Delhi High Court - Orders
Aktiebolaget Volvo & Ors vs M K Enterprises on 23 February, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~35(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 100/2023 & I.A. 3555/2023, I.A. 3556/2023, I.A.
3557/2023, I.A. 3558/2023, I.A. 3559/2023, I.A. 3560/2023,
I.A. 3561/2023
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali
Mittal, Mr. Siddhant Chamola and Mr.
Karank K. Kamra, Advs.
versus
M K ENTERPRISES ..... Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 23.02.2023
CS(COMM) 100/2023
1. The plaintiff is the well-known manufacturer of automobiles, and is the holder of the following registrations under the Trade Marks Act, 1999.
Sl. Trademark Regis Date of Class Status
No No. application
.
1. VOLVO 763291 20.06.1997 4 Registered
2. 1404133 06.12.2005 4, 7, Registered
12, 35
3. VOVLO PENTA 1384891 14.09.2005 4, 7, Registered
12, 35
4. 3249588 12.02.2005 4, 12, Protection
35 granted
Signature Not Verified
Digitally Signed
By:KAMLA RAWATCS(COMM) 100/2023 Page 1 of 7
Signing Date:24.02.2023
14:19:32
5. 3251273 12.02.2005 12, 35 Protection granted
6. VOLVO 361886 15.05.1980 12 Registered
7. VOLVO 763280 20.6.1997 12 Registered
8. 1930763 4/03/2010 7, 12 Registered
9. 1759086 02/12/2008 12 Registered
10. 1759088 02/12/2008 12 Registered
11. VOLVO FD 1466300 30/06/2006 12 Registered
12. 1759085 02/12/2008 12 Registered
13. 1759087 02/12/2008 12 Registered
14. 1759089 02/12/2008 12 Registered
15. VOVLO 2119694 22.03/2011 12 Registered SELEKT
2. The plaintiff also operates websites based on the domain names www.volvobuses.com, www.volvotrucks.com, www.volvobuses.in, www.volvotrucks.in and www.volvocars.com.
3. The plaint points out that the trademark "VOLVO" of the plaintiff stands recognised as a well-known trademark by the Division of the High Court of Bombay in Aktiebolaget Volvo v. Volvo Steel Ltd.1
4. It is asserted that, sometime towards the end of November 2022, the plaintiff came to know that the defendant was engaged in the manufacture, sale, supply and marketing of turbo engine products, including, primarily, lubricants under the name/mark Signature Not Verified 1 Digitally Signed 1998 PTC (18) 47 By:KAMLA RAWATCS(COMM) 100/2023 Page 2 of 7 Signing Date:24.02.2023 14:19:32 "VOLVOSTAR"/ .
5. It is also alleged that the defendant has applied for registration of the wordmark "VOLVOSTAR" on 14th August 2021 with the Registry of Trademarks, but that the trade mark application is still under objections.
6. It is also pointed out that, in the reply to the First Examination Report (FER) issued by the Registrar by way of the response to the trademark application of the defendant, the defendant has admitted extensive business operations under the impugned mark and that there is extensive dissemination and distribution of goods bearing the impugned mark, in the country.
7. The plaintiff alleges that the defendant, by adopting a mark of which VOLVO forms a prominent part, has infringed the registered VOLVO marks of the plaintiff. Mr. Pravin Anand, learned Counsel for the plaintiff further submits that the former VOLVO part of the impugned mark is emphasized by printing it in a white colour as against the red colour used for 'STAR'. Resultantly, submits Mr Anand, an unwary customer would be lured into believing that the defendant has an association with the plaintiff or that the defendant is dealing with VOLVO products with due authorisation from the plaintiff.
8. In these circumstances, the plaintiff has instituted the present suit, seeking a decree of permanent injunction restraining the defendants and all other acting on their behalf from using the impugned Signature Not Verified mark, or any other name or mark identical or Digitally Signed By:KAMLA RAWATCS(COMM) 100/2023 Page 3 of 7 Signing Date:24.02.2023 14:19:32 deceptively similar to the plaintiff's "VOVLO" mark, apart from directions for delivery up, rendition of accounts, damages and costs.
9. Mr. Anand also draws attention to page 32 of the documents filed with the plaint in which the defendant has been selling lubricant oil under the names "VOLVO LINE". He submits that this would also be phonetically similar to the plaintiff's mark. He also seeks permission to amend the plaint including an assertion to the said effect. Permission as sought is granted.
10. Prima facie, a case of infringement and passing off is made out.
11. As such, let the plaint be registered as a suit. Issue summons.
12. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within 30 days with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.
13. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission/denial of the documents and marking of exhibits on 6th April 2023.
I.A. 3555/2023 (under Order XXXIX Rule 1 and 2 of the CPC)
14. This is an application by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking interlocutory Signature Not Verified injunctive reliefs. The facts as narrated hereinabove Digitally Signed By:KAMLA RAWATCS(COMM) 100/2023 Page 4 of 7 Signing Date:24.02.2023 14:19:32 make out a prima facie case of infringement and passing off in favour of the plaintiff and against the defendant, especially as the plaintiff possesses subsisting registrations for the word mark "VOLVO" in more than one Class. As such, applying the law enunciated in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia 2 and Laxmikant V. Patel v. Chetanbhai Shah3, a case for grant of interlocutory injunction is made out.
15. As such, issue notice. Notice be served on the defendants by all modes.
16. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto within four weeks thereof.
17. List before the Court on 19th April 2023.
18. Till the next date of hearing, the defendants and all others acting on their behalf shall stand restrained from using the names/mark "VOLVOSTAR"/ or any other name or mark identical or deceptively similar to the plaintiff's mark "VOLVO" in relation to their business activity or for any other purpose whatsoever, on the products or packaging of the products, in their email ids, domain names, social media, third party listings or any other online or offline representations. The defendants shall also place on record a statement of the monies realised by them by use of the impugned mark, since the time its use commenced, duly certified by a Chartered Accountant.
2 Signature Not Verified (2004) 3 SCC 90 3 Digitally Signed (2002) 3 SCC 65 By:KAMLA RAWATCS(COMM) 100/2023 Page 5 of 7 Signing Date:24.02.2023 14:19:32
19. As this order has been passed ex parte, the plaintiff shall comply with the requirement of Order XXXIX Rule 3 of the CPC within one week from today.
I.A. 3556/2023 (under Order XI Rule 1(4) of the CPC)
20. This application seeks permission to file additional documents.
21. The petitioner is permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the CPC as amended by the Commercial Courts Act, 2015, within 30 days from today.
22. The application stands disposed of accordingly.
I.A. 3557/2023 (Exemption)
23. Subject to the plaintiff filing legible copies of any dim or illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
24. The application is disposed of.
I.A. 3558/2023 (under Order XXVI Rules 9 and 10 of the CPC)
25. Mr. Pravin Anand does not press this application.
I.A. 3559/2023 (exemption from advance service)
26. Given the nature of urgency involved in the present case, the plaintiff is exempted from serving an advance notice on the defendant.
Signature Not Verified Digitally Signed By:KAMLA RAWATCS(COMM) 100/2023 Page 6 of 7 Signing Date:24.02.2023 14:19:3227. The application stands disposed of accordingly.
I.A. 3560/2023 (under Section 12A of the Commercial Courts Act)
28. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd4, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
29. The application stands allowed accordingly.
I.A. 3561/2023 (under Order XI Rule 2)
30. Issue notice, returnable before the Court on 19th April 2023.
31. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto within four weeks thereof.
C.HARI SHANKAR, J FEBRUARY 23, 2023 ar Signature Not Verified 4 Digitally Signed 2022 SCC OnLine Del 3529 By:KAMLA RAWATCS(COMM) 100/2023 Page 7 of 7 Signing Date:24.02.2023 14:19:32