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Client ID : inopjin-1
Title : Daimler Benz Aktiegesselschaft and Another v
Hydo Hindustan
Delivery selection : Current Document
Number of documents delivered : 1

Delhi High Court

10 November 1993

Daimler Benz Aktiegesselschaft and Another

v
Hydo Hindustan
Case No : I.A. No. 5843 of 1993 in Suit No. 1388 of 1993
Bench : Mahinder Narain
Citation : 1993 Indlaw DEL 23, AIR 1994 DEL 239, 1995 (1) ARBLR 180, 1995 (2) ILR(Del) 817, 1994 (14) PTC 287,
1994 RLR 79
Summary : Intellectual Property - Trade and Merchandise Marks Act,1958,s.78 - Civil Procedure - Code Of Civil
Procedure,1908, o.39, r.1,2 and 4 - Trade and merchandise Injunction - Infringement of trade mark - Transborder
reputation - Mark and word in 'Benz' and 'Three Pointed Human Being in a Ring'- Counsel for
defendant has referred to a large number to cases as to why injunction should be refused - Held, 'Benz' as
applied to a car has a unique place in world - Trade Mark law is not intended to protect a person who deliberately sets
out to take benefit of somebody else's reputation with reference to goods, especially so when reputation extends
world wide - None should be continued to be allowed to use a world famed name to goods which have no connection
with type of goods which have generated worldwide reputation - Defendant should be restrained from using word
'Benz' with reference to any underwear which is manufactured by them - Interim Application stands
disposed
The Judgment was delivered by MAHINDER NARAIN, J.
I have heard the counsel for the defendant in extenso. Counsel for the defendant has referred to a large number to
cases as to why the injunction should be refused in this case
The mark and word in the instant case is "Benz" and "Three Pointed Human Being in a Ring"
The word "Benz" has been associated with a Car ever since I remember. This car had a device upon it; a three
pointed star in a circle/ ring. Both, the name and the device, have always, in my memory, been in-extricably linked.
I am unable to ignore this connection
It was, however, registered in India in 1951. It is one of the most famous marks of the world
I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the
"Mercedes Benz", its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or
anyone; whether they are persons who make undergarments like the defendant, or any one else. Such a mark is
not up for grabs - not available to any person to apply upon anything or goods. The name which is well known in
India and world wide, with respect to cars, as is its symbol a three pointed star
In any case, as long as I remember, "Mercedes" has been a status car, which very few of the car owners are able
to afford to have today, or at any time. " Benz" happens to be a surname of a German. It does not exist as a
surname in this country, and no Indian persone has been pointed out by counsel for the defendant during the
course of arguments, having that name as an Indian, in India
I see no reason why any trader in India should adopt the name "Benz", which is, as stated above, associated with
one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case
undergarments, particularly underwears
It is pleaded by counsel for the defendant that "Mercedes" is a city in South America. Most people have not heard
of it. When I asked the counsel as to when he heard of it, he reflected, and said he was ignorant of it till just prior to
filing of the written statement. I was unaware of it till I read the written statement
One reason which is given by the counsel for the defendant for denying the injunction to the plaintiff, is that there is
a great deal of delay in approaching this court for injunction. The cases which are cited are 1992 Delhi 302 , in
which three years' delay with respect to a mark called "Doctor" was stated to be sufficient to disentitle a person
from getting injunction. " Doctor" is a word of ordinary parlance Very large number of doctors exist in this country,
and commonly, almost every one knows what a doctor means, what he does. This case cannot have a parllel with
respect to word like "Benz" for the reason explained above
The next case relied upon by Counsel is 1980 RLR 263. This case relates to the word "Matador". The word
"Matador" is English version, (of perhaps) a Spanish word. Matadors are persons who fight bulls. Bull fighting is a
sport in Spain. The word "Matador" has no Indian implication. It was used upon certain type of combs. Those were
imported in India. Most people did not use this type of comb. It was like other combs. It certainly did not have the
same kind of repute as is enjoyed by "Mercedes Benz" car. I do not think that reputation of Mercedes Benz Car can
be compared with the reputation "Matador", which may have existed with respect to something like a hair comb.
The principle of delay which disentitled the relief in the Madator case, could not, and ought not be applied to a well
known mark like "Mercedes"
Another case relied upon by counsel for the defendant is (Amritdhara Pharmacy v. Satya Deo Gupta 1962 Indlaw
SC 517 )). This was the case of mark "Amritdhara" v. the mark "Laxmandhara". This case primarily turned upon the
"honest concurrent user". The Supreme Court carved out an area where the mark "Laxmandara" was being
honestly and concurrently used, and, therefore, the injunction was not granted with respect to the area which was
carved out. That case has no application to a well reknowned name, like "Mercedes Benz". The boxes in which the
defendant sells its undergarments for men, and the representation thereon is of a man with his legs separated and
hands joined together above his shoulder, all within a circle, indicate the strong suggestion of the link between the
three pointed star of "Mercedes Benz" car and the undergarments sold by the defendant. It may view, this cannot
be considered to be a "honest concurrent user" by the defendant of the above said symbol
Another case cited is (London Rubber Co. Ltd. v. Durex Products Incorporated and another 1963 Indlaw SC 386 )),
relating to condoms. The condoms were being sold under the name "Durex". It was a brand name on which the
condoms were being sold in other parts of the world. In India, condoms were also being sold under the name
"Durex". The court in the facts of the case, accepted that it was honest concurrent user. I do not think cases of
concurrent user can be applied with reference to mark and names like "Benz"
Yet another case cited by counsel for the defendant, is (Wippermann JR Gmbh. v. Wipperdrive Engineering (Rep.
as ILR 1977 1 Delhi)), of a single Judge of this court. In this case, the mark "Wippermann" was registered owner
did not taks any steps. Therefore, the court did not grant injunction. The court found that the applicant had
acquiesced in the respondent carrying on the business under the offending mark for more than five years
There are marks which are different from other marks. There are names which are different from other names.
There are name and marks which have become household words. " Benz" as name of a Car would be known to
every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world.
There is hardly one who is conscious of existence of the cars/automobiles, who would not recognize the name
"Benz" used in connection with cars. Nobody can plead in India, where "Mercedes Benz" cars are seen on roads,
where "Mercedes" have collaborated with TATAs, where there are Mercedes Benz - Tata trucks have been on
roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can
plead that he is unaware of the word "Benz" as used with reference to car or trucks
In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of
some body else's reputation with reference to goods, especially so when the reputation extends world wide. By no
stretch of imagination can it be said that use for any length of time of the name "Benz" should be not objected to
We must keep in mind that the plaintiff company exists in Germany. An insignificant use by too small a product may
not justify spending large amounts needed in litigation. It may not be worth while
However, if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant world
wide renowned name/ mark as is being done in this case despite notice dated 9.12.1989, these cannot be any
reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world
famed name to goods which have no connection with the type of goods which have generated the world wide
reputation
In the instant case, "Benz" is a name given to a very high priced and extremely well engineered product. In my
view, the defendant cannot dilute that by user of the name "Benz" with respect to a product like underwears
Counsel for the defendant seeks three weeks' time to dispose of the existing stock. In my view, Hybo Hindustan is
an established concern. It ought not to have adopted the name "Benz" with respect to underwear. It has its own
name, its own reputation and it can very easily and conveniently bear the loss which will have to be sustained by it
by not selling any of the underwears which it has wrongly chosen to mark "Benz", forthwith
It is not the case of the defendant that the defendant is only selling underwears under the trade mark "Benz". It
markets undergarments bearing different trade names, such as "VIP" etc. In my view, destruction of the
underwears, or non-use of the said goods should send a clear message to persons, at least of the eminence, of
Hybo Hindustan, that they should not demean other people's name and reputation by using the name like "Benz"
with reference to the goods produced by them
In my view, it is but right that the defendant should be restrained from using the word "Benz" with reference to any
underwear which is manufactured by them, and in my view, injunction should issue, restraining the defendant to
cease and desist from carrying on, trade in any under-garments in the name of "Benz" and "Three Pointed Human
Being in a Ring", forthwith. So ordered
I.A. stands disposed of
The suit be listed before the Joint Registrar on 21.1.1994
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