Delhi High Court
Aktiebolaget Volvo & Ors. vs R. Venkatachalam And Anr. on 20 January, 2025
$~
* 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: [email protected]
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.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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 26 th 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”.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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 23 rd
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
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By:AMAN UNIYAL
Signing Date:20.01.2025
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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.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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.
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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 court‟s 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 court‟s jurisdiction. None of
the plaintiffs have registered or branch offices in India or within this court‟s
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
„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 19 th 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.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
7. Subsequently, this Court vide order dated 03 rd 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.”
Signature Not Verified
Digitally Signed CS (COMM) 346/2018 Page 12 of 52
By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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:
“xxx xxx xxx
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.
xxx xxx xxx
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.
xxx xxx xxx”
Signature Not Verified
Digitally Signed CS (COMM) 346/2018 Page 13 of 52
By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
(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:
“xxx xxx xxx
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.
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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:
“xxx xxx xxx
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.
xxx xxx xxx
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.
xxx xxx xxx”
(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
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By:AMAN UNIYAL
Signing Date:20.01.2025
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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:
“xxx xxx xxx
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 corporate‟s 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 theSignature Not Verified
Digitally Signed CS (COMM) 346/2018 Page 16 of 52
By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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.
xxx xxx xxx
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 PW1‟s 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 Norichika‟s 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 Norichika‟s initial actions. The
continuous appearance of witnesses on behalf of the Plaintiff, who
have acknowledged Mr. Kensuke Norichika‟s 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 Plaintiff‟s payment of court fee,
consistent submission of documentary and oral evidence, and active
participation in the trial process throughout this period.
xxx xxx xxx”
(Emphasis Supplied)
Signature Not Verified
Digitally Signed CS (COMM) 346/2018 Page 17 of 52
By:AMAN UNIYAL
Signing Date:20.01.2025
15:47:02
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:
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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.
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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. 1‟s 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:
“xxx xxx xxx
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.
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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.
xxx xxx xxx
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 don‟t 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.
xxx xxx xxx”
(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.1‟s 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
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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.1‟s
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.
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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. Trademark Regis Date of Class Goods User Valid Ex.
No No. application & Detail Upto
service
details
1. PENTA 265555 09/07/1970 7 Marine Proposed 09/7/ PW-
To be 2025
(word) Motors 1/22A
used
2. PENTA 265556 09/07/1970 12 Boats. Proposed 9/7/ PW-
to be 2025
(Device) 1/22B
used
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3. VOLVO 1384891 2005 4,7,9, 14/9/ PW-
PENTA
11,12, 2025 1/23
17,35,
37,38,
42
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:
“xxx xxx xxx
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.
xxx xxx xxx”
(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 filedSignature Not Verified
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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:
“xxx xxx xxx
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.
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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.
xxx xxx xxx”
(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:
“xxx xxx xxx
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.
xxx xxx xxx”
(Emphasis Supplied)
37. Thus, it is clear that the plaintiffs are the registered proprietors of the
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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
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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.
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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:
“xxx xxx xxx
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.
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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.
xxx xxx xxx
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 beSignature Not Verified
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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.
xxx xxx xxx”
(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
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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:
“xxx xxx xxx
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
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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.
xxx xxx xxx
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.
xxx xxx xxx”
(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:
“xxx xxx xxx
40. It was also contended by Mr. Rohtagi that since other parties were
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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.”
xxx xxx xxx”
(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.
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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:
“xxx xxx xxx
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.
xxx xxx xxx”
(Emphasis Supplied)
51. No evidence has been led by the defendants to establish in any
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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:
“xxx xxx xxx
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.
xxx xxx xxx”
(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
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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:
“xxx xxx xxx
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.
xxx xxx xxx”
(Emphasis Supplied)
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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 defendants‟
own documents show that their dealers are engaged in „Marine and
Engineering works‟ and supply goods to inter-alia ships deployed by the
Indian Navy. This is the same field and the same customer base, to which
the plaintiffs supply their „PENTA‟ branded goods. Reference in this regard
may be made to letter dated 21st January, 2006, Ex. DW-1/7, sent by one
Harshad Marine & Engineering Company to the defendants.
58. „McCarthy on Trademarks and Unfair competition‟, clearly provides
that greater the similarity in the marks, lesser the similarity is required in the
goods or services of the parties to support a finding of likelihood of
confusion. The relevant extract from the aforesaid book, is as follows:
“xxx xxx xxx
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Degree of similarity needed varies with competitive differences
Competitive Goods or Services: Less Similarity of Marks is
Required. The degree of similarity of the marks needed to prove likely
confusion will vary with the difference in the goods and services of the
parties. Where the goods and services are directly competitive, the
degree of similarity required to prove a likelihood of confusion is less
than in the case of dissimilar products. As the Trademark Board
observed: “[A]s the degree of similarity of the goods of the parties
increases, ‘the degree of similarity [of the marks] necessarily to
support a conclusion of likely confusion Declines.‟”
Very Similar Marks: Less Similarity in Goods or Ser-vices is
Needed. Conversely, the greater the similarity in the marks, the lesser
the similarity required in the goods or services of the parties to
support a finding of likely confusion. If the marks are very similar, it
is “only necessary that there be a viable relationship between the
goods or services in order to support a holding of likelihood of
confusion.” If the marks are identical, then the degree of similarity
between the parties’ goods or services can be quite large and there
will still be a likelihood of confusion.
xxx xxx xxx”
59. In light of the above, given the identical marks of the plaintiffs and
the defendants, even if one was to assume that there is less similarity in
goods and services of the plaintiffs and the defendants, there will still be a
likelihood of confusion amongst the consumers.
60. Hence, trademark infringement by the defendants is clearly
established.
61. The evidence on record shows that the plaintiffs have been using their
marks for automobile engines parts, marine engines and tools in India. The
evidence on record unequivocally establishes continuous use of the mark
PENTA by the plaintiffs since 1992, which is ten years prior to the earliest
claimed use by the defendants of the „PENTA‟ mark.
62. The presence of tools, workshop equipment, service equipment
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bearing the PENTA mark and corporate name is likely to confuse customers
and industry members indicating, that an association exists between the
plaintiffs and the defendants or that the defendants‟ goods originate from the
plaintiffs or are meant to accompany the plaintiffs‟ products.
63. Commenting on the aspect of yardstick for assessing deceptive
similarity and likelihood of confusion, this Court in the case of Kabushiki
Kaisha Toshiba Versus Toshiba Appliances Co., 2024 SCC OnLine Del
5594, has held, as follows:
“xxx xxx xxx
79. For considering the appropriate yardstick for assessing deceptive
similarity, it would be instructive to reference a few judgments of the
Supreme Court of India, rendered under the Trade Marks Act 1958. In the
landmark case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.,
10 the Court emphasized that the likelihood of confusion should be
assessed from the perspective of an average consumer. It was held that
when the similarity between the Plaintiff‟s and the Defendant‟s mark is
so close – whether visual, phonetic, or otherwise – and the Court
concludes that there is an imitation, no further evidence is necessary to
establish that the Plaintiff‟s rights have been violated. This precedent
underscores that the threshold for proving deceptive similarity does not
necessarily require extensive evidence if the initial comparison clearly
indicates imitation, thus simplifying the process of adjudicating claims
of infringement based on superficial resemblance. In Amritdhara
Pharmacy v. Satya Deo Gupta, 11 the Court stressed that in determining
deceptive similarity, the analysis must be conducted from the perspective
of a person who is likely to be deceived or confused. This judicial
approach considers the state of mind of a customer possessing average
intelligence and having imperfect recollection. The Court observed that
minor differences between the marks might not be sufficient to
distinguish them for an unwary consumer, especially if the overall
impression created by the marks is one of similarity. Central to this
inquiry is whether the public is likely to believe that the goods or services
offered under the marks in question emanate from a common source.
This perspective ensures that the focus remains not on the minutiae of
the differences, but on the overall impact of the marks on the
consumer‟s perception. Applying these well-established principles to the
dispute at hand, the visual and phonetic similarities between “TOSHIBA”
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and “TOSIBA” become evidently significant, with only a single letter
differentiating them. This minor variation does little to mitigate the visual
similarity between the marks, which could readily lead to confusion owing
to their nearly identical arrangement and appearance of letters.
Moreover, the close phonetic resemblance would also easily foster
confusion, particularly in environments where the marks are spoken rather
than read, such as during verbal communications in stores or through
auditory channels in advertisements. In such scenarios, the slight phonetic
difference is likely to go unnoticed, potentially leading consumers to
believe that the products originate from the same source.
xxx xxx xxx”
(Emphasis Supplied)
64. On the aspect of passing off with respect to a person adopting a name
in connection to his business or services, which already belongs to someone
else, the Supreme Court in the case of Laxmikant V. Patel Versus
Chetanbhat Shah and Ors., (2002) 3 SCC 65, has held that the same results
in confusion and has propensity of diverting the customers and clients of
someone else to himself. The relevant portion is extracted as under:
“xxx xxx xxx
10. A person may sell his goods or deliver his services such as in case
of a profession under a trading name or style. With the lapse of time
such business or services associated with a person acquire a reputation
or goodwill which becomes a property which is protected by courts. A
competitor initiating sale of goods or services in the same name or by
imitating that name results in injury to the business of one who has the
property in that name. The law does not permit any one to carry on his
business in such a way as would persuade the customers or clients in
believing that the goods or services belonging to someone else are his
or are associated therewith. It does not matter whether the latter person
does so fraudulently or otherwise. The reasons are two. Firstly, honesty
and fair play are, and ought to be, the basic policies in the world of
business. Secondly, when a person adopts or intends to adopt a name in
connection with his business or services which already belongs to
someone else it results in confusion and has propensity of diverting the
customers and clients of someone else to himself and thereby resulting
in injury.
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11. Salmond & Heuston in Law of Torts (20th Edn., at p. 395) call this
form of injury as “injurious falsehood” and observe the same having
been “awkwardly termed” as “passing-off” and state:
“The legal and economic basis of this tort is to provide
protection for the right of property which exists not in a
particular name, mark or style but in an established business,
commercial or professional reputation or goodwill. So to sell
merchandise or carry on business under such a name, mark,
description, or otherwise in such a manner as to mislead the
public into believing that the merchandise or business is that
of another person is a wrong actionable at the suit of that
other person. This form of injury is commonly, though
awkwardly, termed that of passing-off one’s goods or business
as the goods or business of another and is the most important
example of the wrong of injurious falsehood. The gist of the
conception of passing-off is that the goods are in effect telling
a falsehood about themselves, are saying something about
themselves which is calculated to mislead. The law on this
matter is designed to protect traders against that form of
unfair competition which consists in acquiring for oneself, by
means of false or misleading devices, the benefit of the
reputation already achieved by rival traders.”
12. In Oertli v. Bowman [1957 RPC 388 (CA)] (at p. 397) the gist of
passing-off action was defined by stating that it was essential to the
success of any claim to passing-off based on the use of given mark or get-
up that the plaintiff should be able to show that the disputed mark or get-
up has become by user in the country distinctive of the plaintiff’s goods
so that the use in relation to any goods of the kind dealt in by the plaintiff
of that mark or get-up will be understood by the trade and the public in
that country as meaning that the goods are the plaintiff’s goods. It is in
the nature of acquisition of a quasi-proprietary right to the exclusive use
of the mark or get-up in relation to goods of that kind because of the
plaintiff having used or made it known that the mark or get-up has
relation to his goods. Such right is invaded by anyone using the same or
some deceptively similar mark, get-up or name in relation to goods not of
plaintiff. The three elements of passing-off action are the reputation of
goods, possibility of deception and likelihood of damages to the
plaintiff. In our opinion, the same principle, which applies to trade mark,
is applicable to trade name.
13. In an action for passing-off it is usual, rather essential, to seek an
injunction, temporary or ad interim. The principles for the grant of such
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injunction are the same as in the case of any other action against injury
complained of. The plaintiff must prove a prima facie case, availability of
balance of convenience in his favour and his suffering an irreparable
injury in the absence of grant of injunction. According to Kerly (ibid,
para 16.16) passing-off cases are often cases of deliberate and
intentional misrepresentation, but it is well settled that fraud is not a
necessary element of the right of action, and the absence of an intention
to deceive is not a defence, though proof of fraudulent intention may
materially assist a plaintiff in establishing probability of deception.
Christopher Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states
that the plaintiff does not have to prove actual damage in order to
succeed in an action for passing-off. Likelihood of damage is sufficient.
The same learned author states that the defendant’s state of mind is
wholly irrelevant to the existence of the cause of action for passing-off
(ibid, paras 4.20 and 7.15). As to how the injunction granted by the court
would shape depends on the facts and circumstances of each case.
Where a defendant has imitated or adopted the plaintiff’s distinctive
trade mark or business name, the order may be an absolute injunction
that he would not use or carry on business under that name
(Kerly, ibid, para 16.97).
xxx xxx xxx”
(Emphasis Supplied)
65. The fact that defendants have used a part of the plaintiffs‟ trademark
as its own trademark and corporate name, also amounts to infringement in
terms of Section 29(5) of the Trade Marks Act, 1999. Even otherwise, the
plaintiffs are entitled to rights in the mark „PENTA‟, as „PENTA‟ is
registered separately through two applications.
66. Thus, the plaintiffs are entitled under statutory and common law to the
use of their marks „PENTA‟ and „VOLVO PENTA‟ in relation to their
goods and services. The plaintiffs‟ registrations constituted a constructive
notice to third parties. The defendants‟ witness, DW-1 has himself admitted
in his cross examination dated 11th April, 2019 to question nos. 49 and 50,
that he had constructive notice of the plaintiffs‟ registrations. Hence, the
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corporate name on its products, cannot be considered to be honest.
67. Registration of „VOLVO PENTA‟ as a composite mark, does not
prevent the plaintiffs from claiming an injunction against the defendants‟
use of the mark „PENTA‟. „PENTA‟ is an essential feature of the mark
„VOLVO PENTA‟. Both VOLVO and PENTA are distinct and dominant
and are liable for protection. The mark „PENTA‟ has been used as a
trademark. Further, the use on various invoices and purchase orders clearly
establish the distinct use of the mark „PENTA‟.
68. This Court notes the submission of the plaintiffs that with respect to
the mark VOLVO PENTA, PENTA is a sub-brand, which is entitled to
equal protection. In this regard, reference may be made to the judgment in
the case of Pidilite Industries Limited Vs. Jubilant Agri & Consumer
Products Limited, 2014 SCC OnLine BOM 50, wherein, it has been held as
follows:
“xxx xxx xxx
12.5 As submitted by the Plaintiff, the fact that the Plaintiff is using the
word „MARINE‟ as a mark is further reinforced from the extract of the
Plaintiff’s product guide which is at pages 41 to 52 of the Plaint. This
extract refers to 11 products of the Fevicol Division of the Plaintiff and
contains a photograph of the actual container in which the products are
sold. It can be seen from the product guide that for all the products
Fevicol is used as a house/umbrella mark in conjunction with
individual product identification marks/brands like SPXPRESS; PL
111; PL 222; 707FW; DDL; SR998; 998FW; SR 50. If the Defendant’s
argument is to be accepted, each of the above products identification
marks/brands will have to be regarded as descriptive. As correctly
submitted by the Plaintiff, how such alpha numeric can be regarded as
descriptive defies logic and that this reinforces the fact that these
descriptions are product identification marks/brands which are used in
conjunction with the house/umbrella marks/brands.
xxx xxx xxx
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12.7 As submitted by the Plaintiff, there is yet another fundamental
fallacy in the argument of the Defendant viz. the assumption that the
word „MARINE‟ is descriptive of the use to which the Plaintiff’s product
is put. As set out in the Plaint and on the products themselves, the
Plaintiff’s product is a water resistant synthetic adhesive which is used
for conditions where the product will be exposed to water or high
humidity. The Defendant has assumed that „MARINE‟ is synonymous
with and/or indicative of water. This is not the case, as the Defendant
itself has disclosed at page 83 of its reply affidavit, by relying on the
Oxford Dictionary that the word „MARINE‟ is understood as indicative
of matters pertaining to the sea.
12.8 For the aforestated reasons, I am of the view that the Plaintiff is
using the word „MARINE‟ as a trademark and not in a descriptive sense.
13. The Defendant has strenuously contended that the Defendant itself is
using the word „MARINE‟ in a descriptive sense. This contention of the
Defendant is denied and disputed by the Plaintiff. The Plaintiff has
drawn the attention of this Court to the photograph at page 99 of the
Plaint. This photograph shows that in addition to the words
“JIVANJOR” and the words „MARINE PLUS‟, the Defendant has also
used the words “„MARINE‟ PLYWOOD SPECIAL ADHESIVE” &
“HEAT AND WATERPROOF ADHESIVE”. As submitted by the
Plaintiff, this makes it clear that where the Defendant wishes to use
words which are descriptive of its product, it has used the words
“„MARINE‟ PLYWOOD SPECIAL ADHESIVE” & “HEAT AND
WATERPROOF ADHESIVE”. Hence it is this description which is
descriptive. The words “MARINE PLUS” are not descriptive but are
used as a mark. In other words, what the Defendant is trying to convey
to the members of the trade and the public is that the product in
question is sold under the „MARINE‟ brand/sub-brand.
xxx xxx xxx”
(Emphasis Supplied)
69. When the trademark of the defendant is identical with the registered
trademark of the plaintiff and when the goods or services of the defendant
are identical with the goods or services covered by the registered trademark,
the Court shall presume that it is likely to cause confusion on the part of the
public. (See: Renaissance Hotel Holdings Inc. Versus B. Vijaya Sai and
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Others, (2022) 5 SCC 1)
70. Documentary evidence shows that the mark „PENTA‟ has been used
extensively across the world for nearly hundred years. In India, the mark has
been in extensive and continuous use, for several years. The evidence on
record shows extensive and continuous use in India since 1992. The various
documents on record, which have been proved through oral testimony,
establishing the immense goodwill and reputation of the marks, „PENTA‟
and „VOLVO PENTA‟ in India, are as follows:
i. Invoices and purchase orders evidencing the sale of plaintiff no. 1‟s
products under the trademark „VOLVO PENTA‟ – Exhibit PW1/24.
ii. Invoices, purchase and consignment order, authorised dealer
certificate evidencing the sale of plaintiff no. 1‟s product under the mark
„VOLVO PENTA‟ in India, over the years, dating back to the year 1998 –
Mark J.
iii. Letters, invoices, purchase orders, consignment orders and documents
which illustrate that plaintiff no. 1 has been carrying out business under the
mark „VOLVO PENTA‟ and „PENTA‟ in India dating to back to 17 th
December, 1992 – Exhibit PW/Mark 1/25.
71. Further, the mark has been advertised and promoted in India through
brochures, sponsorships and other diverse endeavours. Resultantly, the
plaintiffs‟ goods and services under the mark „PENTA‟ and „VOLVO
PENTA‟ are known amongst the larger section of the public. Relevant
documents, as exhibited, are as under:
i. Original signed certificate showing sales figures of plaintiff no. 1‟s
product under the trademark „VOLVO PENTA‟ in India – Exhibit PW1/25ASignature Not Verified
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ii. Advertisements and articles published in various magazines and
newspapers in India bearing the trademark „VOLVO PENTA‟ and
illustrating use of the mark „VOLVO PENTA‟ – Exhibit PW1/30
iii. Attested copy/certificate of the advertisement, publicity and
marketing expenses of the VOLVO PENTA Division (Division of Volvo
India Pvt. Ltd.) in between the years 1997 – 2010 – Exhibit PW1/32
iv. Extracts from the website of the plaintiffs‟ website, which talks about
the products of the plaintiffs under the mark „VOLVO PENTA‟ – Exhibit
PW1/33
v. Printouts of photographs of the plaintiff no. 1‟s products being sold
under the trademark „VOLVO PENTA‟ – Exhibit PW1/33A
vi. Internet Extract from the plaintiffs‟ website evidencing that the
trademark „VOLVO PENTA‟ is used for various products – Exhibit
PW1/34A
72. The goodwill and reputation of the plaintiffs‟ goods and services
under the mark „VOLVO PENTA‟ is also established from the fact that
these marks are registered in various countries of the world and the products
bearing these marks, are sold in various countries of the world, including,
India. The documentary evidence on record, which has been proved during
the course of evidence, is as under:
i. Certified copy of the trademark registration certificate for the mark
„PENTA‟ bearing no. 1590421 in the Japanese Jurisdiction in favour of
plaintiff no. 2 – Exhibit PW1/20A
ii. Translation of the certified copy of trademark registration certificate
for the mark „PENTA‟ in the Japanese jurisdiction in favour of plaintiff no.
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2 – Mark G
iii. Certified copy of the trademark registration certificates for the mark
„PENTA‟ and „VOLVO PENTA‟ respectively in UK in favour of plaintiff
no. 2 – Exhibit PW1/20C and Exhibit PW1/20D
iv. Certified copy of trademark registration certificates for the marks
„VOLVO PENTA‟ and „PENTA‟ respectively in USA in favour of plaintiff
no. 2 – Exhibit PW1/20E and Exhibit PW1/20F
v. Certified copy of trademark registration certificate for the mark
„VOLVO PENTA‟ in the Japanese jurisdiction in favour of plaintiff no. 2 –
Exhibit PW1/20G
vi. Translation of the certified copy of trademark registration certificate
for the mark „VOLVO PENTA‟ bearing registration no. 1016350 in the
Japanese jurisdiction in favour of plaintiff no. 2 – Mark H
vii. Copy of articles and advertisements published in various magazines
and newspapers which deal with the plaintiffs‟ products under the mark
„VOLVO PENTA‟ – Exhibit PW1/29
73. Accordingly, Issue nos. 4 and 5 are decided in favour of the plaintiffs
and against the defendants.
Issue no. 7: Whether the suit of the plaintiff is barred by the principles
of delay, laches and acquiescence?
74. The burden of proving delay, laches and acquiescence, lay on the
defendants. However, there is nothing on record to show that the suit by the
plaintiffs is delayed in any manner or there is acquiescence on the part of the
plaintiffs to the use of the mark „PENTA‟ by the defendants. Even
otherwise, legal precedents clearly state that mere delay does not amount to
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acquiescence, unless accompanied by an act that indicates acceptance or
encouragement of the infringing activities.
75. Thus, in the case of Pankaj Goel Versus Dabur India Ltd., 2008 SCC
OnLine Del 1744, it has been held, as follows:
“xxx xxx xxx
21. As far as the Appellant’s argument that the word MOLA is
common to the trade and that variants of MOLA are available in the
market, we find that the Appellant has not been able to prima facie prove
that the said „infringers‟ had significant business turnover or they posed
a threat to Plaintiff’s distinctiveness. In fact, we are of the view that the
Respondent/Plaintiff is not expected to sue all small type infringers who
may not be affecting Respondent/Plaintiff business. The Supreme Court
in National Bell v. Metal Goods, (1970) 3 SCC 665 : AIR 1971 SC 898 has
held that a proprietor of a trademark need not take action against
infringement which do not cause prejudice to its distinctiveness.
In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., (1989) 7 PTC 14 it has
been held as under:–
“….To establish the plea of common use, the use by other
persons should be shown to be substantial. In the present case,
there is no evidence regarding the extent of the trade carried on
by the alleged infringers or their respective position in the trade.
If the proprietor of the mark is expected to pursue each and
every insignificant infringer to save his mark, the business will
come to a standstill. Because there may be occasion when the
malicious persons, just to harass the proprietor may use his
mark by way of pinpricks…. The mere use of the name is
irrelevant because a registered proprietor is not expected to go
on filing suits or proceedings against infringers who are of no
consequence… Mere delay in taking action against the
infringers is not sufficient to hold that the registered proprietor
has lost the mark intentionally unless it is positively proved that
delay was due to intentional abandonment of the right over the
registered mark. This Court is inclined to accept the submissions
of the respondent No. 1 on this point… The respondent No. 1 did
not lose its mark by not proceeding against insignificant
infringers…”
xxx xxx xxx”
(Emphasis Supplied)
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76. Reference may also be made to the judgment in the case of Dr.
Reddys‟ Laboratories Ltd. Versus Reddy Pharmaceuticals Limited, 2004
SCC OnLine Del 668, wherein, it has been held as follows:
“xxx xxx xxx
16. Learned counsel for the defendant has vehemently argued that the
plaintiff is not entitled to this discretionary relief on account of its
acquiescence and laches in objecting to the use of trade mark “Reddy” by
the defendant company. It is submitted that since 1997 the plaintiff knew
that the defendant is trading and functioning under the trade name
“Reddy” but it never objected and to the contrary it kept on having
business dealings with the defendant and appointed him a Delcredere
Agent in April, 2003. This plea of the defendant is also prima
facie untenable for the reason that till August, 2003 there was no clash
of interests between the plaintiff and defendant company and in fact the
defendant was engaged in advancing and promoting the business of the
plaintiff company by acting as its agent for the sale of bulk drugs. The
threat came in August, 2003 when the defendant introduced in the
market its pharmaceutical preparations and thereby threatened the
business interests of the plaintiff company. This move of the defendant
was mala fide on the face of it as it was not manufacturing
pharmaceutical preparations earlier but now it was trying to market the
pharmaceutical preparations manufactured by others under the trade
mark “Reddy”. The plaintiff immediately raised objections, meetings
were held and when nothing came out the plaintiff rushed to the Court.
As such there was neither any acquiescence nor any laches on the part
of the plaintiff to object to the impugned action of the defendant. It
cannot be said that the plaintiff has allowed the defendant to build a
reputation or goodwill in trade name “Reddy” for use on pharmaceutical
preparations. Moreover, the owners of trade marks or copy rights are not
expected to run after every infringer and thereby remain involved in
litigation at the cost of their business time. If the impugned infringement
is too trivial or insignificant and is not capable of harming their business
interests, they may overlook and ignore petty violations till they assume
alarming proportions. If a road side Dhaba puts up a board of “Taj
Hotel”, the owners of Taj Group are not expected to swing into action
and raise objections forthwith. They can wait till the time the user of
their name starts harming their business interests and starts misleading
and confusing their customers.
xxx xxx xxx”
(Emphasis Supplied)
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77. As regards acquiescence, this Court in the case of Kabushiki Kaisha
Toshiba (Supra), has held as follows:
“xxx xxx xxx
132. Acquiescence in legal terms refers to a situation where a party
knowingly stands by, without raising any objection during the
infringement of their rights, particularly when such inaction leads the
infringing party to believe that the conduct is acceptable and can
continue without opposition. Plaintiff‟s actions of diligent enforcement
of rights, demonstrated by issuance of a cease-and-desist notice
immediately upon gaining knowledge of the infringing activities, and
engaging in opposition and rectification proceedings against all
infringing applications or registrations by the Defendant, clearly shows
active resistance rather than acquiescence. In this case, the Defendant
has not provided sufficient evidence to demonstrate any positive act of
encouragement by the Plaintiff that could be construed as acquiescence.
Without such evidence, the defence of acquiescence cannot prevail. The
Defendant has failed to show any positive act of encouragement by the
Plaintiff that would constitute acquiescence.
xxx xxx xxx”
(Emphasis Supplied)
78. Considering the aforesaid, issue no. 7 is decided in favour of the
plaintiffs and against the defendants.
Issue no. 6 : Whether the plaintiffs are guilty of misrepresentation,
suppression and making false statement as alleged in preliminary
objections and if so to what effect?
79. As regards issue no. 6, the onus rested on the defendants, which the
defendants have failed to prove. There is nothing on record to show that
there is any misrepresentation or suppression on the part of the plaintiffs.
80. Accordingly, issue no. 6 is decided in favour of the plaintiffs and
against the defendants.
Issue no. 8: Relief
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81. Considering the facts and circumstances of the present case, plaintiffs
are held entitled for decree of permanent injunction restraining the
defendants, their principle officers, partners, servants, representatives and
agents and any of them from doing business, providing any service,
manufacturing, selling, offering for sale, advertising, directly or indirectly
doing business, under the trademark „PENTA‟.
82. The plaintiffs are held entitled to actual costs recoverable from the
defendants in terms of Commercial Courts Act, 2015. The plaintiffs are
accordingly directed to file their bill of costs within a period of six weeks
from the date of the judgment. As and when the same is filed, the matter will
be listed before the Taxing Officer for computation of costs.
83. The suit is decreed in the above terms.
84. Decree sheet be drawn up.
85. Accordingly, the suit, along with pending applications, is disposed of.
(MINI PUSHKARNA)
JUDGE
JANUARY 20, 2025/ak/au
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