Volkswagen owned the registered word mark “4MOTION<\/strong>”\u00a0 in several classes, including Class 12. Maruti Suzuki applied for registration of the word mark “TRANSFORMOTION<\/strong>” \u00a0in Class 12 for vehicles and related goods on a proposed to be used basis. The mark was advertised in the Trade Marks Journal, Volkswagen filed an opposition, and the Registrar dismissed the opposition. Aggrieved by this decision of the Registrar, Volkswagen file and appeal before the Delhi High Court against the Registrar’s order.<\/p>\n Volkswagen argued that 4MOTION <\/strong>is pronounced as FORMOTION <\/strong>and that Maruti Suzuki had taken that mark in full and merely added the prefix TRANS. It said the addition did not make the impugned mark distinct. It also argued that the marks were visually, phonetically, and conceptually similar, that \u00a04MOTION <\/strong>was an earlier trademark, and that the use of TRANSFORMOTION <\/strong>was likely to confuse the public.<\/p>\n The Registrar and Maruti Suzuki argued that the rival marks had to be considered as a whole and not broken into selected parts. They said TRANSFORMOTION <\/strong>is a single word, begins with TRANS, and creates a different visual and phonetic impression from 4MOTION,<\/strong> which begins with the numeral “4”. They further argued that MOTION is common in the automobile trade and descriptive of movement and vehicle technology. Maruti Suzuki also said it had used TRANSFORMOTION <\/strong> in India from 2016 in an advertising campaign, while Volkswagen\u2019s own documents showed use of 4MOTION\u00a0in India only from 2017.<\/p>\n The court began with the settled rule that rival marks must be compared as a whole.<\/strong><\/span> The court said the comparison proposed by Volkswagen rested on splitting TRANSFORMOTION into TRANS and FORMOTION, but the impugned mark presented itself as one word and did not invite such division. According to the court, this made the dominant feature argument unsuitable on the facts.<\/p>\n The court then turned to the word MOTION. The court observed that the material placed on record showed that MOTION appeared in several marks in the automobile space. The court found merit in the submission that MOTION is common to the automobile industry and descriptive in the setting in which both parties used it. As per the court, where a common element is descriptive or public juris, that element cannot decide the question of similarity. The court therefore, treated the uncommon portions of the marks as more significant.<\/p>\n On visual comparison, the court said there was no plausible chance of confusion. 4MOTION starts with a numeral, while TRANSFORMOTION starts with letters and appears as a longer single expression. The court also looked at the manner in which the marks were used and found no visual similarity between Maruti Suzuki\u2019s promotional use of TRANSFORMOTION and Volkswagen\u2019s use of 4MOTION on its vehicle goods.<\/p>\n On phonetic comparison, the court rejected Volkswagen\u2019s submission that 4MOTION should be read as FORMOTION for the purpose of finding deceptive similarity. The court said that even if that pronunciation is assumed, the spoken presence of TRANS at the beginning of TRANSFORMOTION sufficiently distinguishes the two marks. In the eyes of the court, the prefixes mattered more because the suffix MOTION was common to both marks.<\/p>\n The court also dealt with conceptual similarity<\/span>. The court first noted that this plea had not been raised before the Registrar in the notice of opposition and held that Volkswagen could not raise it for the first time in appeal. Even otherwise, the court said the concepts conveyed by the two marks were different. According to the court, Volkswagen used 4MOTION for an existing vehicle technology, while Maruti Suzuki used TRANSFORMOTION as part of an advertising campaign to convey transformation or transition in technology. The court accepted Maruti Suzuki\u2019s explanation that the mark was a wordplay on transformation and conveyed a shift in technology from analogue to digital systems.<\/p>\n On prior rights and confusion, the court held that the question of earlier trademark status did not help Volkswagen once the court found no deceptive similarity. The court also found no evidence of actual confusion. The court noted that both sides had substantial and independent goodwill in India, that cars are bought after deliberation, and that Maruti Suzuki\u2019s use of TRANSFORMOTION in 2016 predated Volkswagen\u2019s shown use of 4MOTION in India in 2017. On that basis, the court held that the plea of likely confusion had no merit.<\/p>\n The court held that:<\/p>\n The court therefore dismissed the appeal and left the registration of TRANSFORMOTION undisturbed.<\/p>\nQuestions Before the Court<\/h2>\n
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Arguments Presented By the Parties<\/h2>\n
Court\u2019s Analysis<\/h2>\n
Findings<\/h2>\n
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