Delhi High Court
Aktiebolaget Volvo & Ors. vs M K Enterprises on 18 July, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~37
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 100/2023 & I.A. 12910/2023
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Ms. Vaishali Mittal and Mr. K.
Kamra, Advs.
versus
M K ENTERPRISES ..... Defendant
Through: Mr. Sridharan Ramkumar, Adv.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (O R A L)
% 18.07.2023 I.A. 12910/2023 (Order XXIII Rule 3 of the CPC)
1. The disputes between the parties stand settled and a joint application under Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (CPC) has been filed.
2. The terms of settlement reads thus:
"i. The Defendant herein acknowledges and recognizes the exclusive statutory and common law rights of the Plaintiffs in the following trademarks (hereinafter referred to as the 'VOLVO' trademarks), in India as are directly relevant to the present proceedings, including all other trademark registrations comprising of the 'VOLVO' word, device and logo marks, not specifically mentioned herein which the Defendant does not and shall not contest:
Sl. Trademark Regis No. Date of Class Status No. Application
1. VOLVO 763291 20.06.1997 4 Registered Signature Not Verified CS(COMM) 100/2023 Page 1 of 5 Signed By:HARIOM Signing Date:19.07.2023 14:28:14
2. 1404133 06.12.2005 4, 7, 12, Registered 35 VOLVO (device)
3. VOLVO 1384891 14.09.2005 4, 7, 12, Registered PENTA 35
4. 3249588 12.02.2005 4, 12, 35 Protection granted
5. 3251273 12.02.2005 12, 35 Protection granted
6. VOLVO 361886 15.05.1980 12 Registered
7. VOLVO 763280 20.06.1997 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. VOLVO 2119694 22.03.2011 12 Registered SELEKT ii. The Defendant hereby acknowledges and recognizes that the Plaintiffs' trademark 'VOLVO' is a well-known trademark as defined under the provisions of section 2 (1) (zg) of the Trade Marks Act, 1999.
iii. The Defendant agrees to a decree of permanent injunction in terms of prayer clause 75 (i) of the Plaint, that it will not by itself or through its subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockists, representatives, and anyone acting for or on its behalf, use the name/mark Signature Not Verified CS(COMM) 100/2023 Page 2 of 5 Signed By:HARIOM Signing Date:19.07.2023 14:28:14 'VOLVOSTAR'/ and/or any other name/mark, identical or deceptively similar thereto to the Plaintiffs' name / registered and well-known mark 'VOLVO' in relation to their business activities of manufacturing, marketing, supplying and repackaging of turbo engine oil products or as regards any other goods or services, in any manner, including on products and product packaging; in email ids; in domain names; on social media posts; in third party listings and/or as regards any online and offline representation amounting to:
a) Infringement of Plaintiff No.2's registered trademarks bearing registration numbers 763291, 1384891, 3249588, 1404133;
b) Passing off the Defendant's products and services as those of the Plaintiffs;
c) Dilution and tarnishment of the Plaintiffs' registered and well-known trademark 'VOLVO';
d) Unfair competition vis. a. vis. Plaintiffs' business under its registered and well-known trademark 'VOLVO'.
iv. The Defendant agrees to a decree in terms of prayer clause 75 (ii) of the Plaint and undertakes to destroy all the finished and unfinished materials, including all product containers, packaging, brochures, promotional material, labels, stickers, cartons, dyes, articles, locks, signage, business cards, stationary material, accessories, and any other material bearing the name/mark 'VOLVOSTAR'/ and/or any other name/mark, identical or deceptively similar thereto to the Plaintiffs' name / registered and well-known mark 'VOLVO' at their own cost within seven (7) days of the execution present Settlement Agreement.
v. The Defendant agrees to a decree in terms of prayer clause 75 (iv) of the Plaint and undertakes to withdraw its Trademark, Application bearing no. 5088418 for the name/mark "VOLVOSTAR' in Class 4 (lubricants oil, industrial oil, and industrial grease) as is filed before the Trademark Registry. The Defendant shall write a letter withdrawal letter to the Trademark Registry and furnish proof of the same to the counsel of the Signature Not Verified CS(COMM) 100/2023 Page 3 of 5 Signed By:HARIOM Signing Date:19.07.2023 14:28:14 Plaintiffs within seven (7) days of the present execution present Settlement Agreement. The Defendant is to make their best efforts and take all necessary steps to ensure that the process of withdrawal is completed within a period, not exceeding six (6) months from the execution Settlement Agreement. Only in exigent or unavoidable circumstances, for reasons to be shared by the Defendant in writing and with documentary proof, a further extension of six (6 months) is possible. The Defendant undertakes that it will become liable for breach of the present Settlement Agreement and the Plaintiffs will be entitled to all remedies as are envisaged under laws (including costs and damages) in case the process has not been completed within the prescribed one (1) year timeline unless objective reasons can be demonstrated that lie outside of the control of the Defendant.
vi. The Defendant hereby undertakes before this Hon'ble Court that it shall pay a sum of Rs. INR 1,28,584 /- (Rupees One Lakh, twenty thousand five hundred and eighty-four only) to the Plaintiffs on signing of the instant application as token damages. The Defendant undertakes that the said amount will be paid by it within a period not exceeding one (1) month from the execution of the present Settlement Agreement.
vii. The Defendant undertakes to cease and desist either by itself, or through any of its agents, in the future from adopting, using, filing any application for registration of, or obtaining a registration as a trademark, company name, trade name, domain name and/or email id comprising of the word, name and mark 'VOLVO' and/or any name/designation deceptively similar hereto."
3. Learned Counsel for the parties are present and they undertake on behalf of their respective clients to remain bound by the aforesaid terms of settlement.
4. The Court has perused the terms of settlement and find them to be lawful and in order.
5. As such, nothing survives for adjudication in the present suit.
6. The suit stand decreed in terms of the aforesaid terms of Signature Not Verified CS(COMM) 100/2023 Page 4 of 5 Signed By:HARIOM Signing Date:19.07.2023 14:28:14 settlement, by which the parties shall remain bound.
7. Let a decree sheet be drawn up accordingly by the Registry.
8. The plaintiff shall be entitled to refund of 50% of the Court fees, if any, deposited by it.
9. Next date of hearing, i.e. 27 July 2023 stands cancelled.
C.HARI SHANKAR, J JULY 18, 2023/ar Signature Not Verified CS(COMM) 100/2023 Page 5 of 5 Signed By:HARIOM Signing Date:19.07.2023 14:28:14