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

Aishwarya Menon, Partner, K&S Partners, India

The old Indian trademark statute, the Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999.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.

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.

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.