By Lucy Rana and Rima Majumdar
An injunction is often most valuable at the very start of a case, before the infringer knows it is coming. Yet the ordinary rule is that the other side should be heard first. The tension between these two propositions is the subject of the Delhi High Court’s order in Aktiebolaget Volvo & Ors. vs. M/s Pooja Lubricant, where the Court set out, with care, the circumstances in which notice may be dispensed with, and granted an ex parte ad interim injunction to the proprietors of the VOLVO mark against a lubricant’s trader.
The Dispute
The plaintiffs are the owner and registered proprietor of the VOLVO trade mark, which is a well-known name in the automotive industry. It sued a sole-proprietorship involved in the business of lubricants, engine oil, gear oil and allied goods under the marks “MAX VOLVO” and “MAX VOLWO”.
It was the Plaintiffs’ claim that VOLVO is a coined word, adopted in 1915, with a long history of use in India across vehicles, industrial oils, greases and lubricants, and it is recorded as a well-known mark. The plaintiffs relied on several registrations in Class 4, which covers lubricating and industrial oils and greases. Having come across the defendant’s products on an online trading platform and through an investigator, and having found that the defendant had itself applied to register a mark that was objected to, the plaintiffs sued and sought urgent relief without advance notice.
Deceptive similarity: a prima facie view
The Court considering the facts at a prima facie stage held that:
- “MAX VOLVO” reproduces the whole of the VOLVO mark, and the prefix “MAX” is a laudatory, commonplace word that, if anything, suggests a premium variant of a VOLVO product rather than a different trade origin.
- “MAX VOLWO” differs only in substituting a “W” for a “V”, leaving the marks visually near-identical and, when spoken, practically indistinguishable.
- To a purchaser of average intelligence and imperfect recollection, the Court held, “MAX VOLWO” would read as nothing but a variant of VOLVO.
- The goods and trade channels were identical, and the Court held the marks to be deceptively similar, noting that where the similarity is so close as to amount to an imitation, differences in get-up do not save the defendant.
When advance notice may be dispensed with
However, the more instructive part of the order concerns the decision to proceed without notice. It is a well-settled position of law in India that when it comes to civil suits, notice is the norm and ex-parte is the exception. Therefore, when opting to grant a relief basis the exception, the Court must record its reasons in writing and the plaintiff must establish the 3 legs of grant of an ex-parte injunction: prima facie case, balance of convenience, irreparable loss.
In the present case the Court found a real risk of the infringing stock being dispersed before the matter could be heard on merits, if a notice was given to the defendant. The record showed that the defendant dealt in cash, held substantial stock of goods bearing the impugned marks at an office-cum-warehouse, had shifted its premises away from the address on its GST registration, and was prepared to despatch goods across State lines, including to Delhi. Once such goods entered circulation, they could not be recalled, and the resulting harm to the plaintiffs and to consumers could not be undone by an order passed after the defendant appeared. On that reasoning, notice would defeat the very purpose of the injunction.
The Court was equally careful about the proactivity with which the plaintiffs approached the court. The plaintiffs had learned of the online listing some months earlier but had not sat on their rights; they had investigated, obtained a quotation for supply, and filed a protest letter against the Defendant’s trademark application before the TM Registry, seeking refusal of the said mark. This in itself was an assertion of their rights inconsistent with acquiescence. Mere delay, the Court observed, does not defeat an injunction where the infringement is continuing, and the plaintiffs had fairly disclosed the chronology.
Balance of convenience and irreparable injury
Having found a prima facie case, the Court held that the balance of convenience and the likelihood of irreparable injury both favoured the plaintiffs. Damages would not be an adequate remedy: continued sale under the impugned marks threatened to erode the distinctiveness of a coined mark used for over a century, and because lubricants bear directly on vehicle performance, any deficiency in the defendant’s goods could be laid at the plaintiffs’ door, over whose quality control the goods did not pass. Against that, the defendant’s use was of recent origin, and the injunction did not stop it trading in lubricants under any non-infringing mark. The Court accordingly restrained the use of the impugned marks, directed the takedown of the offending online listing, and made clear that its observations were prima facie and that the defendant could seek variation or vacation of the order after appearing.
Why this matters
The order is a clear, practical statement of when a court will act first and hear later. For brand owners, it shows that an ex parte injunction is available where the facts genuinely suggest that notice would let the infringing goods disappear, and that the building blocks of such an application are concrete: evidence of cash dealing, stock, shifting premises and cross-border despatch, a prompt and candid chronology, and a coined or well-known mark whose distinctiveness is at stake. It is also a reminder that courts now expect the three-fold test to be reasoned through on the facts, not merely recited, so the quality of the evidence and the narrative matters as much as the legal label. For traders, the message is equally plain: adopting a near-copy of a well-known mark, and the conduct that tends to accompany it, invites relief granted without a hearing.
Frequently Asked Questions
lubricants-case
It is an urgent, temporary injunction granted without first hearing the other side, intended to hold the position until the defendant can appear. It is treated as exceptional, is limited in time, and the governing rule requires the court to record its reasons for proceeding without notice.
Where giving notice would defeat the purpose of the injunction, for example where there is a real risk that the defendant would dissipate or disperse the infringing goods. In this case the court relied on cash dealings, a large stock, a shift away from the registered address, and readiness to despatch goods across State lines.
The court held, prima facie, that they are. “MAX VOLVO” takes the whole of VOLVO with a laudatory prefix, and “MAX VOLWO” changes only one letter, leaving the marks visually and phonetically close, especially as the goods and trade channels are the same.
Not by itself. The court held that mere delay does not defeat an injunction where the infringement is continuing, particularly where the rights holder has acted on its rights, for example by filing a protest against the defendant’s trade mark application, which is inconsistent with acquiescence.
No. It is interim and prima facie, and records no concluded view on the merits. The defendant may enter appearance and apply to vary or vacate the order, and the suit then proceeds to be decided on the evidence.
The VOLVO lubricants order does not change the law on infringement or on interim relief. Its value lies in how plainly it ties the grant of an injunction without notice to the facts that justify it. An injunction is a tool to preserve a position, and where the facts show that a warning would let the position be destroyed, the court can, and here did, act first and hear afterwards.
For more information on Trademark Searches, Trademark clearance, Trademark watch, Trademark selection, Trademark filing, Trademark registration, Trademark Examination, Trademark Objection Reply, Trademark Hearing, Trademark Opposition, Trademark Publication, Trademark Renewal, Trademark Cancellation, Trademark Rectification, Trademark Infringement, Trademark Passing Off, Ex Parte and Interim Injunctions, Dispensing with Advance Notice under Order XXXIX, Deceptive Similarity, Well-Known Trademark Protection, Trademark Enforcement, Anti-Counterfeiting and Brand Protection, Trademark Litigation, Trademark Licensing, Trademark Assignment etc. in India write to us at info@ssrana.com.