Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Injunction against dilution of a well-known mark on passing off principles under the Trade and Merchandise Marks Act, 1958.

Brief facts

The plaintiffs, German manufacturers of Mercedes-Benz automobiles and holders of the mark BENZ and its three-pointed star device registered in India since 1951, sued the defendant, an Indian manufacturer of undergarments, for using the mark BENZ and a similar three-pointed device on its products. The defendant argued that there had been considerable delay in bringing suit after an earlier legal notice, relying on precedents permitting honest concurrent use and excusing delay. The plaintiffs sought an interlocutory injunction restraining continued use of the mark and device.

Issues before the Court

1. Can the world-famous mark of a luxury car manufacturer be diluted by its use on wholly unrelated goods such as undergarments?
2. Does delay in initiating proceedings against unauthorised use of an extremely well-known mark disentitle the proprietor to an interlocutory injunction?

Court's findings

The Court held that the mark BENZ, associated worldwide and in India with one of the finest engineered cars, together with its three-pointed star device, was a mark of such singular reputation that it could not be treated as available for indiscriminate adoption by any trader, irrespective of the goods concerned.

The Court observed that trade mark law was not intended to protect a person who deliberately sought to take advantage of another's reputation, particularly where that reputation extended worldwide.

The Court distinguished the precedents relied upon by the defendant concerning delay and honest concurrent use, noting that those cases involved marks of far lesser renown, and held that use of the mark for undergarments would demean and dilute the reputation of the mark.

Decision

Interlocutory injunction granted restraining the defendant from using the mark BENZ or the three-pointed star device on any undergarments.

Keywords

Delay And Acquiescence Dilution Passing Off Trademark Infringement Well-known Trade Mark