Delhi High Court rejects Volkswagen’s opposition to Maruti Suzuki trademark application

The Delhi High Court recently refused to entertain a petition filed by German automobile manufacturer Volkswagen challenging the dismissal of its opposition against registration of an allegedly similar mark filed by rival Maruti Suzuki India Limited [Volkswagen AG v. The Registrar of Trade Marks and Anr]..Maruti Suzuki had filed a trademark application before the Registrar of Trade Marks for registration of its mark ‘TRANSFORMOTION’. The Registrar accepted the application and advertised the application. Volkswagen filed a notice of opposition against the registration of the mark stating that it is deceptively similar to its registered trademark ‘4MOTION’.The Registrar dismissed Volkswagen’s opposition, prompting Volkswagen to move the High Court in appeal..Justice Manmeet Pritam Singh Arora affirmed the decision passed by the Registrar, observing that the two marks have no deceptive similarity capable of confusing the public. “This Court also finds that the Appellant herein is Volkswagen AG, and Respondent No. 2 herein is Maruti Suzuki India Limited; both companies have independent, substantial goodwill in the Indian market and, considering the class of products sold by the parties are cars, which are purchased by consumers after due deliberations, this Court is persuaded to hold that there is no material on record to conclude that the consumers would be confused or misled to purchase the goods of the Respondent No. 2 under mistaken belief that the same actually belongs to the Appellant,” the Court stated. .The Court noted that Volkswagen’s trademark ‘4MOTION’ is a smart four-wheel system that monitors a car’s journey and operates under the brand name of the car Tiguan. Whereas, ‘TRANSFORMOTION’ indicates transition of speedometers in Maruti Suzuki vehicles from analogue to digital system. “On a comparison of the Appellant's mark ‘4MOTION’ with Respondent No. 2’s whole mark ‘TRANSFORMOTION’, this Court is satisfied that from a visual overlook, there is no plausible chance of confusion between the two rival marks because they are different from one another,” it held.Further, the Court also compared the advertisements of both the marks and noted the lack of any visual similarity. The Court also stated that Volkswagen’s mark 4MOTION’ is not phonetically similar to Maruti’s mark ‘TRANSFORMOTION’. Thus, the Court observed that there is no conceptual or semantic similarity in the marks.“The Respondent No. 2’s mark starts with alphabets while the Appellant’s mark starts with a numerical ‘4’, which is a stark difference between the two marks. The prefix ‘TRANS’ in Respondent No. 2’s mark ‘TRANSFORMOTION’, when compared with the prefix ‘4’ in the Appellant's mark ‘4MOTION’, leads to distinct pronunciation which in the considered opinion of this Court, does not lead to any likelihood of confusion in the said marks,” the Court stated. .Maruti submitted that the word ‘MOTION’ is common to the automobile industry. The Court agreed with this submission, stating that Volkswagen has unnecessarily disputed the use of the mark. “The Appellant has baldly disputed the said submission of the Respondent No. 2 [Maruti], though, there is no dispute raised to the details of the third-party trademarks relied upon by the Respondent No. 2 to show the use of the word ‘MOTION’ as a part of the said third-party marks. This Court even otherwise, finds merit in the submission of the Respondent No. 2 that the word ‘MOTION’ would be common to the automobile industry...”.The Court agreed with Maruti’s submission that ‘TRANSFORMOTION’ is a wordplay of the dictionary word transformation. It observed that Maruti started using the mark in 2016 while Volkswagen started use of its mark in 2017 and so, the customers were not aware of the latter's mark. .Advocates Jayant Kumar and Ruchi Singh appeared for Volkswagen.Central government standing counsel Saumya Tandon with Advocate Gaurav Singh Sengar appeared for the Registrar of Trade Marks.Advocates Prashant Gupta and Jithin M George appeared for Maruti Suzuki..[Read judgment]