The Delhi High Court has dismissed a plea by German automaker Volkswagen challenging the registration of trademark ‘Transformation’ by Maruti Suzuki India Ltd. Volkswagen had opposed the mark, claiming it was confusingly similar to its ‘4MOTION’ trademark, which is associated with the brand’s all-wheel-drive technology.
The case, titled Volkswagen AG vs Registrar of Trade Marks and Others, came before Justice Manmeet Pritam Singh Arora, who upheld the earlier decision of the Registrar of Trade Marks, rejecting Volkswagen’s opposition.
Volkswagen opposes ‘change’
Maruti Suzuki had applied for registration of the trademark ‘Transformation’, which was later accepted and advertised by the Registrar of Trade Marks. Volkswagen filed a notice of opposition, arguing that the mark was too similar to its registered trademark ‘4MOTION’, which is used for its intelligent four-wheel-drive system in vehicles like the Tiguan.
Volkswagen claimed that the similarity between the two marks could potentially confuse customers in the automotive market. However, the registrar rejected the protest, following which Volkswagen had to file an appeal before the Delhi High Court.
High Court finds no likelihood of consumer confusion
Examining the case, the Delhi High Court found that both the trademarks are visually, phonetically and conceptually different. The court noted that ‘4MOTION’ begins with a numerical prefix, while ‘Transformation’ begins with the alphabetical prefix ‘TRANS’, resulting in a different pronunciation and overall structure. As a result, the court held that there was no likelihood of confusion between the two marks.
Justice Arora also highlighted that both companies have strong independent goodwill in the Indian automobile market, and cars are products purchased by consumers after much deliberation. The court said it was unlikely that buyers would purchase Maruti Suzuki vehicles under the false impression that they were linked to Volkswagen.
Different meanings and uses of both trademarks
The court also examined the functional use of both trademarks. Volkswagen’s 4MOTION is a four-wheel-drive technology used in some models such as the Tiguan, while Maruti Suzuki’s ‘Transformation’ is used in reference to the transition from analogue to digital instrumentation in its vehicles. The court said that both the trademarks serve different purposes and represent different concepts.
‘Motion’ is commonly used in the automotive industry
Maruti Suzuki also argued that the term ‘Motion’ is commonly used in the automobile industry, and hence cannot be exclusively claimed by any one manufacturer. The court accepted this argument, noting that many third-party trademarks in the automotive sector included the word “Motion”. Additionally, the court noted that ‘transformation’ is a wordplay derived from the dictionary word ‘transformation’, further strengthening its distinctive identity.
Earlier use also considered
During the proceedings, it was also highlighted that Maruti Suzuki started using the ‘Transformation’ mark in 2016, while Volkswagen started using ‘4MOTION’ in India around 2017. Considering this timeline as well as the lack of visual, phonetic and conceptual similarity between the two trademarks, the Delhi High Court concluded that Volkswagen’s opposition lacked merit. The court therefore rejected Volkswagen’s appeal, allowing Maruti Suzuki to proceed with the registration and use of the ‘Transformation’ trademark.
