Justice Jayant Nath of the Delhi High Court restrained an Indian e-rickshaw manufacturer from “in any manner dealing with any goods” bearing the mark ‘DMW’ or any other mark identical or deceptively similar to that of German automobile major, BMW.
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.
- 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 well-known trademarks as envisaged in section 2(1) (zg) and section 11(6) of The Trademarks Act, 1999.
- The court rejected the stand of the Indian company, Om Balajee Automobile (India) Private Limited that it has been manufacturing e-rickshaws under the ‘DMW’ trademark since 2013 and BMW approached the High Court only in 2017 after a delay of four years.
- It noted in its order that the German company has been manufacturing motorcycles under the BMW mark since 1923 and cars since 1928.
- The Court said that the company has assembly plants in 14 countries, global sales network in more than 140 nations, the revenue of €94.163 million in 2016 and these circumstances, use of the mark ‘DMW’ by the Indian company “prima facie appears to be a dishonest act to try to take advantage of the reputation and goodwill” of BMW.
- The Court said that “It is likely to mislead an average man of ordinary intelligence”.
- It further noted that the Indian company’s brand was “visually and phonetically similar” to the mark of BMW which is a well-known trademark and therefore, its use by Om Balajee on its products “constitutes infringement” under the Trademarks Act.
- The Court said, “The plaintiff (BMW) has made out a prima facie case. Balance of convenience is in favour of the plaintiff and against the defendant.”
- The Court in its interim order said that prima facie Bayerische Motoren Werke (BMW) has made out a case that the Indian company was infringing upon its trademark with a “dishonest intention” to take advantage of the reputation and goodwill of the German company.
- The Court said that “Even if there was a delay on the part of the plaintiff (BMW) in the filing of the present suit as has been claimed by the defendant (Om Balajee), the same delay would not be sufficient to deter grant of injunction in favour of the plaintiff”.
- The Court said that “The defendant (Om Balajee) is seeking to encash upon the brand quality and goodwill which the mark BMW enjoys in the market. Such use by the defendant is detrimental to the reputation of the registered mark BMW of the plaintiff company. The defendant is prima facie guilty of infringement of the trademark of the petitioner.”
Edited by J. Madonna Jephi
Approved & Published – Sakshi Raje
- Case of Bayerische Motoren Werke Ag vs. Om Balajee Automobile (India) Private Limited, IA No.4800/2017, In the High Court of Delhi at New Delhi, Judgment Pronounced on 23.03.2020.