Why BMW is irked with this Indian e-rickshaw maker

The Delhi High Court has restrained an Indian e-rickshaw manufacturer from "in any manner dealing with any goods" bearing the mark 'DMW' or any other mark identical or deceptively similar to that of German automobile major, BMW.

Justice Jayant Nath in his interim order said that prima facie Bayerische Motoren Werke (BMW) has made out a case that the Indian company was infringing upon its trademark with a "dishonest intention" to take advantage of the reputation and goodwill of the German company.

The court also rejected the stand of the Indian company, Om Balajee Automobile (India) PrivateLimited, that it has been manufacturing e-rickshaws under the 'DMW' trademark since 2013 and BMW approached the high court only in 2017 after a delay of four years.

The court said: "Even if there was delay on the part of the plaintiff (BMW) in filing of the present suit as has been claimed by the defendant (Om Balajee), the same delay would not be sufficient to deter grant of injunction in favour of plaintiff".

It noted in its order that the German company has been manufacturing motorcycles under the BMW mark since 1923 and cars since 1928.

It said the company has assembly plants in 14 countries, global sales network in more than 140 nations, revenue of 94.163 million euro in 2016 and in these circumstances, use of mark 'DMW' by the Indian company "prima facie appears to be a dishonest act with an intention of trying to take advantage of the reputation and goodwill" of BMW.

"It is likely to mislead an average man of ordinary intelligence," the court said.

It further noted that the Indian company's brand was "visually and phonetically similar" to the mark of BMW which is a well known trademark and therefore, its use by Om Balajee on its products "constitutes infringement" under the Trademarks Act.

"The defendant (Om Balajee) 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 said.

It further said,"The plaintiff(BMW) has made out a prima facie case. Balance of convenience is in favour of the plaintiff and against the defendant.

"An ad interim injunction is passed 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."