Territorial goodwill governs passing off: foreign reputation alone cannot sustain an Indian claim without proof of domestic market recognition.

For a foreign claimant to maintain passing off in India, actionable goodwill must be proved within the Indian market at the relevant time; global reputation alone is insufficient without reliable evidence of spillover into domestic recognition. The Court applied the territoriality principle and held that prior user, goodwill, misrepresentation and damage must be established on Indian evidence, not merely on worldwide publicity or internet presence. On the facts, the claimant failed to show sufficient reputation or market penetration in India before the respondent's adoption and long use of the mark, and the unexplained delay in approaching the Court further supported the respondent's defence.

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Issues: Whether the appellant established goodwill and reputation in India in the mark "Prius" sufficient to maintain an action for passing off against the respondent notwithstanding the respondent's prior registration and use in India.

Analysis: The governing principle applied was that passing off is founded on prior user, goodwill, misrepresentation and damage, and that the territoriality principle rather than universality determines whether a foreign mark has actionable goodwill within India. The mere existence of worldwide reputation, isolated publicity, internet presence, or use in other jurisdictions was held insufficient unless there was reliable evidence that the mark had acquired substantial reputation and market recognition in India at the relevant time. On the evidence, the appellant had not shown adequate spill over of goodwill into the Indian market before the respondent's adoption and use of the mark. The Court also noted the unexplained delay in approaching the Court and that such delay could not prejudice the respondent's long use of its registered mark.

Conclusion: The appellant did not establish the requisite goodwill or reputation in India to succeed in passing off, and the respondent's defence based on territorial use and delay prevailed.

Final Conclusion: The challenge to the High Court's decision failed, and the decree protecting the mark "Prius" in favour of the appellant was not restored.

Ratio Decidendi: For a passing off claim by a foreign claimant, actionable goodwill must be proved within the Indian jurisdiction at the relevant time; global reputation alone is insufficient without reliable evidence of spill over into the domestic market.

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