Aktiebolaget Volvo & Ors. v. R. Venkatachalam and Anr

2.14. Market inquiries carried out by the plaintiffs revealed that the defendants were engaged in an allied and cognate business as the plaintiffs and were attempting to register the plaintiffs‟ trademark „PENTA‟ for the said purpose.

2.15. A legal notice dated 14th December, 2006 was sent by the plaintiffs to the defendants calling upon the defendants to cease and desist from using the mark „PENTA‟ as a part of their corporate name / trademark, the same being identical or deceptively similar to the plaintiffs‟ marks.

2.16. The defendants in their reply dated 23rd January, 2007, admitted that their use of the word „PENTA‟ as a part of the corporate name of defendant no. 2 company, Penta Auto Equipments Pvt. Ltd., which dates to 2nd June, 2001, with business operations dating back to years 2004 and 2006. However, despite the same, the defendants refused to amicably settle the matter and challenged the plaintiffs‟ rights in the said trademark.

2.17. The scope of the defendants‟ activities were discovered to be in direct conflict with the plaintiffs‟ business activities under their registered trademarks „VOLVO‟ and „PENTA‟ in various fields, including, manufacture of engines for marine motors for which the plaintiffs hold specific registration for engines and complete power systems for marine and industrial application under Class 7.

2.18. Hence, the present suit has been filed. Submissions by plaintiffs:

3. On behalf of the plaintiffs, following submissions have been made:

3.1. The trademark VOLVO PENTA is a combination of the two wellknown trademarks VOLVO and PENTA. The mark PENTA was first adopted by the plaintiffs in the year 1913 and the mark VOLVO PENTA was adopted in the year 1964. Therefore, these trademarks are exclusively associated with the plaintiffs.

3.2. The trademark VOLVO PENTA is registered in India under registration no. 1384891 in Classes 4, 7, 9, 11, 12, 17, 35, 37, 38 and 42 since the year 2005 in the name of plaintiff no. 2.

3.3. The plaintiffs have spent enormous sums of money to advertise and promote its VOLVO PENTA and PENTA trademarks across the globe. The said trademarks have been advertised and extensively promoted through various mediums, including, magazines, pamphlets, and television.

3.4. The exclusivity of the association of the mark with the plaintiffs is assured since the VOLVO PENTA mark also forms a prominent part of the trading style of the plaintiffs. Additionally, the global exposure of the consumers across different countries to VOLVO PENTA products emanating from the Penta-line of products of the plaintiffs, has assured exclusive association of the said mark with the plaintiffs.

3.5. The defendants can have no valid reason for adopting the plaintiffs‟ well-known mark for their own services/ corporate name when they are aware of the plaintiffs‟ prior use and proprietorship over the said mark. Further, the defendants can also not have any justification for adopting what is clearly an invented and highly distinctive mark.

3.6. The plaintiffs‟ registrations for the word mark PENTA in India, under No. 265555 and 265556 in relation to Class 7 and Class 12 respectively, constitute constructive notice to third parties such as the defendants in the present case, on account of which they cannot legitimize their patently unauthorized act of misappropriating the plaintiffs‟ trademark.

3.7. It is an accepted proposition of law that well-known and reputed trademarks become diluted when the consumer capacity to associate it with the plaintiffs‟ products is diminished. Such unauthorized use will undermine and tarnish the positive associations and indications evoked by the plaintiffs‟ trademark PENTA.

3.8. Enormous goodwill and reputation enjoyed by a particular trademark is worthy and deserving of a wide scope of protection. The stronger the plaintiffs‟ trade mark, the greater the protection it deserves in connection with the use of an identical mark by the defendants.

3.9. The plaintiffs‟ trademark PENTA, being an invented trademark has the highest degree of inherent distinctiveness, has been used extensively over a long period of time, over a wide geographical area, has earned tremendous publicity and popularity, is well recognised by members of the trade and public and is, therefore, entitled to protection against its misappropriation.

3.10. The defendants have, by their own admission in their reply dated 23rd January 2007, adopted the impugned mark „PENTA‟ in relation to their products and services as well as their corporate/trade name, subsequent to the use of such word by the plaintiffs, only since 2001, with the sole intention of enjoying the benefits that flow from the tremendous reputation and goodwill that exists in favour of the plaintiffs‟ trademark.

3.11. The plaintiffs‟ trademark „VOLVO‟ has also been recognized by the Trade Marks Registry of India as a „well-known‟ trademark and included in the list of well-known trademarks uploaded on the online records of the Trade Marks Registry of India.

3.12. Further, the well-known nature as well as the immense goodwill and reputation as is vested in the trademark „VOLVO‟ of the plaintiffs has been acknowledged by this Court as well as by various other Courts in India, including, Tribunals and Forums across the globe.

3.13. The trademarks „PENTA‟ as well as the mark „VOLVO PENTA‟ are registered in favour of the plaintiff no. 2 in many countries.

3.14. Reliance is further placed upon letters, invoices, purchase orders, consignment orders and documents which illustrate that plaintiff no. 1 has been carrying out business under the mark „VOLVO PENTA‟ in India dating back to the years 1991- 1994.

3.15. The trademark „PENTA‟ was first adopted by the plaintiffs in the year

1913. The said trademark in India has also been registered under no. 265555 in Class 7 and 265556 in Class 12, which were assigned to the plaintiffs in the year 1975, which is much prior to the adoption of the said mark by the defendants in the year 2001.

3.16. Even an intention to use a mark is sufficient to infer use. In the present case, there was an intention and then clear and categorical use of the mark „PENTA‟ by the plaintiffs‟ predecessors-in-title and interest and then the plaintiffs, which run over three decades.

3.17. The plaintiffs‟ line of business includes engines for automobiles of all kinds. Further, the plaintiffs own a trademark registration in Class 7, which is the very same class in which the defendants have also filed an application for registration of an identical mark „PENTA‟ in respect of “Machines and machine tools, machine couplings and belting special tools, equipments, motors, hardware, hand tools, accessories, instruments, workshop tools, implements and engineering products and automobile tools and equipments included in Class 7”.

3.18. The trademark of the defendants being identical to the plaintiffs‟ registered trademark „PENTA‟ and their goods, being allied and cognate to the goods of the plaintiffs, constitute acts of infringement and passing off. Submissions by defendants:

4. On behalf of the defendants, following submissions have been made:

4.1. The mark PENTA is generic and has a specific dictionary meaning. The defendants‟ use of the trade mark/name PENTA does not constitute infringement of trademark no. 265555B. The plaintiffs cannot claim any proprietary rights for the Greek word „Penta‟ as theirs and file a suit for infringement.

4.2. The defendants are not engaged in the manufacturing or selling of products related to marine engines, industrial and marine equipment, tools and accessories, or mercantile products. It is evident that they do not operate in the same trade, either in manufacturing or selling.

4.3. AB Archimedes-Penta had no proprietary right in the trade mark PENTA either in India or anywhere else in the world on the date of making the application for registration or even on the date of filing this suit.

4.4. Plaintiff no. 2 who claims to have become the subsequent registered proprietor of trade mark no. 265555B, has not made use of the trade mark in respect of the goods for which the same is registered at any point of time.

4.5. The plaintiffs have also not made any use of the trademark „VOLVO PENTA‟ in respect of any of the goods of their alleged manufacture or sale or alleged services.

4.6. The registration of a composite trademark consisting of several matters does not confer any exclusive right in favour of the plaintiffs to the exclusive use or statutory right to part of the whole trademark, namely, PENTA.

4.7. The class of purchasers and trade channels for the plaintiffs‟ goods and the defendants‟ goods, are entirely different. The defendants manufacture special service tools for vehicles, not marine engines, or boats. The goods manufactured by the defendants under the trademark PENTA serve different purposes and uses, compared to marine motors and boats, negating any claims of infringement or likelihood of confusion in the market.

4.8. This court lacks territorial jurisdiction to entertain and try the present suit. Section 134(2) of the Trade Marks Act, 1999 does not apply in the present case, as none of the plaintiffs have registered or branch offices in India or within this court‟s jurisdiction.

4.9. Plaintiff no. 1 does not claim to own the trademark PENTA, and plaintiff no. 2, who claims ownership of trademark nos. 265555B and 265556B, does not have an office within this court‟s jurisdiction. None of the plaintiffs have registered or branch offices in India or within this court‟s jurisdiction, while defendant no. 1 resides and conducts business in Tamil Nadu, making the suit in Delhi not maintainable.

4.10. The plaint has been signed and verified by Col. Retd. J.K. Sharma, who claims to be the constituted attorney of the plaintiffs. However, there is no board resolution or proper authorization presented to support this claim. Without proper authorization, the plaint is incompetent and liable for rejection under Order VII Rule 11(d) of Code of Civil Procedure (“CPC”)

1908. The suit cannot be maintained as the fundamental requirement of authorization has not been met.

4.11. No documents have been filed to show that the plaintiffs have sold any product in India under the trade mark „PENTA‟.

4.12. The defendants manufacture grease dispensers, high pressure washers for two and four wheelers, two wheelers hydraulic ramps, hydraulic trolley jacks, oil collectors, spark plug cleaners, axle stands, tyre inflators, spark plug cleaners, battery chargers and testers, among other products. The defendants are not engaged in the manufacturing or selling of the products related to marine engines, industrial and marine equipments, tools and accessories or mercantile products. Therefore, based on the admissions of both plaintiffs and defendants, it is evident that they do not operate in the same trade, either in manufacturing or selling.

4.13. Plaintiffs have not made any use of the trademark „VOLVO PENTA‟ in respect of any of the goods of their alleged manufacture or sale or alleged service. The trademarks „VOLVO‟ and „PENTA‟ have never been used in combination by the plaintiffs. Plaintiff no. 3 has not used the trademark „PENTA‟ for marine motors and or boats, and no substantial documents have been produced to prove their existence, usage, manufacture or sales.

4.14. Given the different product categories and trade channels, there is no possibility of misrepresentation or confusion among consumers. The goods covered by the respective trademarks are different, negating any likelihood of confusion.

5. I have heard learned counsels for the parties and have perused the record. Proceedings before the Court:

6. The present suit was filed and instituted on 19th March, 2007. Issues were initially framed on 12th July, 2010. During the pendency of the present suit, an application being I.A. No. 15864/2011 under Order VI Rule 17 CPC, for amendment of plaint, was filed on the ground that subsequent to the filing of the present suit, the plaintiffs had obtained multi-class registration of the trademark „VOLVO PENTA‟ and a certificate of registration was issued on 19th February, 2010. For this reason, the plea regarding such registration of the trademark in India was sought to be incorporated in the plaint. This Court vide order dated 30th September, 2011 allowed the aforesaid application by holding that a subsequent cause of action is being joined and that no new case is being made out. Thus, the plaint was allowed to be amended to include a cause of action of infringement of the mark „VOLVO PENTA‟ on account of its registration certificate being issued after institution of the suit.

7. Subsequently, this Court vide order dated 03rd February, 2012, allowed I.A. No. 14672/2011 filed on behalf of the plaintiffs, seeking amendment of issue nos. 4 and 5, as framed earlier on 12th July, 2010. Thus, on 03rd February, 2012, issues were amended by this Court. Thus, the final settled issues in the present case, as recorded in the order dated 03rd February, 2012, are as follows: “1. Whether this Court has territorial jurisdiction to entertain and try the present suit? OPP 1.(A) Whether the plaint is signed, verified, and instituted by a competent person on behalf of the plaintiffs? OPP

2. Whether the plaintiffs are the proprietors of the Trademark „PENTA‟ in respect of engines for cars, power systems for marine industrial applications? OPP

3. Whether the plaintiff No.2 is the subsequent registered proprietor of trademark „PENTA‟ in respect of Trademark Nos. 265555 and 265556 in class 7 and 12 respectively as alleged in para 15 of the plaint? OPP

4. Whether the use of trademark „PENTA‟ on part of the defendants in respect of machine and machine tools, machine couplings and belting, special tools, equipments, motors hardware etc. constitute an act of passing off? OPP

5. Whether the defendants have committed any acts of infringement of plaintiffs‟ registered trademark nos. 265555 in class 7 and 265556 in class 12 and 134891 in class 4, 7, 9, 11, 12, 17, 35, 36, 38, 41? OPP

6. Whether the plaintiffs are guilty of misrepresentation, suppression and making false statement as alleged in preliminary objections and if so to what effect? OPD

7. Whether the suit of the plaintiff is barred by the principles of delay, laches and acquiescence? OPD

8. Relief.”

8. The examination-in-chief and cross-examination of witnesses was conducted before the learned Local Commissioner. The trial was concluded on 18th July, 2019. Issue-Wise Findings and Analysis: Issue no. 1: Whether this Court has territorial jurisdiction to entertain and try the present suit?

9. The instant case concerns trademark infringement, dilution, passing off and unfair competition, damages, delivery up and costs.

10. The defendants have raised the objection regarding territorial jurisdiction of this Court. In this regard, it is to be noted that Section 134(2) of the Trademarks Act, 1999 provides that a suit for infringement of trademark can be instituted within local limits of the Courts in whose jurisdiction the plaintiff carries on business. In this regard, reference may be made to cross-examination of the plaintiffs‟ witness, PW-1, dated 08th February, 2018, wherein, it has been deposed as follows: “xxx xxx xxx

11. As per the evidence on record, Ex. PW-1/56, the plaintiffs have also shown that they have exclusive agents and dealers in Delhi.

12. Further, from the cross-examination of the defendants‟ witness, it is clear that their products are sold in Delhi. Reference may be made to cross examination of DW-1 dated 12th April, 2019, wherein, it has been deposed as follows: Q89) Do you know the name Mori Gate as an area in Delhi, India? Ans) Yes I know. Q90) Are some of the engineering automobile tool retailers located in Delhi in the Mori Gate area? Ans) One of our retailers is located in Mori Gate area.”

13. Additionally, documents have been produced in evidence indicating the territorial jurisdiction of this Court, which have been exhibited and marked, and which have been proved through oral testimony. The relevant documents are as follows: i. Certified copy of the telephone bill of Volvo India Pvt. Ltd. – Mark T. ii. Copies of orders placed by third parties on Volvo India Pvt. Ltd. in Delhi – Mark U. iii. Plaintiffs having exclusive agents and dealers in Delhi – Exhibit PW1/56.

14. Thus, it is clear that this Court has the territorial jurisdiction to entertain the present suit. Therefore, issue no. 1 is decided in favour of the plaintiffs and against the defendants. Issue no. 1(A): Whether the plaint is signed, verified, and instituted by a competent person on behalf of the plaintiffs?

15. As regards Issue no. 1(A), this Court notes that the plaint has been instituted by Col. (Retd.) J.K. Sharma, who is duly authorized by the plaintiff nos. 1, 2 and 3, to institute the present suit. The plaintiffs‟ witness, PW-1, has duly verified the signatures on the plaint as those belonging to Col. (Retd.) J.K. Sharma, in his affidavit-in-chief, PW-1A.

16. Further, PW-1, in his cross-examination has confirmed that he was aware of the signature of Col. (Retd.) J.K. Sharma and that he was the constituted attorney of the plaintiffs. The relevant portion of the crossexamination of PW-1 dated 27th April, 2017, is reproduced as under: Q.63 Have you produced any document to show that you were working with Col. Sharma at the same office of the Plaintiffs to be aware of his signature? Ans. I am aware of his signature. Q.65 Have you mentioned anywhere in your affidavit where was Col. Sharma working in 2003-2007? Ans. It is not mentioned in the affidavit that where Col. Sharma was working in 2003-2007. Vol. I am aware that Col. Sharma was the constituted attorney of the Plaintiff.

17. The fact that the suit was instituted by an authorized and competent individual, with the knowledge and approval of the plaintiffs, and that the actions of the constituted attorney have been duly ratified, is clear from express authority in favour of the constituted attorney, viz., the formal power of attorneys filed in the present proceedings. This Court also takes note of the fact that the prosecution of the suit has been done continuously by the plaintiffs for the last 17 years. Requisite Court fees have been duly paid in support of the plaint. Further, witness, PW-1, has been produced, who deposed on behalf of the plaintiffs and is an employee of Volvo India Pvt. Ltd.

18. In this regard, reference may be made to the judgment in the case of Kabushiki Kaisha Toshiba Versus Toshiba Appliances Co., 2024 SCC OnLine Del 5594, wherein, it has been held that in situations where no explicit authorization is evident and an officer of the Corporation has signed the pleadings, the Corporation has the ability to subsequently ratify the actions. Thus, it has been held, as follows:

59. The Court has examined the documents and oral evidence. While no specific onus of proof was assigned to this issue, the burden typically falls on the Plaintiff to demonstrate that the suit was signed, verified, and instituted by an authorized and competent individual. It cannot be disputed that a company like the Plaintiff can sue and be sued in their own name. As a juristic entity, a company necessarily acts through individuals authorized to represent its legal interests. Order XXIX Rule 1 of the CPC stipulates that in cases involving a corporation, the Secretary, any Director, or any other Principal Officer who is knowledgeable about the facts of the case is empowered to sign and verify pleadings on behalf of the company. As per Order VI Rule 14, a pleading is required to be signed by the party and its pleader, if any. When these two provisions are read in conjunction, it becomes clear that even in the absence of a formal authorization, such as a Letter of Authority or Power of Attorney, the designated officers enumerated in Order XXIX Rule 1 possess inherent authority to act on behalf of the corporation. This provision ensures that the practical realities of a corporate‟s operations are accommodated within legal procedures, allowing those who hold these offices to effectively represent the corporate entity in judicial processes. In addition thereto and de hors Order XXIX Rule 1 of the CPC, since a company is a juristic entity, it can duly authorise any person to sign the plaint or the written statement on its behalf, and this would be regarded as sufficient compliance with the provisions of Order VI Rule 14. In the case of United Bank of India v. Naresh Kumar and Ors., the Supreme Court held that beyond the stipulations of Order XXIX, a corporation may also specifically authorize any individual to sign pleadings and other legal documents. This can be achieved through explicit means such as a resolution passed by the Board of Directors or through the execution of a Power of Attorney. In situations where no explicit authorization is evident, and an officer of the corporation has signed the pleadings, the corporation has the ability to subsequently ratify these actions. Such ratification may be express, such as through formal corporate resolutions, or implied, discerned from the conduct and the context of the legal proceedings.

63. The Court, upon reviewing the evidence and considering the totality of the circumstances, particularly the conduct of trial, is empowered to infer that the corporation has ratified the actions of its officer who signed the pleadings. This interpretative flexibility ensures that technical lapses in formal authorization do not unduly hinder the substantive pursuit of justice, reflecting a pragmatic approach to corporate legal representation. Thus, keeping the Evidence Act in view, despite rigorous cross-examination by the Defendant challenging the legality of these ratifications, the Court finds PW1‟s testimony credible and sufficient to confirm that the initiation of the suit by Mr. Kensuke Norichika complied with the requirements of the CPC. Mr. Kensuke Norichika‟s association with the Plaintiff-company as an employee is undisputed and his authority to act on its behalf has been substantiated.

64. The longstanding engagement of the Plaintiff in the lawsuit, which has spanned over three decades, further supports the legitimacy of Mr. Kensuke Norichika‟s initial actions. The continuous appearance of witnesses on behalf of the Plaintiff, who have acknowledged Mr. Kensuke Norichika‟s role in initiating the suit, coupled with the express and implied ratifications through the ongoing prosecution of the case, reinforce the validity of his actions. This is also evidenced by the Plaintiff‟s payment of court fee, consistent submission of documentary and oral evidence, and active participation in the trial process throughout this period.

19. In the present case, power of attorneys in favour of Col. JK Sharma on behalf of the plaintiffs, have been filed, and marked as Mark A-C. The said documents duly stand proved during the course of evidence.

20. Accordingly, Issue no. 1A is decided in favour of the plaintiffs and against the defendants. Issue no. 2: Whether the plaintiffs are the proprietors of the Trademark ‘PENTA’ in respect of engines for cars, power systems for marine industrial applications?

21. The trademark „PENTA‟ was registered in India under registration nos. 265555 in Class 7 and 265556 in Class 12 in favour of AB Archimedes –Penta, since the year 1970. The same was duly assigned to plaintiff no.1, AB Volvo in the year 1975. The document pertaining to the same, as available on record, is reproduced hereunder:

22. AB Volvo assigned by way of an Assignment Deed dated 23rd March, 2001, Mark D, assigned the trademarks „VOLVO‟, including the mark „PENTA‟ to plaintiff no. 2. Hence, it is manifest that plaintiff no. 2 owns and maintains the trademark PENTA by virtue of the said assignment. A certified copy of application of Form TM – 28 filed before the Registrar of Trademarks to bring on record plaintiff nos. 1 and 3 as licensee of the trademark, is also on record, Mark E.

23. The various documents on record in support of the plaintiffs‟ registrations for the PENTA and VOLVO PENTA, have been duly exhibited and marked, and proved through oral testimony.

24. There are various documents on record comprising of invoices, purchase and consignment order, authorized dealer certificate evidencing the sale of plaintiff no. 1‟s product under the mark „PENTA‟ and „VOLVO PENTA‟ in India, dating back to the year 1998. The document, „Mark J‟, shows extensive use specifically for „VOLVO PENTA MARINE ENGINE‟, both prior to the incorporation of defendant no. 1 in the year 1998, since 1998, and even after the defendants commenced operations, i.e., in the year

2002.

25. Further, the cross-examination dated 04th May, 2018 of PW-1, is relevant, wherein, he has deposed, as follows: Q.148 Please point out which are the invoices you are relying upon to show import documents and to which company import has been done in respect of engines in the brand name PENTA in the proceedings? Ans: One of the document, Invoice No. R-72600 dated 15.05.2002 from page nos.1920 & 1921 (Mark J) (This document is now exhibited as Ex.PW-1/57). The other document, Invoice No. R- 73342 dated 11.08.1998 at page nos.2033 (Mark J) (This document is now exhibited as Ex.PW-1/58). The third document Ex.PW-1/25 at page no. 2288 and several others. Q.149 I put it to you that Ex.PW-1/57 is only the spare parts of the engine and not the engine as a whole. Ans: It is incorrect. Please refer the said document for details written as Volvo PENTA Industrial Engine and accessories. Q.150 Is Fly Wheel Clark an engine? Ans: The document describes contents of an engine therefore Fly Wheel is part of an engine. Q.151 I put it to you that Ex.PW-1/57 & Ex.PW-1/58 are only accessories to an engine and not an engine as a whole. Ans: It is incorrect. The document is for the engine with the detail bill of material of an engine describing the contents. Q.153 From the Ex.PW-1/57 & Ex.PW-1/58, can you tell me where was the engine and its accessories manufactured? Ans: The above said document is from Volvo PENTA Sweden and supplied to India. Q.154 I put it to you that Volvo PENTA industrial engine and accessories manufacturing unit, Pithampura is yet to start its manufacturing process and you are giving false evidence in the proceeding. Ans: It is incorrect. Q.155 When was the manufacturing unit started in Pithampura? Ans: It is between 2016 and 2017 for industrial versatile applications. Q.156 I put it to you that from 1970 no engines in the name of Volvo PENTA were supplied by the Plaintiff to any Indian company? Ans: It is incorrect. This brand is being used in India since 1970. Q.157 I put it to you that you don‟t have any records to show that engines in the brand name PENTA was supplied to any Indian customer or there was any commercial sale activity of engines in the name PENTA in India and you have not produced any documents in the proceedings. Ans: It is incorrect. There are several documents confirming the supply of PENTA engines under the brand name Volvo PENTA in India.

26. It is also pertinent to note that Ex. PW/Mark 1/25 shows the use for Volvo Penta Marine Engine spare parts since the year 1992. Reference may also be made to Ex. PW-1/33A, which are print outs of photographs of the plaintiff no.1‟s products being sold under the trademark „VOLVO PENTA‟. Further, Ex. PW-1/34A, are the internet extracts from the plaintiffs‟ website, www.volvomerchandise.com evidencing that the trademark „VOLVO PENTA‟ is used for various products.

27. Documents on record show that the marks PENTA and VOLVO PENTA have been advertised and promoted in India through brochures, sponsorships, etc. Reference in this regard is made to the following documents:

I. Original signed certificate showing sales figures of plaintiff no.1‟s products under the trademark „VOLVO PENTA‟ in India for the year 1999- 2010 - Ex. PW-1/25A.

II. Advertisements and articles published in various magazines and newspapers in India bearing the trademark „VOLVO PENTA‟ - Ex. PW- 1/30.

III. Attested copy/ certificate of the advertisement, publicity and marketing expenses of the VOLVO PENTA division in between the year 1997-2010 - Ex. PW-1/32.

28. It is to be noted that the plaintiffs‟ registrations marked as Ex. PW- 1/22A and Ex. PW-1/22B for the mark „PENTA‟ relate to boats and marine motors. Similarly, the plaintiffs‟ registration marked as, Ex. PW-1/23 for „VOLVO PENTA‟ pertains to engines, parts, tools, repair of machines, etc. „PENTA‟ is an essential feature of this registration. Therefore, plaintiffs‟ proprietorship of the said mark for the aforesaid class of goods, stands established.

29. The statutory registrations coupled with extensive and continuous use clearly illustrate that the plaintiffs‟ business under the mark extends to a range of applications, including, engines for cars, power systems and marine applications.

30. A bare perusal of Ex. PW-1/22A and Ex. PW-1/22B, reveals that plaintiff no. 2, VOLVO Trademark Holding AB, has been recorded as the subsequent registered proprietor of the „PENTA‟ and „VOLVO PENTA‟ marks pursuant to the trademarks office being satisfied about the Assignment Deed dated 23rd March, 2001, which has been identified as Mark D in the present proceedings. Further, as regards the registration for VOLVO PENTA, Ex. PW-1/23, the certificate for use in legal proceedings as filed qua the said marks, itself records plaintiff no. 2 as the registered proprietor of the mark.

31. Accordingly, Issue no. 2 is decided in favour of the plaintiffs and Issue no. 3: Whether the plaintiff No. 2 is the subsequent registered proprietor of Trademark ‘PENTA’ in respect of Trademark Nos. 265555 and 265556 in class 7 and 12 respectively as alleged in para 15 of the plaint?

32. The plaintiffs are the registered proprietors of the trademarks „PENTA‟ and „VOLVO PENTA‟, in the following manner:

┌───────────────────────────────────────────────────────────────────────────────────────────────────────────────┐
│                      Sl. Trademark Regis            Date     of Class Goods User      Valid Ex.               │
│                      No            No.              application       &       Detail  Upto                    │
│                                                                       service                                 │
│                                                                       details                                 │
├───────────────────────────────────────────────────────────────────────────────────────────────────────────────┤
│                      1.    PENTA        265555      09/07/1970 7      Marine Proposed 09/7/ PW-               │
│                                                                               To be   2025                    │
│                            (word)                                     Motors                1/22A             │
│                                                                               used                            │
│                      2.    PENTA         265556 09/07/1970 12         Boats. Proposed 9/7/            PW-     │
│                                                                              to    be 2025                    │
│                            (Device)                                                                   1/22B   │
│                                                                              used                             │
│ Signature Not Verified                                                                                        │
│ Digitally Signed          CS (COMM) 346/2018                                          Page 23 of 52           │
│ By:AMAN UNIYAL                                                                                                │
└───────────────────────────────────────────────────────────────────────────────────────────────────────────────┘

13. The Defendant has strenuously contended that the Defendant itself is using the word „MARINE‟ in a descriptive sense. This contention of the Defendant is denied and disputed by the Plaintiff. The Plaintiff has drawn the attention of this Court to the photograph at page 99 of the Plaint. This photograph shows that in addition to the words “JIVANJOR” and the words „MARINE PLUS‟, the Defendant has also used the words “„MARINE‟ PLYWOOD SPECIAL ADHESIVE” & “HEAT AND WATERPROOF ADHESIVE”. As submitted by the Plaintiff, this makes it clear that where the Defendant wishes to use words which are descriptive of its product, it has used the words “„MARINE‟ PLYWOOD SPECIAL ADHESIVE” & “HEAT AND WATERPROOF ADHESIVE”. Hence it is this description which is descriptive. The words “MARINE PLUS” are not descriptive but are used as a mark. In other words, what the Defendant is trying to convey to the members of the trade and the public is that the product in question is sold under the „MARINE‟ brand/sub-brand.

69. When the trademark of the defendant is identical with the registered trademark of the plaintiff and when the goods or services of the defendant are identical with the goods or services covered by the registered trademark, the Court shall presume that it is likely to cause confusion on the part of the public. (See: Renaissance Hotel Holdings Inc. Versus B. Vijaya Sai and Others, (2022) 5 SCC 1)

70. Documentary evidence shows that the mark „PENTA‟ has been used extensively across the world for nearly hundred years. In India, the mark has been in extensive and continuous use, for several years. The evidence on record shows extensive and continuous use in India since 1992. The various documents on record, which have been proved through oral testimony, establishing the immense goodwill and reputation of the marks, „PENTA‟ and „VOLVO PENTA‟ in India, are as follows: i. Invoices and purchase orders evidencing the sale of plaintiff no. 1‟s products under the trademark „VOLVO PENTA‟ – Exhibit PW1/24. ii. Invoices, purchase and consignment order, authorised dealer certificate evidencing the sale of plaintiff no. 1‟s product under the mark „VOLVO PENTA‟ in India, over the years, dating back to the year 1998 – Mark J. iii. Letters, invoices, purchase orders, consignment orders and documents which illustrate that plaintiff no. 1 has been carrying out business under the mark „VOLVO PENTA‟ and „PENTA‟ in India dating to back to 17th December, 1992 - Exhibit PW/Mark 1/25.

71. Further, the mark has been advertised and promoted in India through brochures, sponsorships and other diverse endeavours. Resultantly, the plaintiffs‟ goods and services under the mark „PENTA‟ and „VOLVO PENTA‟ are known amongst the larger section of the public. Relevant documents, as exhibited, are as under: i. Original signed certificate showing sales figures of plaintiff no. 1‟s product under the trademark „VOLVO PENTA‟ in India - Exhibit PW1/25A ii. Advertisements and articles published in various magazines and newspapers in India bearing the trademark „VOLVO PENTA‟ and illustrating use of the mark „VOLVO PENTA‟ - Exhibit PW1/30 iii. Attested copy/certificate of the advertisement, publicity and marketing expenses of the VOLVO PENTA Division (Division of Volvo India Pvt. Ltd.) in between the years 1997 – 2010 - Exhibit PW1/32 iv. Extracts from the website of the plaintiffs‟ website, which talks about the products of the plaintiffs under the mark „VOLVO PENTA‟ - Exhibit PW1/33 v. Printouts of photographs of the plaintiff no. 1‟s products being sold under the trademark „VOLVO PENTA‟ - Exhibit PW1/33A vi. Internet Extract from the plaintiffs‟ website evidencing that the trademark „VOLVO PENTA‟ is used for various products - Exhibit PW1/34A

72. The goodwill and reputation of the plaintiffs‟ goods and services under the mark „VOLVO PENTA‟ is also established from the fact that these marks are registered in various countries of the world and the products bearing these marks, are sold in various countries of the world, including, India. The documentary evidence on record, which has been proved during the course of evidence, is as under: i. Certified copy of the trademark registration certificate for the mark „PENTA‟ bearing no. 1590421 in the Japanese Jurisdiction in favour of plaintiff no. 2 - Exhibit PW1/20A ii. Translation of the certified copy of trademark registration certificate for the mark „PENTA‟ in the Japanese jurisdiction in favour of plaintiff NO. 2 – Mark G iii. Certified copy of the trademark registration certificates for the mark „PENTA‟ and „VOLVO PENTA‟ respectively in UK in favour of plaintiff no. 2 - Exhibit PW1/20C and Exhibit PW1/20D iv. Certified copy of trademark registration certificates for the marks „VOLVO PENTA‟ and „PENTA‟ respectively in USA in favour of plaintiff no. 2 - Exhibit PW1/20E and Exhibit PW1/20F v. Certified copy of trademark registration certificate for the mark „VOLVO PENTA‟ in the Japanese jurisdiction in favour of plaintiff no. 2 - Exhibit PW1/20G vi. Translation of the certified copy of trademark registration certificate for the mark „VOLVO PENTA‟ bearing registration no. 1016350 in the Japanese jurisdiction in favour of plaintiff no. 2 – Mark H vii. Copy of articles and advertisements published in various magazines and newspapers which deal with the plaintiffs‟ products under the mark „VOLVO PENTA‟ - Exhibit PW1/29

73. Accordingly, Issue nos. 4 and 5 are decided in favour of the plaintiffs and against the defendants. Issue no. 7: Whether the suit of the plaintiff is barred by the principles of delay, laches and acquiescence?

74. The burden of proving delay, laches and acquiescence, lay on the defendants. However, there is nothing on record to show that the suit by the plaintiffs is delayed in any manner or there is acquiescence on the part of the plaintiffs to the use of the mark „PENTA‟ by the defendants. Even otherwise, legal precedents clearly state that mere delay does not amount to acquiescence, unless accompanied by an act that indicates acceptance or encouragement of the infringing activities.

75. Thus, in the case of Pankaj Goel Versus Dabur India Ltd., 2008 SCC OnLine Del 1744, it has been held, as follows:

21. As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said „infringers‟ had significant business turnover or they posed a threat to Plaintiff's distinctiveness. In fact, we are of the view that the Respondent/Plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/Plaintiff business. The Supreme Court in National Bell v. Metal Goods, (1970) 3 SCC 665: AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., (1989) 7 PTC 14 it has been held as under:— “….To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks…. The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence… Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point… The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers…”

76. Reference may also be made to the judgment in the case of Dr. Reddys‟ Laboratories Ltd. Versus Reddy Pharmaceuticals Limited, 2004 SCC OnLine Del 668, wherein, it has been held as follows:

16. Learned counsel for the defendant has vehemently argued that the plaintiff is not entitled to this discretionary relief on account of its acquiescence and laches in objecting to the use of trade mark “Reddy” by the defendant company. It is submitted that since 1997 the plaintiff knew that the defendant is trading and functioning under the trade name “Reddy” but it never objected and to the contrary it kept on having business dealings with the defendant and appointed him a Delcredere Agent in April, 2003. This plea of the defendant is also prima facie untenable for the reason that till August, 2003 there was no clash of interests between the plaintiff and defendant company and in fact the defendant was engaged in advancing and promoting the business of the plaintiff company by acting as its agent for the sale of bulk drugs. The threat came in August, 2003 when the defendant introduced in the market its pharmaceutical preparations and thereby threatened the business interests of the plaintiff company. This move of the defendant was mala fide on the face of it as it was not manufacturing pharmaceutical preparations earlier but now it was trying to market the pharmaceutical preparations manufactured by others under the trade mark “Reddy”. The plaintiff immediately raised objections, meetings were held and when nothing came out the plaintiff rushed to the Court. As such there was neither any acquiescence nor any laches on the part of the plaintiff to object to the impugned action of the defendant. It cannot be said that the plaintiff has allowed the defendant to build a reputation or goodwill in trade name “Reddy” for use on pharmaceutical preparations. Moreover, the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of “Taj Hotel”, the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.

77. As regards acquiescence, this Court in the case of Kabushiki Kaisha Toshiba (Supra), has held as follows:

132. Acquiescence in legal terms refers to a situation where a party knowingly stands by, without raising any objection during the infringement of their rights, particularly when such inaction leads the infringing party to believe that the conduct is acceptable and can continue without opposition. Plaintiff‟s actions of diligent enforcement of rights, demonstrated by issuance of a cease-and-desist notice immediately upon gaining knowledge of the infringing activities, and engaging in opposition and rectification proceedings against all infringing applications or registrations by the Defendant, clearly shows active resistance rather than acquiescence. In this case, the Defendant has not provided sufficient evidence to demonstrate any positive act of encouragement by the Plaintiff that could be construed as acquiescence. Without such evidence, the defence of acquiescence cannot prevail. The Defendant has failed to show any positive act of encouragement by the Plaintiff that would constitute acquiescence.

78. Considering the aforesaid, issue no. 7 is decided in favour of the plaintiffs and against the defendants. Issue no. 6: Whether the plaintiffs are guilty of misrepresentation, suppression and making false statement as alleged in preliminary objections and if so to what effect?

79. As regards issue no. 6, the onus rested on the defendants, which the defendants have failed to prove. There is nothing on record to show that there is any misrepresentation or suppression on the part of the plaintiffs.

80. Accordingly, issue no. 6 is decided in favour of the plaintiffs and Issue no. 8: Relief

81. Considering the facts and circumstances of the present case, plaintiffs are held entitled for decree of permanent injunction restraining the defendants, their principle officers, partners, servants, representatives and agents and any of them from doing business, providing any service, manufacturing, selling, offering for sale, advertising, directly or indirectly doing business, under the trademark „PENTA‟.

82. The plaintiffs are held entitled to actual costs recoverable from the defendants in terms of Commercial Courts Act, 2015. The plaintiffs are accordingly directed to file their bill of costs within a period of six weeks from the date of the judgment. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.

83. The suit is decreed in the above terms.

84. Decree sheet be drawn up.

85. Accordingly, the suit, along with pending applications, is disposed of.

JUDGE JANUARY 20, 2025/ak/au