Bayerische Motoren Werke Aktiengesellschaf was founded in Munich, Germany in 1916. The commercial ties of BMW AG, in India, began in 1987 when the automobiles bearing the BMW marks were first sold. Om Balajee Automobile (India) Private Limited is manufacturing, marketing and selling e-rickshaws, e-cart rickshaws etc. under the trademark DMW. BMW AG got knowledge of the said mark on 01.07.2016 when e-rickshaws with trademark DWM was spotted plying on the road.
BMW and DMW consists of three letters of which the second and the third letters, being M and W, are identical. The letter B has been replaced with the letter D. The letters, B and D, are visually and phonetically similar. There is no doubt that DMW is phonetically similar to BMW.
It was observed by Parker, J. in Pianotist Co.’s Application, (1906) 23 R.P.C. 774, “you must take the two words; you must judge them, both by their look and by their sound; you must consider the goods to which they are to be applied; you must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
‘Glucovita’ was pitted against ‘Gluvita’ in Corn Products Refining Company v. Shangrila Food Products Limited, AIR 1960 SC 142. It was held that, the syllable ‘co’ would not enable buyers to distinguish one mark from the other.
The issue centers around as to whether the BMW trademark is deceptively similar or nearly resembles the DMW trademark or is likely to deceive or cause confusion.
“There is clearly a visual and phonetic resemblance in the marks. The same are likely to deceive and cause confusion. Om Balajee Automobile (India) Private Limited is obviously seeking to encash upon the brand quality/goodwill which the mark BMW enjoys in the market and is prima facie guilty of infringement of the trade mark of BMW AG.”
– Hon’ble Justice Jayant Shah, Hon’ble High Court of Delhi, BMW AG v. Om Balajee Automobile (India) Private Limited, CS(COMM) 292/2017.
It was considered that, the facts of the present case are ‘materially different’ from ‘Nandini’ v. ‘Nandhini’. The use of the mark DMW appeared to be a ‘dishonest act’, likely to ‘mislead an average man of ordinary intelligence’. Eashan Ghosh, rising stalwart in Intellectual Property Law matters, had this view to share:
“How realistic is this? The products in question are luxury cars and e-rickshaws. Is it really foreseeable that one would be confused with the other? There is considerable doubt.
The claim under dilution typically is that a well-known trade mark should be afforded protection against deceptively similar trade marks, regardless of whether the rival products are similar. BMW AG made that argument. It may be acceptable. It is a risky principle to over-extend because it would protect BMW AG even if Om Balajee’s products were chocolates.
Hon’ble High Court of Delhi expresses no preference for which of these views should take precedence. Is the dilution claim a subset of the similarity claim? Is it vice versa? Is it dilution overriding similarity? That lack of preference makes no difference on these facts but it might not be so clear-cut in other cases, where the rival trade marks and the rival products/services are further apart in terms of similarity and overlap.
It is an important distance between these concepts and one that, in these days of social distancing, we would do well to keep in mind.”