Delhi High Court - Orders
Aktiebolaget Volvo & Ors vs Jonas Woodhead And Sons India Limited on 8 April, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:12.04.2022
06:08:16
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 350/2021 & I.As.9560/2021, 2411/2022
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali
Mittal and Mr. Siddhant Chamola,
Advocates. (M:8373944051)
versus
JONAS WOODHEAD AND SONS INDIA LIMITED ..... Defendant
Through: Mr. Jayant Kumar, Advocate.
(M:9654425878)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 08.04.2022
1. This hearing has been done through hybrid mode.
I.A.2411/20222. Pursuant to the previous order dated 4th August, 2021, the local commission was executed in this matter and the goods of the Defendant had been seized by the Local Commissioner. Subsequently, as recorded in order dated 29th March, 2020, the Defendant had been directed to place on record proposals for the manner of descriptive use that it intends to adopt for its products instead of using the Plaintiff's mark 'VOLVO'. The said proposal is stated to have been given by counsel for the Defendant to the counsel for the Plaintiff, wherein the Defendant is willing to change the use in the following manner, to describe or as means of information that the Defendant's products are for use in VOLVO automobiles. The said proposal is for use of the following expressions:
i. Compatible with Volvo FMX 440. Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.04.2022 06:08:16 ii. Compatible with Volvo FMX 460 iii. Compatible with Volvo FMX 480 iv. Compatible with Volvo FMX 400
Ld. Counsel for the Plaintiff seeks time to consider the proposals.
3. In the meantime, I.A.2411/2022 is an application filed by the Defendant seeking cancellation of the superdarinama and permission to sell the goods seized by the Local Commissioner. The goods, which have been seized by the Local Commissioner, are as under:
"i. 43 Leaf Springs of VOLVO 257934-01-FM-400- PB-1st Axle PJ-03J;
ii. 14 Leaf Springs of VOLVO 257952-02-FMX440 PB-PO3J;
iii. 5 Leaf Springs of VOLVO 257952-02-FMX 440 PB- P09J;
iv. 29 Leaf Springs of VOLVO 257931-01-PO1-J-FM 400 PB;
v. 26 Leaf Springs of VOLVO 257931-03902 FM 400 PB 2nd Axle POSJ;
vi. 47 products bearing VOLVO FMX440PB-25/01; vii. 92 products bearing VOLVO 257658-PO3J Bogie 32-TRR;
viii. 45 1st Axle products bearing VOLVO 257934-02- PO3J TM 400PB and 48 1st Axle Products bearing the numbers VOLVO 2579-658 BOGIE 32 TRR-03-PO33- PO3;
ix. 187 products of VOLVO FMX440PB-257952/01 and PO3J 257934-03901 configurations; x. 44 products of VOLVO 257658 Bogie 32RR; xi. 186 products of VOLVO 257931-01, POSJ-01-902 and VOLVO 257658 Bogie 32RR and VOLVO FMX 440PB-T49J;
xii. 50 products of VOLVO 257952. Total = 889 units."Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.04.2022 06:08:16
4. These products are suspension assemblies for trucks of which the Defendant has a large stock, as is clear from the list set out above. Ld. counsel for the Defendant submits that the 889 units of parabolic leafs were seized and the same are now lying with the Defendant. He submits that the Defendant is willing to erase/efface the word/mark 'VOLVO' from these products and since the Defendant is in the process of shifting, the Defendant may be permitted to sell these goods, which have been seized by the Local Commissioner.
5. Mr. Anand, ld. counsel for the Plaintiff, submits that the Defendant has submitted a proposal to him today as to the manner in which the Defendant intends to communicate to the consumers, that the products of the Defendant are compatible with VOLVO automobiles. He further submits that the Defendant ought not to be allowed to sell the allegedly infringing products unconditionally, as once the sale happens, there would be no security for the damages, etc., which have been sought in the present suit. It is his submission that the use of mark 'VOLVO' is violative of the Plaintiff's statutory and common law rights.
6. The question that has arisen in this case is that the Defendant wishes to use the mark 'VOLVO' as a means for informing the purchasing public that the products are compatible for being used in 'VOLVO' trucks. Thus, this question needs to be heard on merits by this Court, inasmuch as a legal issue that arises under Section 30(2)(d) of the Trademarks Act, 1999.
7. On the Defendant's proposals extracted above, let the counsel for the Plaintiff, revert by the next date of hearing.
8. While the issue as to whether the Defendant can use the mark 'VOLVO' at all is to be still considered by this Court, this Court is of the Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.04.2022 06:08:16 opinion that there cannot be any impediment in the Defendant being permitted to remove the mark 'VOLVO' from the products and being permitted to sell such products. Accordingly, the following directions are issued at this stage:
(i) Insofar as the seized products, as set out in paragraph 3 above, are concerned, two representatives of the Plaintiff, are permitted to visit the premises of the Defendant in Chennai between 11th April, 2022 to 15th April, 2022 in order to understand and see that from each product which has the mark VOLVO on it the mark is removed/effaced.
(ii) Once the removal is done, let the affidavit be filed before this Court by 22nd April, 2022 by both the parties along with the photographs.
9. Upon the same being effaced by the Defendant, this Court shall consider the prayer of the Defendant for disposal of the stock that has been seized, and the terms and conditions for the same, if any.
10. List on 25th April, 2022.
PRATHIBA M. SINGH, J.
APRIL 8, 2022/dk/ms