Delhi High Court: An application in a trademark suit was filed by Gensol Electric Vehicles seeking relief of permanent injunction restraining the defendant from infringing and passing off the trademark of the plaintiff, along with other ancillary reliefs. Amit Bansal, J., dismissed the application and held that the plaintiff has failed to make out a prima facie case for grant of interim injunction after defendant’s inclusion of ‘MAHINDRA’ to the mark ‘ZEO’ making it distinctive both structurally and phonetically.
The plaintiff is a subsidiary of Gensol Engineering Limited, a company incorporated in the year 2022 with the vision to accelerate electric vehicle (EV) adoption towards a sustainable future. The plaintiff operates a state-of-the-art manufacturing facility designed to produce a range of electric vehicles, including shared mobility fleets, cargo vehicles, personal mobility solutions, and mini-SUVs, to cater to diverse urban mobility needs. Around August 2022, the plaintiff conceptualized the development of an innovative electric vehicle specifically designed for urban mobility and collaborated with a third-party vendor to create a life-sized clay model of the vehicle.
Upon conceptualisation and finalization of the design, the plaintiff coined and adopted the mark ‘EZIO’for the vehicle. In December 2022, along with the term ‘EZIO’, the plaintiff, with the assistance of a third party, also created the logo and applied for its registration on a ‘proposed to be used’ basis with the Trademarks Registry. After the publication of the mark on 20-11-2023, the Trademarks Registry granted the registration of the word mark ‘EZIO’ in favour of the plaintiff on 19-05-2024 valid till 30-06-2033.
However, on 18-09-2024, the plaintiff came across a newspaper article which highlighted the defendant’s announcement of the launch of a new commercial electric four-wheeler under the mark ‘eZEO’. Upon further investigation, the plaintiff came across the website of the defendant, wherein the plaintiff found that the defendant had announced the launch of its Electric Vehicle under the mark ‘eZEO’ on 3-10-2024. Subsequently, the plaintiff also discovered that the defendant had filed trade mark applications in Class 12 on ‘proposed to be used’ basis for the word mark and device mark ‘ZEO’ and ‘eZEO’ on 29-08-2024 and 10-09-2024, respectively. Thus, the present suit has been filed along with the present application seeking interim injunction.
Mahindra Last Mile Mobility Limited (defendant)is a subsidiary of Mahindra and Mahindra Limited, is a public limited company engaged in the business of manufacture and sale of vehicles. The defendant is engaged in the design and manufacture of electric vehicles across various operational segments, including electric three wheelers marketed under the brand names ‘Treo’, ‘E-Alfa’, and ‘Zor’, as well as an electric four-wheeler cargo vehicle under the brand ‘Jeeto’. Around April 2024, the defendant conceptualized the launch of a new commercial electric four-wheeler vehicle, coined and adopted the mark ‘ZEO’/ ‘eZEO,’ which is an acronym for ‘Zero Emission Option’. The defendant conducted a trademark search on the Trade Marks Registry website in April 2024 and performed market searches, which did not reveal any conflicting marks in the electric vehicle sector. After ensuring no similar marks were in existence, the defendant proceeded to adopt the mark ‘eZEO’ and its formative marks. Along with the mark ‘eZEO’, the defendant also uses the house mark of its parent company, ‘Mahindra’
The defendant alleged that ir is the prior user of the mark ‘eZEO’ as the use of the said mark commenced on 9-09-2024, whereas the plaintiff is yet to launch its vehicle in the market. The defendant is ‘first in the market’ in relation to the defendant’s trademarks. Moreover, the plaintiff first disclosed its marks to the public only on 25-09-2024 which is a day before the institution of the suit.
Based on the concession/modification made on behalf of the defendant that the defendant shall use the mark ‘Mahindra Zeo’and not ‘eZEO’ and the defendant shall be bound by the same. The Court noted that the defendant has modified its original mark ‘eZEO’ in a manner to drop the letter ‘e’ at the beginning and added its house mark ‘MAHINDRA’, pursuant to which it reads as ‘MAHINDRA ZEO’. While it can be said that the earlier mark adopted by the defendant ‘eZEO’ was almost identical to the plaintiff’s registered mark ‘EZIO’, after the modifications carried out by the defendant, the two marks cannot be said to be identical. Consequently, there cannot be an automatic presumption of confusion in terms of Section 29(3) read with Section 29(2)(c) of the Trade Marks Act, 1999.
On the aspect of whether the modified mark of the defendant is likely to cause confusion in the public or result in an association with the plaintiff’s mark, the Court observed that the change effected by the defendant in its mark makes the two marks visually and phonetically dissimilar so as to not cause any confusion among the public.
The Court further opined that the possibility of the defendant copying the mark of the plaintiff is remote as the plaintiff’s mark was disclosed in the public domain only on 25-09-2024, after the defendant had already announced the launch of its vehicle. The defendant has justified the adoption of the mark ‘ZEO/ eZEO’ as an acronym of ‘Zero Emission Option’ which was coined by the defendant to convey the environmental benefits of the electric vehicle. Thus, on a prima facie consideration, the adoption of the impugned mark by the defendant appears to be bona-fide. This is not a case where the defendant has copied the mark of the plaintiff so as to ride on the goodwill or reputation of plaintiff.
The Court remarked that “It is common in the automobile trade that the cars are identified by the manufacturer’s name along with the model of the car. For instance, car models such as Mercedes E220, Toyota Camry, Honda Accord, Maruti SX4 would not be readily recognizable without the name of the manufacturing company i.e., Mercedes, Toyota, Honda, or Maruti respectively. Thus, the name of the manufacturer is of utmost importance for a consumer and becomes a distinguishing factor as the consumer would consider the manufacturer’s name and not just the car model.”
The Court concluded that it cannot be said that ‘MAHINDRA’ is merely a trivial or inconsequential addition. On the contrary, the inclusion of ‘MAHINDRA’ to the mark ‘ZEO’ makes the mark distinctive and effectively sets it apart from the mark of the plaintiff, both structurally and phonetically. Thus, the plaintiff has failed to make out a prima facie case for grant of interim injunction. The balance of convenience is also in favour of the defendant for not granting interim injunction at this stage, as the defendant has already launched its product whereas plaintiff is yet to launch its product in the market.
[Gensol Electric Vehicles Pvt Ltd v Mahindra Last Mile Mobility Ltd., I.A. 40846/2024 in CS(COMM) 849/2024, decided on 13-01-2025]
Advocates who appeared in this case :
Mr. Chander M. Lall, Sr. Advocate with Ms. Swapnil Gaur, Ms. Annanya Mehan, Mr. Abhinav, Advocates for plaintiff
Mr. Rajiv Nayar, Sr. Advocate and Mr. Akhil Sibal, Sr. Advocate with Mr. Ankur Sangal, Ms. Smriti Yadav, Ms. Sucheta Roy, Ms. Amrit Sharma, Ms. Ridhie Bajaj and Ms. Sarah Haque, Advocates for respondents
