Infringement of well-known trademarks under the Trade Marks Act, 1999 and the grant of permanent injunction and damages as remedies.

JUDGMENT :

Amit Bansal, J.

I.A. 18815/2022 (Ch. 15A R-1 of DHC (Original Side) Rules)

1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the marks of the plaintiffs, passing off their goods as that of the plaintiffs’ and other ancillary reliefs.

PLEADINGS IN THE PLAINT

2. The case set up by the plaintiffs in the plaint is as follows:

2.1 The plaintiff no. 1, Aktiebolaget Volvo, plaintiff no. 2, Volvo Trademark Holding AB and plaintiff no. 3, Volvo Car Corporation (hereinafter collectively referred to as “the plaintiffs”), incorporated under the laws of Sweden, have their core business in transportation and automotive sector, including the business of manufacturing spare parts, accessories and ancillary parts for vehicles under the mark ‘VOLVO’.

2.2 The plaintiff no. 1, incorporated on 5th May, 1915, executed a global deed of assignment in favour of plaintiff no. 2, who became the subsequent proprietor of the plaintiffs' mark ‘VOLVO’ and subsequently licensed the use of the mark ‘VOLVO’ to the plaintiffs no. 1 and 3 in relation to their respective businesses.

2.3 The plaintiff no. 1 is an international automotive and transport vehicle group and employs approximately 1,15,000 persons worldwide. The plaintiff no. 1 provides a wide spectrum of transportation related products and services, with superior quality and high standards of safety and environmental care to customers.

2.4 The plaintiffs established an Indian flagship company, Volvo India Pvt. Ltd., in 1996 and launched two car models in India in 2007. The plaintiffs have sold a large number of cars in India. It has sold close to 2029 cars in India by the year 2017 alone, whereas global sales of cars stood at 571, 577 by 2017. The plaintiffs have also incurred an extensive amount in promoting and advertising their goods and services.

2.5 The plaintiffs are the registered proprietor of the mark ‘VOLVO’ and ‘VOLVO’ formative marks in Class 12 and various other Classes of the Trade Marks Act, 1999 (hereinafter ‘the Act’). The earliest registration for the word mark ‘VOLVO’ in India dates back to the year 1975. Details of registrations of the plaintiffs’ ‘VOLVO’ marks in India are mentioned in paragraph 10 of the plaint. The said marks of the plaintiffs are also registered by the plaintiffs in various foreign countries.

2.6 The plaintiffs’ ‘VOLVO’ marks have acquired the status of ‘well-known trademarks’ within the meaning of Section 2(1)(zg) of the Act, which fact is recognised in the judgment of Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat (India), (1998) 18 PTC 47. Further, this Court has passed several orders restraining other defendants from infringing ‘VOLVO’ marks of the plaintiffs.

2.7 In August 2018, the plaintiffs became aware of the defendant no. 1 and 2's activities when the plaintiffs came across the advertisements and sale of the bicycles by the defendants no. 1 and 2 under the mark ‘VOLVO’.

2.8 The defendant no 1 is a director of the defendant no. 2, Road Master Autotech Private Limited, a company incorporated under the laws of India. The defendant no 2 is engaged in the business of manufacturing and selling bicycles under the trademarks Runner, Launcher, Dragon, Monster and ‘VOLVO’.

2.9 The investigation conducted by the plaintiffs revealed that the defendants no. 1 and 2 are infringing the mark ‘VOLVO’ of the plaintiffs. The defendant no. 2 offers their products for sale on their website www.roadmasterindia.com as well as on third party merchant platforms like www.indiamart.com. These products are also available for sale in various brick and motor stores through distributors of the defendant no. 2.

2.10 The defendant no. 4 is a partnership firm, M/s Magma Bikes, which is engaged in the business of manufacturing bicycles and bicycle spare parts under various brand names including the mark ‘VOLVO’. The defendant no 3, Mr. Punjit Singh, is involved in managing business of the defendant no 4. The pro