Founded in the year 1984, Sona BLW Precision Forgings Ltd. (Sona) is involved in the business of manufacturing a range of products consisting of electric motors, controllers, and starters for use in all passengers and commercial vehicles, including Electric Vehicles (EV) having its operations in India, the USA, Mexico, China and Hong Kong. Sona is the registered proprietor of the mark “SONA” in India as well as abroad.

 

 

SONAE EV Pvt. Ltd. (Sonae) is an upcoming electric mobility company that was setup in 2021 in Pune, Maharashtra which is yet to launch its business in the market and is involved in setting up universal charging stations for electric two-wheelers.

 

 

Sona approached the Delhi High Court, seeking to permanently restrain Sonae, and claimed infringement of its registered mark ‘SONA’, passing off, unfair competition, misrepresentation as well as dilution of its mark.

 

 

Sona claimed that its registered mark ‘SONA’ which is also its corporate trade name had a dominant presence worldwide in the automobile industry and that Sonae had merely added an alphabet ‘e’ in its mark which did not make the mark distinctive and was deceptively similar to its registered mark.

 

 

Sona further claimed that, since both the parties were involved in the same industry, there was every possibility of confusion to be caused in the minds of the customers, that the goods bearing the mark ‘SONAE’ originate from Sona and that Sonae thereby intended to take unfair advantage of Sona’s goodwill and misrepresent the public.

 

 

Against this, Sonae countered stating that the intended name was supposed to be “SONAI”, derived from Sonai Constructions from the same promoter group. It was renamed as “SONAE” i.e. by replacing “I” with “e”, as “Sonai” was already registered.

 

 

Sonae contended that the scope of business of both the parties was different along with the class of purchasers and therefore no confusion was likely to happen. Sonae claimed that, since it was in its development stage, an order of restraint would cause an irreparable loss as a launch was already in process by 2023.

 

 

The Court has considered the submissions and contentions of both the parties, observed that there was a ‘trade connection’ between Sona and Sonae as both were involved in the automobile industry and especially in the niche segment of electric vehicles.

 

 

The Court further observed that the mere addition of the alphabet 'e' to the word ‘SONA’ was not sufficient to hold that the two marks would not lead to any deception or confusion in the mind of an unwary consumer and would lead to a belief that Sona had expanded its business.

 

 

The Court also held that when a trademark is compared; it is to be considered as a whole and not separately may it be visually, phonic, or any other comparison, and that Sona was able to make a prima facie case for itself as well as the balance of convenience in its favour.

 

 

Hence, the Court having considered the precedent in FDC Limited v. Docsuggest Healthcare & Corn Products Refining Co., 2017, and the fact that, Sonae was yet to enter the market however, on the other side Sona was a well-established business across the globe in the automobile industry granted an ad-interim injunction against Sonae restraining it from using the mark ‘SONAE EV’ and/ or any other mark was deceptively, phonetically similar from Sona’s mark.