International automotive and transport vehicle group Aktiebolaget Volvo (Volvo) adopted the trademark/name VOLVO in 1915. Volvo Group is engaged in manufacturing and distributor of heavy commercial vehicles, heavy-duty trucks, premium range of cars that includes sedans, wagons, sports wagons, cross country cars, and SUVs under the trademark/name ‘VOLVO’.
In addition to its core business in the transportation and automotive sector, Volvo’s use of the VOLVO mark also extends to a wide range of ancillary products, services, and businesses. Volvo has created a diverse range of VOLVO merchandise goods which include stationery, bags, watches, clothing, and a range of other accessories which further enhances the brand visibility of its trademark, name, and house mark VOLVO.
Volvo has 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 an appeal titled Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (India), 1998 PTC (18) 47. Pursuant to this, the well-known status of the trademark VOLVO in India was recognized by the Trade Marks Registry and the VOLVO trademark has been inserted in the list of well-known marks.
One of Volvo’s group company is one of the largest medium to heavy-duty truck brands in the world. The said vehicles are stated to be sold and serviced in more than 130 countries all over the world. It also provides specific offers and aftermarket products and services in relation to the same.
The models of the trucks being provided worldwide by it include Volvo FH16, Volvo FH, Volvo FM, Volvo FMX, Volvo FE, and Volvo FL. The Company uses the trademark ‘FMX’ in relation to their renowned ‘VOLVO FMX’ trucks wherein the term ‘FMX’ denotes ‘Forward Control Medium Extreme’. Volvo has a trademark registration for the mark FMX in Class 12 in respect of ‘Trucks and their Integral Parts’
Sometime in 2021, Volvo through its market resources came to know that Lamina Suspension Products Limited (Lamina) is engaged in manufacturing, selling, dealing, supplying, and exporting a wide array of leaf springs and automobile leaf springs under the name/marks ‘VOLVO’ and ‘FMX’ identical to Volvo’s registered. Further investigations revealed that Lamina is supplying its infringing goods under the mark ‘VOLVO’ and ‘FMX’ across India via direct orders and also through the commerce portal IndiaMart.
Thereafter Volvo’s investigators contacted Lamina and ordered goods bearing the marks ‘VOLVO’ and ‘FMX’. The goods were delivered in Delhi and were confirmed on inspection to be non-genuine products that do not emanate from Volvo.
Volvo is under an apprehension that Lamina’s products are inferior in quality in comparison to Volvo’s original products
Consequently, Volvo approached the Delhi High Court seeking a decree of permanent injunction restraining Lamina from using Volvo’s name/trademarks ‘VOLVO’ and ‘FMX’ or any deceptively mark in relation to leaf springs and other parts used in the Volvo’s heavy vehicles or any other goods or services, in any manner and or passing off its products as emanating from Volvo.
The Court after hearing Volvo’s contention held that lamina’s act of using an identical mark as Volvo’s registered trademarks ‘VOLVO’ and ‘FMX’ prima facie tantamount to infringing the statutory and common law rights of Volvo.
The Court added that Volvo has satisfied the three prerequisites for grant of an ad-interim injunction and hence the court granted 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.
Lamina was further directed to file a statement of accounts and assets on affidavit within a period of 2 weeks from service of notice.
One Step Ahead!
Thereafter the Court went one step ahead of the normal Course and restrained Lamina from disposing of or dealing with its assets in a manner which might adversely affect Volvo’s ability to recover damages (as may be computable), costs, or other pecuniary remedies. This is a really significant relief as far as IP infringement matters are concerned. In the majority of IP infringement matters, damages are computed and awarded only at the stage of the final order, however, it has been often seen that the defendants dispose of the property, commence business under a new entity, transfer assets to the new entity by the time Final order/decree is delivered so that they don’t have to pay damages. However, if such an order is in effect, the defendant won’t be able to do so. Therefore, Plaintiffs should ideally include this in its prayers along with other reliefs in the application for Interim injunction as otherwise; it could become really difficult to recover damages after the final order.
