Aktiebolaget Volvo & Ors vs Hari Satya Lubricants & Anr
2016 Latest Caselaw 6759 Del

*       IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    Date of Decision: November 03, 2016
+       CS(OS) 1771/2014, CRL.M.A No. 4410/2015
        AKTIEBOLAGET VOLVO & ORS
                                                                   ..... Plaintiff
                           Through:     Mr. Raunaq Kamath, Adv.

                           versus

        HARI SATYA LUBRICANTS & ANR
                                                              ..... Defendant
                             Through:     Mr. Pankaj Kumar, Adv. with Mr.
                                          Vinay Kumar Shukla, Adv. for D-1

CORAM:
HON'BLE MR JUSTICE V. KAMESWAR RAO
                               JUDGMENT

V. KAMESWAR RAO, J

1. This suit has been filed by the plaintiffs, organized under the laws of

Sweden with the following prayers:-

"a) An order for permanent injunction restraining the Defendants, their principal officers, partners, sister concerns, licensees, servants, representatives and agents or any of them, from manufacturing, selling, offering for sale in India, offering for export, packaging, advertising, directly or indirectly dealing in manufacturing and supplying of the lubricating oil products or any goods whatsoever under the mark 'VALVO' or any other trademark identical and/or deceptively similar to the plaintiffs' well-known trademark VOLVO amounting to infringement of the Plaintiffs well-known trademark VOLVO;

b) An order for permanent injunction restraining the Defendants, their principal officers, partners, sister concerns, licensees servants, representatives and agents or any of them, from manufacturing, selling, offering for sale, packaging, advertising, directly or indirectly dealing in lubricating oil products or any goods whatsoever under the mark 'VALVO' or any other mark identical and/or deceptively similar to VOLVO or having the trademark VOLVO as a part of the brand name/ device mark / trading style / domain name or in any other manner as may lead to passing off of the Defendants' goods and/or business as that of the Plaintiffs.

c) An order for permanent injunction restraining the Defendants, their principal officers, partners, sister concerns, licensees servants, representatives and agents or any of them, from using the well-known trademark VOLVO or any other trade mark deceptively similar thereto in any manner whatsoever on any goods or services so as to cause dilution of the distinctiveness of the trademark VOLVO and tarnishing the reputation of the Plaintiffs;

d) A decree for damages of Rs.2,00,000/- be passed in favour of the Plaintiffs and against the Defendants.

e) An order for delivery up to the Plaintiffs for destruction/ erasure all the products bearing the mark 'VALVO' or any other mark identical to and/or deceptively similar to the Plaintiffs' trademark VOLVO, such as stationery, packing, promotional material, brochures, pamphlets, hoardings, letter heads, visiting cards, goods, stickers, cartons, dies, articles, price tags;

f) An order for costs of the suit."

2. Plaintiff No. 1 owns and controls shares in various corporations and

companies, which are together referred to as the "Volvo Group of

Companies". Plaintiff No. 3 owns and controls shares of various

corporations and companies, which are together referred to as the "Volvo

Car Companies". The Volvo Group of Companies and Volvo Car

Companies are hereinafter referred as the "Volvo Tm Companies. Plaintiff

No. 1 case is that it 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 demanding customers in selected segments.

According to the plaintiffs‟, plaintiff No. 3 occupies a prominent position as

a car producer and plaintiff No. 1 is among the world leaders in heavy

commercial vehicles such as trucks, buses and construction equipment, as

well as in drive systems for marine and industrial applications. Before 1991,

the business activities carried out by plaintiff No. 1 in India were in the

nature of distributorship activities mainly in relation to cars, marine engines

and construction equipment under the trademark VOLVO. After 1991,

plaintiff Nos. 1 and 3 established „Volvo India Private Limited‟ in India. It

has established a truck factory in India in the State of Karnataka. Plaintiff

No. 3 is active in India via the company „Volvo Auto India Pvt. Ltd‟ which

was opened in Delhi in September 2007 and commenced business in India

by launching two car models Volvo S80 and Volvo XC90 in the last quarter

of 2007.

3. It is the case of the plaintiffs‟ that they have adopted VOLVO, a rare

Latin word, both as a trademark and a trade/corporate name on 5th May,

1915. The plaintiff No.2 is the exclusive and sole beneficial owner of the

trade mark VOLVO, which enjoys the status of a well-known and famous

trade mark in India. According to the plaintiffs the word "VOLVO" forms a

key, essential and dominant part of the corporate name and trading style of

the majority of the companies of the plaintiffs. The plaintiffs have

highlighted the goodwill and reputation enjoyed by the plaintiffs all over the

world including India and would state that the overall sales figures

worldwide of plaintiff No.1 in 2012 was 1,81,105 million Swedish Kronor

and the number of cars sold in 2012 worldwide including India was about

4,21,951. The publicity expenses incurred by the plaintiff No.1 in the year

2012 was 1613 million Swedish Kronor. The plaintiff No.3 incurred

publicity expenses to a tune of 761 million Swedish Kronor. The trademark

registration of VOLVO in India dates back to the year 1975 and all the

existing registrations in India of the plaintiffs which have been duly renewed

are subsisting and in full legal force.

4. It is the case of the plaintiffs, the trademark 'VOLVO' belongs to the

category of well-known, well-reputed and famous trademarks. It is instantly

identifiable and recognizable by both the members of trade and public as

being exclusively associated with the goods and business of the plaintiffs. It

acts as a source identifier inasmuch as it stands for the high standards and

superior quality of goods manufactured by the plaintiffs and sold all over.

The plaintiffs would state that they have diligently protected, enforced and

defended the statutory and common law rights in the trade mark VOLVO

which is associated by traders and members of the public solely and

exclusively with the plaintiffs.

5. According to the plaintiffs, the defendant No.1 Hari Satya Libricants

is an entity which is engaged in the business of manufacturing and dealing in

all types of lubricating oil products using the mark 'VALVO'. Defendant

No. 2 is a partnership firm and engaged in the activities of packaging of the

products manufactured by defendant No. 1 and is responsible for the

activities of the defendant No.l dealing in the products bearing the mark

'VALVO' including the word 'VALVO' which is visually, phonetically,

structurally and conceptually similar to the plaintiffs well known trademark

'VOLVO'. Defendants are believed to be manufacturing and dealing in all

types of lubricating grease and oil products using the trademark 'VALVO'

from their premises being office and packing unit located at 27/1C, Phool

Bagh, Rampura, Near Ashoka Park Main Metro Station, New Delhi. The

case of the plaintiffs is, it has come to know through their representatives,

the defendants' product is VALVO Gear Oil. Investigation was carried out.

During investigation, the defendants also made available one 5 litres pack of

VALVO Gear Oil (multigrade 20W40) without a cash memo to the

investigator. It has also come to the notice during investigation that an entity

called Goyal Oil and Chemicals was mentioned as the packer of the product.

It is said to be their sister concern. It is the case of the plaintiffs that

defendants have merely substituted the second letter of the plaintiffs' well

known and registered trademark VOLVO being "O" with "A" to arrive at the

word VALVO and the adoption of the mark VALVO plus in relation to their

products, which is visually, phonetically, structurally and conceptually

similar to the plaintiffs' trademark VOLVO with the sole view to enjoy the

benefits that flow from the tremendous reputation and goodwill that exists in

favor of the plaintiffs' trademark. The defendants by such use of VALVO

without due cause takes unfair advantage of and is detrimental to the

distinctive character and repute of the plaintiffs' well know trademark

VOLVO.

6. It is the case of the plaintiffs that there is no plausible explanation as

to how the defendants can adopt a deceptively similar and near identical

mark to the plaintiffs trademark VOLVO, which is an invented mark having

no other significance or meaning whatsoever, except to act as a source

identifier for the plaintiffs' products. It is the plaintiffs‟ case that defendants

are falsely misrepresenting to the public that the impugned mark VALVO is

a registered trademark as they are using the symbol ® next to the said mark.

The plaintiffs stand is, to the best of their knowledge, the mark VALVO of

the defendants is not registered. Plaintiffs have also pleaded passing off by

misrepresentation as the use of mark VALVO by the defendants is a

deceptive and misleading use of the plaintiffs' well-known trademark

VOLVO with the objective of taking unlawful benefit of the goodwill

inhering in the well-known trademark VOLVO by deceptively holding out or

giving an impression to the public at large that their goods have a license or

approval of the plaintiffs. Such a representation creates a false impression in

the mind of consumers of the possibility that the defendants are in some

manner connected with or authorized by the plaintiffs. The said act would

amount to tarnishment of the well-known trademark VOLVO and had

caused loss of profits to the plaintiffs and depriving the plaintiffs of the

opportunity to exploit their intellectual property. That apart, it has created

loss of reputation, image and trust.

7. The suit was initially listed on May 30, 2014 when this Court had

restrained the defendant, their servants, agents, employees, partners or

proprietors, distributors from manufacturing, selling, offering for sale,

packaging, advertising, directly or indirectly dealing and manufacturing

products and other products with the trademark VALVO or any other trade

mark identical or deceptively similar to the trademark of the plaintiffs.

Insofar as defendant No.2 is concerned, it has been served through

publication but he neither appeared nor written statement has been filed.

8. The defendant No.1 has been served and it has filed its written

statement, wherein its stand is that it is not engaged in manufacturing and

marketing of the impugned goods under the impugned trademark VALVO or

VOLVO. It is the stand that the allegations made by the plaintiffs are

absolutely wrong and false. The defendant No.1 referring to the Local

Commissioner‟s report, has stated that two containers of 5 Liters Oil under

the trademark VOLVO were found at the premises of defendant No. 1 which

were purchased from the market for personal use and not for commercial

use. It is the stand of the defendant No.1 that it has nothing to do with the

manufacturing or marketing of the goods with impugned trademark VALVO

or VOLVO. It is also stated by the defendant No.1 that Mr. Mohit Anand is

the proprietor of the firm namely M/s Hari Satya Lubricants. It was

established in the year 2013 and he is engaged in the business of

manufacturing of grease and trading of oil since then. He is carrying on its

said activity under its own trademark AUTO LUBEX in relation to engine

oil, grease, hydraulic oil, multi purchase grease since that year. In substance,

it is stated that the defendant No.1 has been wrongly impleaded.

9. It may be relevant to state here that when the matter was listed on

January 20, 2016 and on April 29, 2016, it was represented by the defendant

No.1 that in view of the stand of the defendant NO.1 and the fact that the

defendant No.1 is not using the trademark/trade name VALVO, the said

defendant is ready to have an injunction restraining it from using the

trademark/trade name VALVO or any other trademark identical and/or

deceptively similar to the plaintiffs‟ well-known trademark VOLVO. This

suggestion was acceptable to the learned counsel for the plaintiffs. In view

of this, the learned counsel for the plaintiffs had not pressed the plea of

damages qua the defendant No.1. He has stated that the prayers as prayed

for in the suit must be allowed qua the defendant No.2. Despite service, the

defendant No.2 was not represented. It chose, not to participate in the Court

proceedings and stay away. In view of the judgment of this Court in the case

of The Indian Performing Right Societies Ltd. vs. Gauhati Town Club and

another 2013 (III) AD Delhi 333 and CS(OS) 1554/2012 titled as United

Coffee House vs. Raghav Kalra & Anr, the plaintiff need not file evidence

by way of affidavit as the averments made in the plaint have been supported

by affidavit. The suit, hence can be disposed of. The plaintiffs have relied

upon the following judgments in support of their contention:-

(i) The Indian Performing Right Society v. Gauhati Town Club & Anr. CS(OS) 559/2010 decided on January 30, 2013;

(ii) AIR 2000 Delhi 60 Relaxo Rubber Limited & Anr. V. Selection Footwear & Anr.;

(iii) Philips Morris Products S.A & Anr v. Sameer & Ors CS(OS) No. 1723/2010 decided on March 10, 2014;

(iv) Philips Morris Products S.A & Anr v. Anil Kumar Singh & Ors CS(OS) No. 1723/2010 decided on March 10, 2014;

(v) Jockey International Inc. & Anr. V. R. Chandra Mohan & Ors CS (OS) No. 253/2012 decided on May 13, 2014;

(vi) Indian Heritage Society & Anr. V. Meher Malhotra & Anr. CS(OS) NO. 2717/2011 decided on September 13, 2013;

(vii) Samsung Electronics Company Ltd. & Anr. V. Singh Mobile Accessories & Ors CS(OS) 1240/2012 decided on January 16, 2015;

(viii) DLF Ltd. v. Honey Tarachandani & Ors CS(OS) 2471/2014 dated March 02, 2015;

(ix) Burger King Corporation v. Burger Place CS(OS) No. 290/2015 decided on September 07, 2015.

10. Suffice to state, in view of the statement made by the learned counsel

for the defendant No.1 a decree of permanent injunction is passed in favour

of the plaintiffs and against the defendant No.1 and in the absence of any

defence, against defendant No.2 also on the following terms:

(a) restraining defendants 1 and 2, their principal officers, partners, sister

concerns, licensees, servants, representatives and agents or any of them,

from manufacturing, selling, offering for sale in India, offering for export,

packaging, advertising, directly or indirectly dealing in manufacturing and

supplying of the lubricating oil products or any goods whatsoever under the

mark 'VALVO' or any other trademark identical and/or deceptively similar

to the plaintiffs‟ well-known trademark VOLVO amounting to infringement

of the Plaintiffs well-known trademark VOLVO;

(b) restraining defendants 1 and 2, their principal officers, partners, sister

concerns, licensees servants, representatives and agents or any of them, from

manufacturing, selling, offering for sale, packaging, advertising, directly or

indirectly dealing in lubricating oil products or any goods whatsoever under

the mark 'VALVO' or any other mark identical and/or deceptively similar to

VOLVO or having the trademark VOLVO as a part of the brand name/

device mark / trading style / domain name or in any other manner as may

lead to passing off of the Defendants' goods and/or business as that of the

Plaintiffs.

(c) restraining defendants 1 and 2, their principal officers, partners, sister

concerns, licensees servants, representatives and agents or any of them, from

using the well known trademark VOLVO or any other trade mark

deceptively similar thereto in any manner whatsoever on any goods or

services so as to cause dilution of the distinctiveness of the trademark

VOLVO and tarnishing the reputation of the Plaintiffs.

11. In addition, as the defendant No.2 has not cared to appear in these

proceedings despite service through publication and keeping in view the law

laid down by this Court in the case reported as 2009(39) PTC Delhi Tobacco

Company & Ors v. Munna Bhai and as followed in the case of Philips

Morris Products S.A & Anr v. Sameer & Ors CS(OS) No. 1723/2010

decided on March 10, 2014, the Court has found it to be a clear case of

trademark infringement and passing off and the defendant No.2 being a

small vendor and the Court having granted the permanent injunction against

the defendant No.2 also, in favour of the plaintiffs and the plaintiffs have

pressed the prayer for damages, the interest of justice would be served if

nominal damages of Rs.10,000/- is awarded against the defendant No.2 and

in favour of the plaintiffs and in addition, the plaintiffs are entitled to cost of

this litigation, which is quantified at Rs.10,000/-.

12. The suit is decreed in the aforesaid terms. Decree sheet be drawn

accordingly.

CRL.M.A No. 4410/2015

Dismissed as infructuous.

V. KAMESWAR RAO, J NOVEMBER 03, 2016 ak