Esha Nath
Published On: February 02, 2022 at 19:18 IST
The Delhi High Court in the case of Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited granted an Ad-Interim Injunction to the Plaintiff and restrained the Defendants 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”.
Adjudicating on the argument of the Defendant regarding the descriptive nature of the word “Baazi” as non-violative of the Petitioner’s trademark, Justice Asha Menon observed as follows:
“To sum up, no reason for such adoption of the same word “Baazi” has been offered by the defendants except to claim that “Baazi” is a descriptive. After all, the trademark of the defendants is WinZo. Where was the need to borrow the word used by the Plaintiff along with its registered trademark, if it was not for benefitting from the goodwill of the plaintiff’s trademark?”
BMW AG, the Plaintiff, contended that the Defendant’s mark “DMW DESHWAR MOTOR WORKS” was deceptively similar to its “BMW” trademarks, as “DMW” formed the prominent part of the Defendant’s mark.
It was pleaded that both “BMW” and “DMW” marks consisted of three letters, of which second and third letters “M” and “W” were identical, and that the Defendant had just replaced the letter “B” with “D”. BMW AG plead that the mark of the Defendant was visually and phonetically similar to “BMW”, and the same was used for similar goods.
Therefore, the Defendant had committed an act of passing-off. BMW AG also contended that the Defendant dishonestly adopted “DMW” mark to free ride on the goodwill and reputation earned by the plaintiff on its well-known “BMW” trademarks.
Further, it submitted that dishonest adoption has now been recognized as an independent head under passing-off. Reliance was placed by BMW AG on the Supreme Court Judgment in Midas Hygiene Industries (P) Limited v. Sudhir Bhatia and Others.
The Supreme Court had held that if the essential features of the Trademark of the Plaintiff have been adopted by the Defendant, no further evidence is required to prove the passing off by the Defendant.
The Delhi High Court while relying on said principle held that there is clearly a visual and phonetic resemblance in the marks and the Defendant had adopted the essential features of the Trademark of the plaintiff. Such an adoption was prima facie a dishonest adoption, intending to take undue advantage of the reputation of the brand of the plaintiff.