THE TRADEMARK WAR BETWEEN BMW AND DMW.

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German automobile manufacturer, Bayerische Motoren Werke AG (BMW or BMW AG) had obtained a favourable order from the Hon’ble Delhi Court against an e-rickshaw manufacturer being Om Balajee Automobile (India) Pvt. Ltd. trading in the name of DMW (Deshwar Motor Works).

In July 2016, the Plaintiff had learnt of the Defendant’s mark and had issued a cease in desist notice to the Defendant to cease the use of the DMW mark of the Defendant. The Defendant had replied to the cease and desist notice denying to comply with the submissions put forth by the Plaintiff, leaving the Plaintiff no option but to file the present suit.

The Plaintiff had pleaded that in the year 2016 the Plaintiff had a revenue of 94.163 million Euros from its sales around the world and had spent 6.030 million Euros on advertising.

The Plaintiff’s marks in India were registered under various classes being 7, 9, 12, 25, 28, 36, 37, and 39 and the earliest Indian registration for the BMW mark dates back to 1956. The Plaintiff had reiterated that the Plaintiff’s marks were well-known due to extensive and continuous use in India and qualified as a well-known trademark as envisaged in the Trademark Act, 1999.

It was the case of the Plaintiff that the Defendant had committed an act of passing off and was in complete violation of the Plaintiff’s trademark rights in the Plaintiff’s BMW marks. The Plaintiff had mentioned the following similarities between the two marks –

  • Both marks (BMW and DMW) consist of three characters, of which the second and third character are identical.
  • The first characters being D and B are visually and phonetically similar.
  • The Defendant was using its mark in relation to goods such as e-rickshaws which are goods somewhat similar to the automobiles covered by the Plaintiff’s BMW mark.

The Court then dived into the principles governing the resolution of disputes relating to identical and deceptive similarity of the trademarks that were well established in the case of J. K. Oil Industries vs. Ganpati Food Products and Ors. that made reference to the following judgements –

The aforementioned case was decided by the Hon’ble Bombay High Court and taken in appeal to the Hon’ble Supreme Court, the marks in dispute being ‘Glucovita’ and ‘Gluvita’.

The Hon’ble Supreme Court opined that in deciding a question of similarity between two marks, the marks have to be considered as a whole.

 Apart from the syllable ‘co’ in the appellant’s mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.

The marks in dispute in this case before the Hon’ble Supreme Court were ‘Lakhsmandhara’ and ‘AmritDhara’. The Court ruled that “It will be noticed that the words used in the sections and relevant for our purpose are “likely to deceive or cause confusion.”

The Court made reference to an observation of 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.

The Hon’ble Supreme Court in the aforementioned case held 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.

Some of the other defense taken by the Defendant being –

  • Products being manufactured by the Defendant were entirely different;
  • The Plaintiff had delayed in filing the suit;

were rejected by the Hon’ble Court in its well reasoned judgement.

In paragraph 15 and 23 of the judgement, the Hon’ble Supreme Court held that there is a visual and phonetic resemblance in the marks and the essential features of the Plaintiff’s marks are copied in the Defendants’ mark and the same are likely to deceive and cause confusion.

The Hon’ble Court further held that the Defendant was seeking to encash upon the brand quality and goodwill which the mark BMW enjoys in the market and such use by the Defendant was detrimental to the reputation of the registered mark BMW of the Plaintiff and held that the Defendant was prima facie guilty of infringement of the trademark of the Plaintiff.

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