'Prima Facie Infringement Of Common Law Rights': Delhi HC Grants Ex-Parte Injunction In Trademark Infringement Suit By 'VOLVO'

Granting interim relief to owners of registered trademarks 'VOLVO' and 'FMX', the Delhi High Court has restrained Lamina Suspension Products Limited from using the the said trademarks or any other mark confusingly or deceptively similar to it, in relation to leaf springs and other parts used in the heavy vehicles or other goods or services, including on its websites, social media accounts and other third party websites.

Justice Jyoti Singh granted an ex-parte ad interim injunction to the plaintiffs who offered a wide spectrum of transportation related products and services with a strong foothold in luxury buses and related services.

"The act of the Defendant in using an identical mark as the Plaintiffs' registered trademarks 'VOLVO' and 'FMX' prima facie tantamounts to infringing the statutory and common law rights of the Plaintiffs. The Plaintiffs have made out a prima facie case. Balance of convenience lies in favour of the Plaintiffs and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted," the Court said.

The Plaintiff No. 1 namely Aktiebolaget Volvo had adopted the trade mark name VOLVO in the year 1915 and was an international automotive and transport vehicle group, today widely known in heavy commercial vehicles industry.

The Plaintiff No. 3 claimed to occupy a prominent position as producer and distributor of a premium range of cars that includes sedans, wagons, sports wagons, cross country cars and SUVs. Both the plaintiffs manufactured goods and provide related services throughout the world under the trade mark 'VOLVO'.

Observing that the act of the Defendant in using an identical mark as the Plaintiffs' registered trademarks 'VOLVO' and 'FMX' prima facie tantamount to infringing the statutory and common law rights of the Plaintiffs, the Court ordered thus:

"Accordingly, as an ex parte ad interim injunction, Defendant, its subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockists, representatives and anyone acting for or on its behalf are restrained 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, till the next date of hearing."

The development came in a suit filed for permanent injunction to restrain the Defendant from using the mark 'VOLVO' and 'FMX' or any other mark deceptively similar to the Plaintiffs' registered trademark.

It was argued on behalf of the plaintiffs that trade mark 'Volvo' had been declared as a well-known mark as defined under Section 2(l)(zg) of the Trade Marks Act, 1999 by a Division Bench of the Bombay High Court in case titled Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (India).

It was argued that the said trademark was recognized by the Trade Marks Registry and the VOLVO trade mark was inserted in the list of well-known marks.

It was also submitted that the plaintiffs became aware of the Defendant's activities during July, 2021, through credible market sources stating that the Defendant was engaged in manufacturing, selling, dealing, supplying and exporting a wide array of leaf springs and automobile leaf springs under the marks 'VOLVO' and 'FMX'.

The Court was apprised that further investigations revealed that the Defendants were supplying their infringing goods under the mark 'VOLVO' and 'FMX' across India via direct orders and also through e commerce portal IndiaMart.

Issuing notice in the suit, the Court directed defendant to file a statement of accounts and assets on affidavit within a period of two weeks.

The Court also restrained the Defendant from disposing of or dealing with its assets in a manner which may adversely affect the Plaintiffs' ability to recover damages, costs or other pecuniary remedies.

Case Title: AKTIEBOLAGET VOLVO & ORS. v. LAMINA SUSPENSION PRODUCTS LIMITED

Citation: 2022 LiveLaw (Del) 197

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