Delhi High Court restrains automobile company from using the trademark DMW in E-rickshaws

The Delhi High Court passed an ad interim injunction to restrain a company from using the trademark DMW in its E-rickshaws.

Bayerische Motoren Werke AG (BMW), a German company that manufacturers motorcycles and cars filed a petition seeking injunction with the Delhi High Court against the defendant Om Balajee Automobile (India) Private Limited which was manufacturing, marketing and selling E-Rickshaws, E-Cart Rickshaw, Electric Cargo and Electric Loader under the trademark DMW. The plaintiff sought a permanent injunction to restrain the defendant from using the trademark DMW as it was identical and deceptively similar to the plaintiff’s BMW Marks. BMW pleaded that the defendant has committed an act of passing off.

According to BMW, it obtained the first trademark registration for the BMW logo in 1917 and that the BMW mark is a well-known trademark and has been so accepted in decisions of courts and other judicial bodies across the world and qualifies as a well-known trademarks under Article 6bis of the Paris Convention. Further, BMW asserted that in India the commercial ties of the company began in 1987 when the automobiles bearing the BMW marks were first sold in India.

According to the plaintiff, it came to know of the said mark in July 2016 when E-Rickshaws with trademark DMW was spotted plying on the road. A cease and desist notice was sent to defendant immediately to cease the use of the DMW mark in relation to e-vehicles or any other goods. However, the defendants refused to comply with the submissions put forth by the plaintiff and justified the use of the mark DMW and the domain name.

The defendant pleaded that it has filed an application to register the mark Deshwar Motor Works (DMW) which is tagged on its E-Rickshaw.

The Delhi High Court held that the use of the mark DMW by the defendant prima facie appeared to be a dishonest act with an intention of trying to take advantage of the reputation and goodwill of the BMW brand (of the plaintiff). The Court further observed that it is likely to mislead an average man of ordinary intelligence.

The Delhi High Court relied on ITC Limited vs. Philip Morris Products SA and Ors and held that the established principle in India is that in any trademark infringement action, the question of similarity (of the rival marks) is to be addressed first.

The Court observed that the BMW is a well known trademark and use of the aforesaid mark (DMW) by the defendant on its product constitutes infringement under Section 29(4) of the Trademarks Act. The Court held that “The defendant is obviously seeking to encash upon the brand quality and goodwill which the mark BMW enjoys in the market. Such use by the defendant is detrimental to the reputation of the registered mark BMW of the plaintiff company. The defendant is prima facie guilty of infringement of the trade mark of the petitioner.”

The Court added that the balance of convenience was in favour of the plaintiff and against the defendant and therefore passed an ad interim injunction thereby restraining the defendants, its officers, agents etc. 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 marks.

Justice Jayant Nath of the Delhi High Court presided over the case.

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