Kosha Doshi | Symbiosis Law School, Pune | 27th March 2020
BMW vs Om Balajee Automobile [CS (COMM)292/2017; Delhi High Court]
Facts:
The plaintiff, BMW had submitted that it had started manufacturing motorcycles since 1923 under the BMW mark and motor cars since 1928. The trademark was first registered in the year 1917 and the earliest Indian Registration for BMW mark was in thee year 1956. The BMW company and mark are well known due to its extensive and continuous use and is qualified under Section 2 (1) (zg) and Section 11(6) of the Trademarks Act, 1999. Prove of the same was given by showing that the revenue earned in the year 2019 was 94.163 million Euros having a sale of 20,03,359 vehicles.
The e-rickshaws with the trademark DMW was spotted by the plaintiff in the year 2016. It argued the defendant that it was a complete violation of the trademark rights. A suit was filed by Bayerische Motoren Werke AG who sought permanent restrain on the e- rickshaw manufacturer, Om Balajee Automobile (India) from manufacturing, exporting or similar dealings with the goods having the mark ‘DMW’ which is being identical and deceptively similar to BMW mark. The plaintiff stated that it was a case of dilution of his trademark under Section 29(4) of the Trademarks Act.
The defendant argued that the nature of product, buyer class and trade channels were different. The mark’s size, font and color is different and therefore not similar. Further an argument on the price was made wherein the total value of his product was 50,000/- while the BMW was a minimum of 35 lakhs.
Issue:
Whether the use of the mark ‘DMW’ was similar and deceptive thereby infringing the ‘BMW’ trademark under the Trademark Act, 1999?
Judgment:
The Delhi High Court passed an order restraining an e-rickshaw manufacturer with a mark ‘DMW’ from using the same due to its nature of being identical and deceptively similar to BMW, German automobile manufacturer. Justice Jayant Nath gave an interim order and opined that the Defendant had adopted the essential features of the trademark of the Plaintiff.
The court observed that there is clear visual and phonetic resemblance in the marks. The essentials features are copied and likely to cause confusion and is to deceive the customers. Further, it rejected the argument on the different nature of the products manufactured. The use of the mark DMW by the defendant prima facie was considered to be dishonest in its act. The intention of trying to take advantage of the reputation and goodwill of the brand was noted wherein it would have misled intelligence of an ordinary average man. The use of the same, was detrimental to the BMW company and infringed on its trademark rights.
The Court remarked that the balance of convenience was in favor of the Plaintiff and proceeded to pass an ad interim injunction, restraining the Defendants, its officers, agents etc. from manufacturing, exporting, importing or offering for sale, advertising or in any manner dealing with goods not limited to E-Rickshaws bearing the mark DMW or any other mark which are identical or deceptively similar to the plaintiff’s BMW marks.
[…] Trademark aims to prevent any confusion which may occur in the mind of a buyer with imperfect recollection. To protect the mark from getting infringed the owner gets his mark registered at the Trade Marks Registry. Once a mark garners goodwill and reputation an infringer tries to make money off of the said reputed trademark by creating a mark which looks almost the same as the famous mark with minor unnoticeable tweaks to confuse the buyer. Such a mark is called a deceptively similar trademark. […]