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No cashing in upon the image of a prominent player

According to the World Intellectual Property Organization, ‘a trademark symbol is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.’ Trademarks symbols have become one of the most valuable intellectual property assets for companies ensuring that no other player in the market knowingly or unknowingly, exploits someone else’s brand image for their own profit. This is why we often see companies embroiled in trademark disputes which may take long to resolve. In one such dispute between the renowned German car maker BMW and an Indian e-Rickshaw manufacturer Om Balajee Automobile (OBA), the Delhi High Court recently granted BMW an injunction against the OBA’s mark ‘DMW’. In legal terms, injunction is a legal remedy that compels a party to refrain from specific acts, and failure to do so attracts penalties.

As per the case details, BMW had sent a cease and desist notice to OBA on 12.7.2016 to cease the use of the DMW mark in relation to e-vehicles or any other goods after E-Rickshaws with the said trademark- DMW, were noticed plying on the road. However, OBA refused to comply and justified the use of the mark DMW and the domain name. BMW alleged that the said mark is deceptively similar its marks and further the letters B and D are both visually and phonetically similar. BMW also claimed that E-Rickshaws are somewhat similar to automobiles covered by the BMW mark. Rejecting BMW’s argument OBA pleaded that BMW is not involved in business of making electronic rickshaws and other specifications such as the nature of the product, class of buyers and trade channels of the product is entirely different from BMW products. It was further stated that OBA is manufacturing the said products since 2013 and was registered under the Companies Act on 19.12.2005 and the present suit is filed with ‘delay and latches.’

The Court declared that Om Bajalee was seeking to take advantage of the brand quality and goodwill which the mark BMW enjoys in the market and even if there was a delay in filing the complaint on part of BMW, ‘the same would not be sufficient to deter grant of injunction in favor of the plaintiff.’ Consequently, Om Balajee Automobile are barred from manufacturing or selling goods bearing the mark DMW or any other mark which are identical or deceptively similar to the plaintiff's BMW marks.

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