Delhi High Court - Orders
Aktiebolaget Volvo & Ors vs Nirmala Foods And Fluids Private ... on 23 April, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 322/2024
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali
Mittal and Mr. Karan Kamra,
Advocates.
versus
NIRMALA FOODS AND FLUIDS PRIVATE LIMITED & ORS.
..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 23.04.2024 I.A. 8834/2024 (seeking exemption from advance service of Defendants)
1. The Plaintiffs seek urgent interim relief against counterfeit products and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the Defendants is granted.
2. The application is allowed and disposed of.
I.A. 8831/2024 (seeking leave to file additional documents)
3. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
4. Applicants, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
5. Accordingly, the application stands disposed of.
CS(COMM) 322/2024 Page 1 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:31 I.A. 8832/2024 (seeking exemption from filing clearer copies and originals of documents)
6. Exemption is granted, subject to all just exceptions.
7. The Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
8. Accordingly, the application stands disposed of.
I.A. 8835/2024 (seeking exemption from institution of pre-suit litigation mediation)
9. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
10. Disposed of.
CS(COMM) 322/2024
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiffs, without which the written statement(s) shall not be taken on record.
13. Liberty is given to the Plaintiffs to file replication(s) within 15 days of the receipt of written statement(s). Along with the replication(s), if any, filed by the Plaintiffs, affidavit(s) of admission/denial of documents of the CS(COMM) 322/2024 Page 2 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:31 Defendants, be filed by the Plaintiffs, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 24th July, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter.
I.A. 8836/2024 (seeking administration of interrogatories upon the Defendants)
16. Issue notice to the Defendants, by all permissible modes, upon filing of process fee, returnable on 25th September, 2024.
I.A. 8830/2024 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
17. Ms. Vaishali Mittal, counsel for the Plaintiffs, contends as follows:
17.1. The Plaintiffs have filed the instant suit seeking inter-alia permanent injunction restraining the Defendants from the name, mark "VOLVO/ " and/or any other mark, identical or deceptively similar to the Plaintiffs' registered marks "VOLVO (word) and device mark:
in relation to lubricant products, amounting to trademark infringement and passing off.1
2023 SCC OnLine SC 1382.CS(COMM) 322/2024 Page 3 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:32 17.2. Plaintiff No.1 executed a global deed of assignment in favour of Plaintiff No.2 who became the subsequent proprietor of the Plaintiffs' 'VOLVO' trademark and subsequently licensed the same to Plaintiff Nos. 1 and 3 to use the trademark 'VOLVO' in relation to their respective businesses. Plaintiff No.2 is the registered owners of the trademark "VOLVO" in several classes including class 4 (Lubricating Oils, Rust Oils, and Lock Lubricants), with which the present suit is concerned. The list of the said registered trademarks has been delineated in paragraph no. 14 of the plaint, as follows:CS(COMM) 322/2024 Page 4 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:32 17.3. The aforenoted trademark registrations ("Plaintiffs' marks") are valid and subsisting. Furthermore, the Plaintiffs' trademark 'VOLVO' has been recognized as a well-known trademark in India by the Trademarks Registry, pursuant to the Judgment delivered by Division Bench of the Bombay High Court in an appeal titled Aktiebolaget Volvo vs. Volvo Steel Ltd2. 17.4 Plaintiffs also have an online presence and several websites which are posted on several registered domain names as mentioned in paragraph nos. 17 and 18 of the plaint. Specifically, the Plaintiffs' website-
https://www.volvoce.com/ provides information about the Plaintiffs' industrial oil and lubricants products which are marketed under its registered 'VOLVO' mark.
17.5. Plaintiff has also spent substantial amount towards the promotion and advertisement of their business under the trademark/tradename 'VOLVO' marks, details of which are mentioned in Paragraph no. 22 of the Plaint. 17.6. The present suit has been instituted against Defendant Nos.1-3 who CS(COMM) 322/2024 Page 5 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:32 are believed to be inter-connected/closely associated with each other. Defendant No. 1, M/s Nirmala Foods and Fluids Private Limited, is engaged in manufacturing and suppling of lubricants namely Diesel Exhaust Fluid under the brand name 'CRYSTAL BLUE' using deceptively similar mark ' ' ("Impugned Mark") which is identical to the Plaintiffs' registered 'VOLVO' device marks in the form of , , as a part of the product packaging. The said product packaging of the 'CRYSTAL BLUE' product also makes a representation/ declaration that the product has been "Approved for use in VOLVO trucks and buses". Defendant No. 2 is believed to be the manufacturing unit of Defendant No. 1 and is engaged in manufacturing and supply of lubricants, manufactured by Defendant No. 1. Defendant No. 3 is alleged to be a warehouse unit of Defendant Nos. 1 and 2.
17.7. In September 2023, the Plaintiffs learnt about the Defendants' infringing activities and conducted investigations into the business activities of the Defendants to conclusively determine the relationship amongst the Defendants and the extent of Defendants' infringing and illegal activities. The investigations reveal that all the three Defendants are inter-connected. 17.8. The manner in which the Defendants have used the Impugned mark is as follows:
2[1998 PTC (18) 47] CS(COMM) 322/2024 Page 6 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33
18. In light of the above, the Court is prima facie satisfied that the Defendants' use of the Impugned mark " " as also the representation on their product "Approved for use in VOLVO trucks and buses", as evident from the above extract, amounts to infringement of the Plaintiffs' marks. The mark ' ' is deceptively similar to the Impugned mark. The use of the said mark, for identical goods, such as lubricants, for which the Plaintiffs have the registrations bearing nos.
CS(COMM) 322/2024 Page 7 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33 763291, 1384891, 3249588, 1404133, has the potential of creating a false nexus, affililiation and association with the Plaintiffs. The activities of the Defendants, risk dilution and errosion of the Plaintiffs' goodwill and reputation of the Plaintiffs in their registered trademark by creating confusion in the minds of purchasing public and the other stakeholders regarding the source of the Defendants' products.
19. The Court thus finds that the Plaintiffs have made out a prima facie case in their favour and in case no ex-parte ad-interim injunction is granted Plaintiffs will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiffs and against the Defendants.
20. Till the next date of hearing, the Defendants or anybody acting on their behalf, are restrained from using the trademark "VOLVO"/ " "
or any other mark which is identical and deceptively similar to the Plaintiffs' registered trademark "VOLVO" (word) and device marks " " in relation to lubricant products or any other goods or services, in any manner, including on products and product packaging; in email IDs; in domain names; social media; third party listings and/or as regards any online/offline representation made by them amounting to the infringement and dilution of Plaintiffs' marks.
21. Compliance of Order XXXIX Rule 3 of CPC be done with two weeks from today.
22. Issue notice to the Defendants, by all permissible modes, upon filing of process fee, returnable on 25th September, 2024. Reply be filed within CS(COMM) 322/2024 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33 four weeks from date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
I.A. 8833/2024 (for appointment of Local Commissioners)
23. Ms. Mittal submits that the Defendants are aware of the Plaintiffs and their products. The subsequent adoption by the Defendants of the infringing product bearing the impugned mark and the representation "Approved for use in VOLVO trucks and buses," are evidence of the intention of the Defendants to ride upon the goodwill and reputation of the Plaintiffs. The Plaintiffs believe that the infringing products are sold at the locations set out in Paragraph No. 21 of the application and the Defendants is likely to remove all physical evidence or deny its involvement in the infringing activities. Therefore, in order to preserve evidence of infringement, it is necessary that Local Commissioners are appointed to visit the premises of the Defendants.
24. Accordingly, the following are appointed as Local Commissioners with a direction to visit the premises of the Defendants, as detailed hereinbelow:
Name of Local Commissioner Premises to be Visited
G.No.1, Survey No. 306/4 and 306/5,
Mr. Manoj Kumar Sharma, Advocate
Mithi Rohar Village, Near A.B. Joshi
[Contact No.: 9560423874]
Pulia, Kutch - 370240, Gujarat
Plot No.111 E, Sainik Colony,
Ms. Shreya Mathur, Advocate
Rohtak, Haryana - 124001
[Contact No.: 8527080105]
CS(COMM) 322/2024 Page 9 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33 Mr. Kapil Kumar, System Analyst, Plot No.288, Kh. No. 44/21, 53 Pillar Delhi High Court No. 497, Swarn Park, Mundka, [Contact No.: 9599220367] Delhi-110041
25. The Local Commissioners, along with a representative of the Plaintiffs and its counsel, shall be permitted to enter upon the premises of the Defendants mentioned above or any other location/ premises that may be identified during the course of commission, in order to conduct the search and seizure.
26. The Local Commissioners shall conduct a search at the respective Defendants' premises and seize the infringing material/goods bearing the Impugned marks, and any document/ packaging/ promotion material reflecting infringement of Plaintiffs' registered trademark "VOLVO" (word) and device marks " ".
27. After seizing infringing material, the same shall be inventoried, sealed and signed by the Local Commissioners, in the presence of the parties, and released on superdari to the Defendants on their undertaking to produce the same as and when further directions are issued in this regard.
28. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the infringing products.
29. Further, the Local Commissioners shall be permitted to undertake/arrange for photography/ videography of the execution of the CS(COMM) 322/2024 Page 10 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33 commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions.
30. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this Order, the SHO of the local police station is directed to render all assistance and protection to the Local Commissioners, if and when sought.
31. The fee of the Local Commissioners, to be borne by the Plaintiffs, is fixed Rs. 1,10,000/- each for the commission to be conducted within Delhi and is fixed at Rs. 1,50,000/- each for the commission which is to be conducted out of station. The Plaintiffs shall also bear expenses for travel and lodging of the Local Commissioners and other miscellaneous out-of- pocket expenses for the execution of the commission. Fee of the Local Commissioner shall be paid in advance by the Plaintiffs.
32. The commission is directed to be executed within a period of 2 weeks from today. The Local Commissioners shall file their report within a period of 2 weeks thereafter.
33. The Order passed today shall be uploaded within a period of two weeks from today.
34. In terms of the foregoing, the application stands disposed of in the above terms.
35. Dasti under signatures of the Court Master.
SANJEEV NARULA, J APRIL 23, 2024/as CS(COMM) 322/2024 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/05/2024 at 21:07:33