Delhi High Court rules in favour of Maruti Suzuki over Volkswagen trademark dispute: Report

The Delhi High Court recently declined to hear a petition filed by German automobile manufacturer Volkswagen challenging the rejection of its opposition to a trademark application submitted by rival Maruti Suzuki India Limited in the case Volkswagen AG v. The Registrar of Trade Marks and Anr, as reported by Bar and Bench.

Maruti Suzuki had applied to the Registrar of Trade Marks to register the trademark “TRANSFORMOTION.” The application was accepted and subsequently published for public notice, according to the Bar and Bench.

Volkswagen then filed a notice opposing the registration, arguing that the mark was deceptively similar to its already registered trademark “4MOTION.” After the Registrar rejected Volkswagen’s opposition, the company filed an appeal with the High Court, the report stated.

“This Court also finds that the Appellant herein is Volkswagen AG, and Respondent No. 2 herein is Maruti Suzuki India Limited; both companies have independent, substantial goodwill in the Indian market and, considering the class of products sold by the parties are cars, which are purchased by consumers after due deliberations, this Court is persuaded to hold that there is no material on record to conclude that the consumers would be confused or misled to purchase the goods of the Respondent No. 2 under mistaken belief that the same actually belongs to the Appellant,” the Court stated, as reported by the Bar and Bench.

The Court accepted the submission of Maruti Suzuki India Limited that “TRANSFORMOTION” is a play on the dictionary word “transformation.” It also noted that Maruti began using the mark in 2016, whereas Volkswagen started using its mark in 2017, meaning consumers were not familiar with Volkswagen’s mark at the time, Bar and Bench reported.

The Court observed that Volkswagen’s trademark “4MOTION” refers to a sophisticated four-wheel drive system used in the Tiguan model, while “TRANSFORMOTION” by Maruti Suzuki denotes the transition of speedometers in its vehicles from analogue to digital systems, according to the report.

“On a comparison of the Appellant's mark ‘4MOTION’ with Respondent No. 2’s whole mark ‘TRANSFORMOTION’, this Court is satisfied that from a visual overlook, there is no plausible chance of confusion between the two rival marks because they are different from one another,” it held.

The Court accepted Maruti Suzuki’s argument that “TRANSFORMOTION” is a play on the dictionary word “transformation.” It noted that Maruti began using the mark in 2016, while Volkswagen started using “4MOTION” in 2017, meaning consumers were not familiar with Volkswagen’s mark at the time.

(With inputs from Bar and Bench)