Back
2006 Supreme(Del) 303
High Court Of Delhi
AKTIEBOLAGET VOLVO - Appellant
Versus
V.N.PRASAD - Respondent
Decided On : 02/16/2006
The main legal point established in the judgment is that the defendants' use of a deceptively similar trademark amounted to passing off, leading to the award of punitive damages and a decree for permanent injunction in favor of the plaintiffs.
Headnote:
TRADEMARK - Infringement of trademark VOLVO - Indian Trade and Merchandise Marks Act, 1958 - Summary of the acts and sections referenced and discussed by the court: Indian Trade and Merchandise Marks Act, 1958, Section 2(1)(zb), Section 27, Section 29, Section 29(4) - The court discussed the ownership and registration of the trademark VOLVO, infringement, passing off, and quantification of damages under the Indian Trade and Merchandise Marks Act, 1958.
Fact of the Case:
The plaintiffs filed a suit for permanent injunction for restraining infringement of trademark VOLVO, passing off, damages, and delivery up. The defendants were found to be using the trademark VOLVO or VOLWO, which was deemed to be infringing the plaintiffs' trademark.
Finding of the Court:
The court found that the defendants' use of the trademark VOLVO or VOLWO was intended to ride piggyback on the goodwill and reputation of the plaintiffs, and thus, the plaintiffs were entitled to a decree of permanent injunction and damages.
Issues: The issues involved infringement of trademark, passing off, and quantification of damages.
Ratio Decidendi: The court held that the defendants' use of the trademark VOLVO or VOLWO amounted to passing off the plaintiffs' goods and services, and awarded punitive damages to deter such unlawful activities.
Final Decision: A decree for permanent injunction was passed in favor of the plaintiffs, restraining the defendants from using the trademark VOLVO or VOLWO or any other deceptively similar mark. The plaintiffs were also awarded damages of a sum of Rs 2 lakh, along with costs.
( 1 ) CS (OS) No. 254/2004 The plaintiffs have filed a suit for permanent injunction for restraining infringement of trademark, passing off, damages, delivery up, etc in respect of the trademark VOLVO or any other deceptively similar trade mark and for damages.
( 2 ) THE plaintiffs are engaged in the business of assembly of cars and truck since 1927-28. The plaintiffs adopted the word VOLVO, which is stated to be rare Latin word both as a trademark and a trade/corporate name. This name is stated to be an invented mark as it has no obvious meaning nor is it found in any authoritative dictionary of the English language. The mark has been registered in various countries of the world. The plaintiff states that this mark VOLVO acts as a source identifier as it stands for the high standards and superior quality of goods manufactured by the plaintiffs and sold all over the world. The significance of the brand is sought to be substantiated by stating that two reputed authorities on brands i. e. the world s Greatest Brands edited by nicholas Kocham and brands, an International Review have ranked the trademark volvo amongst he few well known trademarks.
( 3 ) ON 26. 02. 1999, the plaintiffs are stated to have assigned by way of Global deed of Assignment, the rights, interests and title in the trademark VOLVO as also the trademark PENTA to plaintiff no. 2. The Plaintiffs no. 1 and 3 are stated to be shareholders in equal proportions in Plaintiff no. 2.
( 4 ) THE plaintiffs are stated to have entered into a Supplementary Deed of assignment in respect of trade mark on 23. 03. 2001 so as to meet with the requirements of Indian Trade and Merchandise Marks Act, 1958. In view of the documents executed Plaintiff no. 2 is stated to have right to monitor and control the quality of the goods and services of its licensees and is the exclusive and sole beneficial owner of the trademark VOLVO. The trade mark is also stated to be registered in India since 1975 in Class VII and XII dealing with marine engines, aircraft engines etc. and land vehicles and parts thereof respectively. These trademarks are stated to be still subsisting.
( 5 ) THE plaintiffs are stated to be worldwide known as the VOLVO Group of companies and plaintiff no. 3 occupies a prominent position as a car producer within its segment and are leaders in their business.
( 6 ) IN order to commercially exploit the trademark, the plaintiffs claim to have created a range of VOLVO merchandise to support plaintiffs car business. These are in the shape of belts, buckles, bags, watches, pens, clothing and a range of other accessories. Volvo companies have various subsidiary companies throughout the world and is stated to have large presence in India. They are stated to have five wholly owned subsidiaries in India and the worldwide sales of the plaintiffs are in millions of Swedish Kroners. The trademark VOLVO of the plaintiffs has been advertised in India and abroad in various well known newspapers and journals and VOLVO has been sponsoring various international sports events. This has been done since 1973 in India.
( 7 ) DEFENDANT no. 1 is stated to be operating its business under the name and style of Defendant no. 2 and is engaged in the travel trade. In July 2002, the plaintiffs came to know that the defendants had advertised in a travel tourist guide about the tourist bus operated by them as indian Volvo and the trademark volvo was exhibited on their buses. On investigation, it was revealed that defendant no. 2 was partnership firm owned and operated by three brothers including defendant no. 1 who were owning the buses. A legal notice was sent by the attorneys of the plaintiffs dated 14. 09. 2002 and a reminder dated 09. 12. 2002. But there was no answer from the defendants.
( 8 ) IT appears that due to the said legal notice all that the defendants did was to change their mark from VOLVO to VOLWO. It is stated that despite this change, there is infringement of
