Delhi High Court: In a case wherein a suit had been filed seeking relief of permanent injunction restraining the defendants from infringing the marks of the plaintiffs and passing off their goods as that of the plaintiffs, Single Judge Bench of Amit Bansal, J.* granted permanent injunction to the mark ‘VOLVO' and opined that the defendants had been making unlawful gains at the expense of the plaintiffs and so it was not a case of innocent adoption. Thus, the Court awarded Rs. 10 lakhs towards damages and costs to the plaintiffs.
Background
The plaintiffs had their business in transportation and automotive sector, including the business of manufacturing spare parts, accessories, and ancillary parts for vehicles under the mark ‘VOLVO '. The plaintiffs were the registered proprietor of the mark ‘VOLVO' and ‘VOLVO' formative marks in Class 12 and various other Classes of the Trade Marks Act, 1999 (“Act”). The plaintiffs' ‘VOLVO' mark had acquired the status of ‘well-known trade mark' within the meaning of Section 2( 1)(zg) of the Act, which was recognized in Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat (India), 1997 SCC OnLine Bom 578. In 2018, the plaintiffs became aware of the defendants’ activities when they came across the advertisements and sale of the bicycles by the defendants under the mark ‘VOLVO'. The investigation conducted by plaintiffs revealed that defendants were infringing the mark ‘VOLVO' of the plaintiffs. The Defendant 2, Road Master Autotech (P) Ltd. offered their products for sale on their website www.roadmasterindia.com as well as on third party merchant platforms like www.indiamart.com. Therefore, the plaintiffs submitted that the use of the registered and well-known mark of the plaintiffs by the defendants in respect of goods in identical classes amounted to infringement of the plaintiffs' mark ‘VOLVO' and passing off the goods of the defendants as that of the plaintiffs.
Analysis, Law, and Decision
This Court in 2018, granted an ex parte interim injunction in favour of the plaintiffs, thereby restraining the defendants from using the mark ‘VOLVO' or any other deceptively similar mark in respect of their products or on any advertisements or labels. Further, a proposal for settlement was made on behalf of the defendants to the plaintiffs to settle the dispute in the present matter. However, the plaintiffs were not agreeable for a settlement. Thereafter, the present application was filed on behalf of the plaintiffs.
Comparison of marks of the plaintiffs and the defendants:
The Court opined that the defendants were using identical mark ‘VOLVO' in respect of goods that were covered by various registrations of the plaintiffs. Further, the Court observed that the plaintiffs had been able to prove that they were the registered proprietors of the mark ‘VOLVO '. The plaintiffs had also been able to show their goodwill and reputation in respect of the mark ‘VOLVO' not only internationally but in India as well. The said mark had acquired the status of a ‘well-known trade mark' in terms of Section 2(zg) of the Act.
The Court further noted that the material on record made it clear that the defendants were manufacturing bicycles bearing the ‘VOLVO' mark and were selling the same through their own showrooms as well as multiple franchisees across the country. Moreover, the website of the defendants also invited the interested persons to join hands as franchisees, thereby ensuring their widespread commercial presence. Further, Section 29(6) of the Act clarified that ‘use' was not restricted to manufacture of goods, but also included the acts of affixing the impugned mark, offering for sale goods bearing the impugned mark and use of such mark in advertisements. Thus, the Court opined that such acts of the defendants amounted to infringement of the mark ‘VOLVO' of the plaintiffs and passing off the goods of the defendants as that of the plaintiffs.
Thus, the Court allowed the present application and opined that the defendants were agreeable to a decree of permanent injunction being passed against them. The Court further observed that “the defendants had blatantly infringed the well-known mark of the plaintiffs, as the Local Commissioners appointed by this Court found various ‘VOLVO' branded stickers and infringing products bearing the mark ‘VOLVO' on the premises of the defendant and invoices to show that the defendants were dealing with the goods bearing the mark ‘VOLVO'”.
The Court further opined that the customers were being misled by the defendants and the entire effort was deliberate and dishonest. Therefore, it amounted to dilution of the reputation and goodwill of the plaintiffs' marks and caused loss to the plaintiffs in business and reputation. The Court also opined that “the members of the public were bound to confuse bicycles manufactured and sold by the defendants under the mark ‘VOLVO' as emanating from the plaintiffs. The defendants had been making unlawful gains at the expense of the plaintiffs. Therefore, it was not a case of innocent adoption by the defendants ”. Thus, the Court awarded Rs. 10 lakhs towards damages and costs to the plaintiffs.
[Aktiebolaget Volvo v. Gyan Singh, 2023 SCC OnLine Del 2432, decided on 25-4-2023]
Advocates who appeared in this case :
For the Plaintiffs: Pravin Anand, Vaishali Mittal, Siddhant Chamola and Karan Kumar Kamra, Advocates
For the Defendants: Kunal Khanna, Umesh Mishra and Vishal Patel, Advocates
*Judgment authored by: Justice Amit Bansal