The Delhi High Court in the case of Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited granted an ad-interim injunction to the plaintiff and restrained the defendants, 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 is identical or deceptively similar to the plaintiff’s “BMW” trademarks.
The issue arose out of an interim application filed by the Plaintiff - Bayerische Motoren Werke AG (“BMW AG”) for the grant of a permanent injunction for trademark infringement by the Defendant - Om Balajee Automobile (India) Private Limited (“Om Balajee”). BMW AG claimed that the defendant’s use of the mark “DMW” for automobiles infringes its worldwide well-known trademark, “BMW”. The Delhi High Court observed that the defendant was using the mark “DMW” for products which were distinguished from that of BMW AG and therefore, there will be no likelihood of confusion or deception among the consumers. However, the court also observed that the defendant had dishonestly adopted the mark “DMW” intending to take advantage of the reputation and goodwill of “BMW”, which is likely to mislead an average man of ordinary intelligence. Hence, it was held that the use of “DMW” by the defendant on its product constituted infringement under Section 29(4) of the Trade Marks Act, 1999.
BMW AG is a world-renowned German automobile company founded in 1916 and is well-known for manufacturing and selling cars and motorcycles under the brand “BMW”, an abbreviation of its corporate name, across the world. The plaintiff has used BMW trademarks on cars, motorcycle, automobile, accessories, lifestyle, including readymade clothing, other goods, in relation to services including financial services. The global revenue figures for the years 2004-16 were placed on record along with the details of the advertising expenditures for said years. BMW AG registered its first device mark, in the year 1917 in classes 7, 8, 9, 11, and 12 and since then owns several registrations for the same across the globe. BMW AG entered the Indian market in the year 1987 and since then was extensively and continually using its “BMW” trademark in the Indian market, as evidenced by the invoices placed on record. Within India, BMW AG owns numerous registrations of its “BMW” trademark covering goods and services in classes 7, 9, 12, 25, 28, 36, 37 and 39. The earliest Indian registration for the “BMW” trademark dates back to 1956 and covered goods in class 12.
The defendant, on the other hand, was involved in manufacturing, marketing, and selling of e-rickshaws, e-cart rickshaw, electric cargo, and electric loader under the mark “DMW”. BMW AG, on coming to know about the mark “DMW” which was used for similar products, sent a Cease and Desist Notice to the defendant Om Balajee in 2016, to cease the use of the mark “DMW” in relation to e-vehicles or any other goods. Om Balajee, in its reply refused to comply with the terms and conditions put forth by BMW AG. Hence, BMW AG filed the present suit before the Delhi High Court with an application seeking grant of a permanent injunction against the use of “DMW” mark by the defendant for any of its products.
Contentions of the parties
BMW AG, the plaintiff, contended that the defendant’s mark “DMW DESHWAR MOTOR WORKS”, was deceptively similar to its “BMW” trademarks, as “DMW” formed the prominent part of the defendant’s mark. It was pleaded that both “BMW” and “DMW” marks consisted of three letters, of which second and third letters “M” and “W” were identical, and that the defendant had just replaced the letter “B” with “D”. BMW AG plead that the mark of the defendant was visually and phonetically similar to “BMW”, and the same was used for similar goods. Therefore, the defendant had committed an act of passing-off.
BMW AG also contended that the defendant dishonestly adopted “DMW” mark to free ride on the goodwill and reputation earned by the plaintiff on its well-known “BMW” trademarks. Further, it submitted that dishonest adoption has now been recognized as an independent head under passing-off. Reliance was placed by BMW AG on the Supreme Court Judgment in Midas Hygiene Industries (P) Limited v. Sudhir Bhatia and Others.
In its defence, Om Balajee submitted that the marks “BMW” and “DMW” were not similar to each other, as there was a difference in colour, font, and size between the two marks. Further, the products sold under the “DMW” mark were different from that of “BMW”. Nature, class of buyers and trade channels of the products of Om Balajee were entirely different from that of BMW AG. Hence, the marks, “BMW” and “DMW Deshwar Motor Works” were not deceptively similar. It further contended that the present suit was barred by limitation as the defendant, Om Balajee has been manufacturing the products under the mark, “DMW” since 2013 and had also advertised its products under said mark in different States since 2013. Therefore, the existence of the defendant and its marks was known to BMW AG.
Further, in order to prove non-likelihood of deception and confusion in the minds of the consumers, Om Balajee contended that there was a considerable price difference in the products of the parties. Therefore, due to said cost difference, a consumer who deals with the e-rickshaw was not likely to confuse “DMW” with “BMW”, as the entry-level vehicle itself under the trademark “BMW” costs about INR 35 lacs. Reliance was placed by Om Balajee on the Supreme Court Judgment in the case Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., wherein it was held that price difference of the products is one of the factors to prove that there will be no likelihood of the confusion amongst the consumers.
Observations of the Court
The question of law formulated by the Delhi High Court was whether the two marks were deceptively similar to each other leading to confusion in the minds of consumers. The High Court also determined whether dishonest adoption in case of a well-known trademark was a ground of infringement and whether the present suit was barred by limitation?
To answer the same, the court relied upon several judgments pronounced by different Courts. For instance, J.K. Oil Industries v. Ganpati Food Products & Ors., decided by the High Court of Jammu and Kashmir, Amrit Dhara Pharmacy v. Satya Deo and Durga Dutt v. Navaratna Laboratories decided by the Supreme Court.
The Supreme Court in Durga Dutt v. Navaratna Laboratories, had held that if the essential features of the trademark of the plaintiff have been adopted by the defendant, no further evidence is required to prove the passing off by the defendant. The Delhi High Court while relying on said principle held there is clearly a visual and phonetic resemblance in the marks and the defendant had adopted the essential features of the trademark of the plaintiff. Such an adoption was prima facie a dishonest adoption, intending to take undue advantage of the worldwide reputation and goodwill of the brand of the plaintiff. Further, the mark of the plaintiff was a well-known trademark, and the use of the same by the defendant on its products constitutes an infringement within the meaning of Section 29(4) of the Trade Marks Act, 1999.
Further, regarding the question of the suit being barred by limitation, the Court relied on the judgment of the Supreme Court in Midas Hygiene Industries (P) Limited v. Sudhir Bhatia and Others, wherein it was held that mere delay in filing the infringement suit is not a sufficient ground to defeat grant of an injunction to the aggrieved party, especially, in case of dishonest adoption.
Accordingly, the Delhi High Court granted an ad-interim injunction to the plaintiff and restrained the defendants, 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 is identical or deceptively similar to the plaintiff’s “BMW” trademark.
A mark is said to attain the status of a well-known mark when the mark has been continuously used and extensively promoted either within a territory or across the globe such that the public has started associating the mark with its proprietor and no one else, due to the extensive usage and promotion of the mark. A well-known trademark is protected under the Trade Marks Act, 1999 even against the use for dissimilar/disparate goods and services offered by other parties. The same can also be evidenced from the decision of the present case, wherein, the High Court held that mere dishonest adoption of a well-known trademark used for dissimilar goods and services is a valid ground of infringement.
[The author is an Associate in IPR practice in Lakshmikumaran & Sridharan, New Delhi]
 CS (COMM) 292/2017
 I.A. 4800/2017.
 MANU/SC/0186/2004: (2004) 3 SCC 90
 MANU/SC/0779/2018: (2018) 9 SCC 183
 MANU/SC/0256/1962: AIR 1963 SC 449
 MANU/SC/0197/1964: AIR 1965 SC 980
 MANU/SC/0197/1964: AIR 1965 SC 980
 MANU/SC/0186/2004: (2004) 3 SCC 90