Delhi High Court Rejects Volkswagen’s Challenge to Maruti Suzuki’s ‘TRANSFORMOTION’ Trademark, Finds No Likelihood of Confusion

Delhi High Court Rejects Volkswagen’s Challenge to Maruti Suzuki’s ‘TRANSFORMOTION’ Trademark, Finds No Likelihood of Confusion

Introduction

The Delhi High Court has dismissed an appeal filed by Volkswagen AG challenging the registration of the trademark “TRANSFORMOTION” by Maruti Suzuki India Limited.

Justice Manmeet Pritam Singh Arora held that when the rival marks are compared as a whole, there is no plausible likelihood of confusion between Volkswagen’s mark “4MOTION” and Maruti Suzuki’s mark “TRANSFORMOTION.” The Court further noted that automobiles are high-value products purchased after careful deliberation, which further reduces the possibility of consumer confusion.

Factual Background

Volkswagen AG owns the registered trademark “4MOTION,” which relates to the company’s four-wheel-drive automotive technology used in its vehicles. Maruti Suzuki India Limited applied for registration of the mark “TRANSFORMOTION” for use in connection with vehicles and related automotive technologies. Volkswagen opposed the application, arguing that the impugned mark was deceptively similar to its registered trademark “4MOTION.” According to Volkswagen, Maruti Suzuki had merely added the prefix “TRANS” to the word “FORMOTION,” which it claimed was phonetically similar to its own mark.

Procedural Background

Volkswagen filed an opposition before the Registrar of Trade Marks against the registration of “TRANSFORMOTION.” The Registrar dismissed the opposition, allowing Maruti Suzuki to proceed with the registration of the mark. Aggrieved by this decision, Volkswagen filed an appeal before the Delhi High Court seeking reversal of the Registrar’s order and rejection of the impugned trademark application.

Issues

1. Whether the trademark “TRANSFORMOTION” is deceptively similar to Volkswagen’s registered mark “4MOTION.”

2. Whether the Registrar of Trade Marks erred in dismissing Volkswagen’s opposition to the registration of the mark.

3. Whether the similarity in the word “MOTION” between the rival marks creates a likelihood of confusion among consumers.

Contentions of the Parties

Volkswagen contended that the impugned mark was visually, phonetically, and conceptually similar to its registered mark “4MOTION.”

It argued that Maruti Suzuki had adopted the core element “FORMOTION,” which closely resembled the pronunciation of “4MOTION,” and merely added the prefix “TRANS.” According to Volkswagen, both marks conveyed similar ideas relating to automobile technology and therefore created a likelihood of confusion.

Maruti Suzuki, on the other hand, argued that the mark “TRANSFORMOTION” was derived from the word “transformation,” signifying a technological transition in its vehicles, particularly the shift from analogue to digital systems.x

The company further submitted that the term “MOTION” is commonly used in the automobile industry and cannot be monopolised by a single entity. It also pointed out that it had begun using the mark in an advertising campaign in 2016, whereas Volkswagen’s evidence showed use of the mark “4MOTION” in India only in 2017.

Reasoning and Analysis

The Court emphasised that trademarks must be compared as a whole, and not by dissecting individual components. Upon visual comparison, the Court noted that the two marks were structurally different. Volkswagen’s mark begins with the numeral “4,” while Maruti Suzuki’s mark begins with the alphabetic prefix “TRANS.” The Court also observed that even on phonetic comparison, the prefix “TRANS” sufficiently distinguishes the two marks, even if the appellant’s mark is pronounced as “FORMOTION.” Further, the Court noted that the word “MOTION” is commonly used in the automobile industry and is therefore descriptive in nature. In such circumstances, greater emphasis must be placed on the distinctive portions of the marks—namely “4” in Volkswagen’s mark and “TRANSFOR” in Maruti Suzuki’s mark. The Court also considered the nature of the goods involved. It observed that automobiles are expensive products that consumers purchase after careful research and deliberation, making confusion between brands less likely.

Decision

The Delhi High Court upheld the decision of the Registrar of Trade Marks and dismissed the appeal filed by Volkswagen AG. The Court held that the mark “TRANSFORMOTION” was sufficiently distinct from the mark “4MOTION” and that there was no likelihood of confusion among consumers. Accordingly, Maruti Suzuki India Limited was permitted to proceed with the registration of the trademark “TRANSFORMOTION.”

In this case the plaintiff was represented by Advocates Jayant Kumar and Ruchi Singh.