By Tulip De and Isha Tiwari
The Hon’ble Delhi High Court on March 23, 2020 granted interim injunction to auto giant BMW in Bayerische Motoren Werke AG vs. Om Balajee Automobile (India) for restraining use in respect of automobile goods, especially E-rickshaws, bearing the mark DMW, as the same amounted to infringement of the Plaintiff’s rights subsisting in its reputed trademark BMW.
The Plaintiff (Bayerische Motoren Werke AG) is a German automobile company, founded in 1916 and is renowned for manufacturing and selling automobiles vis-a-vis luxury cars and motorcycles under the brand name BMW, an abbreviation of its corporate name. The Plaintiff registered its first BMW trademark back in 1917 and since then owns numerous registrations for the same in classes 7, 8, 9, 11 and 12, thereby, acquiring the status of being well-known in various jurisdictions of the world. The Plaintiff entered the Indian market in 1987 and has continuously and extensively been using the said trademark.
The Defendant (Om Balajee Automobile) is stated to be a manufacturer and trader of a variety of electric automobiles especially E-rickshaws and has been trading under the brand DMW. The Plaintiff gained knowledge of the same in 2016 and henceforth, filed the present suit in failure of reaching an amicable settlement in the matter.
The Plaintiff contended that the Defendant’s use of the trademark DMW DESHWAR MOTOR WORKS, wherein DMW is the prominent part thereof, was an infringement of its registered trademark BMW under Section 29(4) of the Trade Marks Act, as the same was phonetically, visually and deceptively similar. Moreover, the trademark was being dishonestly used in respect of similar goods and thus, resulting in passing off. The Plaintiff’s counsel relied on the Supreme Court judgment in Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Ors wherein in the case of well-known mark, the element of dishonest adoption is assumed while considering passing off. Further, it was also contented that being the prior registered proprietor of the BMW marks worldwide, including India, in several classes and international reputation as per Article 6bis of the Paris Convention, the mark deserves protection as a well-known mark in accordance with Sections 2(1)(zg) and 11(6) of the Act and registration would lead to dilution of well-known mark.
It was the contention of the Defendant that the said marks BMW and DMW DESHWAR MOTOR WORKS are entirely different with respect to font size, colour, price range etc. Further, the goods sold under the trademark differed in terms of nature, class of consumers and trade channels. Notwithstanding the same, similar automobile manufacturers were co-existing in the market who were unopposed by the Plaintiff such as AMW, PMW. The Defendant had also relied on the suit being barred by limitation, in lieu of the acknowledgement that the Defendant’s mark had been in use since 2013. The counsel for the Defendant relied on the Supreme Court’s judgment in Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd., wherein the difference in price range was a sufficient quotient to rule out confusion amongst consumers.
DMW- Visually and Phonetically similar to BMW
The question of law as formulated by the Hon’ble Delhi High Court was whether the two marks are deceptively similar or nearly resemble each other and would the same lead to confusion in the minds of others? In the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical, the Supreme Court had once opined 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” and the said principle was iterated herein. It was held that the Defendant’s trademark DMW appeared visually and phonetically similar and was, prima facie a dishonest adoption, with a view to take unfair advantage of the Plaintiff’s reputation and goodwill. Even mere delay in filing an infringement suit does not defeat the aggrieved party’s right to injunction, especially in the case of dishonest adoption, as laid down by the Hon’ble High Court. In view of such findings, the Court granted an ad-interim injunction in favour of the Plaintiff against the Defendant’s use of the impugned trademark DMW.
In a suit for infringement, there is no straightjacket formula for success. Comparison between two marks depends on multiple facets such as public awareness, degree of similarity between the marks and their respective products, likelihood of confusion in the mind of a rational consumer etc. In such cases, a trademark’s strength is synonymous to its well-known status and on account of its popularity amongst the general public it enjoys a comparatively higher degree of protection. Section 29(4) read with the underlying principle of Doctrine of Dilution, highlights the apparent relationship between the reputation of a mark and passing off, wherein the renowned reputation of a well-known mark may be dishonestly used to conjure up false impression or association in the consumer’s mind with respect to the impugned mark, thus damaging the established reputation of the former trademark in the public’s eye.
It is a notable observation that acronym trademarks are vulnerable to controversy as they are awarded limited scope of protection unless uniquely coined and non-descriptive, and this was recently upheld by this Court in Superon Schweisstechnik India v. Modi Hitech India Ltd. Use of common English letters in an uncharacteristic way such as BMW, alongwith the trademark’s global reputation made a substantial argument in the Plaintiff’s favour. Hence, protection for a well-known mark extends above and beyond the protection accorded to any other trademark, irrespective of dissimilarity in goods, and the element of dishonest adoption is sufficient in establishing one’s claim in an infringement suit.
Well-known-ness is the elite status which the registered proprietor of a trademark wishes to achieve. Continuous use, extensive promotion and worldwide registrations, alongwith dynamic technological advancements, especially the Internet, the reputation of a trademark is quickly reaching far-off shores in today’s world. It is pertinent to mention, that reputation may not necessarily be cross-border, it may also be restricted to a particular territory, so long it is well recognised and established within a particular community. A well-known mark attracts resilient protection in an infringement suit and can be achieved either by a judicial pronouncement or as per the Registrar’s discretion as per the statutory guidelines .
 CS(COMM) 292/2017 –
 (2004) 3 SCC 90
 (2018) 9 SCC 183
 1965 AIR 980, 1965 SCR (1) 737
 Supra Note 2
 CS (COMM) No.750/2018;
India: Conflict and ruling on bonafide use of acronym as trademark
; https://ssrana.in/articles/india-conflict-and-ruling-on-bonafide-use-of-acronym-as-trademark/; accessed on May 15, 2020
 Rolex Sa Vs. Alex Jewellery Pvt. Ltd. & Ors. (2009) 41 PTC 284 (Del)
 Section 11(6) – (9) of the Trade Marks Act, 1999