Delhi HC restrains DMW e-rickshaw from using mark deceptively similar to that of German automobile manufacturer, BMW

The Delhi High Court has restrained an e-rickshaw manufacturer, bearing the mark ‘DMW’, from using any mark which is identical or deceptively similar to that of the German automobile manufacturer, BMW. [BMW vs Om Balajee Automobile (India)].The interim order was passed by a single Judge Bench of Justice Jayant Nath in a suit filed by Bayerische Motoren Werke AG (Plaintiff) seeking to permanently restrain e-rickshaw manufacturer, Om Balajee Automobile (India) [Defendant] from manufacturing, exporting or otherwise dealing with goods bearing the mark 'DMW' or any other mark which is identical or deceptively similar to BMW..The Plaintiff submitted that it had been manufacturing motorcycles under the BMW mark since 1923 and motor cars since 1928. .The Plaintiff stated that the first trademark registration for the famous BMW logo was in 1917 and the earliest Indian registration for the BMW mark was in 1956..It was further argued that BMW marks were well-known due to extensive and continuous use in India and qualified as a well-known trademarks as envisaged in section 2(1)(zg) and section 11(6) of The Trademarks Act, 1999. .The Plaintiff claimed that in 2016, it had a revenue of 94.163 million Euros and sold a total of 20,03,359 vehicles under the BMW marks around the world. It was added that in the same year, a sum of Rs.6.030 million Euros was spent only on advertising..The Plaintiff informed the Court that in July 2016, it spotted e-rickshaws with trademark DMW plying on the road and subsequently, moved the High Court. .It argued that the Defendant’s mark DMW was deceptively similar to in appearance, sound and structure to the 'BMW' mark and was thus is in complete violation of the Plaintiff’s trademark rights. .The Plaintiff contended that the Defendant was using DMW mark in relation to goods such as e-rickshaws which were somewhat similar to automobiles covered by the BMW mark. .On the basis of the above, it was asserted that it was a clear case of dilution of the the Plaintiff's trademark in terms of section 29(4) of the Trademarks Act. .The Defendant, on the other hand, argued that the nature of the product, class of buyers and trade channels of the product of the two were entirely different. It was also stated that colour, font and size of the two marks were not deceptively similar..The Defendant stated that it was not using any logo for its product, unlike the Plaintiff, and while the total value of its product was about Rs 50,000, and the Plaintiff's was a minimum of Rs 35 lacs..After considering the submissions made by the parties and perusing the two trademarks, the Court opined that the Defendant had adopted the essential features of the trademark of the Plaintiff. ."There is clearly a visual and phonetic resemblance in the marks. The essential features of the plaintiffs marks are copied in the defendants’ mark and the same are likely to deceive and cause confusion.", the Court said..The Court also rejected the Defendant's argument based on the different nature of the products manufactured by the two companies. .Observing that the strength of the Plaintiff's trademark could not be disputed, the Court said, ...the use of the mark DMW by the defendant prima facie appears to be a dishonest act with an intention of trying to take advantage of the reputation and goodwill of the brand of the plaintiff. It is likely to mislead an average man of ordinary intelligence..Such use by the defendant is detrimental to the reputation of the registered mark BMW of the plaintiff company.Delhi High Court.In conclusion, the Court stated that 'DMW' was visually and phonetically similar to 'BMW' and the former's usage by the Defendant on its product constituted a prima facie infringement within the meaning of Section 29(4) of the Trademarks Act..In view of the above, the Court remarked that the balance of convenience was in favour 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..Plaintiff BMW was represented by Senior Advocate Pritesh Kapur with Advocates Sujata Chaudhri, Urfee Roomi, Vanshuj Mehta. .Defendant was represented by Advocates Shiv Charan Garg, Imran Khan, Yash Mittal..Read the Order: