The Delhi High Court has recently rejected an Indian entity's attempt to use the holy Trinity of Hindu gods, Brahma, Vishnu, and Mahesh, as a justification for using a mark that allegedly violated a German medical equipment company's "VBM" trademark.

In the process of providing interim relief to the German medical equipment company, a bench presided over by Justice C. Hari Shankar stated the following: “The ‘Vishnu Brahma Mahesh’ explanation is too facile to pass legal muster, besides being unsupported by any corroborative documentary evidence.”

The bench was considering the request of VBM Medizintechnik GmbH, a German company that specializes in producing and promoting medical equipment using the "VBM" trademark. The company had filed a lawsuit alleging trademark infringement and passing off by an Indian company. VBM Medizintechnik GmbH sought to prevent the Indian company from using the "VBM" mark.

The court noted that there was no documentary evidence on record to support the Indian company's claim that when it was established in 2002, "VBM" was intended to stand for "Vishnu Brahma Mahesh." While expressing skepticism and suggesting that the defendant might have opened itself up to potential consequences for using the holy Trinity's name for "unholy purposes," the court stated that it could not accept this creative explanation for the "VBM" acronym.

"In my opinion, it is evident that the defendant's actions have consistently demonstrated an intention to create confusion among the consumers regarding the products manufactured by the plaintiff and other products sold under the 'VBM' brand," the court stated. The court also pointed out that the defendant's reluctance to even include "India" in the contested mark was telling evidence of their intent.

The court observed that the registration for the challenged mark had been obtained for the exact same item for which the German company was using its mark. As a result, the court indicated that it was initially convinced that the defendant had the intention to deceive consumers by presenting its products as if they were the products of the plaintiff.

The court determined that the two marks were extremely similar and that the intent to imitate the German company's mark was quite evident. Concluding that, at first glance, a case of passing off had been established, the court issued an interim injunction order to prohibit the use of the mark while the lawsuit was ongoing.

The German manufacturer's argument was that it had been utilizing the "VBM" mark in India since 1992 and that the defendant company's use of the same mark for identical products, namely medical equipment, constituted both trademark infringement and passing off.

The German company asserted that it had entered the Indian market in 1992 through a Distributor Agreement with International Surgico Industries (ISI), which was owned by the defendant's father. Subsequently, a new Distributor Agreement was established between the German company and VBM India Co (VBMIC), a company owned by the defendant.

In 2016, VBM India Co (VBMIC) obtained the registration of the "VBM" device mark for "Medical Equipment" from the Trade Marks Registry. This registration was claimed to be in violation of the Distributor Agreement between the parties.

As a result of VBM India Co's (VBMIC) refusal to transfer the registration of the "VBM" mark in India, the German entity terminated the Distributor Agreement. Additionally, the German manufacturer-initiated rectification proceedings aimed at cancelling the registration that had been granted to VBMIC.

The court noted at the beginning that because the German manufacturer did not possess any trademark registration in India, it could not file a lawsuit against the defendant for trademark infringement.

The court rejected the argument that a case of acquiescence could be established against the German company, even though they were aware of the defendant's use of the "VBM" mark since 2002. The court explained that a case of acquiescence could only arise if the defendant's adoption of the "VBM" mark was deemed to be done in good faith. However, if the adoption of the mark itself was tainted by bad faith, the court stated that no defense of acquiescence would be available to the defendant.

The court pointed out that the defendant's lack of good intentions was further demonstrated by the application submitted by VBM India Co (VBMIC) for the registration of the disputed mark. The court observed that the application did not mention the prior use of the mark by the German company or the terms of the Distributor Agreements that had been signed between the parties. This omission in the application suggested that the defendant had not acted in good faith throughout the process.

The court reached the conclusion that the defendant's adoption of a mark that bore such a clear visual resemblance to the mark of the German manufacturer could not be regarded as a mere coincidence.

The court's conclusion was that the defendant's use of the "VBM" mark was highly likely to cause confusion among potential consumers, leading them to believe that the product was produced by the German company. This confusion, according to the court, would harm and weaken the reputation and goodwill established by the German company. Therefore, the court stated that at first glance, the defendant appeared to be attempting to present its products under the "VBM" mark as if they were the products of the plaintiff.

The court also pointed out that the defendant's intention to capitalize on the reputation of the plaintiff was evident. Even after the termination of the Distributor Agreement, the defendant continued to represent itself as an authorized agent of the plaintiff, which further demonstrated its attempt to benefit from the plaintiff's goodwill.

“I am, therefore, prima facie convinced that by the 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 observed in granting an interim injunction and ordering the prohibition of the use of the "VBM" mark.