The Hon’ble Delhi High Court has granted an interim injunction against Om Balajee Automobile (India) from using the mark ‘DMW’ in the matter of Bayerische Motoren Werke AG vs. Om Balajee automobile (India). Bayerische Motoren Werke AG (BMW) filed an IP suit against a local manufacturer of auto-rickshaws and e-rickshaws amongst other automobile vehicles, for using the mark ‘DMW’ on their vehicles. BMW claimed infringement of their reputed trademark ‘BMW’.

Facts of the matter

BMW is a German Automobile company which was founded and established in the year 1916. This brand is known for manufacturing and selling luxury cars and motorcycles. The trademark ‘BMW’ is registered b’ is registered by the company and it simply is an abbreviation of the company’s name. The company has registered its trademark in classes 7, 8, 9, 11 and 12, thereby has established its trademark as well known around the world. BMW entered the Indian automobile market in the 1980s and has been using its trademark in India ever since. The Defendant has been using the brand name ‘DMV’ since its formation for branding their e-automobiles especially e-rickshaws. The Plaintiff (BMW) filed this suit after it failed to reach an amicable middle ground with the Defendant.

Submissions/Arguments

BMW claimed that DMW is a clear infringement of the Plaintiff’s trademark ‘BMW’ as it not only sounds very similar but also appears similar. Infringement of trademark is when one copies other’s trademark or uses a similar trademark to make the sale or advertises it for profit-making purposes. If the trademark is similar to then it has a likelihood of confusing the customers which will affect the company’s sales and thus profit directly. Usage of DMW by the Defendant will most definitely confuse. The Plaintiff relied on the judgment by Supreme Court in the matter of Midas Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia and Ors wherein a similar a situation had arisen where a well-known trademark was adopted with a slight modification and was used to make sales. Counsel for BMW submitted that as per Article 6b is of the Paris Convention, the mark deserves protection as a well-known mark.

The Defendant, however, relied upon Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Ltd. wherein it was held by the Supreme Court that the difference in the price of the products of the two parties is sufficient to clarify the confusion amongst the customers, which if ever is created. The Defendants further submitted that the marks BMW and DMW are in totally different from each other in font, colour, size, etc. They also pointed out that there were similar automobile manufacturers with similar brand names such as AWM, PWM, etc. The Defendant also submitted that the suit was barred by limitation as the trademark ‘DMW’ had been in use since 2013.

Court Order

The Court used the principle the Supreme Court opined in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical 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 held that DMW appeared visually and phonetically very similar to BMW and granted an interim injunction against DMW from using the trademark ‘DMW’. Delhi High Court in a recent matter had observed that unless uniquely coined, an acronym trademark made up of alphabets or numbers is vulnerable to controversy as there is a very limited scope of protection.

Conclusion

BMW is a well-known trademark and DMW can be said to be an adaptation of BMW but this is for the Court to decide. The case is still pending in Delhi High Court but a decision will be soon delivered.