Aktiebolaget Volvo & Ors. vs Mr.Vinod Kumar & Ors.
2011 Latest Caselaw 1321 Del

*             IN THE HIGH COURT OF DELHI AT NEW DELHI

+                     CS(OS) No. 713/2009

                                       Date of Decision : 07.03.2011

AKTIEBOLAGET VOLVO & ORS.                             ...... Plaintiffs
                     Through:               Ms.Tanya Varma, Advocate

                                  Versus

MR.VINOD KUMAR & ORS.                             ...... Defendants
                     Through:

CORAM :
HON'BLE MR. JUSTICE V.K. SHALI

1.     Whether Reporters of local papers may be
       allowed to see the judgment?                  NO
2.     To be referred to the Reporter or not ?       YES
3.     Whether the judgment should be reported
       in the Digest ?                               YES

V.K. SHALI, J.

IA No.5270/2009

1. The question involved in the present application is as to

whether the trademark VOLVO, which is the registered trade

mark of the plaintiff, for various category of goods including

buses, cars, automobile parts etc. can be said to be infringed

or passed off by the defendant, by selling its ice creams under

the said brand name.

2. Briefly stated the facts of the case are that the plaintiff no.1

has adopted in the year 1915 the mark VOLVO, which is a

Latin word. It is averred that in Latin VOLVO means 'a roll'.

The plaintiff nos.2 and 3 are the subsidiaries of the plaintiff

no.1 company for the purpose of its operations in India. The

trademark VOLVO is used both as a trademark as well as

trade name and allegedly forms an essential and dominant

part of the corporate name of majority of VOLVO Group of

Companies. The trademark VOLVO apart from being used

in respect of buses, trucks, heavy vehicles, construction

equipment, drive system for marine and industrial

application, aircrafts engines is also being used by the

plaintiff in relation to a variety of other goods like pens,

stationery, watches, belts, buckles, blankets, bags, clothing

and a range of other accessories. On account of the long and

consistent user of the trademark VOLVO, it is stated that it

has attained certain distinctiveness and has become famous

to be associated solely and exclusively with the Plaintiff

worldwide including in India. It is alleged that the mark

VOLVO symbolized goods of great quality, buses and the

motor cars of the plaintiff are rather famous for their comfort

and reliability. It is also alleged that the mark VOLVO has

been well-known trade mark in the world's greatest brands

i.e. 'The World's Greatest Brands' edited by Nicholas Kocham

and published by interbrand plc.

3. So far as the trade name VOLVO in India is concerned, it is

alleged that it has been registered since 1975 and is presently

registered in respect of 20 classes of goods.

4. The plaintiffs alleged that they have jealously guarding the

trade mark and have successfully taken several actions

against the third parties who have illegally attempted to adopt

and misuse or usurp the trademark VOLVO from time to time

in respect of mineral water, wallets, bags and belt, vehicles,

clothes, sanitary products, pressure cooker etc. The plaintiffs

have approached the Courts all over India and have

successfully obtained interim as well as final orders. It is

alleged that in the month of February, 2009, the plaintiff's

representative came across the ice cream being sold under

the mark VOLVO by the defendants. The defendants were

also using the mark VOLVO as part of their trading style.

Original packing of the defendant visiting cards, photographs

were annexed along with the plaint, which are as under:-

5. This has obviously resulted in filing a suit for permanent

injunction on account of infringement of the trademark of the

plaintiff as well as for an action for passing off, along with the

suit, the plaintiffs have filed an application under Order 39

Rules 1 and 2 CPC praying for an ad interim stay against the

defendants.

6. The defendants have filed their written statement as well as

reply to the application. The defendants have contested the

claim of the plaintiff by raising objections that the plaintiffs

are guilty of concealment of facts from the Court. There is no

cause of action. It has been denied that there has been any

infringement much less passing off. It is stated that the

word VOLVO is a generic word in Latin meaning 'I Roll' or 'I

Turn' as a consequence of which the plaintiff cannot be sole

user of the said name so as to deprive other persons or

defendants from using the said name. It is stated that the

word VOLVO is not a creation of the plaintiffs and being a

generic word, cannot be injuncted from being used by other

persons in respect of goods or services which have no

connection with that of the plaintiff.

7. The defendants have also contended that they have been

using the word VOLVO both as a trade name as well as trade

mark with a different depiction of curves etc. as shown

hereinabove for the last more than 15 years. So far as ice

cream is concerned, it is stated that it is using the said trade

name for the last more than 15 years and therefore, the

plaintiff cannot by filing the present suit obtain an injunction

order in respect of the user of the said trademark.

8. On merits, the defendants contested the application of the

plaintiff for passing an ad interim injunction restraining the

defendants from using the word VOLVO during the pendency

of the suit on the ground that the goods for which the

defendant is using the mark VOLVO is neither similar nor

identical to the goods for which the trade mark is being used

by the plaintiff and therefore, it does not or is not likely to

result in causing any confusion or unfair advantage to the

defendant or being detrimental to the character or reputation

of the trademark registered in favour of the plaintiff. It is

urged by the learned counsel for the defendant that an action

for infringement or passing off can be taken, only in respect of

the same goods or services and that being absent in the

present case the plaintiff cannot press for a restraint order. It

is stated that so far as the application under Section 29(4) (c)

of the Trade Marks Act is concerned, that is not to be read in

isolation. It is to be read in conjunction with clauses (a) and

(b) and before any restraint order is passed against the

defendant, the conditions enumerated in Section 29 (4) (a to

c) must be satisfied and only then such a restraint order can

be passed.

9. It was also denied that there is any cause of action on the

part of the plaintiff to initiate the present suit as the use of

the mark VOLVO by the defendant does not lead to any

confusion. It is contended that the trademark is being used

by the defendant for more than last 15 years. With regard to

the passing off, it was stated that there is nothing on record

to suggest that any person or the public at large is likely to be

mislead by the user of the trademark VOLVO in respect of ice

cream as the persons using the product of the plaintiff and

the defendant as the consumers of the two products belong to

different strata of the society and therefore, the plaintiff is not

entitled to any injunction order.

10. I have heard the learned counsel for the parties. I have

perused the record and carefully considered the submissions.

11. At the outset, it must be mentioned that the defendant during

the pendency of the present suit had very fairly conceded that

he is prepared to stop the user of the trademark VOLVO in

respect of the ice cream which are being manufactured by

them however, the said compromise fell through on account

of the fact that they wanted that the plaintiff should

compensate the defendant for the stationery, which they have

got published and have been using.

12. On inquiry, it was revealed that the stationery which the

defendant would be having would be only for a short period

which will last from 3 to 6 months and which in

circumstances ought to have been very insignificant and the

defendant ought not to have insisted on the payment of

damages and the matter could have been settled. The

plaintiff on its part had offered to give up all its claims with

regard to the damages, rendition of accounts delivery of goods

which were the other relief claimed by them in the suit.

13. Be that as it may, as the compromise could not be struck

between the parties and without being influenced in any

manner whatsoever by the offer given by the plaintiff and the

counter offer of the defendants the court proceeds to consider

the application of the plaintiff under Order 39 Rule 1 and 2

CPC on merits as to whether the defendant is liable to be

restrained during the pendency of the suit from using the

mark VOLVO in respect of its product i.e. ice-cream.

14. It is not in dispute that the VOLVO is a Latin word and has

been adopted in the year 1915 by the plaintiff for the purpose

of manufacturing and trading its goods. It is also not in

dispute that the word as on date is identified with the buses

and trucks and cars mainly and is associated with the

plaintiffs. It is seen as setting a standard and bench mark of

comfort and a class of vehicles which provide the same. It

has been pointed out by the learned counsel for the plaintiff

that apart from buses, trucks, heavy vehicles, other

construction equipment, marine and industrial application

and aircraft, the mark is also used by the plaintiff in respect

of other goods and services provided by the plaintiff like

stationery, watches, belts, clothing and whole range of

accessories under the said brand name all over the world.

15. The word VOLVO has been subject matter of judicial

comment in case titled Aktiebolaget Volvo Vs. Volvo Steels

Ltd. 1998 PTC (18) DB 4773, which reads as under:-

"73. Undoubtedly, word „Volvo‟ is a Latin word thereby „re-rolling‟, „to roll up‟, „to roll together‟ and „form by rolling‟. However, it is requires to be appreciated that hardly anyone in India knows Latin and it is extremely improbable that anybody would translate the word „Volvo‟ when one hears or reads the same. Latin being almost a dead and obscure language and hardly anybody in India knows Latin. The word „Volvo‟ for average Indian

would not mean anything and would not be a descriptive word."

16. It is also not in dispute that the word VOLVO has been

registered in India since 1975 and is presently used for 20

classes of products in India. Therefore, the plaintiffs being

the proprietor of the trade mark VOLVO, were well within

their right to protect the same. It is also not in dispute that

the defendants are manufacturing and selling ice cream by

the brand name VOLVO. The question to be considered is as

to whether the defence which is taken by the defendant

against the restraint order being passed in favour of the

plaintiff could be considered to be a valid defence for the

purpose of not passing the restraint order against them and

thereby refraining them from using the word VOLVO in

respect of ice cream.

17. The first ground which the defendants have taken is that the

plaintiffs has no cause of action as the plaintiffs are not the

registered proprietors of the mark VOLVO in the class under

which their product ice cream falls. For this purpose, the

learned counsel for the defendant has relied upon a judgment

Cadila Healthcare Ltd. Vs. Gujarat Co-operative Milk

Marketing Federation Ltd. & Ors. 145 (2007) DLT 761.

18. In Cadila's case, the question which was involved between

Cadila Healthcare Ltd. and Gujarat Co-operative Milk

Marketing Federation Ltd. was regarding the user of the

expression 'Sugar free' by the Gujarat Co-operative Federation

in respect of its product while as the 'sugar free' was an

expression which was being used and registered trademark

of the plaintiff, Cadila.

19. It was in this background that the learned Single Judge

modified the blank injunction order granted in favour of

Cadila by observing that the word SUGAR FREE is a generic

word and by adopting this as a trade mark, it cannot put a

complete embargo on the user of the said generic word by the

other parties if the circumstances warranted. It was held by

the Court that the word 'sugar free' was being used as a

descriptive or laudatory sense rather than as a trade mark. It

has also been observed that the plaintiff must be prepared to

tolerate some degree of confusion which is inevitable owing to

wide spread use of trade mark 'sugar free'. Accordingly, ex

parte ad interim injunction, which was passed and was

modified by the learned Single Judge by putting the following

two conditions in favour of the plaintiff, which reads as

under:-

"59. The ex parte order dated 3.4.2007 is accordingly varied to incorporate the following directions:-

(i) The defendant is restraint from using the expressions „sugar free‟ in the present font size which is conspicuously bigger than its trade mark „Amul‟.

(ii) The defendant is free to use the expression „Sugar Free‟ as part of a sentence or as a

catchy legend, so as to describe the characteristic feature of its product."

20. I do not agree with the contention of the defendant that the

word VOLVO is a generic word as the word 'sugar free' is.

21. The defendant has contended that the word VOLVO is a

generic word which means 'I roll'. There are not many people

in India who know the Latin language, therefore, it can hardly

be said to be a generic word. On the contrary, there is a

judicial finding as reproduced hereinabove, wherein it has

been specifically said that it is a Latin word, not known to

many people and it has been adopted by the plaintiff way

back in 1915 for its automobiles etc. and was adopted by the

plaintiffs in India from 1975 and thus have attained certain

amount of distinctiveness and standard and quality of

product so far as the plaintiff is concerned. Therefore, it

cannot be said that merely because the defendant is using the

word VOLVO in respect of ice cream which falls in a class of

goods which are not manufactured by the plaintiff itself, there

cannot be an action for infringement or passing off as has

been done in the instant case.

22. As a matter of fact, there are number of judicial

pronouncements of our own High Court and other Courts,

where the user of the known trademark for a different class of

goods or services has been restrained on account of the fact

that it is likely to cause confusion and thereby dilute the

distinctiveness and the reputation of the registered trade

mark and thus would be detrimental to the reputation of the

party concerned. Reliance in this regard can be placed on

Daimler Beriz Vs. Hybo Hindustan 1994 PTC 287 Del,

Alfred Dunhel Vs. Kartar Singh 1999 PTC (19) 294,

Mahindra Vs. Mahindra AIR 2002 SC 117 and Bata India

Ltd Vs. Payrelal PTC Supp (1) 116 All. In all these cases,

the offending trade mark/ name was restrained from being

used for a product unconnected with the product of the

proprietor in respect of which the trade mark/name was

registered. Therefore, by no stretch of imagination, it can be

said that the user of the word VOLVO though adopted by the

defendant in respect of ice cream cannot be said to be

violative and infringing the trade mark of the plaintiff or that

it is not likely to cause confusion or will not be detrimental to

the interest of the plaintiff.

23. With regard to the contention of the defendant that the use of

the said trade mark is not detrimental to the interest of the

plaintiff, I do not accept this contention of the learned

counsel for the defendant that for bringing an action of

infringement, so far as Section 29 (4) (c) is concerned, the

conditions which are enunciated in clauses (a) and (b) must

also be satisfied. In order to appreciate this contention of the

learned counsel for the defendant, it would be worthwhile to

reproduce Section 29 (4) (a to c) of the Trade Marks Act, 1999,

which 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."

24. A perusal of the aforesaid sub section (4) would clearly show

that after amendment, the scope of infringement action of the

party has been widened and each of the sub clauses in itself

is a separate sub clause as the word 'and' is not used

connecting each of the sub class with the subsequent sub

clause. So far as Section 29(4)(c) is concerned, it essentially

deals with the dilution of the trade mark or the trade name of

the party which tentamounts to infringement.

25. If one analyze Section 29(4) of the Trade Marks Act, the

following essentials will have to be satisfied:-

(i) The mark is identical with or similar to the registered trade mark and

(ii) It is used in relation to the goods or services which are not similar to those for which the trade mark is registered and

(iii) The registered trade mark has a reputation in India and

(iv) 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.

26. Thus, a perusal of the aforesaid sub-section clearly shows

that there is no merit in the contention of the learned counsel

for the defendant that while considering as to whether there

is an infringement of a trademark belonging to the plaintiff or

not, under sub clause (4) each of the sub-clauses (a),(b) & (c)

have to be seen cumulatively and in the instant case the

action of the defendant clearly falls within the ambit of

Section 29(4(c) as it tentamounts to diluting the trade mark

and trade name of the plaintiff by using the word VOLVO in

respect of ice cream though not manufactured by the plaintiff

but certainly giving an impression as if the said ice cream

belongs to the same family of companies which manufactures

the quality products in different fields including buses or

cars. Therefore, I do not accept this plea of the learned

counsel for the defendant.

27. The next plea which has been raised by the learned counsel

for the defendants is that he has been using the trade mark

for more than last 15 years and the action has been brought

by the defendant belatedly and therefore, no restraint order

deserves to be passed. It is also urged that there is no

material on record to show that the consumers were being

mislead into believing that the goods which are actually of the

defendants and are being sold by the mark VOLVO belonged

to the plaintiffs and therefore, no restrain order deserves to be

passed in this regard.

28. The defendant in support of its contention has relied upon

Micolube India Ltd. Vs. Maggon Auto Center & Anr. 150

(2008) DLT 458 and M/s S.M.Dyechem Ltd. Vs. M/s

Cadbury India Ltd. AIR (2000) SC 2114 para 53, 57.

29. I have gone through these authorities. The facts of both these

cases are totally distinguishable from the facts of the present

case and consequently not applicable to the case in hand. In

Micolube's case, the plaintiff was held to be guilty of

concealment of material facts inasmuch as it had brought an

action for infringement of trade mark and passing off the

trade mark 'Micolube' by the defendant no.2, which

admittedly had a registration in respect of the said word

'Micolube' in the category of Automobiles. It was in this

context that the learned single Judge opined that when the

defendant himself is a proprietor of registered trade mark

and trade name although the plaintiff may also be the

registered proprietor of the same trademark, any injunction

against the defendant could not be passed from using the

said trademark. Apart from this, it was observed that the

plaintiff had tried to conceal the fact by making an

insignificant party as the main defendant so that the main

contesting party goes unnoticed.

30. In the present case, admittedly, the defendant is not

registered proprietor of the trade mark VOLVO in respect of

ice cream, therefore, the facts of the case are totally different

and distinguishable.

31. In SM Dyecham's case (supra), the Apex Court while

considering the action for infringement observed that it is

necessary to go into the question of comparable strength of

the cases of either parties apart from the balance of

convenience. The Court had again gone into the question of

similarities and dissimilarities which are more visible to the

naked eye in the two marks than the user of the word PICNIC

for PICKNIC and it was observed that there was no scope for

the purchaser being mislead in the said case.

32. The facts of the above two cases are distinguishable and

therefore, merely because in a given case the restraint order

is not passed on account of absence of prima facie facts of the

case, it cannot be said that on the basis of the same

injunction in the instant case shall be also refused. The facts

of each and every case have to be judged on its own merit and

no help can be drawn from a decided case in the sense that in

case a restraint order is denied in a particular case, it cannot

be granted in a case in which the facts warrants of the same.

33. On the contrary, in the present case, I am of the considered

view that the plaintiff has been able to make out a prima facie

case especially that it has got a good case being a registered

proprietor of the trade mark and trade name in respect of

various categories of goods. It is also established that the

word VOLVO is a Latin word and therefore by no stretch of

imagination, can it be said to be generic name as it is alleged

by the defendant. The defendant admittedly is using the

word VOLVO in respect of ice cream and as the word VOLVO

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, it cannot be permitted to be infringed or diluted in terms

of Section 29(4)(c) of the Trade Mark Act by the defendant by

using the said trade name VOLVO though with a slight

variation of the trade dress in respect of dissimilar products

namely ice cream.

34. I feel that the balance of convenience is also in favour of the

plaintiff and the plaintiffs will suffer an irreparable loss in

case the defendant are not restrained from using the word

VOLVO in respect of its product ice cream and the trade

name or the trade dress during the pendency of the suit.

35. For the reasons mentioned above, I restrain the defendant

using the trade name/mark VOLVO in any of its form for

manufacturing, distributing or selling the ice-cream.

IA No.5271/2009(u/O26 Rule 4 and 9 CPC)

1. By virtue of the present application, the plaintiff has sought

appointment of Local Commissioners who will visit three

different places in Delhi and prepare an inventory of all those

offending products in India i.e. the stationery, books of

accounts etc., which are offending the trade mark of the

plaintiff.

2. The defendant having suffered a restraint order against the

user of the trade mark VOLVO, I feel that it is not only

necessary but incumbent on this Court to appoint Local

Commissioners to visit the three places mentioned in the

application who will prepare the inventory of various items

where the word VOLVO has been used.

3. So far as the ice creams which are already manufactured by

the defendant with the brand name VOLVO are concerned

and are in stock that shall not be seized or sealed as it will be

of no use and would be a national wastage to destroy the said

offending products however, the respondent shall be

restrained from manufacturing any ice cream after the visit of

the Local Commissioners.

4. So far as the handcarts, pushcarts, stationery items or any

other offending articles with the offending trade mark or trade

name VOLVO is concerned, the same shall be seized and an

inventory be prepared and be kept in a sealed room or cover

and released on superdari.

5. So far as the books of accounts etc., are concerned, the Local

Commissioners may obtain photocopies of the said books of

accounts after putting their signatures and release the same

on superdari to the defendant. In case, it is not possible to

obtain the photocopies, the Local Commissioners shall put

their signatures on the same and release on superdari after

preparing an inventory. In order to effectuate the aforesaid

directions, I appoint the following three Local Commissioners

who will visit the different premises in question and carry out

the orders of the Court. The Local Commissioners shall be

accompanied by a representative of the plaintiff and no

separate notice will be issued to the defendant on 19.3.2011.

       SL. NO.        NAMES    OF   LOCAL              PLACES
                      COMMISSIONERS
          1.          Ms.Priyanka      Kapur, Volvo Ice-Cream at
                      Advocate,        Mobile- Shop    No.21,   DDA
                      9873345546               Market       Lawrence
                                               Road, Rampura, Delhi
          2.          Ms.Pallavi     Sharma, Volvo Ice-Cream at
                      Advocate,       Mobile- Shop    No.24,   DDA
                      9899447004              Market       Lawrence
                                              Road, Rampura, Delhi

3. Mr.P.K.Sharma,Advocate, Volvo Ice-Cream at A/583, MIE Part-1,

Mobile-9810772846 Bahadurgarh Industrial Area, Haryana

6. The fees of the learned Local Commissioners in respect of

commission to be executed in Delhi is `30,000/- plus

expenses. While as in respect of Bahadurgarh, Haryana, it is

`40,000/- plus expenses.

7. The Local Commissioners shall file their report within two

weeks from the date of execution of the commission.

V.K. SHALI, J.

MARCH 07, 2011 RN