India: "VOLVO" For Ice-Cream Disallowed

Last Updated: 6 June 2011
Article by Sonam Lhamu Bhutia and Vasundhara Kamath S

The recent case of Aktiebolaget Volvo & ors v. Vinod Kumar & ors. involved the question of whether Vinod Kumar (Defendants) could be held guilty of infringement or passing off by selling its ice-creams under the Plaintiffs brand name "VOLVO".

Aktiebolaget Volvo, the Plaintiffs were the registered proprietors of the well known mark "VOLVO" and had been using their mark since 1915. They had registered their mark in 1975 and had thereafter registered it in respect of 20 classes of goods including buses, automobile parts as well as belts, etc and had been using it as its trademark and trade-name.

It was contended by the Plaintiffs, that on account of being long and consistent users of the mark, it had attained a certain distinctiveness. Besides, the mark was symbolized with goods of great quality and reliability. The Plaintiffs also alleged that they had guarded their mark successfully and had, in the past, taken up actions against third parties who had illegally attempted to adopt and misuse their mark in respect of different products.

In February 2009, they had come across the ice-cream being sold by the Defendants. The Defendants had also been using the Trade Mark "VOLVO" as part of their trading style. Hence, the Plaintiffs filed suit for permanent injunction on account of infringement as well as an action for passing off and had also filed an application under Order XXXIX Rules 1 and 2 for ad interim stay against the Defendants.

The Court noted, prima facie, that a compromise to bring to an end the use of the said Trademark had failed since the Defendants wanted to be compensated for the stationery which they had been using. It was of the opinion, after investigation, that the stationery had been very insignificant and that the Defendants ought not to have insisted on payment.

The Court also took note of the decision in Aktiebolaget Volvo v. Volvo Steels Ltd. 1998 PTC (18) DB 4773 wherein it was held that though "VOLVO" was a Latin word meaning 'rolling', it could not be considered to be a descriptive word since hardly anyone in India knew Latin.

The Court hence held that the question to be considered was whether the defence of the Defendants was valid.

The first ground of the Defendants was that the Plaintiffs had no cause of action as they were not the registered proprietors of the mark "VOLVO" in the class under which their product fell. They relied on the case of Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd & Ors 145 (2007) DLT 76, wherein the question had been with regard to the use of the expression 'sugar free' by the Defendants, while it had been registered by the Plaintiffs. The Court had been of the opinion that sugar free was used in a descriptive and laudatory sense rather than as a trademark. While putting certain restrictions on the Defendants in the use of the term, the Plaintiff was asked to tolerate some degree of confusion since it was inevitable owing to the widespread use of the term.

However, the Court differentiated the facts of the two cases and opined that unlike sugar-free, the term "VOLVO" was not generic and hence the decision laid down in that case was inapplicable.

Several cases where considered where the trademark or trade-name had been restrained from being used for products unconnected with the product of the proprietor in respect of which the trademark had been registered.

The second contention of the Defendants had been with regard to Section 29 (4) (a) to (c). The Court found no merit in the contentions since it was clear that the act of the Defendants fell under Section 29 (4) (c). It held that the acts of the Defendants led to the dilution of the Plaintiffs' trademark and trade-name since it gave an impression that its product belonged to the same family of Companies which manufactured the quality products in different fields.

The Defendants also prayed that they had been using the mark for the past fifteen years and that no restraint order deserved to be passed since action had been brought by the plaintiffs belatedly. It was also claimed that there was no material on record to show confusion. The Court dismissed the various decisions presented by the Defendants in order to substantiate their contention, stating that the facts in the cases were different.

The Court further considered that the Plaintiffs had been able to make out a prima facie case, especially since they were the registered proprietors of "VOLVO" in respect of various categories of goods. The term VOLVO, the Court held, was not generic by any stretch of imagination, since it was Latin. The Court accepted that the Plaintiffs had acquired a certain amount of distinctiveness and reputation with regard to the mark and hence its infringement or dilution could not be permitted with a slight variation of the trade dress in respect of dissimilar products. It was found that the balance of convenience in favour of the Plaintiffs and they would suffer irreparable loss if the Defendants were not restrained. On account of all the above mentioned factors the Court restrained the Defendants from using the trademark and trade-name "VOLVO" in any of its forms for manufacturing, distributing or selling its product.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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