Selling Products on E-commerce with false branding ?

AKTIEBOLAGET VOLVO & ORS. V. LAMINA SUSPENSION PRODUCTS LIMITED

Facts

In this case, plaintiff is a manufacturing company of heavy vehicles and related goods and services, who filed an application under Order 39, Rule 1 & 2 with Section 151 of Code of Civil Procedure, for grant of ex-parte ad interim injunction against the defendant, restraining it, it’s subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockiest, representatives and anyone acting for or on its behalf from using name/trademark ‘Volvo’ and “FMX’ , in relation to leaf springs and other parts used in their business which would infringe plaintiff’s registered trademark ‘Volvo’ and ‘FMX’, as the defendant, Lamina suspension products limited were engaged in manufacturing, selling, dealing, supplying and exporting a wide array of leaf springs and automobile leaf springs through direct orders and also through e-commerce platform i.e. Indiamart, under the name/marks ‘VOLVO’ and ‘FMX’ identical to the registered trademarks of the Plaintiffs. The said infringing goods were confirmed on inspection to be non-genuine products which do not emanate from the Plaintiffs. The Plaintiffs have a strong apprehension that the Defendant’s products are inferior in quality in comparison to the original products manufactured by the Plaintiffs.

Legal analysis

The Plaintiffs offer a wide spectrum of transportation related products and services with a strong foothold in luxury buses and related services, with superior quality and high standards of safety and environmental care, to customers in selected segments and is a world leader in heavy commercial vehicles such as trucks, buses and construction equipment, as well as in drive systems for marine and industrial applications. The Plaintiffs have also 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 the Plaintiffs’ trade mark, name and house mark VOLVO. The Plaintiffs’ trade mark ‘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’ . With regard to this, the well-known status of the Plaintiffs trade mark VOLVO in India was recognized by the Trade Marks Registry and the VOLVO trade mark has been inserted in the list of well-known marks. The act of the Defendant in using an identical mark as the Plaintiffs’ registered trademarks ‘VOLVO’ and ‘FMX’ prima facie results in infringing the statutory and common law rights of the Plaintiffs.

Conclusion

The court held that Plaintiffs have made out a prima facie case as balance of convenience lies in favour of the Plaintiffs. Hence, an ex parte ad interim injunction has been passed against the defendant, its subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockiest, 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, social media accounts, third party websites.