Toyota’s ALPHARD redefines limits of trans-border reputation

Remfry & Sagar has secured a significant ruling on trademark and luxury law - transborder reputation does not always need a mass-market launch.

In an important ruling for brand owners in the automotive and luxury segments, the Delhi High Court has allowed Toyota’s appeals and directed removal of Tech Square Engineering Pvt. Ltd.’s ALPHARD trademark registrations (filed in 2015 for automobile related goods on a proposed-to-be-used basis) from the Trade Marks Register. ALPHARD is Toyota’s luxury multi-purpose vehicle, known for its executive comfort, spacious cabin and high-end positioning. The trademark was adopted in 1986 and the vehicle launched commercially in 2002.

What emerges as significant in this ruling is the Division Bench holding that Toyota had established spill-over reputation in India, even though the ALPHARD vehicle have not been formally launched in the country. In fact, relying on unsolicited importation of ALPHARDvehicles by Indian consumers and other substantial body of material such as online listings of imported ALPHARD vehicles in India, discussions on Indian automotive blogs, classified advertisements placed on record, the Court has held the mark ALPHARD as a well-known mark as on date of the Respondent’s impugned applications. In the context of luxury goods, the Bench added that, “in markets for luxury goods, consumer awareness is not driven by mass penetration but rather by brand visibility and global reputation. Therefore, evidence such as imports and niche market presence holds heightened probative value."

The Respondent’s adoption of the mark ALPHARD was also found to lack bona fides and not entirely innocent, given the inconsistencies in the explanation for its adoption and proximity to Toyota’s internationally recognized brand. The Court while clarifying the role of Section 57 as a corrective mechanism where a mark is “wrongly remaining” on the Register, held that the registrations were in contravention of Section 11 of the Trade Marks Act, and directedimmediate removal of the registrations from the Trade Marks Register.

Significantly, the Court distinguished the facts in the matter from the ones in the Prius Supreme Court decision, which is the leading authority on transborder trademark reputation in India, finding that Toyota had placed sufficient material to show prior recognition of the ALPHARD mark in India.

A useful reminder that reputation may travel — but it must still be proved with the right evidence.

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