The court affirmed the validity of the plaintiffs' trademarks 'PENTA' and 'VOLVO PENTA', granting a permanent injunction against the defendants for infringement and passing off, emphasizing the marks' well-known status and extensive use.

JUDGMENT :

MINI PUSHKARNA, J.

1. The present suit has been filed seeking a decree of permanent injunction restraining infringement of registered trademark, passing off, dilution of trademark unfair competition, damages, delivery up, etc.

Facts of the Case:

2. The case, as canvassed by the plaintiffs, is as under:

2.1. The plaintiff nos. 1 to 3 ("plaintiffs") are companies organized under the laws of Sweden and are group companies of the reputed VOLVO group.

2.2. Plaintiffs are the registered proprietors of the trademarks “PENTA” and “VOLVO PENTA”. Plaintiffs'adoption of the name/mark PENTA dates back to 1913 and the plaintiffs first used "VOLVO PENTA" in the year 1964.

2.3. The trademark "PENTA" was registered in India bearing registration nos. 265555 in class 7 and 265556 in class 12 in favour of AB Archimedes- Penta, since the year 1970. The said trademarks were duly assigned to AB Volvo in the year 1975.

2.4. AB Volvo, by way of a Deed of Assignment on 26th February, 1999, assigned the rights, interests and title held by it in the trade marks that consist of or contain the word "VOLVO" including the device marks and the trade mark "PENTA" to affect a valid transfer of the trade marks to the assignee "Volvo Trademark Holding AB" (plaintiff no. 2).

2.5. Plaintiff no. 2 is the exclusive and sole beneficial owner of the "VOLVO" and more specifically the "PENTA" trademarks. Plaintiff no. 2 subsequently, vide Global License Agreement dated 28th February, 1999, licensed plaintiff nos. 1 and 3, the right to use the said trademarks in relation to their respective businesses.

2.6. AB VOLVO owns, and controls shares in various corporations and companies, which are together referred to as "Volvo Group." Volvo Car Corporation owns, and controls shares in various corporations and companies, which are referred to as the “Volvo Car Companies”. The "Volvo Group of Companies" and the "Volvo Car Companies" are collectively referred to as “VOLVO TM Companies”.

2.7. The plaintiffs'licensees and/other companies in the Volvo TM Companies manufacture goods and provide related services, throughout the world under the trademark "VOLVO."

2.8. The plaintiffs also use its registered trademark "VOLVO" as also its various permutations and combinations, thereof, for a number of goods and services, such as cars, buses, trucks, heavy vehicles, and merchandise goods.

2.9. 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.

2.10. The mark "PENTA" was first adopted by the plaintiffs in the year 1913, and "VOLVO PENTA" in the year 1965 and have been using the same continuously and extensively. The trademark "VOLVO PENTA" is a combination of the two marks "VOLVO" and "PENTA. The mark "VOLVO" is a Latin word, and the mark "PENTA" is a Greek word.

2.11. The mark "VOLVO PENTA" is used for engines and complete power systems for marine and industrial applications and has been extensively and continuously used by plaintiff no. 1 and its subsidiaries and related companies throughout the world, including, in India.

2.12. The trademark "VOLVO PENTA" and "PENTA" have come to be associated and recognized by both members of trade and public with only the goods and business of the plaintiffs on account of the extensive use, publicity, promotion and reputation vesting in the plaintiffs in conjunction with the marks.

2.13. The cause of action in the present suit first arose in the month of November 2006 when the plaintiff received information that the defendants had applied for registration of the trademark PENTA in class 7 in respect of “Machine and machine tools, machine couplings and belting etc”.

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