An Indian entity accused of infringing the trademark of a German company recently took the defence that its use of the trademark was inspired by Hindu Gods - Brahma, Vishnu and Mahesh [VBM Medizintechnik GMBH V. Geetan Luthra].
However, the Delhi High Court was unimpressed by this defence and granted interim relief to the German company.
The Court was dealing with a trademark infringement suit filed by a Germany-based medical equipment manufacturer VBM Medizintechnik GMBH against Geetan Luthra, the owner of VBM India Co (VBMIC).
The German company accused Luthra of trademark infringement in using the mark ‘VBM’, which it said stood for Mr Volker Bertram Medical. Meanwhile, Luthra maintained that VBM stood for "Vishnu, Brahma and Mahesh."
On Monday, Justice C Hari Shankar, granted interim relief to the German company while commenting that Luthra (defendant) might have “exposed himself to divine retribution” for having invoked the holy trinity for “unholy ends.”
“The 'Vishnu Brahma Mahesh' explanation is too facile to pass legal muster, besides being unsupported by any corroborative documentary evidence,” the Court found.
The Court said it was unable to accept this “ingenious explanation” for the acronym ‘VBM’ and refused to grant the benefit of Section 33 (acquiescence) of Trade Marks Act to the defendant.
“To my mind, it is clear that the defendant has, all along, been actuated by any intent of creating confusion, in the minds of the purchasing public, between the products manufactured by the plaintiff and other products which were also being sold by it under the “VBM” umbrella,” Justice Shankar said.
The Court also found that the defendant had not produced any document to support its stand that holy trinity was the inspiration behind the VBM.
The Indian company (VBMIC) was the sole distributor of the German company’s goods in India till 2021.
However, VBMIC in 2016 secured registration of the VBM device mark for medical equipment in India. The refusal to transfer this trademark registration to VBM Medizintechnik became one of the reasons for termination of the agreement.
The Court found that VBMIC's hesitancy to add ‘India’ to its VBM device mark spoke for itself. Prima facie, the Court found the device mark almost indistinguishable from the mark used by the German company.
It also noted that the defendant never informed the German company (plaintiff) regarding his decision to apply for registration of the mark. It further found that the registration was for medical equipment which were the very same items in respect of which the plaintiff was using its mark.
“Prima facie, therefore, the Court is satisfied that the defendant, in adopting the mark VBMIC as its corporate name and in applying for registration of the mark in class 10 for medical equipments, was actuated by an intention to pass off the products in which it would deal, under the said mark, as the products of the plaintiff,” the Court said.
The Court added the VBM mark of the defendant was bound to confuse the prospective consumers into believing that the product belongs to the Germany company. It also said that the intent of the defendant was to ride on the goodwill of the plaintiff company.
“I am, therefore, prima facie convinced that by adoption of “VBM” as part of its corporate as well as intellectual identity, the defendant was seeking to pass off the products, in which it dealt, as the products of the plaintiff, even where they were not actually manufactured by it,” Justice Shankar said.
Accordingly, the Court restrained the defendant from using ‘VBM’ either as part of its corporate name or as a trademark in respect of medical equipment or any allied goods or services during the pendency of the suit.
Senior Advocate Chander M Lall and advocates Nancy Roy, Tia Malik, J Sharanya and Ananya Chugh represented the German company VBM. Advocates Bitika Sharma, Lakshay Kaushik, Utsav Mukherjee and Aadya Chawla represented the defendant Geetan Luthra.