Invoking the “Holy Trinity of Hindu Gods”

The case of VBM Medizintechnik GMBH v. Geetan Luthra raised eyebrows regarding the uncanny defense relied on for justifying the use of the trademark ‘VBM’: that it stood for the Hindu gods Vishnu, Brahma, and Mahesh! Most fortunately, it didn’t last long. 

A bit of background before we delve into more details: On 25 September 2023, in a legal dispute between a German medical equipment manufacturer, VBM Medizintechnik GMBH, and the Indian entity VBM India Co (VBMIC), owned by Geetan Luthra, the German company claimed that Luthra violated their trademark by utilizing the ‘VBM’ mark. It asserted that it represented “Mr. Volker Bertram Medical,” leading to confusion in the market and the consequent infringement of its mark. Luthra’s defense by invoking the ‘holy trinity of Hindu gods’ failed, and the Delhi High Court (DHC) granted interim relief to the German company in a trademark infringement case.

Justice C Hari Shankar remained unimpressed with Luthra’s defense, stating that the explanation was “too facile to pass the legal muster” and “unsupported by any corroborative documentary evidence.” The court concluded that the defendant’s actions were driven by bad faith and issued an injunction in favor of the plaintiff. 

The Legal Considerations at Play

Now addressing the legal aspects of the case, firstly, the court discussed the concept of ’acquiescence’ under Section 33(1) of the Trade Marks Act, which requires good faith on the part of the defendant while obtaining the registration of a later trademark. The court rejected Luthra’s ‘holy trinity’ argument on the ground that it was evident he had been motivated by the intent to create confusion among the purchasing public between the products of the plaintiff and those sold under the ‘VBM’ umbrella by the defendant. It further asserted that the defendant’s intent appeared to be capitalizing on the goodwill of the plaintiff company. 

Furthermore, the court emphasized that the defendant failed to provide any documentation supporting its claim that the inspiration behind the ‘VBM’ acronym was the holy trinity. Notably, the Indian entity, VBM India Co (VBMIC), had been the exclusive distributor of the German company’s goods in India until 2021. In 2016, VBMIC obtained the registration of the ‘VBM’ device mark for medical equipment in India. However, the refusal to transfer this trademark registration to VBM Medizintechnik became a contributing factor to the termination of the distribution agreement between the two parties. The court observed that VBMIC’s reluctance to append ‘India’ to its ‘VBM’ device mark was telling. On prima facie examination, the court found the device mark nearly indistinguishable from that used by the German company. The court also noted that the defendant had never informed the German plaintiff about its decision to apply for the registration of the mark. The registration covered medical equipment, the very same items for which the plaintiff was already using its mark. Consequently, the court concluded that the defendant’s adoption of the ‘VBMIC’ mark as its corporate name and its application for registration in class 10 for medical equipment indicated an intention to pass off its products under that mark as those of the plaintiff. Consequently, the court found that Luthra’s actions did not meet the criteria for Section 33(1) to apply, as the defendant had not acted in good faith.

Secondly, with regards to ‘passing off,’ the court emphasized its nature as a tort based on deceit, and re emphasized the following principles in its discussion:

1. The necessity of proving fraud is not absolute and the imitation leading to confusion or deception is sufficient; 
2. Proof of actual damage is not obligatory, while evidence of misrepresentation is crucial even without proven intent;
3. The issuance of an injunction hinges on the establishment of a prima facie case, the balance of convenience, and the potential for irreparable loss; 
4. A passing-off action considers the nature of the market, the class of customers, the plaintiff’s reputation, purchasing habits, care exercised during purchases, trade channels, and trade connections; 
5. Passing-off injunctions aim to preserve the plaintiff’s reputation and safeguard the public interest; 
6. Courts should exercise heightened vigilance in pharmaceutical cases; 
7. The defendant’s failure to produce the plaintiff’s goods is irrelevant if the plaintiff’s mark has sufficient reputation; and
8. Passing off hinges on goodwill, not proprietary rights, and can be contested based on distinctions like packaging or trade channels, unlike infringement where the defendant’s use of the trademark is crucial. 

Calling Upon the Gods for Help

How strong trademarks having the names of gods actually are has remained a matter of scrutiny for a long time. Gods, from Greek to Indian, have all had the unfortunate privilege of being the selling factors for both global and domestic brands. While not barred, enforcing trademarks linked to gods’ names poses inherent challenges, notably in India, where such names are very frequently utilized in various businesses, whether registered or unregistered. A series of posts related to the IP-religion intersection and trademarking God’s name has been covered on this blog before (here). The trademarking of God’s name in itself has remained a matter of discussion and debate in the past and has not been a strongly upheld aspect by courts in a plethora of decisions (some of them are discussed here, here, and here). However, the latest judicial positions have held that there is no absolute bar against trademarking the names of Gods either.

This case lies separate from this discussion, however, as the matter of concern here wasn’t trademarking Gods’ names themselves but a claim that the acronym was derived from their names, a deliberation not witnessed before for sure, but not nearly as surprising for the Indian audience either. It is a rather uniquely Indian trait to call upon the defense of the having adopted the name with a religious origin and hoping to sleaze out their way from any objections.  The claim of the defendants was evidently far fetched and its acceptance would have opened new doors for infringers to adopt popular acronymed trademarks and justify their distinctiveness through various permutations and combinations of Indian Gods, a task not so difficult given we have over 330 million of them!

Seems like the defendants took the God’s name in vain here, and rather humorously, Justice Shankar made sure not to let it slip his notice. He commented that invoking the holy trinity for what he deemed “unholy ends” might expose Luthra to divine retribution! Overall, the judgment remains one of proprietary and reason, having prevented a sleuth of problems a judgement otherwise would have caused the Indian trademark regime.

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• Source: https://spicyip.com/2024/01/angering-the-gods-a-relook-at-the-vbm-trademark-infringement-case.html