Full Text
HIGH COURT OF DELHI
Date of Decision: 30th September, 2024
AKTIEBOLAGET VOLVO & ORS. .....Plaintiffs
Through: Ms Vaishali Mittal and Mr Karan, Advocates.
Through: Mr Saurabh Suman Sinha, Advocate.
& 3 of CPC)
JUDGMENT
1. The present suit has been filed by the plaintiff seeking relief of permanent injunction restraining the defendant from infringing and passing off the trade mark of the plaintiff, in respect of the mark ‘VOLVO’ along with other ancillary reliefs.
BRIEF FACTS
2. The plaintiff no.1 [‘AB Volvo’], plaintiff no.2, [‘Volvo Trademark Holding AB’], plaintiff no.3 [‘Volvo Car Corporation’] and plaintiff no.4, [‘Volvo Trucks Corporation’] (hereinafter collectively referred to as the “Plaintiffs”), are companies incorporated under the laws of Sweden having their core business in transportation and automotive sector, including the business of manufacturing spare parts, accessories and ancillary parts for vehicles.
3. Plaintiff no.1 is a world leader in heavy commercial vehicles such as trucks, buses, and construction equipment, as well as in drive systems for marine and industrial applications. Plaintiff no.1 is stated to have established a flagship company namely Volvo India Pvt Ltd. in India in 1996.
4. Plaintiff no.3 produces and distributes a premium range of cars that includes sedans, wagons, sports-wagons, cross country cars and SUVs with the mission to be the world’s most progressive and desired premium car brands with a strong commitment to safety, quality and the environment. Plaintiff no.3 launched two car models i.e., Volvo S80 and Volvo XC90 in India in September 2007 and carries on business in India through its subsidiary Volvo Auto India Pvt Ltd.
5. Both the plaintiffs no.1 and 3 manufacture goods and provide related services throughout the world under the trademark and trade name ‘VOLVO’.
6. The plaintiffs are stated to have commercially launched their first ‘VOLVO’ bus in India in the year 2001 and have over time introduced technological advancements which have developed the transportation economy and redefined bus technology in India. Furthermore, the plaintiffs are also stated to have created a diverse array of ‘VOLVO’ merchandise goods which include stationary, bags, watches, clothing, and a range of other accessories which also enhance the brand visibility of the plaintiffs’ trademark, trade name and house mark ‘VOLVO’.
7. Plaintiff no.4 started its operations in India in the year 1998. It is stated that the plaintiff no.4 is one of the largest sellers of medium to heavyduty trucks in the world and over the last twenty years, it has come to be known for providing premium transport solutions to its customers with technologically advanced trucks supported by a highly competent and committed team of professionals.
8. The models of the trucks being offered by the plaintiff no.4 in India includes ‘Volvo FMX’, ‘Volvo FM’, ‘Volvo FH’ and ‘Volvo FH-16’.
9. The plaintiffs are the registered domain name holders of the website, www.volvo.com. It is stated that the website provides an online gateway to interested consumers and members of the trade about various business activities and initiatives undertaken by the plaintiff group of companies. The plaintiffs are also registrants of the domain names, www.volvobuses.in, www.volvotrucks.in, www.volvocars.com and www.volvoce.com which specifically cater to customers in India.
RIGHTS OF PLAINTIFFS IN ‘VOLVO’; VOLVO FORMATIVE AND ‘FMX’ MARKS
10. Plaintiff no.1 is stated to have adopted the trademark/corporate name ‘VOLVO’ on 5th May, 1915.
11. The plaintiffs have secured numerous registrations for the ‘VOLVO’ and ‘VOLVO’ formative trade marks in various classes in India, including in classes directly relevant to the present proceedings, which are set out in paragraph 13 of the plaint.
12. In addition to the above, the plaintiff no.4 is also the registered proprietor of the word mark ‘FMX’ in Class 12 vide Registration NO. 1870312 which is valid and subsisting as on date.
13. The list of the plaintiffs’ registrations for the ‘VOLVO’ and ‘FMX’ trade marks in India has been tabulated in the plaint.
14. Plaintiff no. 4’s trade mark ‘FMX’ is used in relation to their renowned ‘Volvo FMX’ trucks. The term ‘FMX’ is stated to denote ‘Forward Control Medium Extreme’. ‘Volvo FMX’ trucks are multi-purpose trucks which cater to construction, distribution and highway/off-highway transport activities.
15. The plaintiffs’ trade mark ‘VOLVO’ has been recognized as a wellknown trade mark in India by the Trademarks Registry pursuant to the judgment delivered by the Division Bench of the Bombay High Court in Aktiebolaget Volvo v. Volvo Steel Ltd. [1998 PTC (18) 47].
16. It is averred in the plaint that plaintiffs spend substantial amount of money every year towards the promotion, publicity, and advertisement of their business under the trade mark/trade name ‘VOLVO’. It is stated that, in 2017, the promotional expenses incurred by the plaintiff no.1 globally was around 1,449 million SEK. It is further averred in the plaint that the worldwide promotional expenses undertaken by the plaintiff no. 3 for the same period was 9,279 million SEK.
17. It is stated in the plaint that the plaintiffs have sold 6,61,713 cars under the trade mark ‘VOLVO’ globally, whereas in India the sales of cars under the VOLVO trade mark/ name were around 1,360 cars in the year
2020. It is averred in the plaint that the plaintiffs have sold 1,23,000 trucks in the year 2021 bearing the ‘FMX’ mark across the world, of which 10,000 were sold in India alone.
18. The defendant is Lamina Suspension Products Ltd., a public limited company which was incorporated on 26th November, 1975, having its registered office located at: 8th Floor, Ram Bhavan Complex Kadambari, Mangaluru-575003, Karnataka, India.
19. It is the plaintiffs’ case that it first came to know in July 2021, through credible market sources, that the defendant herein is engaged in manufacturing, selling, dealing, supplying and exporting a wide array of leaf springs and automobile leaf springs under the name/ marks ‘VOLVO’ and ‘FMX’, which are identical to the registered trademarks of the plaintiffs.
20. It is averred in the plaint that internet searches conducted on the defendant also led to the discovery that the defendant also maintains a profile on the online merchant portal ‘IndiaMart’. It was noted that the defendant was displaying a product under a category: ‘VOLVO TRUCK LEAF SPRING’.
21. It is averred that on a perusal of the ‘IndiaMart’ platform, it was noticed that leaf springs bearing the name ‘VOLVO TRUCK LEAF SPRING’ was being offered for sale by the defendant. The aforesaid investigation confirmed that the defendant herein is engaged in the manufacture, sale, supply of a wide array of leaf springs and automobile leaf springs under the name/marks ‘VOLVO’ and ‘FMX’, identical to the name/registered trademarks of the plaintiffs.
PROCEEDINGS IN THE SUIT
22. Vide order dated 8th March, 2022, an ex-parte ad-interim injunction was granted by this Court, restraining the defendant from using the plaintiffs’ name/trademarks ‘VOLVO’ and ‘FMX’ and/or any name/mark confusingly or deceptively similar thereto, in relation to leaf springs and other parts used in the plaintiffs’ heavy vehicles or any other goods or services, in any manner, including on its websites including www.laminasprings.com and www.laminasuspension.com, social media accounts, third party websites including but not limited to www.indiamart.com or any representation made online by the defendant, its affiliates, subsidiaries and anyone acting for or on its behalf.
23. During the pendency of the proceedings on 3rd May, 2024, the counsel appearing on behalf of the defendant came up with a proposal. Terms of which are set out below which was prima facie acceptable to the counsel of the plaintiffs.
PROPOSAL PUT FORTH BY THE DEFENDANT
24. The defendant has proposed the following description as alternatives to be used on leaf springs: Vehicle Model Proposed display Option 1 Option 2 VOLVO FMX 400 VV 400 VO 400 VOLVO FMX 440 / VV 440/460 VO 440/460 VOLVO FMX 500 VV 500 VO 500
25. The name / trademark ‘VOLVO’ thereby is not going to be used on the leaf springs itself. i. On any other material (brochures, advertisements etc.) where the name of the vehicle is required to be used, the same shall be used in the following manner: a. Preceding the make and model of the vehicle will be the suffix “adapted to be used in” b. Below the description of the product, the expression “We have no trade connection with Volvo” will be used. ii. The plaintiffs are agreeable to the aforementioned descriptive use as regards the use of the mark ‘VV’ and the language proposed as is set out in paragraph hereinabove.
26. In addition to the above, the defendant is agreeable to pay Rs.5,00,000/-.
27. Subsequently, I.A. 36385/2024 was filed on 9th August, 2024 on behalf of the plaintiff under Order XIII-A Rule 2 and 3 of the Code of Civil Procedure, 1908 seeking a summary judgment in the present suit.
28. The following reliefs were claimed in the of the aforesaid application: “i. Pass a summary judgment in favour of the Plaintiffs in the present suit; ii. A decree for permanent injunction be passed in favour of the Plaintiffs, in terms of Prayer Clause 79 of the Plaint and in terms of Option 1 set forth in paragraph 19 (i) –(iv); iii. Any such order as this Hon’ble Court may deem fit and proper in the facts and circumstances of the present case.”
29. A reply affidavit has been filed on behalf of the defendant wherein the defendant has stated that the terms contained in paragraph 19(i) to 19(iv) of the aforesaid application filed by the plaintiff reflects the terms of settlement proposed on behalf of the defendant. Hence, the defendant is agreeable to disposal of the present suit in terms of contents of paragraph 19(i) to 19(iv), where the defendant shall exercise option 1 in paragraph 19(i) of the application.
30. In view of the above, the present application is allowed and a summary judgment is passed in terms thereof.
RELIEF
31. A decree of permanent injunction is passed in favour of the plaintiffs in terms of paragraph 79 (i) of the plaint.
32. Further, a decree is passed against the defendant to the following effect in terms of prayer 21 (ii) of the application [IA 36385/2024] as under: a. The defendant on its the leaf spring products will not use the mark ‘VOLVO’ or ‘FMX’; b. The defendant will use the following descriptive text on leaf spring products meant for use in VOLVO vehicle Vehicle Model Proposed display Option 1 VOLVO FMX 400 VV 400 VOLVO FMX 440/460 VV 440/460 VOLVO FMX 500 VV 500 c. On any other material (brochures, advertisements etc.) where the name of the vehicle is required to be used, the same shall be used in the following manner: i. Preceding the make and model of the vehicle will be the suffix “adapted to be used in” – “Adapted to be used in VOLVO FMX 400”; ii. Below the description of the product, the expression “We have no trade connection with Volvo” will be used. d. The defendant to pay INR 5,00,000/- towards damages and costs.
33. The parties shall remain bound by the terms mentioned above.
34. Let the decree sheet be drawn up on above terms.
35. All pending applications are disposed. AMIT BANSAL, J SEPTEMBER 30, 2024