By Tamal Nandi
Mahindra & Mahindra and InterGlobe Aviation, which owns IndiGo airlines, were on Tuesday locked in a tussle over infringement of ‘6e’ trademark, despite the automaker claiming it is in discussions to find an amicable solution. The dispute concerns IndiGo’s trademark “6E,” registered under Classes 39, 16, 9, and 35, primarily for airline services, transport, and advertising, and Mahindra’s use of “BE 6e” under Class 12 for vehicles, including electric cars.
Section 2 in The Trade Marks(TM) Act, 1999
According to Section 2(h) of TM Act, 1999-Deceptively similar (h) “deceptively similar”. —A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;
Abhishek Chansoria, Principal Associate at Saraf and Partners has said that both IndiGo and Mahindra have points in their favour.
Argument in favour of Mahindra
While both involve the mark “6E,” the classes and products differ significantly, with Indigo focusing on airline services and Mahindra on motor vehicles, making them unlikely to be deceptively similar, even though both the marks resemble nearly it cannot be considered to be deceptively similar. Mahindra’s mark is “BE 6e,” not the standalone “6E.” It differs fundamentally from IndiGo’s “6E,” which represents an airline, eliminating any risk of confusion.
Argument in favour of IndiGo
IndiGo could argue that Mahindra’s use of “BE 6e” could lead to brand dilution and consumer confusion, despite the different classes and products. The similarity in the marks might mislead consumers into thinking there’s an association between Indigo’s airline services and Mahindra’s electric vehicles, harming Indigo’s brand reputation and diluting their trademark’s uniqueness.
Abhishek Chansoria further explains the various Sub-sections of Section 29 of TM Act, 1999 that can be applied in the current IndiGo-Mahindra dispute.
Sub-section 4(c) – The provision could be invoked only if IndiGo’s “6E” has a significant reputation in India. A brand is not just the logo but the perception it creates in the minds of the consumer basis which the consumers associate certain qualities to the goods and services of such a Company. In this case, it can also be said that the brand “6E” is associated with affordable transportation, which Indigo has indeed provided to the general masses. It may be argued that using the same brand for affordable electric cars may be considered as taking unfair advantage of IndiGo’s reputation. However, Mahindra may argue that the use does not seem to take unfair advantage of or harm Indigo’s reputation, as the industries do not overlap.
Sub-section 5 – This provision may be applicable, as Mahindra is using “6E” as part of its business name or trading name for its electric vehicle.
Sub-section 6 – Mahindra utilises the registered work mark in advertising and offers the goods for sale. However, Mahindra’s use of “6E” for vehicles does not overlap with IndiGo’s goods/services.
Sub-section 8 – Mahindra is a well-known brand that has existed since 1945 and has a reputation as a reliable Indian automobile manufacturing company. Thereby, Mahindra may argue that there can be no intent of Mahindra to use “6E” in the context of electric vehicles unfairly, dishonestly, or detrimental to IndiGo’s reputation or trademark. Furthermore, the citing the difference in the market.
Sub-section 9- The distinctive element of IndiGo’s trademark is “6E” which may have been intentionally chosen by IndiGo to show a certain quality of their brand. The spoken use by Mahindra would be “BE 6E” which may be considered similar to that of Indigo’s usage.
However, the above observations are subject the courts decision on whether it can be considered as infringement considering the difference in aviation and automobile industries and the scale of operation and reputation of these brands.
Passing Off
The law of passing off is a common law remedy that protects the goodwill associated with a business’s brand or trademark from being misrepresented by another party. It applies even if the trademark is not registered. To establish a case of passing off, three key elements must be proven:Goodwill: The claimant must demonstrate that their brand has a significant reputation and recognition among consumers.
Misrepresentation: There must be a misrepresentation by the defendant that leads the public to believe their goods or services are those of the claimant.
Damage: The claimant must show that they have suffered, or are likely to suffer, damage to their goodwill as a result of the defendant’s misrepresentation.
In the context of the IndiGo and Mahindra dispute, IndiGo could argue that Mahindra’s use of “BE 6e” misrepresents their brand, leading to consumer confusion and potential damage to Indigo’s goodwill. This could support a claim of passing off, complementing their arguments under trademark law.
Case law against Mahindra’s stance that it uses BE 6e not standalone 6e.
ITC Ltd. v. Central Park Estates Private Ltd- This 2022 case established the importance of well-known marks in Indian law. The plaintiff, ITC Ltd., alleged that the defendants, Central Park Estates Private Ltd., infringed on their registered trademark, “Bukhara”, by using the mark “Balkh Bukhara” for their restaurants. IndiGo, which holds a 60% share of India’s domestic aviation market, has used ‘6E’ as its call sign and incorporated it extensively across its branding, including co-branded credit cards, rewards programs, and its in-flight magazine. Here, Indigo would have to make a case that ‘6E’ is equivalent to IndiGo’s identity and exists independently of the brand. On the other hand, Mahindra is not using ‘6E’ in isolation but with the letter “BE”.
Siddharth Mahajan Partner, Athena Legal said that the 6E dispute between IndiGo and Mahindra is an interesting case from a trademarks law perspective. “6E is a call sign of IndiGo.” “IndiGo has extensively used 6E as brand and trademark as part of its various services. It seems that besides extensive use of 6E Indigo also has multiple registrations for 6E and 6E formative marks.”
“However, it seems that none of these applications are in class 12 which is class for automobiles. Mahindra can argue that the class for which they going to use 6E is very different from airlines related services and consequently there would be no consumer confusion, that their BE 6E branded cars are associated with IndiGo in any manner.”
“IndiGo on the other hand may argue that by virtue of their extensive use of 6E as part of its various services, 6E has become a well-known brand which public associates with them and irrespective of the class it is likely that any product branded as 6E will be associated with them. Considering the specific facts, the litigation in present case may not be quick as stand of both parties has some merit. In this situation launching a new car with disputed brand name may not be a good idea hence some kind of settlement may happen soon.”