In a major ruling for Maruti Suzuki, the Delhi High Court has rejected Volkswagen‘s petition against the Registrar of Trademarks’ December 2023 decision to register the former’s ‘TRANSFORMOTION’ trademark.
VW had argued that Maruti Suzuki‘s ‘‘TRANSFORMOTION’ trademark was phonetically, visually and conceptually similar to its ‘4Motion’ mark. “The rival marks when compared, are deceptively and/or confusingly similar. Its mark ‘4MOTION’, which is pronounced as ‘FORMOTION’ is a uniquely coined word and has no dictionary meaning, and Maruti has adopted/copied its mark in entirety and merely added the prefix ‘TRANS’ to it,” contended the counsel for VW.
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However, Justice Manmeet Pritam Singh Arora rejected VW’s contention, stating that on comparing the two rival marks, the court is satisfied that from a visual overlook, there is no plausible chance of confusion between the two as they are different from one another.
Maruti Suzuki’s mark starts with alphabets, while that of VW starts with a numerical ‘4’, which is a stark difference between the two marks, the court observed. The prefix ‘trans’ in Maruti Suzuki’s mark when compared with the prefix ‘4’ in VW, leads to distinct pronunciation which doesn’t lead to any likelihood of confusion in the said marks, the court ruled.
While VW’s mark is used in relation to its existing technology to denote a specific feature of its vehicle model, Tiguan, Maruti Suzuki has used the mark as a part of an advertising campaign to convey a transition in its use of technology, the judge said.
The court noted that both VW and Maruti have independent and substantial goodwill in the Indian market, with both selling cars that are bought by consumers after due deliberations. The court held that there was no material on record to conclude that consumers would be confused or misled to purchase the goods of Maruti under the mistaken belief that the same actually belongs to VW.
The German automaker had also failed to bring on record any evidence showing confusion, the order noted, adding that the use of the impugned mark by Maruti for its advertisement campaign in 2016 predates the former’s use of its mark for its goods only in 2017. “Thus, as a matter of fact, the customers were not even aware of Volkswagen’s mark when Maruti commenced use of the impugned mark,” Justice Arora said. “This ground of alleged confusion raised by Volkswagen is therefore, not based on actual consumer confusion. Also, in view of the finding of this court, that there is no deceptive similarity in the marks, the plea of likelihood of confusion is without any merits.”
Maruti Suzuki had filed a trademark application for its ‘TRANSFORMOTION’ trademark with respect to vehicles, apparatus for locomotion by land, air or water on a proposed-to-be-used basis. While VW opposed Maruti’s trademark, the Trademarks Registry in 2023 rejected the former’s opposition and registered Maruti’s trademark.
