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9. Before the learned Single Judge, the learned counsel for the plaintiffs contended that existence of common field of activity is not a condition precedent for grant of relief in a passing off action. Originally it was product to product. It has under-gone a change. The focus has now shifted from the external objective test of making a comparison between of parties to state of mind of the public in deciding whether there is probability of confusion or deception. It was submitted that some connection is required to be established in the product of the defendants with those of the plaintiffs It was submitted that the probability of confusion depends upon (i) the nature of mark or name of the plaintiffs; (ii) the extent of reputation in that mark or name acquired by the plaintiffs; and (iii) closeness of the defendants' mark or name with that of the plaintiffs. It was contended that if the mark or name is a fancy or invented word, even the small reputation will suffice. However, if the mark or name has a descriptive flavour, large reputation is needed by the plaintiffs. In the facts and circumstances of the case, the counsel for the plaintiffs submitted that the plaintiffs' mark 'volvo' is an invented one and has acquired distinctiveness of being associated with the plaintiffs and plaintiffs' Volvo Group of Companies and the defendants by adopting the word 'volvo' as part of their corporate name are deliberately misleading the traders and members of the public by causing deception and confusion and passing off their product as those of the plaintiffs. It was submitted that the plaintiffs have acquired reputation in India and by adopting the word 'volvo' as part of their corporate name the the defendants are trading on 'plaintiffs' reputation to pass off their goods as those of the plaintiffs. It was submitted that the plaintiffs have acquired reputation in India; that the transborder reputation has been recognised by the court in India and there is no delay in approaching the court nor the plaintiffs have acquiesced in the action of the defendants and the balance of convenience is also in favour of the plaintiffs.

11. The learned Single Judge has observed that the at the interlocutory stage, the main question which arises for determination is whether prima facie the dependents are quality of passing off their product as that of the plaintiffs so as to entitle the plaintiffs to grant of interim relief as prayed for. It was made clear by the learned counsel for the plaintiffs that the grievance in the suit relates only to action in passing off.

12. The learned Judge held that since on merits; prima facie it appears that the defendants are not guilty of passing off their products as those of the plaintiffs, the questions pertaining to gross delay on the part of the plaintiffs in approaching the court for grant of interim reliefs of injunction and acquiescence on the part of the plaintiffs in allowing the defendants to use the word 'volvo' as part of their corporate name need not be considered at that stage. After discussing the vital contentions and the material on records the Judge held that it is not possible to conclude at this prima facie stage that the plaintiffs enjoy trans-borde reputation. The learned Judge held that even if it is assumed that the plaintiffs enjoy transborder reputation, it is required to be considered as to whether by season of the word 'volvo' being part of the corporate name of the defendants the plaintiffs have suffered or are really likely to suffer substantial damage to their property in goodwill though the products of the defendants are different, dissimilar and distinct from the products of the plaintiffs so as to grant the relief to the plaintiffs in the present application. Then the learned Judge observed that the defendants' present line of manufacture is of intermediate products like M.S. Ingots which are raw materials used by rerolling mills for production of torsteel and is confined to only the manufacture of angles, channel and torsteel bars. These items are used in the construction industry. The defendants proposed items of manufacture are stainless steel ingots which are also raw materials for stainless steel products whereas the plaintiffs' activities and/or products are in the transport vehicle field which comprise of cars, trucks, buses, marine and industrial engines, and aircraft engines. The learned Judge felt that the plaintiffs have reserved the name "Volvo" only for their automotive products and for no other products. The plaintiffs and the defendants are engaged in totally different and dissimilar fields of activity and lines of business. The learned Judge felt that the word 'volvo' particularly in India is not associated with the plaintiffs in their alleged operations in any other sector of the transport or equipment industry such as buses, marine and industry engines, or aircraft or space engines. The Judge held that no common field of activity exists between the plaintiffs and the defendants so as to pass off the defendants' products as that of plaintiffs.

21. Then a reference was made to the decision of the single Judge of Delhi High Court in the matter of Whirpool Corporation and another v. N. R. Dongre and Others (1995 IPLR 21), where in paragraph 17, after referring to several cases the Learned Judge observed as under :

'These cases recognised that the reputation of a matter, trading or carrying on the business in another country, can travel to a country where he had carried no business. The trader's transborder reputation can be the basis of the extensive advertisements and publicity. Such a trader could obtain injunction in a court where he was not trading to protect his reputations. The Indian courts also recognize the existence of transborder reputation.' The above decision was confirmed by the division bench of the Delhi High Court in appeal in N. R. Dongre v. Whirlpool Corporation (1996 of PTC 476). In paragraph 19, after discussing various cases the division bench observed that advertisement of a trade mark of a foreign trader in respect of a produced need not be associated with the actual use of the product in order to establish reputation. It was further observed that today advertisements in respect of goods and the trade marks under which they are marketed in one country are taken cognizance of in other countries. Business reputation is gained by the companies even in countries where their product is not used and is merely known through advertisements. Then in paragraph 25 the division bench has observed as under :

61. Taking into consideration the various cases cited by both sides we are of the opinion that the crux of the passing off action lies in actual or possible or probable deception. The plaintiff necessarily has to establish reputation and goodwill. In quia timet action he must also show the probability of the plaintiffs suffering damage either in trade or to his goodwill and reputation. Deception may be of several kinds, i.e. that the public may think that the goods manufactured by the defendants are in fact manufactured by the plaintiffs or that there is some trade connection or association of the defendants with the plaintiffs. It is also clear that the transborder reputation has been recognized by the Indian Courts and as a matter of law it is not necessary to prove the actual sale, if by other material, presence of the plaintiffs in India and goodwill and reputation in India is demonstrated. It is also clear to us that as a matter of law the "common field of activity" is not required to be established. However, as the crux of passing off action lies in possible deception, the existence of common field of activity is always relevant consideration. If there is common field of activity, possibility of deception is very high and if there is common field of activity possibility may be less, but it cannot be laid down as a rule of law that there can be no possibility at all. Thirdly and more importantly, all these issues ultimately will depend on the facts and circumstances and the material on record of each particular case, as to whether the plaintiff has established the goodwill or reputation, whether the plaintiff has established the transborder reputation, whether the defendant has caused misrepresentation innocently or deliberately and whether the plaintiff has suffered damage or is likely to suffer damage in quia timet action. These will be questions of fact to be determined by the court. It is also clear that if it is shown that the defendant intended to deceive, the burden would be much lighter on the part of the plaintiff. The existence of unexpected and unexplained similarities between the goods of the defendant and the plaintiff or lack of explanation or false explanation for adoption of name by the defendant, may be extremely relevant.