Delhi High Court - Orders
Aktiebolaget Volvo & Ors vs Volvo White Paints Industries & Ors on 31 March, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 198/2022
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Ms. Vaishali Mittal, Mr. Siddhant
Chamola and Mr.Karan Kamra, Advocates.
versus
VOLVO WHITE PAINTS INDUSTRIES & ORS. ..... Defendants
Through:
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 31.03.2022
I.A. 4964/2022 (Addl. Doc.)
1. Present application has been preferred on behalf of the Plaintiffs seeking leave to file additional documents under Order 11 Rule 1 (4) CPC.
2. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
3. Application is disposed of.
I.A. 4965/2022(Exemption)
4. Subject to the Plaintiffs filing originals, clearer copies, exact margins, retyped copies of documents which are handwritten and English translations or vernacular in language, which they may seek to place reliance, within four weeks from today, exemption is granted.
Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 1 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:475. Application is allowed and disposed of.
I.A. 4967/2022(exemption from advance service to the Defendants)
6. Since there is an urgency in the matter and the matter is being heard today, Plaintiffs are exempted from serving Defendants with advance notice.
7. For the reasons stated in the application, the same is allowed and disposed of.
CS(COMM) 198/2022
8. Let the plaint be registered as a suit.
9. Upon filing of process fee, issue summons to the Defendants, through all permissible modes, returnable on 04.07.2022. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs.
10. Replication be filed by the Plaintiffs within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendants, shall be filed by the Plaintiffs. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
11. List before the Joint Registrar for marking of exhibits on 04.07.2022.
12. List before the Court on 28.07.2022.
I.A. 4963/2022 (under Order 39 Rule 1 and 2 CPC)
13. Issue notice to the Defendants through all prescribed modes, returnable on 28.07.2022.
14. Present application has been preferred by the Plaintiffs under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure 1908 Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 2 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 for grant of ex-parte ad-interim injunction.
15. Plaintiff No.1 is a Public Limited Company organised under the laws of Sweden and was incorporated on 05.05.1915. It 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 Plaintiffs No.1 and 3 to use the trademark in relation to their respective businesses.
16. It is averred in the plaint that Plaintiff No. 1 is an international automotive and transport vehicle group and 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 No. 1 is a world leader in heavy commercial vehicles such as trucks, buses and construction equipment, as well as in drive systems for marine and industrial applications, while Plaintiff No. 3 produces and distributes a premium range of cars that includes sedans, wagons, sports wagons, cross country cars and SUVs, with the mission to be the world's most progressive and desired premium car brands, with a strong commitment to safety, quality and the environment.
17. It is further averred that Plaintiffs No. 1 and 3 manufacture goods and provide related services throughout the world under the trademark 'VOLVO'. In addition to their core business in the transportation and automotive sector, Plaintiffs' use of the 'VOLVO' trademark also extends to wide range of ancillary products, services and businesses. Illustratively, Plaintiffs have created a diverse range of 'VOLVO' merchandise goods which include stationery, bags, watches, clothing and a range of other accessories, which further enhances the brand visibility of the Plaintiffs' Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 3 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 trademark, name and house mark VOLVO.
18. It is averred by the Plaintiffs that trademark 'VOLVO' was adopted by the Plaintiffs on 05.05.1915 and is not found in any English dictionary and is thus a coined and inherently distinctive trademark, associated with the Plaintiffs. On account of priority in adoption in 1915, coupled with over a century of extensive and continuous use globally, Plaintiffs have acquired common law rights in the said trademark and trade name. Plaintiffs have also obtained registrations of numerous VOLVO trademark all over the world, including over two dozen in India where the registration dates back to 1975. Details of the registrations are mentioned in para 14 of the plaint. The registrations are valid and subsisting. Primary website of the Plaintiffs is an online gateway to interested consumers and they also operate a website www.volvoce.com.
19. It is further averred that the trademark 'VOLVO' has been declared as a well-known trademark in India, as defined under Section 2(l)(zg) of the Trade Marks Act, 1999 by a Division Bench of the Bombay High Court in an appeal titled Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (India), 1998 PTC (18) 47. Pursuant to this, the well-known status of the Plaintiffs trademark 'VOLVO' in India was recognized by the Trade Marks Registry and the 'VOLVO' trademark has been inserted in the list of well-known trademarks. Plaintiffs' VOLVO trademark is thus entitled to the highest degree of protection conferred under law, across all Classes, including against disparate products and services. Status of the Plaintiffs' VOLVO trademark has been recognized by this Court on various occasions and Plaintiffs have been granted injunction orders restraining third parties from using the trademark 'VOLVO' or a deceptively similar mark in Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 4 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 relation to a wide range of products/services including wallets, bags, belts and buckles, buses, etc.
20. It is averred that Plaintiffs have spent substantial amount of money each year towards promotion, publicity and advertisement of their business, under the trademark 'VOLVO', details of which have been furnished in the plaint. The goodwill and reputation enjoyed by the Plaintiffs is evident by the number of cars sold worldwide as well as in India. As an illustration, the Plaintiffs sold 661713 cars under the trademark VOLVO globally, while in India 1361 cars were sold in the year 2020.
21. It is averred that Plaintiffs first became aware, through credible market sources in September 2021, that Defendants through Defendant No.1 entity, Volvo White Paints Industries through its partners, Mr. Vishnu Kumar Sharma/Defendant No.2 and Ms. Preeti Gautam/ Defendant No.3, were engaged in the manufacture, sale and/or supply and distribution of products such as Wall Putty, Tile Adhesive, Title Grout LWC, Gypsum Plaster, Exterior Cement Paint etc. bearing the name/mark 'VOLVO', identical to the registered and well-known trademark of Plaintiffs.
22. It is the case of the Plaintiffs that further online investigations into the activities of the Defendants as also offline physical investigations conducted on the various premises of the Defendants in September-October, 2021 and February, 2022, confirmed their involvement in infringing activities under the name/registered and well-known trademark 'VOLVO' of the Plaintiffs in the manner as hereunder:
i. As a part of the trade name of Defendant No.1, Volvo White Paints Industries.Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 5 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47
ii. As an essential and dominant part of the impugned domain name www.volvowhite.com;
iii. In the meta-tags and in source code of the website hosted on the impugned domain name www.volvowhite.com iv. As a part of the mark used by Defendant No.1 as a part of its trade name 'VOLVO White Paints Industries, conspicuously displayed on the website hosted on the impugned domain name www.volvowhite.com v. As a part of the name and product packaging of its Wall Putty, Tile Adhesive, White LWC, White Gypsum Plaster, White Exterior Cement Paint products i.e., vi. On the business cards and brochures, as had been obtained by the investigator, deputed by the Plaintiffs' counsels, upon instructions from the Plaintiffs;Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 6 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47
vii. As a part of signages, brochures, price lists, business cards, distributorship forms and promotional materials.
23. It is pleaded that Defendants have applied for the mark in Class 02 vide Trademark Application No.4853663 dated 08.02.2021 on a 'Proposed to Be Used' basis which is currently showing status as 'Objected to'. Further, in the Examination Report dated 19.02.2021, Plaintiffs' 'VOLVO' (device) mark in Class 2 bearing Trademark Registration Nos. 1404133 and 3249588 have been cited. Plaintiffs submit that the Defendants have clearly been aware of the existence of the Plaintiffs' VOLVO trademarks as well as the fame and reputation associated with it.
24. It is contended by learned counsel for the Plaintiffs that the Defendants' adoption and use of the mark VOLVO WHITE, is dishonest and is aimed at benefiting from confusion in the minds of consumers that an association exists between the Defendants and the Plaintiffs. It is further submitted that the investigators deputed by the Plaintiffs, during the physical visits to the premises of the Defendants in September-October, 2021 and February, 2022, were able to procure samples of 'VOLVO WHITE' brand of wall putty and white cement products of the Defendants, being identical to the name/registered and well-known trademark 'VOLVO WHITE' brand of white cement. The said infringing goods were duly delivered in Delhi. The submission is that the Plaintiffs have not authorised and have no nexus or association with the Defendants and have a strong apprehension that the Defendants' products are inferior in Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 7 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 quality. The acts of the Defendants in using an identical mark as the Plaintiffs' registered trademarks 'VOLVO' in relation to their business activities tantamount to infringing the statutory as well as the common law rights of the Plaintiffs.
25. Having heard learned counsel appearing on behalf of the Plaintiffs, this Court is of the view that Plaintiffs have made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiffs and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
26. Accordingly, 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 other name/trademark confusingly or deceptively similar there to, in relation to their business activities of manufacturing, selling and/or supplying, distribution and dealing in Wall Putty, Tile Adhesive, LWC, Gypsum Plaster, Exterior Cement Paint products etc or in relation to any other goods or services, in any manner, including but not limited to the trade name 'VOLVO White Industries'; impugned domain name, www.volvowhite.com; in the meta-tags associated with the website; the source code of website hosted on the impugned domain name; as a part of the email ids [email protected], [email protected] and [email protected]; third party listings, references in social media and/or any representation made by the Defendants, their affiliates, subsidiaries and on their behalf, in terms of relief sought in paragraph 78 (i) of the present application.
27. Defendants are further directed to file a statement of accounts and Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 8 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 assets on affidavit within a period of two weeks from service of notice of the present application, and are restrained from disposing of such assets till the next date of hearing.
28. Plaintiffs shall comply with provisions of Order 39 Rule 3 CPC within one week from today.
29. List before Court on 28.07.2022.
I.A. 4966/202230. Present application has been preferred by the Plaintiffs under Order 26 Rule 9 and 10 read with Section 151 CPC, seeking appointment of Local Commissioners.
31. Accordingly, Mr. Jugel Bagga, Advocate (Mobile No.9871536845) and Ms. Nidhi Raman, Advocate (Mobile No. 9891088658) are appointed as Local Commissioners.
a) Mr. Jugel Bagga, Advocate shall visit the premises at the following address:-
F-60, RICO Industrial Area, Thanagazi, Alwar - 301022, Rajasthan, India
b) Ms. Nidhi Raman, Advocate shall visit the premises at the following address:-
59 Harsh Vihar, Pitampura - 110034, New Delhi, India.
32. Local Commissioners shall make an inventory of all infringing products and any other material (including but not limited to packaging material, business cards, stationery, seal/rubber stamps, cash memos, bill Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 9 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 books, vouchers, printed matter, catalogues, pamphlets, brochures, letterheads, price lists, distribution forms, stickers, labels etc) bearing the name/mark 'VOLVO', in any manner whatsoever, as is found at each of the two premises of the said Defendants, as aforementioned.
33. Local Commissioners shall seize, seal, confiscate and take into custody all the infringing products and handover the same to Defendants on superdari, upon Defendants furnishing an undertaking that they shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.
34. Local Commissioners need not give any advance notice to the Defendants. Representatives of the Plaintiffs and/or their counsel shall be permitted to enter the premises of Defendants, as aforementioned and will assist the Local Commissioners in executing the commission.
35. Local Commissioners shall also sign books of accounts etc. (physical or in electronic form) and take a copy of the same lying at the site.
36. Local Commissioners shall be permitted to take photographs/videos of the execution of the Commission. They shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. SHOs of the concerned Police Stations are directed to provide necessary assistance to the Local Commissioners, if sought for.
37. In case the premises as aforementioned are found locked, the Local Commissioners are at liberty to break open the locks.
38. Plaintiffs shall serve a copy of the paper book of the suit as well as this order upon the Defendants, at the time of execution of the commission.
39. Fees of Mr. Jugel Bagga, Advocate and Fee of Ms. Nidhi Raman, Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 10 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47 Advocate is fixed as Rs.1,50,000/- and Rs.1,00,000/- respectively, in addition to travel, boarding and lodging expenses as well as other miscellaneous out-of-pocket expenses for the execution of the Commission. Fees of the Local Commissioners shall be paid in advance by the Plaintiffs.
40. Reports of the Local Commissioners shall be filed within two weeks of the execution of the Commission.
41. Copy of this order be given to learned counsel for the Plaintiffs dasti under signature of the Court Master.
42. Learned counsel for the Plaintiffs shall inform the Registry of the execution of the Commission.
43. This order shall not be uploaded on the website of this Court until execution of the Commission by the Local Commissioners.
44. Application is allowed and disposed of.
JYOTI SINGH, J MARCH 31, 2022/st Signature Not Verified Digitally Signed CS(COMM) 198/2022 Page 11 of 11 By:KAMAL KUMAR Signing Date:11.05.2022 12:20:47