This post brings to light some of the Indian cases dealing with trademark infringement in the automobile industry.
The first case that would be discussed here is that of Tata Motors. The story starts in mid 2014, when Tata Motors approached the Court of Chief Metropolitan Magistrate, Vidya Prakash, complaining of some unknown persons engaged in the business of manufacturing, trading, distributing, storing and selling counterfeit and spurious products under the trademark of ‘Tata Motors’.
Tata Motors informed the Court that it manufactured and sold automobiles along with other related products and had a long standing reputation in the market. In this light, the sale of such counterfeit and spurious products would cause a lot of damage to the goodwill of ‘Tata Motors’.
Tata Motors said that the complaint had been filed keeping in mind the interest of the general public who were being cheated into purchasing counterfeit products from the accused, who deceived customers into believing that the product being bought was that of ‘Tata Motors’. Tata Motors has a long standing reputation and good will in the market. The consumers expect the products of Tata Motors to be of a certain standard and quality. The purpose of selling the goods/services under a particular trademark is to help consumers identify the good’s source, trust the goods to be of a certain quality. This deception was impacting the company’s brand image and causing wrongful loss to the company.
The complaint sought direction to DCP (District Investigation Unit) Central District to take into custody and produce any person privy to production, storage or sale of any such objectionable article. The Court on hearing the case directed the investigating officer to appear in person with any and all evidences along with the investigation file of the said case. A representative of the Tata Company was quoted as saying that although this case would not stop counterfeiters it would serve as a warning to counterfeiters to not target the brand.
To cite another case of trademark infringement in the automobile sector, it is a commonly observed practice to popularize a brand with the help of a catchy tagline or slogan. For instance, every child from the 80’s generation probably hummed the tune of “Humara Bajaj” more than the most popular songs of the time! Whenever one hears of “Humara Bajaj”, even to this date is immediately reminded of Bajaj Chetak (scooters) – one of the most popular products from Bajaj Auto Limited.
This tale of trademark infringement starts when J.A. Entertainment Private Limited (actor John Abraham’s film production company) , intended to launch a movie titled – “Humara Bajaj” in 2013. Bajaj Auto Limited filed a copyright and trademark infringement case immediately to restrain the production house from using the trademark related to ‘Bajaj’ in their proposed film.
The respondent’s in the case had argued vehemently that:
- Bajaj was a registered trademark and “Humara Bajaj” was not.
- The tag line appeared in advertisements for the Bajaj Chetak in the mid-1980’s and furthermore the Bajaj Chetak had not been produced again since 2009.
- The movie was not related to the auto company in any way, and that the title did not refer to the Bajaj scooter or the Bajaj group, makers of Bajaj motorbikes and Chetak scooters. Instead, the movie title was adopted by the production house, keeping in mind the central character of the plot, whose surname was Bajaj.
The Bombay High Court refused to accept the above arguments made by the respondents and accepted the arguments put forth by Bajaj Auto Limited.
The Court in its decision observed that the public still continued to associate the tag line with the company, Bajaj Auto Limited. The tag line had been consistently used by Bajaj in its corporate campaigns contributing to the identification factor. The Court thus ordered a permanent injunction and passed a consent order, on the 18th September of 2013, restraining the production house, or their representative, from using the registered trademark ‘Bajaj’ as also from using the trademark related to ‘Bajaj’ in their proposed film.
There are two aspects to the judgement in terms of understanding trademark infringement:
Whether the trademark infringement should be construed, in a strict sense, i.e., only when the impugned mark is used as a trademark alone – indicating the source of goods/services and distinguishing the goods/services from others. Only in such instances where the trademark is used to indicate the source and quality of goods/services that the Trademark is associated with, should it be considered as a trademark infringement and not otherwise.
Now let us consider instances, where an impugned mark is not used as a trademark per se (serving the functions of a trademark), but as a passing reference or as a description without the intention of trying to pass off good/services and mislead or confuse the public. Should such instances also amount to trademark infringement?
In a recent decision of the Delhi High Court, the famous Audi Group (leading foreign automobile company), was issued an ex-parte interim injunction restraining Audi AG from using the name ‘TT’ as a brand name for its goods in India. The decision was passed by the Court after Rikab Chand Jain, proprietor for TT Industries filed a case under the Trademarks Act, alleging that the German firm was violating its internationally known trademark. This has been discussed in detail in an earlier post.
To summarise, the Court in the first case, involving Tata Motors, upheld the brand value of TATA and its long standing reputation, thereby curbing any unauthorised person from using the trademark ‘TATA’. The same approach, by the Court, can be seen for Bajaj Auto Limited, where the Court did not allow a movie to be titled using the company’s tagline. However, in the case involving Audi Group, the company lost the battle, owing to the plaintiff’s well known mark, registered under most of the classes and having a long standing usage.
Authored by Sambhabi Patnaik