Delhi HC’s “Bolt of Clarity” in a Charged-up Trademark Tussle: Gensol Electric Vehicles Pvt. Ltd. vs. Mahindra Last Mile Mobility Ltd.

On January 13th, 2025, the Hon’ble Delhi High Court delivered a significant judgment regarding a trademark dispute in the automotive industry. It refused the application for interim injunction filed by Gensol Electric Vehicles Pvt. Ltd. (hereinafter referred to as the “Plaintiff”) against Mahindra Last Mile Mobility Ltd. (hereinafter referred to as the “Defendant”) for allegedly infringing and passing off the Plaintiff’s trademark (provided below).

The Court methodically analyzed the peculiar facts and situation of this case. At the outset the Court gave its findings on the similarity of the rival marks. Then the Court went on to analyze the likelihood of confusion arising from the similarity of the marks by applying the tests of passing off. Which ultimately led to its conclusion of the balance of convenience lying in favour of the Defendant and requisite refusal of the application for interim injunction filed by the Plaintiff. ?

Facts of the Case

The Plaintiff incorporated as a subsidiary company in 2022, conceptualized the idea of an innovative electric vehicle for urban mobility in August 2022. Consequently, the Plaintiff finalized the vehicle’s design i.e., two-door, three-wheeler electric passenger vehicle and coined and adopted the mark “EZIO” for the same in December 2022.

The Plaintiff filed a trademark application for the word mark “EZIO” in Class 12 on a proposed to be used basis on 30th June 2023 and was granted registration for the same on 19th May 2024.

It is pertinent here to note that, the Plaintiff had only acquired requisite permissions and conducted a test drive of the vehicle. However, the Plaintiff never launched the vehicle or disclosed the mark associated with the electric vehicle until 25th September 2024.

On 18th September 2024 the Plaintiff came across a newspaper article dated 9th September 2024 which highlighted the Defendant’s launch of a new commercial electric four wheeler vehicle under the mark (provided below). The Plaintiff upon further investigation also discovered the Defendant’s trademark applications in Class 12 for the word mark “ZEO” filed on 29th August 2024 and the device mark filed on 10th September 2024 both on a proposed to be used basis.

In response, the Plaintiff filed a suit for trademark infringement and passing off its mark “EZIO" against the Defendant on 26th September 2024.

Pleadings

The Counsel on behalf of the Plaintiff argued that the Plaintiff’s and the Defendant’s mark are similar and hence are bound to cause confusion in the market. The Plaintiff’s Counsel further submitted that the Plaintiff’s vehicle is not at a prototype stage as the Plaintiff holds an Automotive Research Association of India certificate and is also scheduled to launch its vehicle in January 2025. The Plaintiff’s Counsel finally submitted that the use of the mark by the Defendant is not prior to the registration of trademark held by the Plaintiff hence, the Defendant cannot take the defense of prior use as envisaged under Section 34 of the Trademarks Act, 1999.

On the other hand, the Counsel on behalf of the Defendant submitted that the Defendant will only use the modified mark (provided below).

The Counsel also submitted that the Plaintiff disclosed its trademark in the public domain only a day prior to filing of the present suit which is subsequent to the launch of the Defendant’s trademark thereby having no information regarding the existence of the Plaintiff’s trademark at the time of adoption. The Counsel further submitted that a comparison of the modified mark of the Defendant and the Plaintiff’s trademark reveal the marks to be un-identical. Furthermore, the Counsel submitted three primary reasons as to why there can be no likelihood of confusion:

1.?The Plaintiff had yet to launch its vehicles under the trademark “EZIO”, hence there was no commercial use, reputation or goodwill with respect to the said mark in the market.

2.?The Defendant’s mark prominently featured its house mark “Mahindra” which adds to the distinguishing elements of the rival marks.

3.?There would be no possibility of confusion as the Defendant’s vehicles are only sold through the Defendant’s registered dealers.

Court’s Analysis and Findings

Firstly, the Court drew a comparative analysis of the Plaintiff’s mark i.e., “EZIO” and the Defendant’s modified mark. The Court opined that the changes affected by the Defendant in its mark makes the rival marks visually and phonetically dissimilar so as to not cause any confusion among the public.

Then the Court determined the likelihood of confusion by assessing the market presence and goodwill of both the Parties. The Court held that, the Plaintiff has not launched its vehicle under the mark “EZIO” in fact, the Plaintiff has not yet launched any vehicle whether commercial or otherwise. On the other hand, the Defendant is a well-known player in the field of commercial electric vehicles, it sells various models of electric vehicles in the market under different marks all of which use are used in affiliation with the house mark “Mahindra”.

The Court also assessed the intention behind the Defendant’s adoption of its mark. The Court was convinced of the bona fide adoption of the mark due to two main reasons:

1.?The Plaintiff’s mark was disclosed in the public domain on 25th September 2024 after the Defendant had already launched its vehicle.

2.?The Defendant’s reason of adoption of the mark “ZEO/Ezeo” as an acronym of “Zero Emission Option” to convey environmental benefits of the electric vehicle.

Then the Court went a step ahead to assess the likelihood of confusion by interpreting the rationale of the general public. The Court categorically stated that the vehicles of the Defendant and the vehicles of the Plaintiff belong to two different categories and are targeted towards two different segments of the public. While the Plaintiff’s vehicle is an electric passenger vehicle the Defendant’s vehicle is an electric commercial vehicle that when compared, are visually different in their shape and size along with having a completely different set of configuration altogether.

The Court further went onto analyse the thought process behind a customer’s decisions when purchasing motor vehicles, noting that such products are high-value items. It emphasized that a customer intending to buy a vehicle would typically make a considered, informed decision rather than an impulse purchase. In this regard, customers are likely to visit showrooms or take test drives before finalizing their choice. The Court also highlighted the importance of the manufacturer’s name in the automotive industry, by observing that an average consumer would not only consider the model of the vehicle but also its manufacturer while purchasing vehicles. Furthermore, the Court pointed out that in the automotive industry, a car model is identified not just by its name, but also by the manufacturer’s identity, which carries significant brand equity, goodwill, and reputation. Hence, the Court held that the amended mark of the Defendant with the inclusion of the house mark “Mahindra” makes the mark distinctive and sets it apart from the mark of the Plaintiff, both structurally and phonetically leading to no likelihood of confusion whatsoever.

Based upon all the above mentioned reasons the Court in its operative part of the Judgement held that, the Plaintiff has failed to make out a prima facie case for the grant of interim injunction as the balance of convenience lay in favour of the Defendant and accordingly, rejected the interim injunction application filed by the Plaintiff.

Key Takeaway

For readers particularly those in the automotive industry, this case highlights the critical importance of affixing the manufacturer’s name to the adopted trademark. The Court found that the inclusion of a well-known house mark, like “Mahindra,” significantly contributed to the distinctiveness of the Defendant’s mark, reducing the likelihood of consumer confusion. This serves as a valuable lesson for businesses in the automotive sector, where customers typically make informed purchasing decisions based not only on the vehicle model but also on the reputation and goodwill of the manufacturer. Ensuring that the selected mark is closely associated with the manufacturer’s name can be a key strategy in avoiding trademark disputes.

Author’s Note

Practitioners should note that this is only the internal stage and time will tell whether during the trial Mahindra’s adoption may be challenged. This case cannot be a precedent overturning the basic principle that in India prior adoption of a mark is superior to prior use.

The Trademark Registry’s website is open to the public and any person can before adoption of a trademark for use check whether someone else has adopted a mark and therefore such a person should only use a mark if it is not identical or deceptively similar to a mark applied for or registered by any other person for the same or similar goods or services.

Also, persons adopting trademarks should not adopt marks which are otherwise “well-known” even for other goods and services.