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Aktiebolaget Volvo & Ors vs Vaishali Travels & Anr on 11 January, 2021

Author: J.R. Midha

Bench: J.R. Midha

                          $~O-5
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI

                          +     CS(COMM)6/2021

                                AKTIEBOLAGET VOLVO & ORS.               ..... Plaintiffs
                                             Through: Mr.    Pravin      Anand         with
                                                      Ms. Vaishali Mittal and Mr. Karan
                                                      Kamra, Advocates
                                             versus
                                VAISHALI TRAVELS & ANR.                 ..... Defendants
                                             Through:

                                CORAM:
                                HON'BLE MR. JUSTICE J.R. MIDHA

                                       ORDER

% 11.01.2021

1. The hearing has been conducted through video conference.

2. Allowed, subject to just exceptions.

3. The plaintiff is seeking permission to leave to serve the interrogatories to defendant Nos.1 and 2.

4. This Court is satisfied that the interrogatories are relevant and the defendant Nos. 1 and 2 should be directed to answer to the interrogatories.

5. The application is therefore allowed and defendant Nos.1 and 2 are directed to reply to the interrogatories on affidavit within two weeks of receipt of the summons.

CS(COMM)6/2021 & I.A. Nos. 202/2021, 203/2021

6. The Plaintiffs have filed the present suit seeking reliefs of permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademark, damages, rendition of accounts, delivery up, transfer of domain name damages, costs etc.

7. It is submitted that Plaintiff No.1 is an international automotive and transport vehicle group and employs approximately 1,15,000 persons worldwide. Plaintiff No.1 provides a wide spectrum of transportation related products and services, with superior quality and high standards of safety and environmental care to customers in selected segments. Plaintiff nos.2 and 3 are companies organized under the laws of Sweden and Plaintiff no.3 occupies a prominent position as a car producer within its segment.

8. It is submitted that Plaintiff No.1 adopted the trademark/corporate name 'Volvo' on 5th May, 1915. Plaintiff No.1 executed a global deed of assignment in favour of plaintiff No.2, who became the subsequent proprietor of the Plaintiff's following 'VOLVO' trademarks and subsequently licensed these to Plaintiffs No.1 and 3 to use in relation to their respective businesses.

9. It is further averred that the word 'VOLVO' is not found in any authoritative English dictionary and is thus a coined and inherently distinctive trade mark which is solely associated with the Plaintiffs. It is averred that the plaintiffs No.1 and 3 manufacture goods and provide related services throughout the world under the trade mark/name 'VOLVO'. In addition to their core business in the transportation and Signature Not Verified Digitally signed by:RAJENDER SINGH KARKI Signing Date:13.01.2021 19:26:04 automotive sector, the plaintiffs' use of the VOLVO mark also extends to wide range of ancillary products, services and businesses.

10. It is submitted that the Plaintiffs have a robust presence under the 'VOLVO' mark in India for several decades and the plaintiff no.1 established an Indian flagship company in India in 1996. Plaintiff No.3 is also actively carrying on its business in India through its subsidiary, i.e. Volvo Auto India Pvt. Ltd. It is stated that the 'VOLVO' trademark has been declared a well-known mark and is included in the List of well- known trademarks on the website of the Trademarks Registry at Sl. No.51 Part IV - Vol- IV - plaintiff's documents pages 921-926.

11. Reliance is also placed on Para 70 of the Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat, 1998 PTC (18) 47 wherein the Bombay High Court held the 'VOLVO' mark to be well-known.

"We are of the opinion that the aforesaid material prima facie shows that Volvo is recognized as one of the distinctive brands and that it has very large reputation and goodwill throughout the world and the plaintiffs have been successful to show prima facie its presence in India."

12. It is submitted that the Plaintiffs have obtained registration of numerous 'VOLVO' trademarks all over the world including over two dozen registrations in India, the earliest of which dates back to 1975.The relevant registrations have been reproduced in paragraph 12 of the Plaint and supporting documents illustrating the subsisting statutory registrations of the Plaintiff have been filed with the list of documents attached with the Plaint.

13. The Plaintiffs' rights in the mark 'VOLVO' have been recognized both as regards identical and disparate products and services in close to four dozen decrees.

14. In August, 2019 it came to the knowledge of the Plaintiffs that Defendant No.1 entity, Vaishali Travels was engaged in operating bus travel services, online bus ticketing and live tracking services and was using the Plaintiffs' registered and well-known trademark 'VOLVO' as a part of its domain name, online trading name, email id and meta-tags on the source code of the website of Defendant No.1. It was also discovered that the impugned domain name was registered in favour of Defendant No.2, Bitla Software Pvt. Ltd.

15. The Plaintiffs are aggrieved by misappropriation of their registered and well-known trademark 'VOLVO' as a part of its domain name, online trading name, email id and meta-tags on the source code of the website of Defendant No.1. The Defendant No.2 is the registrant of the impugned domain name www.vaishalivolvo.com.

16. This Court is satisfied that the plaintiffs have a good prima facie case, the balance of convenience is in favour of the plaintiffs who would suffer irreparable loss, if the ex parte interim order is not passed in their favour.

17. The Defendants, their, subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockists, representatives and anyone acting for or on their behalf are hereby restrained from using the Plaintiffs' name/trademark 'VOLVO and/or any name/mark confusingly or deceptively similar thereto, in relation to online booking of bus tickets, live tracking of buses, telephonic booking Signature Not Verified Digitally signed by:RAJENDER SINGH KARKI Signing Date:13.01.2021 19:26:04 of bus tickets or in relation to any other goods or services, in any manner, including the impugned domain name, www.vaishalivolvo.com, meta- tags associated with the impugned domain name, as a part of the email id [email protected], third party listings, references in social media and/or any representation made by the Defendants, their affiliates, subsidiaries and anyone acting for and on their behalf amounting to infringement of Plaintiff No.2's registered trademarks and passing off the Defenfants' goods or services as those of the Plaintiffs till the next date of hearing.

18. Order XXXIX Rule 3A of CPC be complied within one week.

19. List on 19th February, 2021.

20. The order be uploaded on the website of this Court forthwith.

J.R. MIDHA, J.

JANUARY 11, 2021 ds Signature Not Verified Digitally signed by:RAJENDER SINGH KARKI Signing Date:13.01.2021 19:26:04