Implications of the Prius Judgment for Trans-Border Reputation and Passing-Off in India

Amit Sindhwani, Head of IPR, USHA International Ltd
Aishwarya Menon, Partner, K&S Partners
Rajendra Kumar, Founding Partner RKR & Partners, RKR & Partners

The old Indian trademark statute, the Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999. The Indian Courts have rendered many trademark decisions under both these statutes, where rights based on trans-border reputation of an overseas plaintiff’s marks were upheld based on the doctrine of universality, which states that a mark should signify the same source globally. However, in 2017, the Supreme Court of India rendered a judgment in the Prius Case, preferring the doctrine of territoriality of trademarks over the ‘universality’ doctrine. The “territoriality” doctrine stipulates that a trademark should be recognized as having a separate existence in each country. The authors conclude that the Supreme Court’s Prius judgment took a sudden U-turn from the well-settled ‘universality’ principle to the ‘territoriality’ principle without assigning any reasons for such a departure and without discussing why its own earlier judgments such as Whirlpool and Milmet Oftho are irrelevant. The Prius judgment has spawned a series of judgments of the High Court of Delhi, declining injunction to overseas plaintiffs on the stricter application of the “territoriality” test. The impact of the Prius line of cases in India for overseas plaintiffs would be that they must meet a higher threshold test of transborder reputation through cogent documentary evidence by way of advertisements in English and other local language regional dailies to reach to rural areas and document all promotional as well as unsolicited media attention directed at the Indian market. Despite the continuing territoriality judicial approach, the article concludes on a hopeful note that the Prius case and its progeny is not the last word in deciding issues of trademark rights based on trans-border reputation.

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India Intellectual Property Manufacturing December 2023 Vol.16, No. 65, Autumn 2023

Amit Sindhwani

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Amit Sindhwani is a Law graduate from the University of Delhi. As an independent IP Attorney prior to his current in-house position, he had been handling IP matters at all level levels of the judiciary as well as before other authorities involved in customs recordations, opposition/cancellation actions before before the Trade Marks Registry and Appellate Courts, domain name disputes and other cross-border matters including criminal enforcement by way of search and seizure operations . Over the years, he has been involved in several high profile and path breaking cases in the field of trademark, copyright, design, patents and anti-counterfeiting actions. At present, he is working as HEAD (IPR) with the Shriram group of companies, mainly comprising of Usha International Ltd., Mawana Foods Ltd and Mawana Sugars Ltd. Shriram group is a diversified conglomerate with the business spread in the areas of consumer durable such as fans, sewing machine, appliances, edible oils, sugars etc., owning the well-known and reputed brands like USHA, MAWANA, etc. As IP Head, he has had the privilege of filing and prosecuting of trade mark applications in more than 120 countries across the globe and enforcing the rights by way of diverse oppositions/cancellations and court actions in various Middle East and South Asian countries. He has 20 years of rich experience in the field of IP starting from conceptualization, prosecution of IP, included but not limited to strategizing complex IPR litigation.

Aishwarya Menon

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Ms. Menon is a partner at K&S Partners and has worked for over a decade on formulating strategies for protection of trademark portfolios and geographical indications in India and the sub-continent. She holds an LL.M in intellectual property law from Queen Mary University of London, United Kingdom.

Rajendra Kumar

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Mr. Kumar is founder of the IP law firm, RKR & Partners. He has been practicing intellectual property laws for the past almost 40 years, of which the last 29 years as a co-founding member of the IP law firm, K&S Partners where he chaired the litigation practice of the firm relating to trademarks, copyrights and geographical indication disputes. He holds a PG diploma in UK, US and European Laws of Copyrights and Related Rights from King's College, London, United Kingdom.

RKR & Partners

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RKR & partners is a new IP Venture of Rajendra Kumar. The new venture continues his journey as an IP lawyer- a journey that goes back almost four decades to 1984.

K&S Partners

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K&S Partners is one of India's leading intellectual property law firms providing expert and specialized services to protect the IP Rights of creators, owners or inventors. The services range from creation, registration, filing, prosecution, enforcement, transactional and related services.

USHA International Ltd

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Usha International Ltd. an Indian multinational manufacturer and marketer of Home Appliances and other consumer durable products that include sewing machines, electric fans, electrical and household appliances, water coolers, juicer mixer grinders, electric Irons, toasters and Inverters etc. These products are sold under the renowned and well-known mark USHA which was adopted in the year 1936. The company headquartered in Gurgaon, Haryana is part of the Sidharth Shriram Group and is today amongst India’s most dynamic and reputed business houses since 1934. The Company has an annual revenue of Indian Rupees 3000 crores with 5000 employees working from 16 regional office, head offices, manufacturing plants in Kolkata and Hyderabad and overseas offices in China and Sri Lanka. The Company has a All-India retail presence with 60 company showrooms and logistics supported by 33 warehouses. The International operations of the Company started in the year 1946 and at present the company is exporting its products to 32 countries of the world. International Tie -ups Currently, the Company has an association with Hunter Fan Company, USA, Janome Sewing Machine Company, Japan, Midea Appliances, China.

India Intellectual Property Manufacturing December 2023 Vol.16, No. 65, Autumn 2023
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