Exercise 1

Advise to BMW :
BMW has obtained registration in India in 1956 and is a well-known brand
of automobile in India as it is extensively and continuously being used in
India. They also claimed that they qualified as a well-known trademark
under The Trademark Act, 1999. BMW can contended that Asia Motor
Works (AMW) had committed an act of passing off and had violated its
trademark rights. It contended that AMW has infringed its trademark rights
under Section 29(4) of the Trademarks Act, 1999. BMW can claim that AMW
is phonetically, visually, and deceptively similar. It stated three similarities
for which AMW had to stop using the name. They were :

 BMW and AMW both consist of three characters in which the

second and third character is identical.
 The first character of both the companies, i.e., B and A are
phonetically and visually similar.
 The mark by Asia Motor Works was used for automobiles such as
TRUCKS, somewhat similar to automobiles manufactured by BMW.

BMW should contended that the trademark is being dishonestly used by

AMW in similar goods. The counsel on behalf of BMW relied on a Supreme
Court’s judgment in Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and
Ors, (2004) 3 SCC 90. The court held in this case that to grant an
injunction it becomes important to check whether the use of the mark is
dishonest.
 NOTICE TO CEASE AND DESIST

From
BMW INDIA,
Oberoi Centre,
11, DLF Phase 2,
Gurugram,
Haryana,
122002
To

G 36, G Block,

Connaught Place,

New Delhi,

110001,

India

Date 10-4-2023
Re: Trademark Infringement – Cease and Desist
Dear: Asia Motor Works
It has come to our attention that you are making unauthorized use of the
trademark Bayerische Motoren Werke AG (BMW) by Asia Motor Works
Under the Indian Intellectual Property Rights laws, we are the owners of the
trademark Bayerische Motoren Werke AG (BMW) currently with the Indian
Patent and Trademark Office over hundred years. Therefore, we have the
right, including but not limited to, restrict, prevent or limit the use of our
trademark in order to protect it against any misrepresentation.
We hereby demand that you immediately cease and desist in any
additional use of our trademark that will likely cause
misrepresentation in relation with distribution, advertising,
identification, and sales of our products or services.
If you fail to comply with the aforementioned demand(s) within 60 days we
will have no choice but to pursue all legal causes of action, including the
filing of a lawsuit to protect our interests. We remind you that this letter
serves as a pre-suit notice for a lawsuit against you and failing to correct
will likely make you liable for any damages the court determines we have
suffered as a result of your infringement.
It is in our best interests to have this issue amicably settled in an effort to
avoid further legal remedies as provided by under the Indian laws.
Sincerely, ___________________
 Exercise 2

It was contended that both the marks, i.e. BMW and AMW, are entirely
different in their colour, font, prize, size, symbol etc. The goods sold by both
brands are also different in their nature, consumers’ class, and trade
channels. It was also contended that there are certain other automobile
manufacturers like DMW, PMW that are co-existing and no such opposition
was made against them by BMW. It was submitted before the court that Asia
Motor Works [AMW] was manufacturing Trucks with brand name AMW since
2016 and BMW raised its objection in 2023, therefore, the suit should be
barred by the time limit. The counsel on behalf of Asia Motor Works [AMW]
can relied upon a case, [Nandhini Deluxe v. Karnataka Cooperative Milk
Producers Federation Ltd. (2018) 9 SCC 183],  where it was held that the
difference between the price range of two brands is a sufficient ground to
remove any confusion amongst the consumers. 

The defence that can taken by Asia Motor Works [AMW] was that-

 AMW manufactures entirely different goods. BMW manufactures

luxury cars and bikes while AMW manufactures Trucks. 
 AMW started its manufacturing from 2016 and now BMW is filing
suit in 2023. Thus, it has been delayed in filing the suit.