Indian Entity Invokes "Holy Trinity Of Hindu Gods" To Defend Trade Name In Delhi High Court But Fails, German Company Gets Interim Relief

The Delhi High Court recently dismissed the attempt of an Indian entity to invoke the holy Trinity of Hindu gods- Brahma, Vishnu and Mahesh- to justify the use of a mark which allegedly infringed a German medical equipment company’s “VBM” mark.

While granting interim relief to the latter, bench of Justice C. Hari Shankar said,

“The “Vishnu Brahma Mahesh” explanation is too facile to pass legal muster, besides being unsupported by any corroborative documentary evidence,” the court said.

The bench was hearing the plea of VBM Medizintechnik GmbH, a German company engaged in the manufacture and marketing of medical equipment under the mark “VBM”, who filed a suit for trade mark infringement and passing off against an Indian company, seeking to restrain it from using the “VBM” mark.

The court remarked that there was no document on record, supporting the Indian company’s contention that, at the time it was created in 2002, “VBM” was envisaged as an acronym for “Vishnu Brahma Mahesh”. While expressing that the defendant may have exposed himself to “divine retribution” for having invoked the holy Trinity for “unholy ends”, the court said it was unable to accept this ingenious explanation for the acronym “VBM”.

“To my mind, it is clear that the defendant has, all along, been actuated by any intent of creating confusion, in the minds of the purchasing public, between the products manufactured by the plaintiff and other products which were also being sold by it under the “VBM” umbrella,” the court said, adding that the hesitancy of the defendant to even add “India” to the impugned mark, speaks for itself.

The court noted that the registration for the impugned mark was obtained for the very same item in respect of which the German company was using its mark. Thus, prima facie, the court said it was satisfied that the defendant was actuated by an intention to pass off its products as the products of the plaintiff.

Holding that the two marks were virtually indistinguishable, the court said the intent to copy the German entity’s mark, was painfully apparent. While concluding that prima facie, a case of passing off was made out, the court passed an order of interim injunction, restraining the use of the mark during the pendency of the suit.

It was the case of the German manufacturer that it has been using the “VBM” mark in India since 1992, and that the use of the mark by the defendant-company with respect to identical goods, i.e., medical equipments, amounted to trademark infringement and passing off.

The German company claimed that it entered the Indian market in 1992, by executing a Distributor Agreement with International Surgico Industries (ISI), owned by the father of the defendant. Later, a fresh Distributor Agreement was executed between the German company and VBM India Co (VBMIC), which is owned by the defendant.

Later, in 2016, VBMIC was granted registration of the “VBM” device mark for “Medical Equipments” by the Trade Marks Registry, allegedly in violation of the Distributor Agreement.

Consequently, the German entity terminated the Distributor Agreement after VBMIC refused to transfer the registration of the “VBM” mark in India. The German manufacturer also initiated rectification proceedings for cancellation of the registration granted to VBMIC.

At the outset, the court remarked that since the German manufacturer does not hold any registration in India, of any trademark, it cannot sue the defendant for infringement.

The court dismissed the plea that a case of acquiescence was made out against the German company since they were aware of the use of the VBM mark by the defendant, since 2002. The court said that a case of acquiescence would arise only if the adoption of the mark “VBM” by the defendant is found to be bona fide. If the adoption of the mark is itself clouded by bad faith, no defence of acquiescence would be available to the defendant, the court said.

The court remarked that the creation of VBMIC in 2002 by the defendant, did not prima facie appear to be bona fide. “The defendant, prima facie, was seeking to capitalise on the reputation of the VBM mark of the plaintiff, of which the defendant was the distributor,” the court said. Thus, since the adoption of “VBM”, even as a part of the name “VBMIC”, was not bona fide, no case of acquiescence was made out, the court said.

That the intention of the defendant was never, at any point of time, wholesome, was further evident from the application submitted by VBMIC for registration of the impugned mark, the court added. The court noted the application was completely silent regarding the prior use by the German company as well as the covenants of the Distributor Agreements executed between the parties.

The court concluded that the adoption of a mark by the defendant, which bore such stark visual resemblance to the mark of the German manufacturer, cannot be treated as coincidental.

The court concluded that the “VBM” mark of the defendant, was bound to confuse prospective consumers into believing that the product was manufactured by the German company and this was bound to result in detriment and dilution of the goodwill earned by the latter. “Prima facie, therefore, the defendant was seeking to pass off the goods, in which it dealt under the “VBM” mark, as the goods of the plaintiff,” the court said.

“The intent of the defendant to ride on the goodwill of the plaintiff was also clear from the fact that, even after termination of the Distributor Agreement, the defendant continued to the present itself as an authorised agent of the plaintiff,” the court said.

“I am, therefore, prima facie convinced that, by adoption of “VBM” as part of its corporate as well as intellectual identity, the defendant was seeking to pass off the products, in which it dealt, as the products of the plaintiff, even where they were not actually manufactured by it,” the court said while granting interim injunction, restraining the use of the “VBM” mark.

Case Title: VBM MEDIZINTECHNIK GMBH vs GEETAN LUTHRA

Citation: 2023 LiveLaw (Del) 908

Dated: 25.09.2023

Counsel for the Petitioner: Mr. Chander M Lall. Sr. Adv. with Ms. Nancy Roy, Ms. Tia Malik, Ms. J. Sharanya and Ms. Ananya Chugh, Advs.

Counsel for the Respondent: Ms. Bitika Sharma, Mr. Lakshay Kaushik, Mr. Utsav Mukherjee and Ms. Aadya Chawla, Advs.

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