ترينيداد وتوباغو

The name ‘Toyota’ was used for 21 years, prior to the case discussed, in Trinidad and Tobago, where it is also registered as a trademark by the claimant.

The claimant applied for three reliefs from the court:

an interim injunction to prohibit the defendant from trading business under the name ‘Toyota Parts Limited’ on the grounds that (a) the name is aimed to deceive and cause confusion and (b) the name is a geographical name in Japan.

An injunction prohibiting the defendants from selling their goods as goods of the claimants and from using the word ‘Toyota’ in their advertisements.

An injunction to restrain the defendants from infringing the registered claimant’s trademark, ‘Toyota’.

The defense submitted that the word ‘Toyota’ is not registrable as it is a town in Japan. The court was of the view that the name is not known in Trinidad and Tobago to be associated with a town in Japan but rather with motor vehicles and goods that are exclusively those of the claimant.

With regards to the advertisements, they merely indicate the name of vehicles the defendant offers parts for. However, the use of the name ‘Toyota’ could reasonably be argued as passing off. As noted in the judgment, there is no need for actual deception; according to the law, the test is of the impression produced on the casual or ordinary customer.

The court held that the use of the defendant’s use of the name ‘Toyota’ in a business so closely related to the claimant’s can only have one effect, which is to give the impression of a connection or association with the claimant’s business. The use of the claimant’s name alongside that of the defendant could have caused irreputable to the claimant’s business, and the court was of the view that damages were not an adequate remedy. As such, an injunction was granted restraining the defendant from using ‘Toyota’ in its name.

On the second issue of passing off, the court saw that the defendant raised a serious question to be tried. Firstly, there was no evidence that the claimant manufactures car parts. Secondly, there was also no evidence that the defendant sold goods purchased from a manufacturer who is common to the claimant and the defendant. The defendant was therefore allowed to continue selling the parts, at least until the trial of the matter. As such, the injunction prohibiting the sale of the parts, on the grounds of passing off, was denied.

The final application for an injunction was dismissed, as the court found no wrong with the defendant advertising that they sold parts for a particular vehicle.

Cases referred to: Carter & Parker LD v Scotiawools LD 1950 RPC 206, Mary Jane Ltd v Toohey (Jack) & Co. Ltd. 1961 RPC 389.