Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Pvt. Ltd

Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Pvt. Ltd

CS(COMM) 292/2017

Decided on 23 March 2020

Brief Facts

Plaintiff, Bayerische Motoren Werke AG, a German automobile company founded in 1916, is well-known for manufacturing and selling luxury cars and motorcycles under the brand name BMW, an abbreviation of its corporate name. The company registered its first BMW trademark back in 1917 and has since acquired numerous registrations for the same in various jurisdictions of the world, including classes 7, 8, 9, 11, and 12. In 1987, the company entered the Indian market and has been using the trademark extensively ever since.

Defendant, Om Balajee Automobile, a manufacturer and trader of electric automobiles, including E-rickshaws, has been trading under the brand DMW. In 2016, Bayerische Motoren Werke AG became aware of this and filed a suit against Om Balajee Automobile for the use of the DMW brand. The plaintiff attempted to reach an amicable settlement but was unsuccessful, hence this lawsuit is filed.

Plaintiff's submissions

The plaintiff argued that the defendant's use of the trademark "DMW DESHWAR MOTOR WORKS" with "DMW" being the most prominent part, was an infringement of their registered trademark "BMW" under Section 29(4) of the Trade Marks Act. The plaintiff claimed that these two marks were phonetically, visually and deceptively similar. Additionally, the trademark was being used dishonestly in connection with similar goods, resulting in passing off. The plaintiff's counsel relied on the Supreme Court judgment in the case of "Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Ors" where it was established that in the case of a well-known mark, the element of dishonest adoption is assumed while considering passing off. The plaintiff also argued that as the prior registered proprietor of the BMW marks worldwide, including in India, in several classes and with an international reputation as per Article 6bis of the Paris Convention, the mark deserved protection as a well-known mark in accordance with Sections 2(1) (zg) and 11(6) of the Act. The plaintiff believed that registration of the defendant's trademark would lead to the dilution of the well-known mark.

Defendant's submissions

The defendant argued that the marks "BMW" and "DMW DESHWAR MOTOR WORKS" are distinct from each other in terms of their font size, colour, and price range. They also claimed that the goods sold under these trademarks differed in nature, consumer class, and trade channels. The defendant pointed out that there were other similar automobile manufacturers in the market, such as "AMW" and "PMW", who were not opposed by the plaintiff. Additionally, the defendant argued that the suit was barred by limitation, as their mark had been in use since 2013. The defendant's counsel referred to the Supreme Court's judgment in "Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd." where it was stated that the difference in price range was enough to prevent confusion among consumers.

IS DMW- Visually and Phonetically similar to BMW?

The Hon'ble Delhi High Court had to decide whether two marks were deceptively similar or closely resembled each other, and whether this would cause confusion in the minds of others. In the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical4, the Supreme Court had previously stated that "comparison between two marks is done to determine whether the essential features of the plaintiff's mark are to be found in the defendant's mark". This was reiterated in this case. The court found that the Defendant's trademark DMW appeared visually and phonetically similar to the Plaintiff's mark and was, therefore, dishonestly adopted to take unfair advantage of the Plaintiff's reputation and goodwill. Even if there is a delay in filing an infringement suit, it does not defeat the aggrieved party's right to an injunction, especially in cases of dishonest adoption, as stated by the Hon'ble High Court5. As a result, an ad-interim injunction was granted in favour of the Plaintiff against the Defendant's use of the impugned trademark DMW.

Court Judgement

There is no fixed formula for winning a lawsuit for trademark infringement. The comparison between two marks depends on various factors such as public awareness, how similar the marks are, the products they represent, and whether there is a likelihood of confusion in the mind of a rational consumer. A trademark's strength is equivalent to its well-known status, and it receives a higher degree of protection due to its popularity among the general public. Section 29(4) along with the Doctrine of Dilution highlights the relationship between a mark's reputation and passing off. If the reputation of a well-known mark is dishonestly used to create a false impression or association in the consumer's mind, it damages the reputation of the former trademark in the public's view.

It's worth noting that acronym trademarks are susceptible to controversy because they are awarded limited protection unless they are uniquely coined and non-descriptive. This was recently upheld by the court in Superon Schweisstechnik India v. Modi Hitech India Ltd. The use of common English letters in an atypical way, such as BMW, along with the trademark's global reputation, made a strong argument in the plaintiff's favour. Therefore, protection for a well-known mark extends beyond the protection accorded to any other trademark, regardless of the dissimilarity in goods. The element of dishonest adoption is sufficient to establish a claim in an infringement suit.

Court Analysis

The case of Bayerische Motoren Werke AG vs. Om Balajee Automobile (India) Pvt. Ltd highlights the importance of protecting well-known trademarks. The court recognized the similarities between the plaintiff's well-known mark "BMW" and the defendant's mark "DMW DESHWAR MOTOR WORKS," and held that the defendant's mark was adopted dishonestly to take advantage of the plaintiff's reputation. The court granted an ad-interim injunction in favour of the plaintiff, emphasizing that delay in filing an infringement suit may not be a bar to seeking legal remedies. The case reinforces the legal principles governing trademark protection and offers insights into the court's considerations when deciding cases of infringement and passing off involving well-known marks.