MANU/DE/0035/1994

Equivalent/Neutral Citation: AIR1994Delhi239, 1995(1)ARBLR180(Delhi), 1994(14)PTC 287(Del), 1994RLR79

IN THE HIGH COURT OF DELHI

I.A. No. 5843 of 1993 in Suit No. 1388 of 1993
Decided On: 10.11.1993
Daimler Benz Aktiegesellschaft and Ors. Vs. Hybo Hindustan
Hon'ble Judges/Coram:
Mahinder Narain, J.
Counsels:
For Appellant/Petitioner/plaintiff: P.N. Sewak, Adv
For Respondents/Defendant: Manmohan Singh and H.P. Singh, Advs.
Case Note:
a) It was ruled that under Order 39 Rules 1 and 2 of the Civil Procedure Code,
the delay in approaching the Court cannot justify the use of trademark that
was a world famous name, considering the fact that the plaintiff company did
not exist in India and the infringement of the trademark was caused on a
small product
b) The case focused on the application filed under Order 39 Rules 1 and 2 of
the Civil Procedure Code, 1908, for grant of interim injunction in passing off
action -In the instant case, the defendant was using the trademark 'Benz' for
the undergarments and the term 'Benz' was associated with one of the finest
engineered cars in the world - There existed a clear evidence of infringement
of trademark and Therefore, it was ruled that the plaintiff would be granted
interim injunction
ORDER
1. I have heard the counsel for the defendant in extenso. Counsel for the defendant has
referred to a large number of cases as to why the injunction should be refused in this
case.
2. The mark and word in the instant case is "Benz" and "Three Pointed Human Being in
a Ring".
3. 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 inextricably linked. I am unable to ignore this
connection.
4. It was, however, registered in India in 1951. It is one of the most famous marks of
the world.
5. 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

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grabs -- not available to any person to apply upon anything or goods. That name which
is well known in India and world wide, with respect to cars, as is its symbol a three
pointed star.
6 . 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 persona has been pointed out by counsel for the defendant during the course of
arguments, having that name as an Indian, in India.
7. 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.
8. 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.
9 . 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 AIR 1992 Del 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 parallel with respect to word like
"Benz" for the reason explained above.
10. The next case relied upon by Counsel is 1980 Rajdhani LR 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 Matador case, could not,
and ought not be applied to a well known mark like "Mercedes".
11. Another case relied upon by counsel for the defendant is MANU/SC/0256/1962 :
[1963]2SCR484 (Amritdhara Pharmacy v. Satya Deo Gupta). 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 "Laxmandhara"
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 renowned 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 undergarment's sold by the defendant. In my view, this cannot be considered to be
a "honest concurrent user" by the defendant of the above said symbol.
12. Another case cited is MANU/SC/0134/1963 : [1964]2SCR211 (London Rubber Co.

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Ltd. v. Durex Products Incorporated, 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".
13. Yet another case cited by counsel for the defendant, is reported as (1977) 1 Del
389 (Wipperman JR Gmbh v. Wiper drive Engineering), of a single Judge of this Court.
In this case, the mark "Wipperman" was registered. The registered owner did not take
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.
14. There are marks which are different from other marks. There are names which are
different from other names. There are names 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.
15. In my view, the Trade Mark law is not intended to protect a person who deliberately
sets out to take the benefit of somebody 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.
1 6 . 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.
1 7 . 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 09-12-1989, there 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.
18. 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 under-wears.
19. 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.
20. It is not the case of the defendant that the defendant is only seeing underwears

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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.
21. 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 undergarments in the name of "Benz" and "Three Pointed
Human Being in a Ring", forthwith. So ordered.
22. I. A. stands disposed of.
23. The suit be listed before the Joint Registrar on 21-01-1994.
24. Order accordingly.
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