Delhi High Court
Aktiebolaget Volvo & Ors. vs Mukesh Tiwari on 18 August, 2021
$~10 (original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 17/2021 & I.A.595/2021, I.A.6296/2021,
I.A.6297/2021, I.A.10386/2021
AKTIEBOLAGET VOLVO & ORS. ..... Plaintiffs
Through: Mr. Karan Kumar Kamra and
Mr. Sidhant Chamola, Advs.
versus
MUKESH TIWARI ..... Defendant
Through: Mr. Prateek Goswami, Adv.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
O R D E R (O R A L)
% 18.08.2021
(Video-Conferencing)
I.A.10386/2021 (under Order XXIII Rule 3 of the CPC)
1. This is an application under Order XXIII Rule 3 of the Code of
Civil Procedure, 1908 (CPC) for decreeing of the suit between the
parties in terms of the settlement at which they have arrived. The
terms of settlement, as set out in paras i to xii of para 7 of the
application, read thus:
"i. The Defendant acknowledges that the Plaintiffs are the
rightful owners of and registered proprietors of the
trademark 'VOLVO' and 'VOLVO formative
marks' in India. The Defendants specifically recognize
the Plaintiffs' sole and exclusive common law and
statutory rights as are vested in their trademarks
comprising of the name/word 'VOLVO'. An
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
illustrative list of some of the Plaintiffs' registrations
for the said trademarks in India, as are also outlined in
paragraph 12 of the Plaint are given below:
Sl.no. Trademark Registration Date of Class
No. application
2 VOLVO 13848 14.09.200 4,9,3
3 14041 06.12.2005 2,4,9,12,35,
33 37, 39
4 32495 12.02.200 2,4,9,12,35,
88 5 37,3
6 32512 12.02.200 12,
73 5 35,
37,3
RACE
The Defendant further acknowledge the exclusive
rights of the Plaintiffs in numerous copyrighted works
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
in India, including but not limited to the 'VOLVO'
trademarks as well as the pictorial images associated
therewith.
ii. The Defendant agrees and acknowledges that the
Plaintiffs' trademark 'VOLVO' is a well-known
trademark as defined under the provisions of section 2
(1) (zg) of the Trade Marks Act, 1999.
iii. The Defendant agrees and acknowledges that he
through his organisation, Travel Treat Holidays has
infringed the statutory and common law rights of the
Plaintiffs as are vested in their 'VOLVO' trademarks.
In relation to the same, the Defendant tenders an
unconditional apology for the various activities of his
organization which constitute a violation of the
statutory and common law rights of the Plaintiffs as are
vested in the said trademarks.
iv. The Defendant confirms that he has ceased all use (
offline and online) of the name/mark 'VOLVO' in
relation to the activities of his organisation, Travel
Treat Holidays , specifically to describe the holiday
tour packages being offered by it titled as 'VOLVO
Tour Packages' and 'Shimla Manali VOLVO
Packages' and individual tour packages referred to as :
'Delhi Shimla Manali VOLVO Packages', 'Manali
VOLVO Packages', 'Shimla VOLVO Package',
'Himachal VOLVO Package', 'Honeymoon
VOLVO Packages', 'Shimla Manali VOLVO Tour
Package', 'Kullu Manali VOLVO Package from
Bangalore' and 'Dharamshala VOLVO Packages'
and 'Manali VOLVO Package from Bangalore' etc.
v. The Defendant agrees and undertakes that he, his
organisation , Travel Treat Holidays, subsidiaries,
affiliates, franchisees, co-proprietors/partners, officers,
servants, agents, distributors, assigns, licensees,
stockists, representatives and anyone acting for or on
their behalf, including all the companies operated,
managed and controlled by the Defendant will never
use trademark/name 'VOLVO' or any name/mark
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
confusingly or deceptively similar thereto, in relation
to the business of providing travel consultancy
services, budget and luxury accommodation, online
booking of bus tickets and holiday bus tour packages
including the impugned domain name,
www.delhimanalivolvobooking.com and the website
hosted thereto; in meta-tags associated with the
impugned domain name, in the form of textual
references or use in the form of images or logos, in
third party listings, references in the social media
and/or any representation in any manner whatsoever;
or as regards any other class of goods and services in
any manner whatsoever amounting to infringement of
the name/mark 'VOLVO'.
vi. The Defendant agrees and undertakes that he, his
organisation , Travel Treat Holidays, subsidiaries,
affiliates, franchisees, co-proprietors/partners, officers,
servants, agents, distributors, assigns, licensees,
stockists, representatives and anyone acting for or on
their behalf, including all the companies operated,
managed and controlled by the Defendant will never
use trademark/name 'VOLVO' or any name/mark
confusingly or deceptively similar thereto, in relation
to the business of providing travel consultancy
services, budget and luxury accommodation, online
booking of bus tickets and holiday bus tour packages
including the impugned domain name,
www.delhimanalivolvobooking.com and the website
hosted thereto; in meta-tags associated with the
impugned domain name, in the form of textual
references or use in the form of images or logos, in
third party listing, references in the social media and/or
any representation; or as regards any class of other
goods and services in any manner whatsoever
amounting to passing off of the business/services of the
Defendant as that of the Plaintiffs.
vii. The Defendant agrees and undertakes that he, his
organisation, Travel Treat Holidays, subsidiaries,
affiliates, franchisees, co-proprietors/ partners, officers,
servants, agents, distributors, assigns, licensees,
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
stockists, representatives and anyone acting for or on
their behalf, including all the companies operated,
managed and controlled by the Defendant will never
engage in any act, in any manner whatsoever, using the
trademark/name 'VOLVO' or any other name/mark
confusingly or deceptively similar thereto, amounting
to the dilution and tarnishment of the name / registered
well-known trademark 'VOLVO' of the Plaintiffs.
viii. The Defendant agrees and undertakes that he, his
organisation, Travel Treat Holidays, subsidiaries,
affiliates, franchisees, co-proprietors/partners, officers,
servants, agents, distributors, assigns, licensees,
stockists, representatives and anyone acting for or on
their behalf, including all the companies operated,
managed and controlled by the Defendant in relation to
the business of providing travel consultancy services,
budget and luxury accommodation, online booking of
bus tickets and holiday bus tour packages including the
impugned domain name,
www.delhimanalivolvobooking.com and the website
thereto in meta-tags associated with the impugned
domain name, in the form of textual references or use
in the form of images or logos, in third party listing,
references in the social media and/or any
representation; or as regards any other class of goods
and services in any manner whatsoever amounting to
unfair competition vis. a. vis. Plaintiffs business under
the Plaintiffs' registered and well-known trademark
'VOLVO'.
ix. The Defendants agrees and undertakes not to conduct
any business and/or offer any goods or services, now
or in the future, under the name/registered and well-
trademark 'VOLVO' or any name/mark confusingly or
deceptively similar thereto, in any manner whatsoever
(offline or online) including but not limited to its use in
domain names and ( not limited to use in the impugned
domain name www.delhimanalivolvobooking.com), in
email ids, on websites and meta-tags associated
thereto, in social media accounts or third party
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
websites in India or in any other country across the
world.
x. The Defendant acknowledges that it has transferred the
ownership of the impugned domain name,
http://www.delhimanalivolvobooking.co.in to the
Plaintiffs. Further, the Defendant confirms that he does
not own any other domain name with the mark
'VOLVO' in it. The said domain name was scheduled
to expire on 3rd March, 2021 and the ownership of the
same has already been transferred to the Plaintiff. The
Defendants undertakes not to register any domain
name now and in the future in India or in any other
country across the world comprising of the name/mark
'VOLVO' identical or deceptively similar to the
Plaintiffs' registered and well-known mark 'VOLVO'.
xi. The Defendant hereby agrees and undertakes not to
apply for registration of the trademark 'VOLVO' or
any other name/ mark deceptively similar thereto as
regards any class of goods or services either through
trade mark registrations, company name registrations,
trade name registrations, social media accounts and
domain name registrations in India or in any other
country across the world.
xii. The Defendant hereby agrees and undertakes that it has
destroyed all infringing products and materials
(including without limitation letterheads, visiting cards,
stationery, brochures, invoices, cartons, stickers,
blocks, dies, labels, packaging , business cards,
promotional material and any other material bearing
the name/ mark 'VOLVO' and/or any other mark
deceptively similar to the Plaintiffs registered and well-
known 'VOLVO' trademark."
2. The parties shall remain bound by the aforesaid terms.
3. In view of the settlement, nothing survives for adjudication in
this suit.
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
4. Accordingly, the suit is decreed in terms of the aforesaid terms
of settlement extracted hereinabove. The Registry is directed to draw
up a decree sheet in accordance therewith.
5. The plaintiffs shall be entitled to refund of the full court fee
deposited by them in the light of the law laid down by this Court in
Munish Kalra v. Kiran Madan1 read with Order XXXIII Rule 3 of
the CPC.
6. All pending applications are also disposed of.
C. HARI SHANKAR, J
AUGUST 18, 2021/kr
2019 SCC OnLine Del 8021
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:26.08.2021
21:05:27
