Third-Party Imports and Digital Visibility Establish Protectable Trans-Border Reputation for Luxury Marks Under Section 11.

The Appellant, Toyota, a global automobile manufacturer, adopted the mark ‘ALPHARD’ in 1986 and launched luxury multi-purpose vehicles (MUVs) under it in 2002

Although not formally launched in India until 2020 (under the mark ‘VELLFIRE’), ALPHARD vehicles were imported into India by private individuals and enthusiasts as early as 2008

Respondent No. 1 secured Indian registrations for ‘ALPHARD’ in Classes 9, 12, and 27 in 2015 on a "proposed to be used" basis

Toyota initiated rectification proceedings under Section 57 of the Trade Marks Act, seeking removal of the Respondent’s marks

The Single Judge dismissed the petitions, holding that Toyota failed to establish sufficient reputation or use in India prior to the Respondent’s adoption

Toyota appealed this decision via Letters Patent Appeal (LPA).

1. Whether the mark ‘ALPHARD’ had acquired protectable trans-border reputation and goodwill in India prior to the Respondent’s registration in 2015

2. Whether the Respondent’s adoption of the identical mark for allied/cognate goods was bona fide or constituted misappropriation

3. Whether the impugned marks are "wrongly remaining on the Register" under Section 57, warranting rectification

The Court applied Section 57 of the Trade Marks Act, 1999, which empowers the Court to rectify the register if an entry is made without "sufficient cause" or is "wrongly remaining"

It analyzed the "relative grounds for refusal" under Section 11, specifically Section 11(2) regarding well-known marks and Section 11(3) regarding the law of passing off

The Court relied on the "territoriality principle" and the doctrine of "spill-over reputation" as established in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. [(2018) 2 SCC 1], which requires a claimant to prove that a foreign mark has acquired a discernible reputation within the Indian market among the relevant section of the public

applied Trustees of Princeton University v. Vagdevi Educational Society [2025 SCC OnLine Del 6296] to define "use" as encompassing statements in the public domain and third-party association rather than just direct sales by the proprietor

The Court found that the Single Judge erred by requiring mass-market penetration and direct invoices from Toyota to prove reputation

Applying the Prius test, the Court noted that for luxury niche goods, reputation is established through visibility and consumer awareness within a specific segment

Evidence of unsolicited third-party imports since 2008, listings on automotive blogs (Team-BHP), and media reports regarding high-profile owners like Gautam Adani proved that the mark had acquired "spill-over" goodwill in India prior to the Respondent’s 2015 application

The Court further scrutinized the Respondent’s evidence, finding the invoices unreliable as they were in the name of a different entity ("Tekstar Global") without proof of a legal nexus to the Respondent

Consequently, the Respondent could not establish prior or bona fide use, whereas Toyota successfully demonstrated the "well-known" status of its mark within the relevant consumer segment

It held that ‘ALPHARD’ was a "well-known" mark in India at the time of the Respondent’s application and that the Respondent’s registration was invalid under Section 11

The Court directed the Registrar of Trade Marks to expunge/rectify the Register by removing Registration Nos. 3093216, 3093218, and 3093219 in Classes 9, 12, and 27

No order as to costs was made