Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan (AIR 1994 Delhi 239)
Delhi High Court
1994
AIR 1994 Delhi 239
Trademarks / Dilution
~6 min read
LOCATION: India
AUTHOR_NAME: Gulzar Hashmi •
PUBLISH_DATE: 2025-11-01 •
PRIMARY_KEYWORDS: Daimler Benz v. Hybo, well-known trademark, dilution, injunction •
SECONDARY_KEYWORDS: passing off, Mercedes-Benz, three-pointed device, cross-class protection, Delhi High Court
Quick Summary
Mercedes-Benz asked the court to stop use of “Benz” and a confusing device on undergarments. The Delhi High Court said BENZ is a well-known mark. Using it on ordinary goods rides on its reputation and dilutes its distinctiveness. The Court granted an injunction.
Holding: Defendants restrained from using “Benz” and the deceptive device on undergarments.
Issues
- Should the court grant an injunction against using “Benz” and a similar device on undergarments?
- Do well-known marks get protection across dissimilar goods (cross-class protection)?
- Does such use create dilution or unfair advantage even without direct confusion?
Rules
- A well-known trademark enjoys wider protection and can stop use on dissimilar goods to prevent dilution or free-riding.
- Courts consider reputation, recognition, unfair advantage, detriment to distinctive character, and public interest.
- Passing off and infringement principles guard goodwill even beyond exact similarity.
Key Point: Fame of BENZ means others cannot hijack the name for ordinary goods to cash in on its aura and quality image.
Facts (Timeline)
1951
Mercedes-Benz registered in India; Benz becomes a household name for premium cars.Use on Garments
Defendant sells undergarments using the word “Benz” and a three-pointed human in a ring device.Suit
Plaintiffs (German automaker & Indian arm) sue for permanent injunction against trademark misuse.Question
Can a famous car mark stop use on ordinary clothing items?Decision
Court recognizes BENZ as a well-known mark and issues injunction.Arguments
Plaintiffs (Daimler Benz)
- BENZ is globally famous; public instantly links it with Mercedes-Benz cars.
- Use on undergarments free-rides on reputation and dilutes distinctiveness.
- Device used is confusingly evocative of the iconic Benz emblem.
Defendants (Hybo Hindustan)
- Goods are dissimilar; cars vs. undergarments.
- Our device is different (human figure), not the three-pointed star.
- Consumers won’t assume a trade connection with Mercedes-Benz.
Judgment
Injunction granted. The Court restrained the defendants from using “Benz” and the deceptive device for undergarments.
- Reputation: “Benz” has an extraordinary reputation; public associates it with top-class cars.
- No justification: There is no legitimate reason to use this name on ordinary goods.
- Dilution / Tarnishment: Such use harms distinctiveness and prestige of the famous mark.
Ratio Decidendi
A well-known mark like BENZ merits protection even beyond similar goods. Using it on ordinary items exploits its goodwill and dilutes its identity; courts will intervene to prevent unfair advantage.
Why It Matters
- Foundation Indian case for well-known mark protection and anti-dilution.
- Signals that prestige brands cannot be copied on unrelated goods.
- Guides courts on granting injunctions to preserve distinctiveness and public trust.
Key Takeaways
Well-Known Shield
Famous marks get cross-class protection.
No Free-Ride
Courts stop unfair advantage over reputation.
Dilution Counts
Harm to distinctiveness matters even without direct confusion.
Strong Remedies
Injunction is a common response in such cases.
Mnemonic + 3-Step Hook
Mnemonic: “FAD” — Fame, Advantage (unfair), Dilution.
- Check FAME: Is the mark well-known?
- Spot ADVANTAGE: Is someone riding on that reputation?
- Find DILUTION: Is distinctiveness weakened by the use?
IRAC Outline
| Issue | Rule | Application | Conclusion |
|---|---|---|---|
| Should use of “Benz” on undergarments be restrained? | Well-known marks get cross-class protection against dilution and unfair advantage. | BENZ is iconic; use on ordinary goods trades on fame and tarnishes image. | Yes. Permanent injunction granted. |
Glossary
- Well-Known Mark
- A trademark with exceptional reputation and recognition; enjoys broader protection.
- Dilution
- Weakening of a mark’s distinctiveness by use on unrelated goods.
- Unfair Advantage
- Gaining from another’s reputation without permission.
FAQs
Not strictly. For well-known marks, dilution and unfair advantage themselves justify restraint.
It borrows prestige and may lower the mark’s exclusive image—classic dilution.
Unlikely. With famous marks, the name itself carries the aura; disclaimers rarely cure dilution.
Avoid famous signs, run clearance searches, and develop original branding.
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