JUDGMENT

I.A. 1921/2023 (O-XIII A R-2, 3 & 6 of CPC for Summary Judgment) &

CS(COMM) 198/2022

1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks 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. Plaintiff no.1, AB 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 trademark „VOLVO‟.

2.2. 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‟ trademark „VOLVO‟ and subsequently licensed the use of the trademark „VOLVO‟ to plaintiffs no.1 and 3 in relation to their respective businesses.

2.3. Plaintiff no.1 is an international automotive and transport vehicle group and employs approximately 1,15,000 persons worldwide. 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 their first „VOLVO‟ bus in India in 2001, followed by two car models in 2007. Plaintiffs sold almost 1361 cars in India in the year 2020.

2.5. The plaintiffs are the registered proprietor of the trademark „VOLVO‟ and „VOLVO‟ formative marks in Classes 1, 2, 16, 37 and various other Classes of the Trade Marks Act, 1999. The earliest registration for the word mark „VOLVO‟ dates back to the year 1977. Details of the trademarks registrations of the plaintiffs‟ „VOLVO‟ marks in India have been tabulated at page no. 145 to 148 of the plaintiffs‟ documents filed with 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 Trade Marks Act, 1999, which fact is recognised in the judgment of Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat (India), (1998) 18 PTC 47. 2.7. The plaintiffs are the registered domain name holders of the website, „www.volvobuses.com‟ and „www.volvobuses.in‟ catering to their segment of customers in India with the „.in‟ domain name. Additionally, the plaintiffs also hold the registration of the domain name „www.volvotrucks.in‟.

2.8. Defendant no.1, Volvo White Paints Industries, is believed to be a partnership firm comprising the defendant no.2 and defendant no.3 (hereinafter collectively referred to as „the defendants‟).

2.9. In September, 2021, the plaintiffs got the knowledge that the defendants through the defendant no.1 were engaged in the business of manufacturing, dealing, selling/supplying products like wall putty, tile adhesive, LWC, Gypsum plaster etc., under the trade name „Volvo White Paints Industries‟. Pursuant thereto, the plaintiffs availed the services of an investigator in September - October 2021, to ascertain the business activities of the defendants as mentioned on their website.

2.10. The investigation confirmed that the defendants are infringing the plaintiffs‟ registered and „well-known trademark‟ „VOLVO‟ as a part of their trade name „Volvo White Paints Industries‟ and in relation to their business activities. The defendants also operate the impugned domain name „www.volvowhite.com‟, which displays and use the mark, as part of its trade name and uses the plaintiffs‟ mark in the meta-tags associated with the domain name, source code of the website hosted on the domain name. The