A Battle between luxury mark and mark of a common-average man

Analysis of BMW AG v. Om Balajee Automobile (India) Pvt Ltd

What do you understand by the term ‘brand’? Is it a connotation to a particular name, sound, image of a person or a company, or is it just a word that pleases our ears and makes us fanatical about the goods to which the word is associated, enhancing our desire to achieve those particular goods?

It (brand) is mere a word like ‘apple, orange or cake or car’ so what is so fanatical about it? The answer to this is that the impression of the word, to which it is associated, is etched in the minds of the consumers, who come in contact with that word in any form, in the society. The word is etched in the minds of consumers through continuous goodwill and supply of high-class goods in the market, over a “passage of time”. For instance, Apple in ordinary sense, symbolizes a “fruit” but when it is associated with a phone manufacturing company, makes it a ‘brand’ that we all call by the name – ‘Apple Iphone”.

Does it remain unscathed ? The answer is  negative. The use of deceptively similar marks in any of its form[1], deteriorate or blur the goodwill of such brands, to which they are similar, and cause confusion as to the source of the goods and services. This brings me to the next question;  how do we call a mark deceptively similar to the mark already existing?

For this, I shall take a recourse to the provisions of the Trademarks Act,1999, to give meaning to the concept of deceptively similar. According to said Act, “a mark shall be ‘deemed’ to be deceptively similar if it nearly resembles the other mark, which in turn likely to deceive or cause confusion, as to the source, product, and quality of a goods and services.”[2] It is noteworthy to focus on few words in this definition such as ‘deemed, nearly, likely’ to draw the intention of the legislatures that ‘any’ mark is not de-facto, deceptively similar to other marks if it is identical to such mentioned/existing mark. In other words, it means that side by side comparison is not a sole factor for the determination of deceptive similarity, but mark must be examined as a whole.[3]

Recently the Delhi High Court in the case of Bayerische Motoren Werke AG (BMW) v. Om Balajee Automobile (India) Pvt Ltd[4] , was faced with similar conundrum, wherein the suit was filed seeking permanent injunction against the defendant’s use of an alleged identical mark- DMW (Deshwar Motor Works), in respect of goods including but not limited to E-rickshaws.

The case of the plaintiff was that- BMW was founded in the year 1916 in Munich and registered its mark-BMW as a trademark in the year 1917 under the class-12,7,8,9 and 11. Moreover, they have been manufacturer and seller of automobiles under the mark-BMW AG which are abbreviations of part of Bayerische Motoren Werke and Aktiengesellschaft respectively and have recorded significant revenue of 94.163 million Euros in the year 2016. The plaintiff claimed their mark to be well-known[5] in India[6] as well as around the different parts of the globe.

Whereas defendant applied for the registration of the mark -DMW on 04.03.2017 under class 12 for manufacturing, marketing and selling E-Rickshaws, E-Cart Rickshaws, Electric Cargo and Electric Loader.

What enticed me to go for this case was, how a company like BMW selling products worth 3 million (Rupees)  in a single go, can be affected by a small business operator who manufactures E rickshaw (under similar mark) worth mere 100k or less (Rupees).

The trigger to this litigation was pulled when the defendant refused to comply with the cease and desist notice sent by the plaintiff, to cease the use of the DMW mark in relation to E-rickshaws etc.

The plaintiff’s major bone of arguments to bring infringement case u/section 29(4) of the T.M Act,1999 against defendant was that- the defendant was using an identical and deceptively similar mark, to that of its mark-BMW, which in turn amounts to- dilution of the mark -BMW and also an act of passing off.

To substantiate, the plaintiff put forth that Defendant’s mark -DMW is identical to the mark-BMW in the sense that defendant has replace B with letter D  while keeping M and W identical. Thus, the mark-DMW is visually and phonetically similar to that of the plaintiff’s mark. The plaintiff further tried to convince the court that the plaintiff’s mark is quite well known and the defendant has intentionally adopted the identical mark to invoke the mark-BMW in the mind of the consumers.

Per contra, the defendant argued that their mark is completely different in terms of visually, structurally and phonetically difference, if compared to the plaintiff’s mark. The defendant meant to say that their class of buyers, nature of business and product of buyers are totally different, i.e., total value of product of defendant is about 50k and that of plaintiff’s product is 3 million. Hence, there arises no confusion per se, if both marks are compared[7].

The court here seems to be adopting the plaintiff’s version of arguments that brand/mark of the defendant is phonetically and visually similar to the plaintiff’s mark and the defendant sought to have unjust enrichment from the brand quality and goodwill of the plaintiff[8]. The court however looked confused. The court relied on the case of J.k Oil Industries v. Ganpati Food Products & ors[9], to pull out the jurisprudence of identical and deceptive similarity of a trademark, wherein the court further relied on the judgments of Amrit Dhara[10] & Durga Dutt[11], reiterated already established principles for deceptive similarity,

“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 trademark 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.”

(Emphasis supplied)

Still the hon’ble High court seemed to oversight/misunderstand the test of average consumer, when the court held that the use of DMW by the defendant, is likely to mislead an average man of ordinary intelligence.

I wonder what the hon’ble court taking an average man to be- the consumers who will be purchasing an automobile worth 3 million and will be confused by an E rickshaw worth 50k bearing mark DMW or an E-rickshaw puller who shall be buying (after years of saving) an automobile worth 100k or less (and would not be bothered whether it was DMW or BMW) to maintain his livelihood !!

The question that remained unanswered I felt in this case was – Who will be this average consumer of ordinary intelligence, which when coming in contact with the mark DMW will be perplexed with the mark- BMW?

[1] § 2 (m), Trademark Act,1999

[2] § 2 (h), Trademark Act,1999

[3] Parle Products (P) Ltd. v. J.P. and Co., AIR 1972 SC 1359; See also DB Ruston and Hornby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649, Cadbury India Limited v. Neeraj Food Products, 142 (2007) DLT 724, Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, (1965) 1 SCR 737

[4] CS (COMM) 292/2017, decided on 23.03.2020, Delhi High Court

[5] Article 6bis of Paris Convention, §2 (1) (zg) and §11 (6) of TM Act,1999

[6] Plaintiff sold first automobile bearing the mark -BMW in 1987 and since then commercial ties of plaintiff began in India. Further, Plaintiff owns numerous registrations covering broad arena of goods and services including class 7,9,12,25,28,36,37 and 39.

[7] The defendant relied on Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183. The hon’ble supreme court put in reference the Eight polaroid factors of American Trademark Law for carving out the principles of likelihood of similarity. Those were as interalia:-

(a)the strength of his mark, (b)the degree of similarity between the two marks, (c) the proximity of the products, (d)the likelihood that the prior owner will bridge the gap, (e)actual confusion, and (f)the reciprocal of defendant’s good faith in adopting its own mark, (g)the quality of defendant’s product, and (h)the sophistication of the buyers

[8] The plaintiff relied on the ITC Limited v. Philip Morris Products SA and Ors, ILR (2010) 2 DELHI 455 and Tata Sons Ltd. v. Manoj Dodia and Ors., 2011 SCC Online Del 1520.

[9] MANU/jk/0453/2017

[10] AmritDhara Pharmacy v. Satya Deo: AIR 1963 SC 449,

[11] Durga Dutt v. Navaratna Laboratories: AIR 1965 SC 980,