VBM MEDIZINTECHNIK GMBH V. GEETAN LUTHRA : A COALESCE OF TRADEMARK LAW

VBM MEDIZINTECHNIK GMBH V. GEETAN LUTHRA[1]: A COALESCE OF TRADEMARK LAW

I. BRIEF FACTS: A PREREQUISITE

VBM, founded by Mr. Volker Bertram in 1981 in Germany, is a medical equipment manufacturing company with a global reputation since 1981. In 1992, a Distributor Agreement was signed with International Surgico Industries (ISI), the defendant's father's firm, appointing ISI as the sole distributor in India. However, in 2002, the defendant formed VBM India Co (VBMIC) without the plaintiff's knowledge.

In 2013 and 2020, the plaintiff and defendant entered into new Distributor Agreements, retaining IP ownership, including the "VBM" trademark, with the plaintiff. Despite this, the defendant applied for trademark registration without permission in 2016, justifying it as a professional decision. On April 14, 2021, the plaintiff terminated the Distribution Agreement, citing terms violation and the defendant's refusal to transfer the unauthorized "VBM" trademark.

II. PRESERVING THE SANCTITY

The defendants based their argument that the mark VBM is derived from the holy trinity of gods Vishnu, Brahma and Mahesh though not in correct order. Hon’ble Justice C. Hari Shankar stated that the argument was “too facile to pass the legal muster” and “unsupported by any corroborative documentary evidence.”[2]

III. THE LEGAL INTRICACIES

ACQUISCENCE:

The defendant took the defense of the ‘effect of acquiescence under section 33 of the Trademarks Act, 1999. The acquiescence acts as a defence to the subsequent user against the validity of the registration of their Trademark. In the light of the various judgments cited,[3] it was concluded that the effect of acquiescence would arise only if the use is found to be bona fide.

Hon’ble Justice Harishankar stated that, “the defendant, prima facie, was seeking to capitalise on the reputation of the VBM mark of the plaintiff, of which the defendant was the distributor.”[4] Therefore, the acquiescence was not applied in the present case.

PASSING OFF:

Passing off is a common law tort which is as old as the hills, which is the attempt, by one person, to pass off his goods or services as those of another. The remedy of passing off is a broader remedy than that of infringement.[5] Passing off, though an action based on deceit, does not require the establishment of fraud as a necessary element to sustain the action.[6]

The court held that the act of the defendant in choosing ‘VBM India Co.’ and then thereafter choosing and registering the mark as VBM in the similar style and lettering and that too without incorporating the word ‘India Co.’ in its mark amounts to the passing off. Therefore, all this is bound to result in detriment and dilution of the goodwill earned by the plaintiff.

Goodwill sine qua non to Passing Off:

The goodwill is an essential feature which cannot be avoided to determine the action of ‘passing off’. Therefore, it is necessary to determine that-

a. goodwill is owned by the trader,

b. misrepresentation, and

c. damage to the goodwill

In the present case the court sufficiently made out the case of goodwill by stating that plaintiff already has its reputation in the international arena and the defendant has used the goodwill of the plaintiff even after the termination of Distributor Agreement.

IV. CONCLUSION

The Delhi HC justifiably allowed the sought injunction by the defendant. The argument based upon the ‘holy trinity of Brahma, Vishnu, Mahesh’ was rightly rejected. Albeit the claim in present case is not upon the trademark on god’s name. Whereof, the courts in India have often said no to the registration of trademark based on god’s name and holy books as is pertinent from the case of Lal Babu Priyadarshi v. Amritpal Singh.[7]

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[1] VBM Medizintechnik GMBH v. Geetan Luthra, 2023 SCC OnLine Del 5979.

[2] ?Supra note 1 at para 14.14.

[3] Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726; Sanjay Chadha Trading v. U.O.I, 295 (2022) DLT 217 (DB).

[4] Supra note 1 at para 13.1.

[5] Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65.

[6] Khoday Distilleries v. Scotch Whisky Association (2008) 10 SCC 723; Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. (2004) 6 SCC 145.

[7] Lal Babu Priyadarshi v. Amritpal Singh, (2015) 16 SCC 795.