Delhi High Court
Aktiebolaget Volvo & Ors vs Kishore Purohit & Ors on 13 December, 2010
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: 13.12.2010
+ CS(OS) No. 1492/2005
AKTIEBOLAGET VOLVO & ORS .....Plaintiff
- versus -
KISHORE PUROHIT & ORS .....Defendant
Advocates who appeared in this case:
For the Plaintiff: Ms. Diva Arora
For the Defendant: Mr. Sushant Singh and Mr. Tejinder
Singh
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported Yes
in Digest?
V.K. JAIN, J. (ORAL)
1. This is a suit for permanent injunction, mandatory
injunction, grant of damages and delivering up of infringing
material. The plaintiffs, are three separate companies, all
registered in Sweden and the plaint has been signed and
verified and suit instituted by their attorney Mr. J.K.
Sharma. It is alleged in the plaint that plaintiff No.1
Aktiebolaget Volvo commenced the business of assembling
cars in April 1927 and of trucks in the year 1928. Since the
business of Volvo Group of Companies grew substantially,
plaintiff No.1 on 26th February 1999, by way of a Global
Deed of Assignment, assigned its right, title and interest in
the word Volvo along with its goodwill to plaintiff No.2. This
was followed by a supplementary deed of assignment dated
23rd March 2001 so as to comply with the requirement of
Indian Trade and Merchandise Marks Act, 1958. On 28 th
February 1999 vide Global License Agreement, plaintiff No.2
licensed plaintiffs No.1 and 3 to use the aforesaid mark for
their respective business.
2. It is alleged that plaintiff No.3 occupies a
prominent position as a car producer in the segment in
which it produces cars, whereas plaintiff No.1 is amongst
the world leaders in heavy commercial vehicles such as
trucks, buses and construction equipments, drive systems
for marine and industrial applications, aircraft engines and
space propulsion components. Plaintiffs No. 1 and 3 and
other companies of Volvo TM Companies manufacture goods
and provide related services throughout the world under the
trademark Volvo. It is also alleged that the plaintiffs have
also created a range of Volvo Merchandise goods to support
their core business and enhance the brand and provide
opportunities for consumer targeted activities. The
trademark Volvo has, therefore, been used in relation to
belts, buckles, bags, watches, pens, clothing and a range of
other accessories.
3. Volvo is stated to be a rate Latin word which
plaintiff No.1 had adopted for its business and it is alleged
that it has all the trappings of an invented mark. It is
further alleged that Volvo does not convey anything in its
ordinary significance and it is neither a geographical
indication nor a surname and its mark has now come to be
associated exclusively and solely with the plaintiffs. The
plaintiffs claims tremendous goodwill and reputation in the
mark Volvo and had worldwide sale figures of Swedish
Kroner 183,625 Million, 212,936 Million and 228,512
Million in the years 1997, 1998 and 1999, respectively. It is
further alleged that the Volvo is advertised and published as
a trademark as well as a corporate name in the various
magazines, journals including Times Magazine and financial
Times of London and also in Indian newspapers such as
Hindustan Times, Times of India and Hindu. The plaintiffs
claimed to have spent Swedish Kroner 6594 Million, 5853
Million and 7415 Million in the years 1998, 1999 and 2000,
respectively on publicity of its marks and products. It is
also alleged that after 1991, five subsidiary companies have
been established by the plaintiffs in India. Later all the five
subsidiaries were consolidated into one company Volvo
India Private Limited.
4. The trademark Volvo is registered in India since
1975 in the following classes:-
Trade Registration Class Date Goods
Mark No.
VOLVO 308314 07 10.09.75 Marine engines,
Aircraft Engines,
Engines for Industrial,
Agricultural and
Forestral Machines,
etc.
VOLVO 361866 12 19.05.80 Land vehicles and
parts thereof, etc.
VOLVO 763292 05 20.06.97 First-aid kits
VOLVO 763284 18 20.06.97 Boxes of Artificial
Leather, baggage bags,
belts, umbrellas,
pocket wallets, purses,
back-packs, brief
cases, key cases and
other goods falling in
class 18.
VOLVO 763278 24 20.06.97 Blankets, Plaids,
Winter seat covers,
towels.
5. Defendant No.1 who is carrying business under the
name and style of defendant No.2 Rahul Appliances is
engaged in the manufacture and sale of mixers, grinders,
juicers and their parts and his products are marketed by
defendant No.3 Monami. In July 2005, the plaintiff were
informed of trademark application No.1304378 filed by
defendant No.2 before the Registrar of Trademarks for
registration of mark Volvo in class 7 in respect of mixer,
grinder, juicer and their parts. The application was
advertised in Trademarks Journal on 28 th February 2005.
The plaintiffs have filed a Notice of Opposition to
registration of the mark Volvo in favour of the defendant.
On making enquiry, the plaintiffs came to know about use
of the trademark Volvo by the defendant for manufacturing,
selling and use of mixer, grinder, juicer, etc. They also
came to know that earlier the defendant was using the
trademark Maxell which was replaced by the trademark
Volvo.
6. It is alleged that the defendant is passing off the
goods of the plaintiff by using the trademark Volvo on his
products. It is also alleged that by using the trademark
Volvo, the defendants have attempted to dilute the
distinctiveness of the plaintiff's famous trademark and in
fact he wants to encash on the reputation of the plaintiff
company by using the aforesaid mark on his products. It is
also claimed that use of the trademark Volvo by the
defendants is mala fide and dishonest, and his sole motive
is to encash upon the image and reputation enjoyed by the
products being manufactured and sold by the plaintiffs
under the name Volvo.
7. The plaintiffs have, therefore, sought injunction
against use of the mark Volvo or any deceptively similar
mark by the defendants. They have also sought mandatory
injunction directing the defendants to withdraw trademark
application No.1304378 for registration of trademark Volvo
in respect of mixer, grinder, juicer and their parts. They
have also sought another mandatory injunction directing
the defendants to disclose the particulars of his
distributors, wholesalers, retailers, etc. The plaintiffs have
also sought damages amounting to `25Lacs besides
delivering up of all infringing materials such as goods,
stickers, cartons, packing, dies, articles, papers and other
material of the defendants bearing mark Volvo.
8. The defendants are ex parte. The plaintiffs have
filed affidavit of Ms. Monica Dempe, Managing Director of
plaintiff No.2 byway of evidence. In her affidavit, she has
supported, on oath, the case setup in the plaint. Ex.PW1/4
is the power of attorney executed by plaintiff No.1 in favour
of Colonel Retd. J.K. Sharma and Mr. D.C. Sharma. Vide
clause 2 of this Power of Attorney, they have been
authorized to sign and verify the pleadings and institute
legal proceedings on behalf of plaintiff No.1. Ex.PW1/5 is
the Power of Attorney executed by favour of plaintiff No.3
whereas Ex.PW1/6 is Power of Attorney executed by plaintiff
No.2 in their favour. Plaintiffs 2 and 3 have also authorized
them to sign and verify the pleadings and institute legal
proceedings on their behalf.
9. Ex.PW1/25 are the certificates of registration of
the trademark Volvo in favour of plaintiff No.2 under
different classes. The registration in favour of plaintiff No.2
are as under:
Trade Registration Class Date Goods
Mark No.
VOLVO 308314 07 10.09.75 Marine engines, Aircraft
Engines, Engines for
Industrial, Agricultural
and Forestral Machines,
etc.
VOLVO 361886 12 19.05.80 Land vehicles and parts
thereof, etc.
VOLVO 763292 05 20.06.97 First-aid kits
VOLVO 763293 06 20.06.97 Non-electrical cables,
cable terminals,
speedometer cables,
locks, metallic tubes,
metallic hoses, pipe
connections, screws,
bolts buts, rivets, lock
washers, spring
washers, flat washers,
plugs, split pins, shims
spacer rings, bushing,
clamps and clips,
woodruff keys, screw
unions, spring bolts,
shackles, ball joints,
hinges, brackets, oil and
fuel tanks, tank
accessories, nipples,
fuel cans, ladders,
handles, metallic signs,
wire baskets, metal
wires.
VOLVO 763284 18 20.06.97 Boxes of artificial
leather, baggage bags,
belts, umbrellas, pocket
wallets, purses, back-
packs, brief cases, key
cases and other goods
falling in class 18.
VOLVO 763278 24 20.06.97 Blankets, Plaids, winter
seat covers, towels.
VOLVO 1240077 38 26.09.03 Communication
Services falling in Class
VOLVO 1240076 39 26.09.06 Transportation and
storage falling Class 39.
VOLVO 1240075 41 26.09.03 Education and
Entertainment in Class
VOLVO 1240071 37 26.09.03 Construction and repair
services in Class 37.
VOLVO 1240074 35 26.09.03 Advertising and
business services.
VOLVO 1240072 40 26.09.03 Material treatment
services falling in Class
VOLVO 763291 04 20.06.97 Lubricating oils, rust
oils, lock lubricants and
other goods falling in
Class 4.
VOLVO 763296 09 20.06.97 Electric batteries,
compasses, capacitors,
relays, electronic time
relays, switches, fuses,
electrical contacts,
electrical sockets,
electrical fans, electrical
cigarette lighters, radio
sets, tape players,
loudspeakers,
interference
suppressors,
aerials/antennas,
measuring instruments
for fuel, oil pressure,
tyre pressure,
compressed air,
temperature, amperage,
speed and engine
revolutions, mileage,
mileage recorders, time
recorders, rudder
indicators, instrument
panels, dipsticks,
thermostats, signal
lamps, dynamometers,
brake testers, electrical
and mechanical
instruments and
apparatus alarm units,
warning reflectors; fire
extinguishing
apparatus, electronic
monitors and regulators
for engines and motors
all being goods falling in
Class 9.
VOLVO 763279 25 20.06.97 Belts, caps, hats,
jackets, shirts, socks,
scarves, sweaters, T-
shirts, overalls,
waterproof clothing,
neckties and other
goods falling in Class
VOLVO 1240079 42 26.09.03 Miscellaneous services
included in Class 42.
10. Ex.PW1/27 is the publication of application No.
1304378 dated 23rd August 2004 by defendant No.1 Mr.
Kishore Purohit, trading as Rahul Appliances, for
registration of the mark Volvo with respect to mixers,
grinders, juicers and their parts. Ex.PW1/28 is the
opposition by plaintiff No.2 to the application submitted by
defendant No.1 for registration of the mark Volvo in his
favour with respect to mixers, grinders, juicers and their
parts. Ex.PW1/29 are the photographs of the product
manufactured and sold by defendant No.1 under the name
Volvo. Ex.PW1/31 is the Instruction Manual and
Guarantee Card with respect to mixer, grinder, juicer and
their parts, manufactured and sold by defendant No.1 using
the mark Volvo. Ex.PW1/30 is the invoice of the purchase
of a mixer-grinder by the plaintiff, from defendant No.2, on
21st July 2005.
11. In her affidavit Ms. Monica Dempe has also stated
that plaintiff No.1 had sales figures of Swedish Kroner
119,410 Million, 140,710 Million and 157,117 Million in the
years 2004, 2004 and 2005, respectively. She has also
stated in her affidavit that plaintiff No.3 sold 415046,
456224 and 443947 cars in the years 2004, 2005 and 2006,
respectively. She has further stated that plaintiff No.1
incurred publicity expenses of Swedish Kroner 1167 Million,
1251 Million and 1584 Million in the years 2003, 2004 and
2005, respectively, whereas plaintiff No.3 incurred
expenditure of US$ 739 Million, 696 Million and 626 Million
during the years 2003, 2004 and 2005, respectively, on
advertising and promotion.
12. It thus can hardly be disputed that plaintiffs No.1
and 3 are large multinational companies which are using
the trademark Volvo for manufacturing and selling various
products particularly vehicles and the word Volvo is an
integral component of their corporate name. I am satisfied
that the name Volvo on account of its extensive use by the
plaintiffs since 1915, has become associated exclusively
with the plaintiff companies and the products being
manufactured and sold by them.
13. Section 29(4) of the Trade Mark Act, 1999 is
relevant and reads as under:
29(4) A registered trade mark is
infringed by a person who, not being
a registered proprietor or a person
using by way of permitted use, uses
in the course of trade, a mark which-
(a) is identical with or similar to the
registered trade mark; and (b) is used
in relation to goods or services which
are not similar to those for which the
trade mark is registered; and (c) the
registered trade mark has a
reputation in India and the use of the
mark without due cause takes unfair
advantage of or is detrimental to, the
distinctive character or repute of the
registered trade mark.
14. With the passage of time, the goods sold or the
services rendered by a person, including a company may
acquire huge reputation in the market and certain goodwill
comes to be attached to its products, on account of their
being in the market for a long time, coupled with their
quality. It is not permissible for another person to start
selling goods, using that name and thereby enrich himself
at the cost of the person, who has been using the name for
a long time and has invested considerably in promoting that
name and building the brand adopted by him. If a person
attempts to gain riches by encashing upon the goodwill
which the product of another person enjoys in the market,
such attempts need to be curbed wherever the aggrieved
party approaches the Court in this regard.
15. In Mahendra & Mahendra Paper Mills Ltd. vs.
Mahindra & Mahindra Ltd. 2002(24) PTC 121 (SC), the
suit was filed by Mahendra and Mahendra against use of
the words Mahindra and Mahindra Ltd. The contention of
the defendant before the Supreme Court was that there was
no similarity of the goods manufactured or sold by the
parties. Noticing that the name 'Mahindra & Mahindra' had
acquired a distinctiveness and a secondary meaning in the
business and trade circles and people had come to associate
the name 'Mahindra' with a certain standard of goods and
services, the Supreme Court was of the view that any
attempt by another person to use that name in business
and trade circles is likely to and in probability will create an
impression of a connection with the plaintiffs' group of
companies.
In Montari Overseas Ltd. vs. Montari Industries
Ltd. 1996 PTC (16), Supreme Court, inter alia, observed
that while adopting a trade name, a person is required to
act honestly and bona fidely and not with a view to cash
upon the goodwill and reputation of another. It was further
observed that no company is entitled to carry on business in
a manner so as to generate a belief that it is connected with
the business of another company, firm or individual. It was
also observed that copying of a trade name amounts to
making a false representation to the public from which they
need to be protected. The observations made by the
Supreme Court would clearly apply when a well established
corporate name or trademark of a large company is adopted
by another person though not in respect of the same goods
or services, when the trademark has become synonymous
with the company and the members of the public expect any
product bearing that trademark to be of a particular
standard and quality.
16. The evidence produced by the plaintiff shows that
defendant No.1 who is trading under the name and style of
defendant No.2 was using the name Maxell before he started
using the name Volvo for mixers, grinders, juicers and their
parts. Since the defendants have chosen not to contest the
suit and continue to remain ex parte, the presumption is
that they have no justification to offer for discarding the
previous trademark and for using the mark Volvo with
respect to mixers, grinders and juicers manufactured by
defendant No.1. It, therefore, appears to me that
publication and use of the mark Volvo by defendant No.1 for
the mixers, grinders and juicers being manufactured and
sold by him was dishonest and he wanted only to encash
upon the tremendous goodwill and reputation which has
come to vest in the trademark Volvo, belonging to the
plaintiffs. The name Volvo has no connection with the
products being manufactured by defendant No.1 and,
therefore, it will be difficult to deny that the purpose of
defendant No.1 in using this mark for selling the products
manufactured by him was to gain an unfair advantage by
using the reputed and well established trademark of the
plaintiff.
17. There is a strong probability that a consumer who
comes across mixers, grinders and juicers being sold under
the name Volvo assuming that these are the products being
manufactured and/or sold by plaintiff companies which
own the trademark Volvo and he may purchase the product
manufactured by defendant No.1 on the assumption that
coming from the plaintiff's company the products are likely
to be of a superior quality. If the products manufactured by
defendant No.1 and being sold by him under the name
Volvo are not found to be of a superior quality or their
quality is not found to be of the standard expected by the
consumer from the plaintiff companies, that may affect the
credibility and reputation of the plaintiff companies since
the consumer may believe that the quality of the products
being manufactured by the plaintiff companies has gone
down.
18. The learned counsel appearing for defendant No.1
very fairly states that defendant No.1 will not sell any
product using the name Volvo or any other name which is
similar to the name Volvo. He also fairly states that
defendant No.1 will destroy whatever material bearing the
name Volvo is in his possession and he will also recall the
products which are still in the market and have not been
sold and will change the mark on them from Volvo to some
appropriate mark. He also states that defendant No.1 will
withdraw the application No.1304378, which is pending
before trademark registry for registration of the trademark
Volvo in his favour, in respect of mixer, grinder, juicer and
their parts. His prayer is that since defendant No.1 is fully
cooperating with the plaintiffs, no damages should be
awarded against him though he would not really mind
paying some token damages to satisfy the plaintiff
companies.
19. Taking into consideration all the facts and
circumstances of the case, including the fairness exhibited
by defendant No.1, the suit is decreed to the extent that
defendant No.1 is retrained from selling, distributing or
marketing any product using the mark Volvo or any other
mark which is similar to the mark Volvo of the plaintiff
companies. He is further directed to withdraw application
No. 1304378 pending before trademark registry within 30
days from today. He is also directed to destroy all the
labels, packaging, cartels and trading literatures bearing the
mark Volvo within 30 days from today and inform the
plaintiff accordingly by registered post. He will also recall
within 30 days, all the unsold mixers, grinders, juicers and
their parts bearing the mark Volvo and remove the mark
Volvo from them before releasing them again in the market.
He is also directed to pay `5,000/- as punitive damages to
the plaintiffs within 30 days from today. In the facts and
circumstances of the case, there shall be no order as to
cost.
20. No relief can be granted the plaintiffs against
defendant No.2 which is not a legal entity and is only a
trade name adopted by defendant No.1. As far as defendant
No.3 is concerned the case of the plaintiff is that products
manufactured by defendant No.1 were being sold by it.
However, the plaintiff has not disclosed the legal status of
defendant No.3 to the Court. The plaint does not disclose
whether defendant No.3 is a partnership firm and if so who
are its partners. Plaintiffs do not say that defendant No.3 is
a proprietorship concern of defendant No.1 or some other
person. Defendant No.3 is not stated to be a society, an
association or a company. Since the legal status of
defendant No.3 has not been given by the plaintiff, no
decree can be passed against it.
Decree sheet be prepared accordingly.
(V.K. JAIN)
JUDGE
DECEMBER 13, 2010
Ag
