trademarks Act, 1999, entitled to protection across classes of goods since any misuse of the mark is not only likely to cause confusion and deception but would also be contrary to public interest and would dilute the reputation and goodwill which has come to be associated with it for last many years.

(3.) Defendants No. 1 to 3 are dealing in automobile spares. On receipt of information about sale of fake spare parts being sold under the name TOYOTA, the plaintiff company appointed Investigator and it came to be revealed that they were selling Spurious Oil Filter and Universal Joint Cross. It is alleged that the Investigators were able to purchase a Spurious Oil Filter from Defendant No. 3 and a Spurious Universal Joint Cross from Defendant No. 2. A legal notice was sent by the plaintiff to the Defendants in February 2006 requiring them to refrain from unauthorized use of the trademark TOYOTA. There was no response to this notice which then was followed by a reminder sent in May 2006. Defendant No. 2 replied to the notice denying infringement.