AKTIEBOLAGET VOLVO & ORS. vs R. VENKATACHALAM AND ANR.
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 346/2018 & I.A. 3177/2007
AKTIEBOLAGET VOLVO & ORS. …..Plaintiffs
Through: Mr. Anirudh Bakhru, Mr. Pravin Anand, Ms. Vaishali Mittal, Mr.Siddhant Chamola, Mr. Karan Kamra, Advocates
(M:7838189329)
versus
R. VENKATACHALAM AND ANR …..Defendants
Through: Mr. R. Siva Kumar, Mr. B. Ragunath, Advocates (M:9818521071)
Email: kaviragunath@gmail.com
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
JUDGMENT
% 20.01.2025
MINI PUSHKARNA, J:
1. The present suit has been filed seeking a decree of permanent injunction restraining infringement of registered trademark, passing off, dilution of trademark unfair competition, damages, delivery up, etc.
Facts of the Case:
2. The case, as canvassed by the plaintiffs, is as under:
2.1. The plaintiff nos. 1 to 3 (“plaintiffs”) are companies organized under the laws of Sweden and are group companies of the reputed VOLVO group.
2.2. Plaintiffs are the registered proprietors of the trademarks PENTA and VOLVO PENTA. Plaintiffs adoption of the name/mark PENTA dates back to 1913 and the plaintiffs first used VOLVO PENTA in the year 1964.
2.3. The trademark PENTA was registered in India bearing registration nos. 265555 in class 7 and 265556 in class 12 in favour of AB Archimedes-Penta, since the year 1970. The said trademarks were duly assigned to AB Volvo in the year 1975.
2.4. AB Volvo, by way of a Deed of Assignment on 26th February, 1999, assigned the rights, interests and title held by it in the trade marks that consist of or contain the word VOLVO including the device marks and the trade mark PENTA to affect a valid transfer of the trade marks to the assignee Volvo Trademark Holding AB (plaintiff no. 2).
2.5. Plaintiff no. 2 is the exclusive and sole beneficial owner of the VOLVO and more specifically the PENTA trademarks. Plaintiff no. 2 subsequently, vide Global License Agreement dated 28th February, 1999, licensed plaintiff nos. 1 and 3, the right to use the said trademarks in relation to their respective businesses.
2.6. AB VOLVO owns, and controls shares in various corporations and companies, which are together referred to as Volvo Group. Volvo Car Corporation owns, and controls shares in various corporations and companies, which are referred to as the Volvo Car Companies. The Volvo Group of Companies and the Volvo Car Companies are collectively referred to as VOLVO TM Companies.
2.7. The plaintiffs licensees and/other companies in the Volvo TM Companies manufacture goods and provide related services, throughout the world under the trademark VOLVO.
2.8. The plaintiffs also use its registered trademark VOLVO as also its various permutations and combinations, thereof, for a number of goods and services, such as cars, buses, trucks, heavy vehicles, and merchandise goods.
2.9. The plaintiffs trademark VOLVO has also been recognized by the Trade Marks Registry of India as a well-known trademark and included in the list of well-known trademarks uploaded on the online records of the Trade Marks Registry of India.
2.10. The mark PENTA was first adopted by the plaintiffs in the year 1913, and VOLVO PENTA in the year 1965 and have been using the same continuously and extensively. The trademark VOLVO PENTA is a combination of the two marks VOLVO and PENTA. The mark VOLVO is a Latin word, and the mark PENTA is a Greek word.
2.11. The mark VOLVO PENTA is used for engines and complete power systems for marine and industrial applications and has been extensively and continuously used by plaintiff no. 1 and its subsidiaries and related companies throughout the world, including, in India.
2.12. The trademark VOLVO PENTA and PENTA have come to be associated and recognized by both members of trade and public with only the goods and business of the plaintiffs on account of the extensive use, publicity, promotion and reputation vesting in the plaintiffs in conjunction with the marks.
2.13. The cause of action in the present suit first arose in the month of November 2006 when the plaintiff received information that the defendants had applied for registration of the trademark PENTA in class 7 in respect of Machine and machine tools, machine couplings and belting etc.
2.14. Market inquiries carried out by the plaintiffs revealed that the defendants were engaged in an allied and cognate business as the plaintiffs and were attempting to register the plaintiffs trademark PENTA for the said purpose.
2.15. A legal notice dated 14th December, 2006 was sent by the plaintiffs to the defendants calling upon the defendants to cease and desist from using the mark PENTA as a part of their corporate name / trademark, the same being identical or deceptively similar to the plaintiffs marks.
2.16. The defendants in their reply dated 23rd January, 2007, admitted that their use of the word PENTA as a part of the corporate name of defendant no. 2 company, Penta Auto Equipments Pvt. Ltd., which dates to 2nd June, 2001, with business operations dating back to years 2004 and 2006. However, despite the same, the defendants refused to amicably settle the matter and challenged the plaintiffs rights in the said trademark.
2.17. The scope of the defendants activities were discovered to be in direct conflict with the plaintiffs business activities under their registered trademarks VOLVO and PENTA in various fields, including, manufacture of engines for marine motors for which the plaintiffs hold specific registration for engines and complete power systems for marine and industrial application under Class 7.
2.18. Hence, the present suit has been filed.
Submissions by plaintiffs:
3. On behalf of the plaintiffs, following submissions have been made:
3.1. The trademark VOLVO PENTA is a combination of the two well-known trademarks VOLVO and PENTA. The mark PENTA was first adopted by the plaintiffs in the year 1913 and the mark VOLVO PENTA was adopted in the year 1964. Therefore, these trademarks are exclusively associated with the plaintiffs.
3.2. The trademark VOLVO PENTA is registered in India under registration no. 1384891 in Classes 4, 7, 9, 11, 12, 17, 35, 37, 38 and 42 since the year 2005 in the name of plaintiff no. 2.
3.3. The plaintiffs have spent enormous sums of money to advertise and promote its VOLVO PENTA and PENTA trademarks across the globe. The said trademarks have been advertised and extensively promoted through various mediums, including, magazines, pamphlets, and television.
3.4. The exclusivity of the association of the mark with the plaintiffs is assured since the VOLVO PENTA mark also forms a prominent part of the trading style of the plaintiffs. Additionally, the global exposure of the consumers across different countries to VOLVO PENTA products emanating from the Penta-line of products of the plaintiffs, has assured exclusive association of the said mark with the plaintiffs.
3.5. The defendants can have no valid reason for adopting the plaintiffs well-known mark for their own services/ corporate name when they are aware of the plaintiffs prior use and proprietorship over the said mark. Further, the defendants can also not have any justification for adopting what is clearly an invented and highly distinctive mark.
3.6. The plaintiffs registrations for the word mark PENTA in India, under No. 265555 and 265556 in relation to Class 7 and Class 12 respectively, constitute constructive notice to third parties such as the defendants in the present case, on account of which they cannot legitimize their patently unauthorized act of misappropriating the plaintiffs trademark.
3.7. It is an accepted proposition of law that well-known and reputed trademarks become diluted when the consumer capacity to associate it with the plaintiffs products is diminished. Such unauthorized use will undermine and tarnish the positive associations and indications evoked by the plaintiffs trademark PENTA.
3.8. Enormous goodwill and reputation enjoyed by a particular trademark is worthy and deserving of a wide scope of protection. The stronger the plaintiffs trade mark, the greater the protection it deserves in connection with the use of an identical mark by the defendants.
3.9. The plaintiffs trademark PENTA, being an invented trademark has the highest degree of inherent distinctiveness, has been used extensively over a long period of time, over a wide geographical area, has earned tremendous publicity and popularity, is well recognised by members of the trade and public and is, therefore, entitled to protection against its misappropriation.
3.10. The defendants have, by their own admission in their reply dated 23rd January 2007, adopted the impugned mark PENTA in relation to their products and services as well as their corporate/trade name, subsequent to the use of such word by the plaintiffs, only since 2001, with the sole intention of enjoying the benefits that flow from the tremendous reputation and goodwill that exists in favour of the plaintiffs trademark.
3.11. The plaintiffs trademark VOLVO has also been recognized by the Trade Marks Registry of India as a well-known trademark and included in the list of well-known trademarks uploaded on the online records of the Trade Marks Registry of India.
3.12. Further, the well-known nature as well as the immense goodwill and reputation as is vested in the trademark VOLVO of the plaintiffs has been acknowledged by this Court as well as by various other Courts in India, including, Tribunals and Forums across the globe.
3.13. The trademarks PENTA as well as the mark VOLVO PENTA are registered in favour of the plaintiff no. 2 in many countries.
3.14. Reliance is further placed upon letters, invoices, purchase orders, consignment orders and documents which illustrate that plaintiff no. 1 has been carrying out business under the mark VOLVO PENTA in India dating back to the years 1991- 1994.
3.15. The trademark PENTA was first adopted by the plaintiffs in the year 1913. The said trademark in India has also been registered under no. 265555 in Class 7 and 265556 in Class 12, which were assigned to the plaintiffs in the year 1975, which is much prior to the adoption of the said mark by the defendants in the year 2001.
3.16. Even an intention to use a mark is sufficient to infer use. In the present case, there was an intention and then clear and categorical use of the mark PENTA by the plaintiffs predecessors-in-title and interest and then the plaintiffs, which run over three decades.
3.17. The plaintiffs line of business includes engines for automobiles of all kinds. Further, the plaintiffs own a trademark registration in Class 7, which is the very same class in which the defendants have also filed an application for registration of an identical mark PENTA in respect of Machines and machine tools, machine couplings and belting special tools, equipments, motors, hardware, hand tools, accessories, instruments, workshop tools, implements and engineering products and automobile tools and equipments included in Class 7.
3.18. The trademark of the defendants being identical to the plaintiffs registered trademark PENTA and their goods, being allied and cognate to the goods of the plaintiffs, constitute acts of infringement and passing off.
Submissions by defendants:
4. On behalf of the defendants, following submissions have been made:
4.1. The mark PENTA is generic and has a specific dictionary meaning. The defendants use of the trade mark/name PENTA does not constitute infringement of trademark no. 265555B. The plaintiffs cannot claim any proprietary rights for the Greek word Penta as theirs and file a suit for infringement.
4.2. The defendants are not engaged in the manufacturing or selling of products related to marine engines, industrial and marine equipment, tools and accessories, or mercantile products. It is evident that they do not operate in the same trade, either in manufacturing or selling.
4.3. AB Archimedes-Penta had no proprietary right in the trade mark PENTA either in India or anywhere else in the world on the date of making the application for registration or even on the date of filing this suit.
4.4. Plaintiff no. 2 who claims to have become the subsequent registered proprietor of trade mark no. 265555B, has not made use of the trade mark in respect of the goods for which the same is registered at any point of time.
4.5. The plaintiffs have also not made any use of the trademark VOLVO PENTA in respect of any of the goods of their alleged manufacture or sale or alleged services.
4.6. The registration of a composite trademark consisting of several matters does not confer any exclusive right in favour of the plaintiffs to the exclusive use or statutory right to part of the whole trademark, namely, PENTA.
4.7. The class of purchasers and trade channels for the plaintiffs goods and the defendants goods, are entirely different. The defendants manufacture special service tools for vehicles, not marine engines, or boats. The goods manufactured by the defendants under the trademark PENTA serve different purposes and uses, compared to marine motors and boats, negating any claims of infringement or likelihood of confusion in the market.
4.8. This court lacks territorial jurisdiction to entertain and try the present suit. Section 134(2) of the Trade Marks Act, 1999 does not apply in the present case, as none of the plaintiffs have registered or branch offices in India or within this courts jurisdiction.
4.9. Plaintiff no. 1 does not claim to own the trademark PENTA, and plaintiff no. 2, who claims ownership of trademark nos. 265555B and 265556B, does not have an office within this courts jurisdiction. None of the plaintiffs have registered or branch offices in India or within this courts jurisdiction, while defendant no. 1 resides and conducts business in Tamil Nadu, making the suit in Delhi not maintainable.
4.10. The plaint has been signed and verified by Col. Retd. J.K. Sharma, who claims to be the constituted attorney of the plaintiffs. However, there is no board resolution or proper authorization presented to support this claim. Without proper authorization, the plaint is incompetent and liable for rejection under Order VII Rule 11(d) of Code of Civil Procedure (CPC) 1908. The suit cannot be maintained as the fundamental requirement of authorization has not been met.
4.11. No documents have been filed to show that the plaintiffs have sold any product in India under the trade mark PENTA.
4.12. The defendants manufacture grease dispensers, high pressure washers for two and four wheelers, two wheelers hydraulic ramps, hydraulic trolley jacks, oil collectors, spark plug cleaners, axle stands, tyre inflators, spark plug cleaners, battery chargers and testers, among other products. The defendants are not engaged in the manufacturing or selling of the products related to marine engines, industrial and marine equipments, tools and accessories or mercantile products. Therefore, based on the admissions of both plaintiffs and defendants, it is evident that they do not operate in the same trade, either in manufacturing or selling.
4.13. Plaintiffs have not made any use of the trademark VOLVO PENTA in respect of any of the goods of their alleged manufacture or sale or alleged service. The trademarks VOLVO and PENTA have never been used in combination by the plaintiffs. Plaintiff no. 3 has not used the trademark PENTA for marine motors and or boats, and no substantial documents have been produced to prove their existence, usage, manufacture or sales.
4.14. Given the different product categories and trade channels, there is no possibility of misrepresentation or confusion among consumers. The goods covered by the respective trademarks are different, negating any likelihood of confusion.
5. I have heard learned counsels for the parties and have perused the record.
Proceedings before the Court:
6. The present suit was filed and instituted on 19th March, 2007. Issues were initially framed on 12th July, 2010. During the pendency of the present suit, an application being I.A. No. 15864/2011 under Order VI Rule 17 CPC, for amendment of plaint, was filed on the ground that subsequent to the filing of the present suit, the plaintiffs had obtained multi-class registration of the trademark VOLVO PENTA and a certificate of registration was issued on 19th February, 2010. For this reason, the plea regarding such registration of the trademark in India was sought to be incorporated in the plaint. This Court vide order dated 30th September, 2011 allowed the aforesaid application by holding that a subsequent cause of action is being joined and that no new case is being made out. Thus, the plaint was allowed to be amended to include a cause of action of infringement of the mark VOLVO PENTA on account of its registration certificate being issued after institution of the suit.
7. Subsequently, this Court vide order dated 03rd February, 2012, allowed I.A. No. 14672/2011 filed on behalf of the plaintiffs, seeking amendment of issue nos. 4 and 5, as framed earlier on 12th July, 2010. Thus, on 03rd February, 2012, issues were amended by this Court. Thus, the final settled issues in the present case, as recorded in the order dated 03rd February, 2012, are as follows:
1. Whether this Court has territorial jurisdiction to entertain and try the present suit? OPP
1.(A) Whether the plaint is signed, verified, and instituted by a competent person on behalf of the plaintiffs? OPP
2. Whether the plaintiffs are the proprietors of the Trademark PENTA in respect of engines for cars, power systems for marine industrial applications? OPP
3. Whether the plaintiff No.2 is the subsequent registered proprietor of trademark PENTA in respect of Trademark Nos. 265555 and 265556 in class 7 and 12 respectively as alleged in para 15 of the plaint? OPP
4. Whether the use of trademark PENTA on part of the defendants in respect of machine and machine tools, machine couplings and belting, special tools, equipments, motors hardware etc. constitute an act of passing off? OPP
5. Whether the defendants have committed any acts of infringement of plaintiffs registered trademark nos. 265555 in class 7 and 265556 in class 12 and 134891 in class 4, 7, 9, 11, 12, 17, 35, 36, 38, 41? OPP
6. Whether the plaintiffs are guilty of misrepresentation, suppression and making false statement as alleged in preliminary objections and if so to what effect? OPD
7. Whether the suit of the plaintiff is barred by the principles of delay, laches and acquiescence? OPD
8. Relief.
8. The examination-in-chief and cross-examination of witnesses was conducted before the learned Local Commissioner. The trial was concluded on 18th July, 2019.
Issue-Wise Findings and Analysis:
Issue no. 1: Whether this Court has territorial jurisdiction to entertain and try the present suit?
9. The instant case concerns trademark infringement, dilution, passing off and unfair competition, damages, delivery up and costs.
10. The defendants have raised the objection regarding territorial jurisdiction of this Court. In this regard, it is to be noted that Section 134(2) of the Trademarks Act, 1999 provides that a suit for infringement of trademark can be instituted within local limits of the Courts in whose jurisdiction the plaintiff carries on business. In this regard, reference may be made to cross-examination of the plaintiffs witness, PW-1, dated 08th February, 2018, wherein, it has been deposed as follows:
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Q. 77 I put it to you that AB Volvo Penta is an independent Company.
Ans: AB Volvo Penta is part of AB Volvo Group of Companies.
Q. 78 I am asking you whether AB Volvo Penta is a registered company with the Registrar of Companies in India?
Ans: Yes. It is registered and assigned.
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Q.91 I put it to you that you don’t have jurisdiction to institute proceedings in Delhi.
Ans. We have the jurisdiction to institute proceedings in Delhi. Witness volunteers: Volvo India Pvt. Ltd. office is presently in Delhi.
Q.92 Where is the office of Volvo India Pvt. Ltd. in Delhi?
Ans. In Surya Kiran building in Delhi.
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(Emphasis Supplied)
11. As per the evidence on record, Ex. PW-1/56, the plaintiffs have also shown that they have exclusive agents and dealers in Delhi.
12. Further, from the cross-examination of the defendants witness, it is clear that their products are sold in Delhi. Reference may be made to cross examination of DW-1 dated 12th April, 2019, wherein, it has been deposed as follows:
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Q89) Do you know the name Mori Gate as an area in Delhi, India?
Ans) Yes I know.
Q90) Are some of the engineering automobile tool retailers located in Delhi in the Mori Gate area?
Ans) One of our retailers is located in Mori Gate area.
(Emphasis Supplied)
13. Additionally, documents have been produced in evidence indicating the territorial jurisdiction of this Court, which have been exhibited and marked, and which have been proved through oral testimony. The relevant documents are as follows:
i. Certified copy of the telephone bill of Volvo India Pvt. Ltd. Mark T.
ii. Copies of orders placed by third parties on Volvo India Pvt. Ltd. in Delhi Mark U.
iii. Plaintiffs having exclusive agents and dealers in Delhi Exhibit PW1/56.
14. Thus, it is clear that this Court has the territorial jurisdiction to entertain the present suit. Therefore, issue no. 1 is decided in favour of the plaintiffs and against the defendants.
Issue no. 1(A): Whether the plaint is signed, verified, and instituted by a competent person on behalf of the plaintiffs?
15. As regards Issue no. 1(A), this Court notes that the plaint has been instituted by Col. (Retd.) J.K. Sharma, who is duly authorized by the plaintiff nos. 1, 2 and 3, to institute the present suit. The plaintiffs witness, PW-1, has duly verified the signatures on the plaint as those belonging to Col. (Retd.) J.K. Sharma, in his affidavit-in-chief, PW-1A.
16. Further, PW-1, in his cross-examination has confirmed that he was aware of the signature of Col. (Retd.) J.K. Sharma and that he was the constituted attorney of the plaintiffs. The relevant portion of the cross-examination of PW-1 dated 27th April, 2017, is reproduced as under:
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Q.63 Have you produced any document to show that you were working with Col. Sharma at the same office of the Plaintiffs to be aware of his signature?
Ans. I am aware of his signature.
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Q.65 Have you mentioned anywhere in your affidavit where was Col. Sharma working in 2003-2007?
Ans. It is not mentioned in the affidavit that where Col. Sharma was working in 2003-2007. Vol. I am aware that Col. Sharma was the constituted attorney of the Plaintiff.
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(Emphasis Supplied)
17. The fact that the suit was instituted by an authorized and competent individual, with the knowledge and approval of the plaintiffs, and that the actions of the constituted attorney have been duly ratified, is clear from express authority in favour of the constituted attorney, viz., the formal power of attorneys filed in the present proceedings. This Court also takes note of the fact that the prosecution of the suit has been done continuously by the plaintiffs for the last 17 years. Requisite Court fees have been duly paid in support of the plaint. Further, witness, PW-1, has been produced, who deposed on behalf of the plaintiffs and is an employee of Volvo India Pvt. Ltd.
18. In this regard, reference may be made to the judgment in the case of Kabushiki Kaisha Toshiba Versus Toshiba Appliances Co., 2024 SCC OnLine Del 5594, wherein, it has been held that in situations where no explicit authorization is evident and an officer of the Corporation has signed the pleadings, the Corporation has the ability to subsequently ratify the actions. Thus, it has been held, as follows:
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59. The Court has examined the documents and oral evidence. While no specific onus of proof was assigned to this issue, the burden typically falls on the Plaintiff to demonstrate that the suit was signed, verified, and instituted by an authorized and competent individual. It cannot be disputed that a company like the Plaintiff can sue and be sued in their own name. As a juristic entity, a company necessarily acts through individuals authorized to represent its legal interests. Order XXIX Rule 1 of the CPC stipulates that in cases involving a corporation, the Secretary, any Director, or any other Principal Officer who is knowledgeable about the facts of the case is empowered to sign and verify pleadings on behalf of the company. As per Order VI Rule 14, a pleading is required to be signed by the party and its pleader, if any. When these two provisions are read in conjunction, it becomes clear that even in the absence of a formal authorization, such as a Letter of Authority or Power of Attorney, the designated officers enumerated in Order XXIX Rule 1 possess inherent authority to act on behalf of the corporation. This provision ensures that the practical realities of a corporates operations are accommodated within legal procedures, allowing those who hold these offices to effectively represent the corporate entity in judicial processes. In addition thereto and de hors Order XXIX Rule 1 of the CPC, since a company is a juristic entity, it can duly authorise any person to sign the plaint or the written statement on its behalf, and this would be regarded as sufficient compliance with the provisions of Order VI Rule 14. In the case of United Bank of India v. Naresh Kumar and Ors., the Supreme Court held that beyond the stipulations of Order XXIX, a corporation may also specifically authorize any individual to sign pleadings and other legal documents. This can be achieved through explicit means such as a resolution passed by the Board of Directors or through the execution of a Power of Attorney. In situations where no explicit authorization is evident, and an officer of the corporation has signed the pleadings, the corporation has the ability to subsequently ratify these actions. Such ratification may be express, such as through formal corporate resolutions, or implied, discerned from the conduct and the context of the legal proceedings.
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63. The Court, upon reviewing the evidence and considering the totality of the circumstances, particularly the conduct of trial, is empowered to infer that the corporation has ratified the actions of its officer who signed the pleadings. This interpretative flexibility ensures that technical lapses in formal authorization do not unduly hinder the substantive pursuit of justice, reflecting a pragmatic approach to corporate legal representation. Thus, keeping the Evidence Act in view, despite rigorous cross-examination by the Defendant challenging the legality of these ratifications, the Court finds PW1s testimony credible and sufficient to confirm that the initiation of the suit by Mr. Kensuke Norichika complied with the requirements of the CPC. Mr. Kensuke Norichikas association with the Plaintiff-company as an employee is undisputed and his authority to act on its behalf has been substantiated.
64. The longstanding engagement of the Plaintiff in the lawsuit, which has spanned over three decades, further supports the legitimacy of Mr. Kensuke Norichikas initial actions. The continuous appearance of witnesses on behalf of the Plaintiff, who have acknowledged Mr. Kensuke Norichikas role in initiating the suit, coupled with the express and implied ratifications through the ongoing prosecution of the case, reinforce the validity of his actions. This is also evidenced by the Plaintiffs payment of court fee, consistent submission of documentary and oral evidence, and active participation in the trial process throughout this period.
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(Emphasis Supplied)
19. In the present case, power of attorneys in favour of Col. JK Sharma on behalf of the plaintiffs, have been filed, and marked as Mark A-C. The said documents duly stand proved during the course of evidence.
20. Accordingly, Issue no. 1A is decided in favour of the plaintiffs and against the defendants.
Issue no. 2: Whether the plaintiffs are the proprietors of the Trademark PENTA in respect of engines for cars, power systems for marine industrial applications?
21. The trademark PENTA was registered in India under registration nos. 265555 in Class 7 and 265556 in Class 12 in favour of AB Archimedes Penta, since the year 1970. The same was duly assigned to plaintiff no.1, AB Volvo in the year 1975. The document pertaining to the same, as available on record, is reproduced hereunder:
22. AB Volvo assigned by way of an Assignment Deed dated 23rd March, 2001, Mark D, assigned the trademarks VOLVO, including the mark PENTA to plaintiff no. 2. Hence, it is manifest that plaintiff no. 2 owns and maintains the trademark PENTA by virtue of the said assignment. A certified copy of application of Form TM 28 filed before the Registrar of Trademarks to bring on record plaintiff nos. 1 and 3 as licensee of the trademark, is also on record, Mark E.
23. The various documents on record in support of the plaintiffs registrations for the PENTA and VOLVO PENTA, have been duly exhibited and marked, and proved through oral testimony.
24. There are various documents on record comprising of invoices, purchase and consignment order, authorized dealer certificate evidencing the sale of plaintiff no. 1s product under the mark PENTA and VOLVO PENTA in India, dating back to the year 1998. The document, Mark J, shows extensive use specifically for VOLVO PENTA MARINE ENGINE, both prior to the incorporation of defendant no. 1 in the year 1998, since 1998, and even after the defendants commenced operations, i.e., in the year 2002.
25. Further, the cross-examination dated 04th May, 2018 of PW-1, is relevant, wherein, he has deposed, as follows:
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Q.148 Please point out which are the invoices you are relying upon to show import documents and to which company import has been done in respect of engines in the brand name PENTA in the proceedings?
Ans: One of the document, Invoice No. R-72600 dated 15.05.2002 from page nos.1920 & 1921 (Mark J) (This document is now exhibited as Ex.PW-1/57). The other document, Invoice No. R- 73342 dated 11.08.1998 at page nos.2033 (Mark J) (This document is now exhibited as Ex.PW-1/58). The third document Ex.PW-1/25 at page no. 2288 and several others.
Q.149 I put it to you that Ex.PW-1/57 is only the spare parts of the engine and not the engine as a whole.
Ans: It is incorrect. Please refer the said document for details written as Volvo PENTA Industrial Engine and accessories.
Q.150 Is Fly Wheel Clark an engine?
Ans: The document describes contents of an engine therefore Fly Wheel is part of an engine.
Q.151 I put it to you that Ex.PW-1/57 & Ex.PW-1/58 are only accessories to an engine and not an engine as a whole.
Ans: It is incorrect. The document is for the engine with the detail bill of material of an engine describing the contents.
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Q.153 From the Ex.PW-1/57 & Ex.PW-1/58, can you tell me where was the engine and its accessories manufactured?
Ans: The above said document is from Volvo PENTA Sweden and supplied to India.
Q.154 I put it to you that Volvo PENTA industrial engine and accessories manufacturing unit, Pithampura is yet to start its manufacturing process and you are giving false evidence in the proceeding.
Ans: It is incorrect.
Q.155 When was the manufacturing unit started in Pithampura?
Ans: It is between 2016 and 2017 for industrial versatile applications.
Q.156 I put it to you that from 1970 no engines in the name of Volvo PENTA were supplied by the Plaintiff to any Indian company?
Ans: It is incorrect. This brand is being used in India since 1970.
Q.157 I put it to you that you dont have any records to show that engines in the brand name PENTA was supplied to any Indian customer or there was any commercial sale activity of engines in the name PENTA in India and you have not produced any documents in the proceedings.
Ans: It is incorrect. There are several documents confirming the supply of PENTA engines under the brand name Volvo PENTA in India.
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(Emphasis Supplied)
26. It is also pertinent to note that Ex. PW/Mark 1/25 shows the use for Volvo Penta Marine Engine spare parts since the year 1992. Reference may also be made to Ex. PW-1/33A, which are print outs of photographs of the plaintiff no.1s products being sold under the trademark VOLVO PENTA. Further, Ex. PW-1/34A, are the internet extracts from the plaintiffs website, www.volvomerchandise.com evidencing that the trademark VOLVO PENTA is used for various products.
27. Documents on record show that the marks PENTA and VOLVO PENTA have been advertised and promoted in India through brochures, sponsorships, etc. Reference in this regard is made to the following documents:
I. Original signed certificate showing sales figures of plaintiff no.1s products under the trademark VOLVO PENTA in India for the year 1999-2010 – Ex. PW-1/25A.
II. Advertisements and articles published in various magazines and newspapers in India bearing the trademark VOLVO PENTA – Ex. PW-1/30.
III. Attested copy/ certificate of the advertisement, publicity and marketing expenses of the VOLVO PENTA division in between the year 1997-2010 – Ex. PW-1/32.
28. It is to be noted that the plaintiffs registrations marked as Ex. PW-1/22A and Ex. PW-1/22B for the mark PENTA relate to boats and marine motors. Similarly, the plaintiffs registration marked as, Ex. PW-1/23 for VOLVO PENTA pertains to engines, parts, tools, repair of machines, etc. PENTA is an essential feature of this registration. Therefore, plaintiffs proprietorship of the said mark for the aforesaid class of goods, stands established.
29. The statutory registrations coupled with extensive and continuous use clearly illustrate that the plaintiffs business under the mark extends to a range of applications, including, engines for cars, power systems and marine applications.
30. A bare perusal of Ex. PW-1/22A and Ex. PW-1/22B, reveals that plaintiff no. 2, VOLVO Trademark Holding AB, has been recorded as the subsequent registered proprietor of the PENTA and VOLVO PENTA marks pursuant to the trademarks office being satisfied about the Assignment Deed dated 23rd March, 2001, which has been identified as Mark D in the present proceedings. Further, as regards the registration for VOLVO PENTA, Ex. PW-1/23, the certificate for use in legal proceedings as filed qua the said marks, itself records plaintiff no. 2 as the registered proprietor of the mark.
31. Accordingly, Issue no. 2 is decided in favour of the plaintiffs and against the defendants.
Issue no. 3: Whether the plaintiff No. 2 is the subsequent registered proprietor of Trademark PENTA in respect of Trademark Nos. 265555 and 265556 in class 7 and 12 respectively as alleged in para 15 of the plaint?
32. The plaintiffs are the registered proprietors of the trademarks PENTA and VOLVO PENTA, in the following manner:
Sl.
No
Trademark
Regis
No.
Date of application
Class
Goods & service details
User
Detail
Valid
Upto
Ex.
1.
PENTA
(word)
265555
09/07/1970
7
Marine
Motors
Proposed
To be
used
09/7/
2025
PW-1/22A
2.
PENTA
(Device)
265556
09/07/1970
12
Boats.
Proposed to be used
9/7/
2025
PW-1/22B
3.
VOLVO
PENTA
1384891
2005
4,7,9, 11,12,17,35,37,38, 42
14/9/2025
PW-1/23
33. The defendant has admitted that their attorney had knowledge of the trademark PENTA and its registration no. 265555 as far back as 27th October, 2005. The defendant has further admitted that it had constructive notice of the registration for PENTA under no. 265555 ever since 1970. The cross examination of DW-1 dated 11th April, 2019, in this regard, is extracted as below:
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Q49) Please see Exhibit D-2. Is it correct that your attorney had knowledge of trade mark Penta and its registration no. 265555 as far back as 27th October, 2005?
Ans) Correct.
Q50) Please see Exhibit 1/22A which is the register trade mark for Penta under No. 265555. I put it to you had constructive notice of this registration ever since 1970?
Ans) Correct.
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(Emphasis Supplied)
34. The defendants had filed application for registration of the mark PENTA bearing no. 1363988 in Class 7, which had been opposed by the plaintiffs. The defendants chose not to pursue the said application and consequently the same stood abandoned. The defendants had also filed another application for registration of the mark PENTA bearing no. 1019254 in Class 7, which too stands abandoned.
35. The aforesaid facts stand admitted by the defendants witness, DW-1, in his cross-examination dated 11th April, 2019, in the following manner:
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Q51) Please see the goods covered by your trade mark registration No.1363988 being Exhibit No. D-1 and confirm that the goods include machines, motors and other accessories such as hand tools, workshop tools, automobiles tools etc.?
Ans) I confirm.
Q52) Please see the document now being handed over to you which is an entry on the internet website IPINDIAONLINE.GOV.IN maintained by the trademarks registry. Please confirm that according to the e-register your trademark Application No.1363988 stands abandoned as on 15.02.2019?
(The witness is shown the above said documents alongwith an affidavit under section 658 of the Indian Evidence Act. The documents is Exhibit DW1/P1.)
Ans) As per the document it is abandoned.
Q53) Please see the document now being shown to you. This is the order dated 05.08.2008 by which the registration no. 1363988 was abandoned pursuant to opposition no. MAS249778 filed by Volvo Trademark Holding AB, Sweden, which is plaintiff no.2 in the present proceedings. Please confirm that this order was passed in relation to your said application.?
(The witness is shown the above said documents along with an affidavit under section 65B of the Indian Evidence Act. The documents is Exhibit DW1/P2.)
Ans. I confirm.
Q54) Please see the document now being handed over to you which is an entry on the internet website IPINDIAONLINE.GOV.IN maintained by the trademarks registry. Please confirm that according to the e-register your trademark Application No.1019254 stands abandoned as on 14.02.2019?
(The witness is shown the above said documents along with an affidavit under section 65B of the Indian Evidence Act. The documents is Exhibit DW1/P3.)
Ans) It is correct.
Q55) Therefore in your two Penta applications one 1363988 and the second 1019254 the user statement for the identical Penta Trademark in respect of machines tools, special tools, coupling tools, workshop tools being identical goods in both the applications the user statements contradict each other i.e. one mark is proposed be used while the other is 13.06.2001. Is this correct?
Ans.) From the document, it seems to be correct.
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(Emphasis Supplied)
36. Reference may also be made to the cross examination of DW-1 dated 12th April, 2019, wherein, he deposed in the following manner:
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Q73) After your application were abandoned, did you refile them and if so under what number?
Ans) Yes we have filed again and it is pending. I do not know the number.
Q74) I show the copy of the application filed by you under number 4055466 for the trademark Penta filed on 14.01.2019 which is under objections. Correct?
(The witness is shown the above said documents alongwith an affidavit under section 65B of the Indian Evidence Act. The documents is Exhibit DW1/P7.)
Ans) Yes correct.
Q75) I am show to your another application under number 1838465 which is also been abandoned. Correct?
(The witness is shown the above said documents alongwith an affidavit under section 65B of the Indian Evidence Act. The documents is Exhibit DW1/P8.)
Ans) Yes correct.
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(Emphasis Supplied)
37. Thus, it is clear that the plaintiffs are the registered proprietors of the trademarks PENTA and VOLVO PENTA which are valid and subsisting as on date, while the defendants do not have any valid and subsisting registrations.
38. The documentary evidence on record, which have duly been proved during the course of oral examination, in regard to proprietorship of plaintiff no. 2 in the trademark PENTA, are as follows:
i. Copies of trademark registration certificates for the mark PENTA in Class 7 and 12 Mark 1
ii. Certificate for use in legal proceedings for the mark PENTA under no. 265555 in Class 7 Exhibit PW1/22A
iii. Certificate for use in legal proceeding for the mark PENTA under no. 265556 in Class 12 Exhibit PW1/22B
iv. Certificate for use in legal proceedings for the mark VOLVO PENTA registered in favour of plaintiff no. 2 under no. 1384891, registered on 19th February, 2010. – Exhibit PW1/23
v. Application of form TM 24 filed to bring on record, plaintiff no. 2 as the assignee of the trademark PENTA Mark D.
vi. Application of form TM 28 filed to bring on record, plaintiff nos. 1 and 3 as licensee of the trademark PENTA Mark E.
vii. Extracts from various trademark journals evidencing that the mark PENTA bearing registration nos. 265555B in Class 7 and 265556 in Class 12 has been duly assigned – Mark I.
39. Issue no. 3 is accordingly decided in favour of the plaintiffs and against the defendants.
Issue no. 4: Whether the use of Trademark PENTA on part of the defendants in respect of machine and machine tools, machine couplings and belting, special tools, equipments, motors hardware etc. constitute an act of passing off?
Issue no. 5: Whether the defendants have committed any acts of infringement of plaintiffs registered trademark nos. 265555 in class 7 and 265556 in class 12 and 134891 in class 4, 7, 9, 11, 12, 17, 35, 36, 38, 41?
40. The defendants challenge to the validity of the PENTA and VOLVO PENTA marks is unfounded. It is settled law that the validity of registrations can only be challenged in rectification proceedings and not in a suit. It is a matter of record that defendants till date have not filed any rectification proceedings under Section 47, read with Section 57 of the Trademarks Act, 1999, on account of non-use of the plaintiffs PENTA and VOLVO PENTA marks. Even otherwise, as noticed above, the plaintiffs have furnished extensive documentary proof and evidence of their user of the mark PENTA and VOLVO PENTA in the present proceedings.
41. For the ground of invalidity of the PENTA and VOLVO PENTA marks to be raised by the defendants, it would have been incumbent on them under Section 124 of the Trademarks Act, 1999, to apprise the Court, and/or bring forth an application, under the said provision. In that eventuality, if the Court would have found the defendants claims of invalidity of the plaintiffs marks to be prima facie tenable, it would have granted them an opportunity to challenge the same through rectification proceedings, pending which the suit would be stayed. The findings of the rectification action would have thereon, been binding on this Court.
42. However, in the present case, having not followed the rigours of Section 124 of the Trademarks Act, the defendants cannot be allowed to challenge the validity of the PENTA and VOLVO PENTA marks in the present suit proceedings. Therefore, it is vexatious for the defendants to now question the validity of the plaintiffs trademarks at the stage of final arguments, when they have chosen not to take any action during the period of pendency of the suit. Thus, Division Bench of this Court in the case of Amrish Aggarwal Trading as M/s Mahalaxmi Product Versus M/s Venus Home Appliances Pvt. Ltd. and Another, 2024 SCC OnLine Del 3652, vide judgment dated 17th May, 2024, has held as follows:
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44. The position in law which thus emerges upon a consideration of Patel Field Marshal Agencies and Puma Stationer clearly appears to be the necessity of suit proceedings being stayed awaiting a final decision being rendered on any proceedings for rectification or cancellation that may be either pending or are intended to be initiated. The fact that the provision includes any decision rendered in those rectification or cancellation proceedings as binding upon the court trying the suit, lends added credence to the requirement and obligation of the suit court awaiting a final decision being rendered on those proceedings before taking up and examining the challenge of infringement or passing off.
45. This aspect unerringly comes to the fore when one reads Section 124(4) of the 1999 Act and which in explicit terms provides that the final orders passed in rectification proceedings would bind the parties and additionally oblige the court to dispose of the suit itself in conformity with the decision which may have been arrived at in the rectification or cancellation proceedings. The suit court thus clearly stands denuded of the authority or jurisdiction to independently proceed to examine the aspect of validity. The clear intent of the statute appears to be of ensuring that rectification challenges are placed exclusively before the Registrar or the High Court and consequently requiring the Trial Judge to stay its hands in any pending action.
46. All that Section 124(1)(ii) of the 1999 Act additionally provides is for the Trial Judge evaluating whether the challenge to registration as raised either by the plaintiff or the defendant gives rise to a triable issue. The expression prima facie tenable essentially requires the Trial Judge to undertake a preliminary examination of the plea of invalidity as opposed to a definitive determination. The aforesaid caveat essentially appears to have been introduced in order to enable the Trial Judge to dispose of pleas which may be wholly specious or devoid of substance. Thus, if on a preliminary examination itself, the Trial Judge were to come to the conclusion that the plea of invalidity as raised is clearly untenable and merits no further examination, it would be entitled to proceed further in the suit. However, and once the court comes to the prima facie conclusion that the challenge to registration of a mark does merit further examination, it would have to undoubtedly place the suit proceedings in a state of latency and await the outcome of any rectification or cancellation action that may come to be instituted.
47. This is further fortified from a reading of Section 124(2) of the 1999 Act, which provides that once the party is able to successfully establish that an action has been commenced in accordance with sub clause (ii) of Section 124(1) of the 1999 Act, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. A conjoint reading of sub-sections (1) and (2) leads us to the irresistible conclusion that the Trial Judge is obliged in law to await the outcome of a rectification action validly instituted and to place the suit in a state of repose with proceedings liable to be resumed upon conclusion of rectification proceedings. The fact that the statute further provides for the decision on rectification to be binding upon the suit court is yet another affirmation of the legislative pre-eminence which the statute accords upon the former and the imperatives of the Trial Judge staying its hands whilst awaiting the outcome of those proceedings. As we read Section 124 of the 1999 Act, we find that the provision has been structured in order to give effect to the legislative intent of what Mr. Ramanujan aptly described to be a sequencing of decision making. We consequently find that the learned Single Judge while framing the present Reference has correctly enunciated the legal position which would govern.
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54. We are thus of the firm opinion that it would be wholly erroneous to construe Section 124 of the 1999 Act as obviating the need for a direction being framed by the suit court placing further proceedings in abeyance. Notwithstanding the abolition of the IPAB and the power of rectification reverting to the High Court, a Trial Judge would necessarily have to stay its hands once it is apprised of the pendency of a rectification or cancellation action and which may have been initiated prior to the institution of the suit itself. The Trial Judge while trying a suit would have to also necessarily take cognizance of any plea of invalidity that may be raised in the suit proceedings itself. Once the Trial Judge on a prima facie examination of that plea finds the same to raise triable issues, it would be bound to stay further proceedings in the pending suit. This position is further fortified when one bears in mind that a district court, being a court other than a High Court, before which a suit may be brought is not conferred with a jurisdiction to rectify or cancel.
55. It becomes pertinent to note that in contingencies which are spoken of in sub-clauses (i) & (ii) of Section 124 (1) of the 1999 Act, the Legislature does not incorporate any provision for proceedings in the suit being automatically stayed. In both situations it would be incumbent upon the party to either apprise the court of a pending rectification action or once a plea pertaining to the validity of a trade mark is raised, to invite the court to frame an appropriate issue in that respect, to examine whether the same gives rise to a triable issue and consequently request the court to place all proceedings in abeyance enabling it to initiate an appropriate action for rectification. What we seek to emphasise is that since the statute does not contemplate the stay of proceedings as a natural corollary or one which would come into effect by operation of law, the obligation of the Court to frame an order staying further proceedings in the suit is neither dispensed with nor eliminated.
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(Emphasis Supplied)
43. Accordingly, the validity of the registrations of the mark PENTA and VOLVO PENTA, stands established.
44. Likewise, the defendants challenge to the validity of the assignment deeds and licence deeds of the PENTA and VOLVO PENTA marks in favour of the plaintiffs, are unfounded. A bare perusal of Ex. PW-1/22A and Ex. PW-1/22B, reveals that plaintiff no. 2, Volvo Trademark Holding AB, has been recorded as the subsequent registered proprietor of the PENTA and VOLVO PENTA marks, pursuant to the trademarks office being satisfied.
45. The validity of the assignment is intrinsically linked to the validity of the trademarks. The validity of registrations can only be challenged in rectification proceedings and not in a suit. The defendants till date have not filed any rectification proceedings challenging the plaintiffs PENTA and VOLVO PENTA marks. Hence, the defendants challenge to the validity of the assignment deeds, and licence deed of the PENTA and VOLVO PENTA marks in favour of the plaintiffs, is rejected.
46. The submission of the defendant that the mark PENTA is generic and no one can claim exclusive rights to the same, is also bereft of merits. The defendants having themselves, applied for the mark PENTA, asserting proprietary rights in the same, are precluded from challenging the mark PENTA as generic. Reference in this regard may be made to the judgment in the case of Automatic Electric Limited Versus R.K. Dhawan & Anr., 1999 SCC OnLine Del 27, wherein, it has been held, as follows:
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16. The defendants got their trade mark “DIMMER DOT” registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in “DIMMER DOT”, it does not lie in their mouth to say that the word “DIMMER” is a generic expression. User of the word “DIMMER” by others cannot be a defense available to the defendants, if it could be shown that the same is being used in violation of the statutory right of the plaintiff. In this connection, reference may be made to the decision of this Court in Prakash Road line Ltd. Vs. Prakash Parcel Service (P) Ltd.; reported in 1992(2) Arbitration Law Reporter page 174. Reference may also be made to the decision in P.M. Diesels Ltd. Vs. S.M. Diesels; reported in MANU/DE/0636/1994: AIR1994Delhi264. It was held in those decision that if the plaintiff is a proprietor of the registered trade mark, the same gives to the proprietor of the registered trade mark the exclusive right to use the trade mark with relation to goods in respect of which the trade mark is registered under the provisions of Section 28 of the Trade and Merchandise Marks Act. It was also held that such statutory right cannot be lost merely on the question of principles of delay, laches or acquiescence. It was also held that in general mere delay after knowledge of infringement does not deprive the registered proprietor of a trade mark of his statutory rights or of the appropriate remedy for the enforcement of those rights so long as the said delay is not an inordinate delay. In my considered opinion, the ratio of the aforesaid decisions are squarely applicable to the facts of the present case.
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19. It is undoubtedly true that the first syllable of a work mark is generally the most important and thus, when the defendants are using a similar prefix with that of the plaintiff with a little variation in the suffix part of it, in my considered opinion, the trade marks are deceptively similar and cause of action for prima facie infringement is complete. The submission of the learned counsel for the defendants that the word “DIMMER” is a generic and descriptive word also cannot be accepted for the trade mark is “DIMMERSTAT” and not “DIMMER” and the Court in a case of infringement of trade mark has to look into the whole of the trade mark as registered including the word “DIMMER”. Since the plaintiff has been using the said trade mark for a long period of time, user of deceptively similar trade mark by the defendants would necessarily cause irreparable loss and injury to the plaintiff. In my considered opinion, balance of convenience is also in favour of the plaintiff and against the defendants.
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(Emphasis Supplied)
47. Further, the defendants themselves having applied for registration of the mark PENTA, and having abandoned the same upon opposition of the plaintiffs, cannot contend that the said mark is generic. Nothing has been proved to show that the mark PENTA is a generic and common mark. No usage of the mark PENTA, by any third parties has been established by the defendants. In this regard, it is apposite to refer to the judgment of the Division Bench of this Court in the case of Indian Hotels Company Ltd. and Another Versus Jiva Institute of Vedic Science and Culture, 2008 SCC OnLine Del 1758, wherein, it has been held, as follows:
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40. It was also contended by Mr. Rohtagi that since other parties were also making use of the trade mark Jiva the plaintiff was not entitled to the injunction prayed for. The decision of this Court in Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, (2002) 24 PTC 355 (Del.) provides a complete answer to that submission. The court was in that case also dealing with a similar argument against the issue of an injunction which was repelled, holding that the use of the trade mark by some other party against whom the plaintiffs have not proceeded immediately for seeking an injunction would not dis-entitle him from seeking an injunction against another party who was similarly committing a violation.
41. To the same effect is the decision of this Court in Essel Packaging Limited v. Sridhar Narra, (2002) 25 PTC 233 (Del.) where the court has in almost similar circumstances held that use of the trade mark by other parties against whom the plaintiffs have not proceeded does not dis-entitle him to proceed against the defendant. The Court observed:
22. Merely because some other parties or persons are using the name ESSEL does not provide a justification to the defendants for using the said name as the plaintiff has been using this name much prior to the adoption of this name by defendants and its widespread use of this name shows that this word has become synonymous with the business of the plaintiff and its group companies.
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(Emphasis Supplied)
48. It may also be noted that the mark PENTA does not imply or describe the products of the plaintiffs. Hence, the same cannot be termed as generic in nature.
49. Mere presence on Trademark Register is no proof of its user. No inference can be drawn of use simply by presence of a mark in the Trade Marks Register. The onus of providing such user is on the party, who wants to rely on those marks. No such evidence has been led by the defendants in the present matter. Defendants have relied upon documents, being Mark PW-1/D1, which are printouts taken out from the internet showing that PENTA name has been registered with the Registrar of Trademarks. Similarly, defendants have relied upon Mark PW-1/D2, which are printouts from WIPO global brand database illustrating that the brand name PENTA has been registered in various countries under various Classes. However, reliance on the said documents by the defendants is of no consequence, as no inference can be drawn of the use of the mark PENTA by the defendants on the basis of the aforesaid printouts.
50. In this regard, reference may be made to the judgment in the case of Century Traders Versus Roshal Lal Duggar and Company, 1977 SCC OnLine Del 50, wherein, it has been held as follows:
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13. The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., A.I.R. 1960 Supreme Court 142 (3) laid down the rule vis-a-vis user of a mark as opposed to registration of mark. It observed that the onus of proving user is on the person who claims it. It did not approve of looking into the register of trademarks where a mark may be entered to be any proof of user. To quote from the speech of A.K. Sarkar, J.: Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of marks in the register..
14. Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks. In our opinion, these clear rules of law were not kept in view by the learned Single Judge and led him to commit an error.
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(Emphasis Supplied)
51. No evidence has been led by the defendants to establish in any manner the user of the mark PENTA. Thus, holding that it is not permissible to draw any inference as to user of a mark from the presence of the marks on the Register of Trade Marks, in the case of Corn Products Refining Co. Versus Shangrila Food Products Ltd., AIR 1960 SC 142, it has been held, as follows:
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16. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either Gluco or Vita as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd. [39 RPC 285 p 289] It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks Glucose Biscuits, Gluco biscuits and Glucoa Lactine biscuits. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having Gluco or Vita as a prefix or a suffix.
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(Emphasis Supplied)
52. This Court also notes that the confronted documents, PW-1/D1, as shown to the plaintiffs witness, PW-1 during his cross examination, does not show, PENTA common to the Register. The said document shows that PENTA stand alone registrations are abandoned or withdrawn. There are certain registrations for the mark PENTA for Aggarbattis and Cosmetics, which are very different products. There are some marks by the name PENTAGON, PENTAIR, which are not same as PENTA.
53. The defendants have not been able to prima facie prove that the use by such other parties, had significant business turnover or they posed a threat to the plaintiffs distinctiveness. In fact, the Courts have consistently opined that the plaintiffs are not expected to sue all small type infringers, who may not be affecting plaintiffs business. In case, the impugned infringement is too trivial and insignificant, and is not capable of harming their business interests, a party may overlook and ignore petty violations, till they assume alarming proportion.
54. Thus, the Division Bench of this Court in the case of Neutrica Pusti Healthcare Pvt. Ltd. and Others Versus Morepen Laboratories Ltd., 2021 SCC OnLine Del 2631, has held, as follows:
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29. No merit is found also in the contention of the counsel for the appellants/defendants that the respondent/plaintiff is not entitled to injunction for the reason of others using similar marks. The respondent/plaintiff, as a registered proprietor of the trademark is not expected to run after every infringer and to instead of carrying on business in pharmaceuticals, carry on business in litigations; litigations are to be instituted only against those, use by whom of a similar/deceptively similar mark affects the respondent/plaintiff. Reference may be made to National Bello v. Metal Goods Mfg. Co. P. Ltd., (1970) 3 SCC 665, Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., (2004) 76 DRJ 616, Pankaj Goel v. Dabur India Ltd., (2008) 38 PTC 49 (Del) (DB), Novartis AG v. Crest Pharma Pvt. Ltd., (2009) 41 PTC 57 (Del), Cadila Healthcare Ltd. v. Aureate Healthcare Pvt. Ltd., 2012 SCC OnLine Del 3940 and Nuvoco Vistas Corporation Ltd. v. J.K. Laxmi Cement Ltd., 2019 SCC OnLine Del 8057.
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(Emphasis Supplied)
55. Under the law, it is the right of two parties before the Court, which has to be determined and the Court has not to examine the right of other parties. (See: PM Diesels Ltd. Versus S.M. Diesels, 1994 SCC OnLine Del 117, Para 8)
56. The defendants are not the registered proprietors of the mark PENTA. They have not been authorized by the plaintiffs for use of the said mark. The defendants are using an identical mark for goods and services, which are directly covered by the plaintiffs registration for VOLVO PENTA, Ex. PW-1/23, for Automobile tools, workshop tools, etc. Therefore, the mark VOLVO PENTA is clearly infringed in terms of Section 29(1), (2) and (3) of the Trademarks Act, 1999.
57. The two registrations for PENTA for Marine Motors, Ex. PW-1/22A in Class 7 and Ex. PW-1/22B, in Class 12 for boats, are also infringed since the defendants goods and services are in the same field. The