BMW vs. DMW: High Court restrains Indian E-rickshaw maker from using the trademark DMW

Bayerische Motoren Werke Ag vs Om Balajee Automobile (India)

Parties to the case:

BAYERISCHE MOTOREN WERKE AG (Plaintiff) BMW

OM BALAJEE AUTOMOBILE (INDIA) PRIVATE LTD (Defendant) DMW

Facts of the case:

The plaintiff claims that the defendant has been using the identical and similar logo as its trademark, which sounds the same and looks the same in structure. Plaintiff said that it is the clear case of:

a) dilution of the trademark and

b) to create confusion in the minds of consumers. Defendant on the other hand pleads as follows:- (i) It is pleaded that the mark of the defendant DMW is entirely different, visually, structurally and phonetically from the mark of the plaintiff. ii) the nature of the business, class of buyers and product of parties are totally different. The defendant is not using any logo. The defendant has also applied for registration of an inverter which is not manufactured by the plaintiff.

The Plaintiff filed an application to refrain the Defendants from manufacturing, exporting or otherwise dealing with goods including but not limited to E-rickshaws, bearing the defendant’s DMW marks or any other mark that is either identical or deceptively similar to the plaintiff’s BMW Marks. The plaintiff demanded a permanent injunction for the same as the other company has been using the trade name, more similar and identical with that of the plaintiff’s.

ISSUES

Issues 1:

Is the defendant liable for infringement of the right within the meaning of section 29(4) of The Trade Marks Act, 1999.?

First all let us consider what does section 29(4) includes:

“29. Infringement of registered trade marks.– …….

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”

The Supreme Court, in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 onwards:

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances.”

Similarly, in a case of Tata Sons Ltd. vs. Manoj Dodia — where the court was dealing with the trademark of the plaintiff i.e. TATA. The defendant was selling weighing scales and spring balances under the trade mark A-One TATA, where the court held as follows:

“Since the trademark TATA is a well known trademark, use of the aforesaid mark by the defendant on the products being sold by him also constitutes infringement within the meaning of Section 29(4) of the Trademarks Act, 1999 since by using the trademark TATA, he obviously has tried to take an unfair advantage by encashing upon the brand quality and goodwill, which the mark TATA enjoys in the market. Such use may be detrimental to the reputation and distinctive character of the registered trademark TATA, diminish the ability of the trademark TATA to identify the source of the goods, and lowers its reputation in case the quality of the goods is not of expected standard.”

Therefore , it is evident from the above facts that- a) Defendant’s brand has an identical and similar trade mark to that of the plaintiff. b) The plaintiff’s mark is a well known trademark and use of the aforesaid mark constitutes infringement within the meaning of Section 29(4) of the Trademarks Act. The defendant is obviously seeking to encash upon the brand quality and goodwill which the mark BMW enjoys in the market. c) Such use by them is detrimental to the reputation and is prima facie guilty of infringement of the trade mark of the petitioner.

Issue 2:

Is the present suit barred by delay, laches and limitation and does it stop the court to give authoritative warning to the defendant?

Defendants claim that they have been manufacturing since 2013 and have given advertisements since 2013 in different States. The company was registered on 19.12.2005 under the Companies Act. It is to the knowledge of the plaintiff that the manufacturing of E-Rickshaws commenced in February 2013.

Whereas, In this context, reference may be had to the judgment of the Supreme Court in Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Others (2004) 3 SCC 90, where SC held:

“ An injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if prima facie it appears that the adoption of the mark was itself dishonest.”

Hence , the same delay would not be sufficient to deter grant of injunction in favor of plaintiff.

Judgement of the Delhi High Court:

Balance of convenience is in favour of the plaintiff and against the defendant. An ad interim injunction is passed 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.

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