E-rickshaw Manufacturer Restrained from Infringing the BMW Mark!

Our Associate, Caroline Mathews discusses “E-rickshaw Manufacturer Restrained from Infringing the BMW Mark”

The Delhi High Court recently granted well-known German auto manufacturer, Bayerische Motoren Werke AG (”BMW AG”), an interim injunction against use of the DMW and DMW Stylized marks (shown below) by Om Balajee Automobiles (India) Private Limited (“Om Balajee”) on and in relation to  e-rickshaws. 

dmw

Sujata Chaudhri IP Attorneys represents BMW AG in this matter. 

BMW AG’s suit was based on its registrations for the BMW mark in Class 12, extensive and long use of the mark in India, worldwide fame of the mark and the similarities of the respective goods (e-rickshaws v. luxury automobiles).  In the alternative, BMW AG contended that even if the rival goods are dissimilar, its BWM mark was entitled to a broad scope of protection because it was well-known.  Therefore, Om Balajee’s use of the DMW and DMW (Stylized) marks on and in relation to e-rickshaws dilutes the distinctive quality of the BMW mark.   Om Balajee’s defense was that e-rickshaws are of a completely different nature compared to luxury cars and Ourthat the class of buyers and trade channels were also different. Further, the Defendant also stated that colour, font and size of the rival marks were not similar.

Granting BMW AG an interim injunction, the court held that the DMW and DMW Stylized marks are visually and phonetically similar to the BMW mark, such that they are likely to deceive and cause confusion to an average consumer. The Court went on to appreciate the quantum of evidenced placed on record by BMW AG, and ruled that the BMW mark is well-known that is to be afforded protection regardless of the goods/ services on which the infringing mark is used. The Court also ruled that use of the DMW and DMW Stylized marks constitutes trademark dilution under Indian trademark law. Om Balajee was, therefore, held to be prima facie infringing upon BMW AG’s rights in the BMW mark and encashing upon the reputation and goodwill which BMW AG enjoys in the BMW mark.

Om Balajee also contended that it has been manufacturing e-rickshaws under the DMW and DMW Stylized marks since 2013.  Therefore, BMW AG’s suit, which was filed in 2017, should be dismissed on the grounds of delay and laches. The Court ruled that Om Balajee’s contention regarding delay and laches was meritless.  BMW AG learned of Om Balajee’s use of the DMW and DMW Stylized marks in July, 2016, sent a cease and desist letter soon after, and filed the suit in early 2017. The Court relied on Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Others (2004) 3 SCC 90 to hold that “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”.

On the basis of the above, the Court concluded that the balance of convenience lay in favour of BMW AG and passed an interim injunction thereby restraining Om Balajee 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 marks which are identical or deceptively similar to the BMW marks.