Mahinder Narain, J.:— I have heard the counsel for the defendant in extenso. Counsel for the defendant has referred to a large number to 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” 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.
3. It was, however, registered in India in 1951. It is one of the most famous marks of the world.
4. 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 grabs— not available to any person to apply upon anything or goods. The name which is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.
5. 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 persone has been pointed out by counsel for the defendant during the course of arguments, having that name as an Indian, in India.
6. 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.
7. 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.
8. 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 1992 Delhi 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 parllel with respect to word like “Benz” for the reason explained above.
9. The next case relied upon by Counsel is 1980 RLR 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 Madator case, could not, and ought not be applied to a well known mark like “Mercedes”.
10. Another case relied upon by counsel for the defendant is (Amritdhara Pharmacy v. Satya Deo Gupta . AIR 1963 SC 449.). 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 “Laxmandara” 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 reknowned 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 undergarments sold by the defendant. It my view, this cannot be considered to be a “honest concurrent user” by the defendant of the above said symbol.
11. Another case cited is (London Rubber Co. Ltd. v. Durex Products Incorporated . AIR 1963 SC 1882.), 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”.
12. Yet another case cited by counsel for the defendant, is (Wippermam JR Gmbh. v. Wippcrdrive Engineering . Rep. as ILR 1977 1 Delhi.), of a single Judge of this court. In this case, the mark “Wippermann” was registered owner did not taks 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.
13. There are marks which are different from other marks. There are names which are different from other, names. There are name 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 reeognize 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.
14. In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of some body 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.
15. 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.
16. 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 9.12.1989, these 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.
17. 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 underwears.
18. 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 ean 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.
19. It is not the case of the defendant that the defendant is only selling underwears 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 producedby them.
20. 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. I.A stands disposed of.
21. The suit be listed before the Joint Registrar on 21.1.1994