E-Rickshaw Manufacturing Company Restrained by Delhi High Court from Operating Under the Impugned Name ‘DMW’

Naming a brand similar to a well-known trademark has been a fairly common practice by industrial newbies. The malevolence behind this act is to achieve indisputable brand image and easy profits in the beginning itself. Such acts has been a point of discussion in various landmark judgments including Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors [AIR 1985 All 242], Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan [AIR 1994 Delhi 239] and Honda Motors Co. Ltd. v. Charanjit Singh & Ors [101 (2002) DLT 359] amongst many others, wherein a common ratio was laid down by the Courts, focusing on grant of protection to the original brand owners against the attempts of the brand dilution by these defendants. Another case involving similar grounds was recently heard by the Hon’ble Delhi High Court, eventually restraining the defendants from carrying on the business under the impugned brand name.

The renowned German car manufacturing and distribution brand, Bayerische Motoren Werke AG, a.k.a. BMW, was founded in the year 1916. Operating in more than 140 countries, this brand generates average revenue amounting to approximately €95 million from world-wide sales.

BMW approached the Delhi High Court in the year 2017, alleging that an E-rickshaw manufacturing company, M/S Om Balajee Automobile (India) Pvt. Ltd., was producing E-rickshaws under the brand 'DMW’, since the year 2013, subsequently resulting in dilution of the hard-earned brand reputation of this 104-years old German brand. Under these circumstances, BMW contended, “the use of the mark DMW by the defendants, prima facie appears to be a dishonest act with an intention of trying to take advantage of the reputation and goodwill of BMW”. On the other hand, DMW defended themselves by stating, that the German car-giant, filed the case after a delay of four years, thus, cannot claim for an order of injunction.

On March 23rd, 2020, Justice Jayant Nath of the Delhi High Court observed, “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”. It was added, “The plaintiff (BMW) has made out a prima facie case. Balance of convenience is in favour of the plaintiff and against the defendant”.

Finally, an ad-interim order was passed by the Hon’ble Justice restraining the defendants from manufacturing, exporting, importing or offering for sale any goods bearing the mark DMW or any similar or identical mark to BMW, which is likely to cause confusion in the minds of relevant public and traders, that the two brands are associated with each other, in some manner.

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