Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited

(i) It is stated that it is a matter of fact that the defendant’s DMW mark is similar to the plaintiff’s BMW mark in appearance, sound and structure. It is CS(COMM.)292/2017 Page 6 pleaded that the only plausible reason for the defendant’s adoption of the said DMW mark is to invoke the plaintiff’s BMW mark in the mind of the consumers. Given the well-known nature of the plaintiff’s well-known mark it is unfathomable that the defendant was unaware of the marks.

(ii) It is further pleaded that this is a clear case of dilution of the trademark of the plaintiff attracting section 29(4) of the Trademarks Act. It is pleaded that dilution may also occur when well-known trademark is used in respect of the goods or services of an inferior quality. In view of the fact that section 29(4) of the Trademarks Act is attracted the element of having to show the likelihood of confusion is absent.

(iii) It is further pleaded that the test is of an average consumer to see as to whether an average consumer of imperfect recollection would get confused by the use of the trademark by the defendant. In the present case it is pleaded that this is a clear case of likelihood of confusion in the mind of an average consumer.

(iv) It is further stated that dishonest adoption has now been recognised as an independent head under passing off. Where the goods in issue have a well-known mark having worldwide reputation and a subsequent entrant adopts a mark that comes close to or approximate to the original mark, the adoption of the mark itself is dishonest and an injunction must follow. Reliance is placed on the judgment of the Supreme Court in the case of Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Others, (2004) 3 SCC 90.

11. Learned counsel appearing for the defendant pleads as follows:-

(i) It is pleaded that the mark of the defendant DMW is entirely different, visually, structurally and phonetically from the mark of the plaintiff CS(COMM.)292/2017 Page 7 company. It is admitted fact that the defendant has filed an application to register the mark DESHWAR Motor Works DMW which itself shows on the plate which is tagged on the E-Rickshaw.

(ii) It is pleaded that the nature of the business, class of buyers and product of parties are totally different. The defendant is not using any logo. The defendant has also applied for registration of an inverter which is not manufactured by the plaintiff.

(iii) The total value of the product of the defendant is about Rs.50,000/and that of the plaintiff company is a minimum of Rs.35 lacs. Reliance is placed on judgment of the Supreme Court in Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183 to plead that no confusion is caused.

12. I may first have a look at the nature of the mark being used by the parties. The plaintiff uses the mark BMW. It also uses the following logo:- On the other hand the defendant has on 4.3.2017 filed an application to register the mark under the class 12. The defendant also uses the mark. The stress of the defendant is on the mark DMW.

13. Principles governing the resolution of disputes relating to identical and deceptive similarity of the trademark have been succinctly stated by the CS(COMM.)292/2017 Page 8 judgment of the High Court of Jammu & Kashmir in J.K.Oil Industries v. Ganpati Food Products & Ors., MANU/JK/0453/2017, as follows: “12. Principles governing the resolution of disputes relating to identity and deceptive similarity of trade marks have been laid down by the Supreme Court from time to time. In Corn Products Refining Company v Shangrila Food Products Limited: AIR 1960SC 142, the registered trade mark "Glucovita" of therein appellant was pitted against therein respondents' mark "Gluvita", which they had applied for its registration. Dealing with the question as to whether there was likelihood of confusion between the two marks, which was the view taken by Desai, J. of the Bombay High Court in that case, the Supreme Court observed as follows:

CS(COMM.)292/2017 Page 9 buyers in our country to distinguish the one mark from the other."

13. In AmritDhara Pharmacy v Satya Deo: AIR 1963 SC 449, the respondents therein had applied for registration of trade name "Lakshmandhara" in respect of a medicinal preparations for the alleviation of various ailments. This was opposed by therein appellant whose earlier registered trade name was "AmritDhara" in respect of a similar medicinal preparation. The question, which arose was whether the name "Lakshmandhara" was likely to deceive the public or cause confusion to the trade. Supreme Court in this has observed: "It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion." The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of cl. (a) of s. 8, or sub-s. (1) of s. 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause Confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are CS(COMM.)292/2017 Page 10 assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J. in Pianotist Co. s Application (1), 'which was also a case of the comparison of two words- "You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks (1) (1906) 23 R. P. C. 774,777. For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be. adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks, that it differs from the mark on goods which' he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. (See Kerly on Trade Marks, 8th edition, p. 400.)"

14. In Durga Dutt v Navaratna Laboratories: AIR 1965 SC 980, Supreme Court has pointed out: "In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the CS(COMM.)292/2017 Page 11 plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."

16. Supreme Court in Durga Dutt's case has held also that 'where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered. ''The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of CS(COMM.)292/2017 Page 12 fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. In view of the stated legal position, the issue centers around as to whether the trademark being used by the defendant is deceptively similar or nearly resembles the mark of the plaintiff or is likely to deceive or cause confusion.

15. A perusal of the aforesaid two trademarks of the parties shows that the defendant has 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.

16. Learned counsel for the defendant has, however, strongly urged that the products being manufactured by the defendant are entirely different i.e. E-Rickshaws. The plaintiff does not manufacture such a product. Further, the cost of E-Rickshaw being under Rs.[1] lac the consumers who deal with the E- Rickshaws would not have any connect with the plaintiff whose entry level vehicles itself cost about Rs.35 lacs. Reliance was placed on judgment of the Supreme Court in Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd., (supra).

17. The plaintiffs have in response urged that the principle of dilution of a well-known would apply to the facts of this case inasmuch as section 29(4) of the Trademarks Act is attracted. Reliance is placed on judgment of a coordinate Bench of this Court in ITC Limited vs. Philip Morris Products SA and Ors, ILR (2010) 2 DELHI 455 and Tata Sons Ltd. vs. Manoj Dodia and Ors., 2011 SCC Online Del 1520. CS(COMM.)292/2017 Page 13

18. I may first look at the judgments relied upon by learned counsel for defendant i.e. Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation LTd., (supra). In that case the issue pertained to trademark NANDINI in respect of the products, namely, milk and milk products which were being used by the respondent since 1985 as against the appellant who was in the business of running restaurants and who had adopted the mark NANDHINI for restaurants since 1989. In those facts the Supreme Court held as follows:- “28. We are of further opinion that the earlier order dated 20-4-2010 of IPAB approached the subject-matter in the correct perspective. The test laid down in Polaroid Corpn. v. Polarad Electronics Corpn. [Polaroid Corpn. v. Polarad Electronics Corpn., 182 F Supp 350 (1960)] is as follows: “The problem of determining how far a valid trade mark shall be protected with respect to goods other than those to which its owner has applied it, has long been vexing and does not become easier of solution with the years. Neither of our recent decisions so heavily relied upon by the parties, Harold F. Ritchie Inc. v. Chesebrough-Pond's Inc. [Harold F. Ritchie Inc. v. Chesebrough-Pond's Inc., 281 F 2d 755 (2d Cir 1960)], by the plaintiff, and Avon Shoe Co. Inc. v. David Crystal Inc. [Avon Shoe Co. Inc. v. David Crystal Inc., 279 F 2d 607 (2d Cir 1960)] by the defendant, affords much assistance, since in Ritchie case [Harold F. Ritchie Inc. v. Chesebrough-Pond's Inc., 281 F 2d 755 (2d Cir 1960)] there was confusion as to the identical product and the defendant in Avon case [Avon Shoe Co. Inc. v. David Crystal Inc., 279 F 2d 607 (2d Cir 1960)] had adopted its mark “without knowledge of the plaintiffs' prior use”. Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of the defendant's good faith in adopting its own mark, the CS(COMM.)292/2017 Page 14 quality of the defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities — the court may have to take still other variables into account. American Law Institute, Restatement of Torts, §§ 729, 730, 731. Here the plaintiff's mark is a strong one and the similarity between the two names is great, but the evidence of actual confusion, when analysed, is not impressive. The filter seems to be the only case where the defendant has sold, but not manufactured, a product serving a function similar to any of the plaintiff's, and the plaintiff's sales of this item have been highly irregular, varying e.g. from $2,300 in 1953 to $303,000 in 1955, and $48,000 in 1956.”

29. This Court in National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd. [National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1953 SC 357] accepted the following principles which are to be applied in such cases: (AIR p. 363, para 22) “22. The principles of law applicable to such cases are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the prohibition of Section 8 and therefore it should be registered. Moreover, in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.”

30. Applying the aforesaid principles to the instant case, when we find that not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which CS(COMM.)292/2017 Page 15 they are traded by the appellant and the respondent respectively, highlighted above, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.”

19. Hence the court held that where the products are different, prior owner’s chance of success is a function of many variables; the strength of his mark, the degree of similarities between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, etc. etc. All variables have to be taken into account. Based on the above the court on the facts of that case concluded that visual appearance of the two marks is different and they relate to different products. Further, the manner in which they are treated by the appellant and the respondent respectively the court concluded that it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent. Clearly, in the facts of that case the court came to a conclusion that an average man of ordinary intelligence would not associate the goods of the appellant as that of the respondent. In my opinion, the facts of the present case are materially different. The strength of the trademark of the plaintiff cannot be disputed. The plaintiff is manufacturing motorcycles under the mark BMW since 1923 and motor cars since 1928, under the said mark. It has assembly plants in 14 countries and a global sales network in more than 140 countries. The plaintiff and affiliated companies have a work force nearly of 1,25,000. In 2016, it had a revenue of 94.163 million Euros. In 2016, 23,67,600 vehicles were sold worldwide by the plaintiff of which two million vehicles were cars with the brand BMW mark. In these circumstances, the use of the mark DMW by the defendant prima CS(COMM.)292/2017 Page 16 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.

20. Regarding the principle of Dilution as urged by learned senior counsel for the plaintiff in this context reference may be had to Section 29 (4) of The Trade Marks Act, 1999 which reads as follows:

21. In the aforesaid context reference may be had to the judgment of a coordinate Bench of this court in ITC Limited vs. Philip Morris Products SA and Ors, I (supra) where the court held as follows: “48. It is an established principle, in India, that in any trademark infringement action, the question of similarity (of the rival marks) is to be addressed first. Here, the test — evolved over 40 years ago — of course in the context of similar goods and applied consistently by the court, was summarized by the following quote, (from an old English decision) by the Supreme Court, in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 onwards: CS(COMM.)292/2017 Page 17 “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks.” This court is of opinion that the test here (for dilution) is not exactly the same. For one, Parliament has consciously eschewed the “deceptively” similar standard-which is defined by Section 2, in relation to infringement claims under Section 29(4). This would mean that the identity or similarity standard is a notch higher — the claimant has to prove or establish that the two marks are identical with or similar to each other. The question of deception does not arise here. There must be a near identification of the two marks or they must have the closest similarity. The second aspect is that the other elements necessary to establish dilution dissimilarity of goods, the claimant mark having a reputation in India; the use of the mark without due cause, resulting in detriment to it, or the defendant taking undue advantage, have to be established. These ingredients are all to be established, as the conjunctive “and” is used, in Section 29(4).”

22. Similarly, reference may be had to the judgment of another coordinate Bench of this Court in Tata Sons Ltd. vs. Manoj Dodia, (supra) where the court was dealing with the trademark of the plaintiff i.e. TATA. The defendant was selling weighing scales and spring balances under the trade mark A-One TATA where the court held as follows: CS(COMM.)292/2017 Page 18 “20.Since the trademark TATA is a well known trademark, use of the aforesaid mark by the defendant on the products being sold by him also constitutes infringement within the meaning of Section 29(4) of the Trademarks Act, 1999 since by using the trademark TATA, he obviously has tried to take an unfair advantage by encashing upon the brand quality and goodwill, which the mark TATA enjoys in the market. Since the defendant has not come forward to contest the suit, the presumption is that use of the mark A-ONE TATA by him is not bona fide, but is deliberate, intended to encash the popularity and reputation, which TATA brand enjoys. Such use by the defendant is likely to be detrimental to the reputation and distinctive character of the registered trademark TATA of the plaintiff company because if this mark is allowed to be used on the products, which do not originate from TATA group of companies, that may diminish the ability of the trademark TATA to identify the source of the goods in respect of which this trademark is used, besides lowering its reputation in case the quality of the goods is not of expected standard.”

23. It is manifest from the facts narrated above that the brand of the defendant is visually and phonetically similar to the mark of the plaintiff. Further, the plaintiff’s mark is a well known trademark and use of the aforesaid mark by the defendant on its product constitutes infringement within the meaning of Section 29(4) of the Trademarks Act. The defendant is obviously 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 trade mark of the petitioner.

24. The last plea raised by learned counsel for defendant was that the defendant has been manufacturing the said E-Rickshaws using the said brand CS(COMM.)292/2017 Page 19 DMW since 2013. It is claimed that the plaintiff was aware of this. Hence, the present suit is barred by delay, laches and limitation.

25. Factually, the said contention of learned counsel for defendant is erroneous as in the plaint, the plaintiff states that the defendant got knowledge of the use of the trademark by the defendant on or around 01.07.2016. Immediately, thereafter, on 12.07.2016 a Cease and Desist notice was sent to the defendant. The suit has been filed in 2017 itself.

26. In this context, reference may be had to the judgment of the Supreme Court in Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Others (2004) 3 SCC 90 where the Supreme Court held as follows: “5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.” Hence, even if there was delay on the part of the plaintiff in filing of the present suit as has been claimed by the defendant, the same delay would not be sufficient to deter grant of injunction in favor of plaintiff.

27. The plaintiffs have made out a prima facie case. Balance of convenience is in favour of the plaintiff and against the defendant. An ad interim injunction is passed 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 CS(COMM.)292/2017 Page 20 bearing the mark DMW or any other mark which are identical or deceptively similar to the plaintiff’s BMW marks.

28. Application stands disposed of.

JAYANT NATH, J MARCH 23, 2020 n