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High Court Of Delhi
DAIMLER BENZ AKTI - Appellant
Versus
HYBO HINDUSTAN - Respondent
Interim Application 5843 of 1993
Decided On : 11/10/1993
TRADEMARK INFRINGEMENT - MERCEDES BENZ - INJUNCTION - DELAY IN FILING SUIT - HONEST CONCURRENT USER - WORLDWIDE REPUTATION - DILUTION OF TRADEMARK - DESTRUCTION OF INFRINGING GOODS - INJUNCTION GRANTED.
Fact of the Case:
Mercedes Benz, a renowned car manufacturer, filed a suit against Hybo Hindustan for trademark infringement. Hybo Hindustan used the mark "benz" and a "three Pointed Human Being in a Ring" device on its undergarments, which Mercedes Benz alleged was an infringement of its trademark.
Finding of the Court:
The court found that the mark "benz" and the device were inextricably linked to Mercedes Benz cars and had a worldwide reputation. The court held that Hybo Hindustan's use of the mark and device on its undergarments was an infringement of Mercedes Benz's trademark and granted an injunction restraining Hybo Hindustan from using the mark and device on its undergarments.
Issues: 1. Whether Hybo Hindustan's use of the mark "benz" and the device on its undergarments constituted trademark infringement. 2. Whether the delay in filing the suit disentitled Mercedes Benz from obtaining an injunction. 3. Whether Hybo Hindustan's use of the mark and device was an honest concurrent user.
Ratio Decidendi: 1. The court held that Hybo Hindustan's use of the mark "benz" and the device on its undergarments was an infringement of Mercedes Benz's trademark because: - The mark "benz" and the device were inextricably linked to Mercedes Benz cars and had a worldwide reputation. - Hybo Hindustan's use of the mark and device on its undergarments was likely to cause confusion among consumers and dilute the distinctiveness of Mercedes Benz's trademark. 2. The court held that the delay in filing the suit did not disentitle Mercedes Benz from obtaining an injunction because: - The delay was not inordinate. - Mercedes Benz had a valid explanation for the delay. 3. The court held that Hybo Hindustan's use of the mark and device was not an honest concurrent user because: - Hybo Hindustan had adopted the mark and device with the intention of taking advantage of Mercedes Benz's reputation. - Hybo Hindustan's use of the mark and device was not necessary for its business.
Final Decision: The court granted an injunction restraining Hybo Hindustan from using the mark "benz" and the device on its undergarments.
( 1 ) I have heard the counsel for the defendant in extenso. Counsel for the defendant has referred to a large number of cases as to why the injunction should be refused in this case. The mark and word in the instant case is "benz" and "three Pointed Human Being in a Ring".
( 2 ) THE word "ben?" has been associated with a Car ever since I remember. This car had a device upon it; a three pointed star in a circle/ring. Both, the name and the device, have always, in my memory, been inextricably linked. I am unable to ignore this connection/ It was, however, registered in India in 1951, It is one of the most famous marks of the world.
( 3 ) I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the "mercedes Benz", its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons who make undergarments like the defendant, or any one else. Such a mark is not up for grabs-not available to any person to apply upon anything or goods. That name which is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.
( 4 ) IN any case, as long as I remember, "mercedes" has been a status car, which very few of the car owners are able to afford to have today, or at any time. "benz" happens to be a surname of a German. It does not exist as a surname in this country, and no Indian persona has been pointed out by counsel for the deft. during the course of arguments, having that name as an Indian, in India.
( 5 ) I see no reason why any trader in India should adopt the name "benz", which is, as stated above, associated with one of the finest engineered cars in the world, and use the name with respect to ordinary goods, in this case undergarments, particularly underwear.
( 6 ) IT is pleaded by counsel for the defts. that "mercedes" is a city in South America. Most people have not heard of it. When I asked the counsel as to when he heard of it, he reflected, and said he was ignorant of it till just prior to filing of the W/s. I was unaware of it till I read the W/s.
( 7 ) ONE reason which is given by the counsel for the deft. for denying the injunction to the plaintiff, is that there is a great deal of delay in approaching this Court for injunction. The cases which are REFERRED TO are 1992 Delhi 302, in which three years delay with respect to a mark called "doctor" was stated to be sufficient to, disentitle a person from getting injunction. "doctor" is a word of ordinary parlance. Very large number of doctors exist in this country, and commonly, almost every one knows what a doctor means, what he does. This case cannot have a parallel with respect to word like "benz" for the reason explained above.
( 8 ) THE next case relied upon by Counsel is 1980, Rajdhani L. R. 263. This case relates to the word "matador". The word "matador" is English version, (of perhaps) a Spanish word. Matadors are persons who fight bulls. Bull fighting is a sport in Spain. The word "matador" has no Indian implication. It was used upon certain type of combs. Those were imported in India. Most people did not use this type of comb. It was like other combs. It certainly did not have the same kind of repute as is enjoyed by "mercedes Benz" car. I do not think that reputation of Mercedes Benz Car can be compared with the reputation "matador", which may have existed with respect to something like a hair comb. The principle of delay which disentitled the relief in the Matador case, could not, and ought not be applied to a well known mark like "mercedes".
( 9 ) ANOTHER case relied upon by counsel for the deft. is 1963 Supreme Court 449 (Amritdhara Pharmacy v. Satya Deo Gupta ). This was the case of mark "amritdhara" vs. the mark "laxmandhara". This case primarily turned upon the "honest concurrent user". The Supreme Court carved, out an area where the mark "laxmandhara" was being honestly and concurrently used, and
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