By: Surbhi Verma
As Trademarks play a vital role in allowing individuals as well as businesses to maintain the quality and helps them to distinguish their goods and services from that of another.
The logo, symbols and words relating to a specific brand are etched into the minds of customers by persistent goodwill and steady delivery of high-quality products over a time span in the market which creates a unique identity for their business.
The case of Bayerische Motoren Werke AG vs. Om Balajee Automobile (India) Pvt. Ltd. will further help us to understand how trademarks are important and how does a deceptively similar mark deteriorate or blur the goodwill of other trademark to which they are similar too.
A deceptively similar mark is defined under Section 2(h) of the Trademark Act, 1999 which means a mark that resembles the other mark, which in turn is likely to deceive or cause confusion, as to the source, product, and quality of a goods and services.
• Brief Overview
Bayerische Motoren Werke AG famously known as BMW is a German multinational company which manufactures/produces luxury vehicles and motorcycles. It was established in the year 1916, and it registered its mark BMW in the year 1917 under Class-12, 7, 8, 9, and 11.
This mark was termed as well-known mark due to extensive and continuous use in India and qualifies as a well-known trademark as envisaged in the Trademark Act, 1999.
A well-known trademark under Section 2(zg) of Trademark Act, 1999 refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
Whereas, Om Balajee Automobile (India) Pvt. Ltd is a homegrown company producing, marketing and selling E-Rickshaws, E-Cart Rickshaws, Electric Cargo, and Electric Loader under the mark DMW under Class- 12.
BMW (plaintiff) issued a cease and desist notice in 2016 and subsequently filed a lawsuit against Om Balajee Automotive (India) Pvt. Ltd (Defendant) to discontinue the use of the mark DMW.
• Claims by BMW
The principal claims of the plaintiff against the defendant was that the impugned mark DMW was deceptively similar to their mark BMW.
The plaintiff further submitted that both marks BMW and DMW consist of three characters, of which the second and third characters are identical, making both the marks phonetically and structurally very similar.
They further claimed before the court that their mark (BMW) is a well-known mark and the defendant purposely used the same mark to invoke their mark in the mind of customers. Therefore, it “seems like a deceptive act in order to use their prestige and goodwill.”
• Claims by DMW:
The defendant argued that his mark is different visually, structurally and phonetically from that of the plaintiff’s mark.
They further claimed that his section of customers, class and nature of business is completely different from that of the plaintiff. Therefore, if both marks are compared there is no per se similarity.
The Delhi High Court decided that the name of the DMW would be identical in visual and phonic terms and would consequently confuse the prudent person.
The court has ordered the Indian company to “restrain from manufacturing, exporting, importing or offering for sale, advertising or in any manner dealing with goods not limited to e-rickshaws bearing the mark DMW or any other mark which are identical or deceptively similar to the plaintiff’s BMW mark.”
The fight for Trademark protection against deceptively similar mark isn’t new, the comparison between the two marks depends on various factors such as awareness of public, the extent of similarities between the marks and the goods and services provided by them etc.
In this case, the significance of a trademark is synonymous with its renowned reputation and it enjoys a relatively high level of defense because of its reputation in the general public.
Hence, the judgment provided by High Court stating that DMW is deceptively similar to BMW mark is precise as it can lead to confusion in the mind of prudent individuals. Therefore it is, acknowledged that trademarks play a vital role in the growth of all business structures across the globe.