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In the Aktiebolaget Volvo & Ors. vs. Vaishali Travels & Anr, case, the Delhi High Court has pronounced that global automotive manufacturer Volvo has a prima facie case against the travel agency Vaishali Travels located in Gujarat.
The court stated that the latter’s act of trademark infringement would cause irreparable loss to Volvo in the absence of an ex parte interim injunction in favour of the plaintiff.
Aktiebolaget Volvo, or Volvo, filed a trademark infringement case against the travel agency, claiming that Vaishali Travels was using ‘Volvo’ in its domain name, www.vaishalivolvo.com, and email ID, email@example.com.
The plaintiff sought an injunction from the court to restrain the defendant from using ‘Volvo’ in both its domain name and email ID. The automobile maker has been using ‘Volvo,’ a globally recognized name, since 1915.
“Volvo has a reputation and is synonymous with comfortable and qualitative travel vehicles in India and that creates an aspiration for third parties such as Vaishali Travels to create an association,” said Safir Anand, senior partner and head of trademarks, contractual and commercial IP at Anand & Anand in Noida.
“Misusers adopt well-known marks precisely for the reason that they are so well-recognized - counting on the fact that consumers, some if not all, will be easily misled into purchasing the goods/services being offered by the misuser. The intent is usually to make some quick, illegal profits,” said C.A. Brijesh, a partner in Remfry & Sagar in New Delhi.
The court issued an ex parte interim injunction restraining Vaishali Travels, its subsidiaries, affiliates, franchisees, proprietors, officers, servants, agents, distributors, stockists and representatives from infringing Volvo’s registered trademark using the domain name www.vaishalivolvo.com, among others, until the next date of hearing.
The court’s judgement mentions the following: 1) That the plaintiffs have over two dozen 'Volvo' trademark registrations in India. The earliest was registered in 1975. 2) That Volvo established a flagship company in India in 1996. 3) That the 'Volvo' trademark is recognized as well-known in the Indian Trade Marks Register.
The Bombay High Court also recognized this in the Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat, 1998 PTC (18) 47 case.
“In the instant case, since the order passed by the High Court was an interim order and an ex-parte order, it would be difficult to assume the defenses that Vaishali Travels may take, should it decide to contest the case,” said Brijesh. “Having said that, going by the facts set out in the preceding paragraphs, it would be fair to state that prima facie the activities of Vaishali Travels fall squarely in the realm of infringement of trademark and passing off.”
Anand agrees. Domain names are integral parts of businesses that have commercial activities online, he explained. Domain names as well as trademarks, which serve as business identifiers, help promote a brand.
The court also restrained Vaishali Travels from using the ‘Volvo’ trademark as a meta tag on the website’s source code, among others, until the next date of hearing.
Meta tags play a vital role in a brand’s online presence. Yet, when used by an infringer, such misuse is not directly discernible by the rightful owner of the trademark.
“As the whole world moved to digital, so did the infringers,” said Anand. “Unwarranted use of a well-known brand name in a meta tag is actually a strategy adopted to manipulate the search results on search engines and hijack the user traffic towards a specific domain name which may not be the actual brand’s page. Therefore, with this function, an infringer just needs to manage their source code by inserting a competitor’s trademark or misleading meta tag descriptions that are similar to that of his/her competitor so as to enable the search engine to pop out their website as well when an unaware user searches for the competitor.”
This would be very damaging to the actual brand being searched for in the Internet.
To illustrate an example, Brijesh said: “In India, the Volvo brand of buses are a popular mode of transport for inter-city travel and use of Volvo as a meta tag by Vaishali Travels would likely have ensured that people looking to make online reservations for routes served by the Volvo brand of buses would be redirected to the website of Vaishali Travels. On account of such elaborate (mis)use of the well-known mark ‘Volvo’ by Vaishali Travels, the court has rightly granted interim reliefs to the plaintiffs. Also, use of the mark ‘Volvo’ as a meta tag further assists plaintiff in establishing mala fide of the Vaishali Travels.”
“The present case is not a first one wherein a well-known brand was seen knocking on the doors of the court to claim ownership over their rightful brand. Other big names also include TATA, Vodafone, Bisleri, etc,” said Anand. “The courts in India have mostly been inclined towards passing an order in favour of the rightful trademark owners under the common law of passing off and grant a permanent injunction against the wrongful user of the domain name.”
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