The Delhi High Court, recently, temporarily restrained Geetan Luthra, the sole proprietor of VBM India (Defendant) as well as others acting on his behalf, from using the mark VBM as a part of corporate names or as a trademark, in respect of medical equipment or any allied/cognate goods or services, in a suit filed by VBM Medizintechnik GMBH (Plaintiff).
The suit was filed based on the Plaintiff’s earlier rights in the mark VBM, which it claims to be an acronym of the initials of its founder ‘Volker Bertram Medical’ and has been used in India since 1992 through distributor agreements with the Defendant’s predecessor, who was made the sole distributor of the Plaintiff’s equipment. The Plaintiff terminated the distributor agreement with the Defendant in 2020, since the Defendant had unauthorizedly filed and obtained a trade mark registration for the mark VBM Device, and refused to transfer it to the Plaintiff. The Plaintiff, thereafter, also filed a cancellation petition against the registration.
The Defendant, on the other hand, contended that his use of the mark VBM is bona fide, as it is inspired by the holy Trinity in the Hindu pantheon of Gods, i.e., Vishnu, Brahma, and Mahesh. It was also submitted that the Plaintiff’s founder’s name does not contain the term ‘Medical’. The Defendant further alleged that it was only in the newest version of the distributor agreement in which the IP rights were discussed, and that till then the Plaintiff had encouraged the Defendant’s use of the VBM mark. Lastly, the Defendant claimed that the rival goods were different and therefore, there was no likelihood of confusion.
The court observed that the Defendant’s reasoning for adoption of the mark VBM was too simplistic to pass legal muster. The court also noted that even from a mere glance, it is obvious that the Defendant’s VBM Device mark is almost indistinguishable from the Plaintiff’s mark. The court while observing that a prima facie case for passing off has been made out, and restraining the Defendant, noted that he had not only adopted a trade name which was identical to the Plaintiff’s, but also chose to market goods which were not manufactured by the Plaintiff, by affixing a deceptively similar mark, so as to deliberately confuse consumers. This, as per the court, had completely tilted the scales of equity against the Defendant, and warrant grant of a temporary injunction.
VBM Medizintechnik GMBH. v. Geetan Luthra, CS(COMM) 820/2022, Judgement dt. September 25, 2023