New Balance Athletics Inc. vs New Balance Immigration Private ... on 12 October, 2022
In this context, I may also allude to a judgment of this Court in
Aktiebolaget Volvo & Ors. v. Mr. Vinod Kumar & Ors., 2011 SCC OnLine
Del 1180, where the registered trademark of the Plaintiff was VOLVO for
goods including buses, cars, automobile parts etc. and a claim for
infringement and passing off was laid against the Defendant who was using
the mark VOLVO for ice creams. In the said case, the Defendant was not the
registered proprietor of the trademark VOLVO in respect of ice creams.
Court observed that Plaintiff has been able to make out a prima facie case,
being a registered proprietor of the trademark and trade name in respect of
various categories of goods. It is established that the word VOLVO was not
generic and over a period of time starting from 1915 all over the world and
from 1975 in India at least has attained certain amount of distinctiveness and
reputation which distinguishes it from the rest and, therefore, Defendant
cannot be permitted to infringe or dilute the mark in terms of Section
29(4)(c) of the Act even for dissimilar products namely, ice cream.