This case pertains to trademark infringement, passing off, dilution, and unfair competition involving the globally recognized trademarks "VOLVO" and "PENTA and objection of Territorial Jurisdiction.The plaintiffs alleged unauthorized use of their trademarks by the defendants, seeking a permanent injunction, damages, and other reliefs.

Background

• The plaintiffs, part of the VOLVO group, are globally reputed manufacturers of vehicles, engines, and related products.
• They are the registered proprietors of the trademarks "VOLVO," "PENTA," and "VOLVO PENTA," used for marine engines and industrial applications.
• The defendants were accused of using the trademark "PENTA" in their corporate name and products, allegedly leading to consumer confusion and trademark dilution.

Brief Facts of the Case

• The plaintiffs have been using "PENTA" since 1913 and "VOLVO PENTA" since 1964.
• These trademarks are registered in India and globally.
• In 2006, the plaintiffs discovered that the defendants had applied for registration of the trademark "PENTA" for goods in Class 7, overlapping with the plaintiffs' business.
• Despite legal notices in 2006, the defendants continued using "PENTA" in their corporate name and products, prompting the plaintiffs to file the suit in 2007.

Issues Raised

• Does the Delhi High Court have territorial jurisdiction to entertain the suit?
• Are the plaintiffs the registered proprietors of the trademark "PENTA"?
• Does the defendants' use of "PENTA" constitute trademark infringement or passing off?
• Are the plaintiffs guilty of delay, laches, or acquiescence in filing the suit?

Plaintiffs' Submissions: The trademarks "VOLVO PENTA" and "PENTA" are well-known and have been extensively used and promoted globally. The defendants' use of "PENTA" in their corporate name and products creates confusion and constitutes trademark infringement and passing off. The plaintiffs' statutory and common law rights in the trademarks should be protected.

Defendants' Submissions: "PENTA" is a generic term and cannot be monopolized by the plaintiffs. The defendants operate in a different business domain (special service tools for vehicles) and do not compete directly with the plaintiffs. The plaintiffs' delay in filing the suit indicates acquiescence, barring their claims.

Judgments Referred and Their Context:Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018 SCC OnLine SC 1): Highlighted the necessity of rectification proceedings to challenge trademark validity.Automatic Electric Ltd. v. R.K. Dhawan (1999 SCC OnLine Del 27): Established that a party cannot claim a mark as generic if they have sought proprietary rights over it.Century Traders v. Roshan Lal Duggar (1977 SCC OnLine Del 50): Emphasized that mere registration does not prove usage; actual use must be demonstrated.Kabushiki Kaisha Toshiba v. Toshiba Appliances Co. (2024 SCC OnLine Del 5594): Discussed the authority of a corporate representative to institute legal proceedings.

Reasoning of the Judge: Territorial Jurisdiction: The plaintiffs established their business presence in Delhi, including agents and dealers, satisfying the jurisdictional requirements under Section 134(2) of the Trade Marks Act, 1999.Ownership of Trademarks: The plaintiffs provided extensive documentary evidence of their registrations and use of "PENTA" and "VOLVO PENTA" since 1970, predating the defendants' use.Infringement and Passing Off: The defendants' use of "PENTA" in Class 7 goods, similar to the plaintiffs' domain, was likely to confuse consumers and dilute the plaintiffs' trademark.Delay and Acquiescence: The plaintiffs' consistent opposition to the defendants' trademark applications and legal notices negated any inference of acquiescence.

Decision: The court ruled in favor of the plaintiffs: The defendants were restrained from using "PENTA" or any deceptively similar mark.The plaintiffs' ownership of the trademarks was upheld. The court directed the defendants to deliver up infringing materials for destruction and awarded costs to the plaintiffs.

Case Title: Aktiebolaget Volvo & Ors. vs. R. Venkatachalam & Anr.
Date of Order: January 20, 2025
Case No.: CS (COMM) 346/201
Neutral Citation: 2025:DHC:284
Name of Court: Delhi High Court
Judge: Hon'ble Ms. Justice Mini Pushkarna

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539