Karnataka High Court
3M India Limited vs Avery Dennison (India) Private Limited on 14 March, 2024
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NC: 2024:KHC:10509
OS No. 6 of 2021
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 14TH DAY OF MARCH, 2024
BEFORE
THE HON'BLE MR JUSTICE ANANT RAMANATH HEGDE
ORIGINAL SUIT NO. 6 OF 2021
BETWEEN:
1. 3M INDIA LIMITED
HAVING ADDRESS AT PLOT NOS.48-51,
ELECTRONICS CITY,
HOSUR ROAD,
BENGALURU-560 100,
INDIA,
REPRESENTED BY ITS AUTHORIZED SIGNATORY,
MR. ARUN RAJENDRAN.
2. 3M INNOVATIVE PROPERTIES COMPANY
3M CENTER, ST. PAUL,
MINNESOTA,
UNITED STATES OF AMERICA,
Digitally REPRESENTED BY ITS AUTHORIZED SIGNATORY,
signed by MR. C. MICHAEL GEISE.
PRAMILA G V ...PLAINTIFFS
Location:
HIGH COURT (BY SRI. SATYAM RATHORE.,ADVOCATE FOR PLAINTIFF NO.1
OF
KARNATAKA AND 2)
AND:
1. AVERY DENNISON (INDIA) PRIVATE LIMITED
HAVING ADDRESS AT P-24,
GREEN PARK EXTENSION,
NEW DELHI-110 016,
INDIA.
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NC: 2024:KHC:10509
OS No. 6 of 2021
ALSO AT: PLOT NO. 6B, 1ST MAIN ROAD,
KIADB, PHASE 1, PEENYA INDUSTRIAL AREA,
BENGALURU, KARNATAKA-560 058.
ALSO AT: 11TH FLOOR, SPAZE PLATINUM TOWER,
SECTOR 47, SOHNA ROAD,
GURUGRAM-122 001, HARYANA, INDIA.
THROUGH ITS AUTHORIZED REPRESENTATIVE/
DIRECTOR.
...DEFENDANT
(BY SRI. ARJUN SANTHOSH.,ADVOCATE
SRI. THARUN KHURANA.,ADVOCATE
SRI. ABHIJEET DESHMUKH.,ADVOCATE)
THIS OS IS FILED UNDER ORDER VII RULE 1 OF CPC,
1908 R/W SECTION 22 OF THE DESIGNS ACT, 2000, PRAYING
TO A) PASS A DECREE FOR PERMANENT AND PERPETUAL
INJUNCTION, IN FAVOUR OF THE PLAINTIFFS AND AGAINST
THE DEFENDANT, THEREBY RESTRAINING THE DEFENDANT BY
ITSELF, ITS DIRECTORS OFFICERS SERVANTS,
REPRESENTATIVES, STOCKISTS, DEALERS, AGENTS AND ALL
OTHER PERSONS CLAIMING UNDER OR THROUGH THEM OR
ACTING IN CONCERT WITH THEM OR OTHERWISE
HOWSOEVER FROM MANUFACTURING, SELLING,
DISTRIBUTING, OFFERING FOR SALE, ADVERTISING,
MARKETING, EXPORTING DIRECTLY OR INDIRECTLY, DEALING
WITH "FLEXIBLE MEDIAN MARKET" EMBODYING THE PLAINTIFF
NO.2'S REGISTERED DESIGN BEARING NO.280506 IN ANY
MANNER WHATSOEVER AND ETC.
THIS OS COMING ON FOR FINAL HEARING, THIS DAY,
THE COURT DELIVERED THE FOLLOWING:
JUDGMENT
The suit is for permanent injunction to restrain the defendant and any one claiming under the defendant from manufacturing, selling, distributing, offering for sale, advertising, marketing, exporting directly or indirectly dealing with "Flexible Median Marker" embodying the -3- NC: 2024:KHC:10509 OS No. 6 of 2021 registered design bearing No.280506 in the name of plaintiff No.2.
2. The plaintiffs have also sought a mandatory injunction to direct the defendant to deliver the disputed products, moulds, dies, labels, printed materials, embodying the design bearing No.280506 of plaintiff No.2 and also for rendition of accounts.
3. Learned counsel for the plaintiffs and defendant have submitted a petition under Order XXIII Rule 3 of Code of Civil Procedure reporting settlement.
4. Officials of the Plaintiffs' company and defendant's company are not present before the Court. However, the learned counsel for the Plaintiffs' company and the learned counsel for the defendant's company submit that the affidavits are filed along with the compromise petition, wherein, it is stated that the signatory to the compromise petition are authorised by the Plaintiffs and the defendant. Hence, without insisting for the presence of the officials of the parties to the proceeding, the compromise petition is taken on record.
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NC: 2024:KHC:10509 OS No. 6 of 2021
5. This Court has gone through the compromise petition. This Court does not find any legal impediment to accept the terms of the compromise.
6. Accordingly, the Original Suit is disposed of in terms of the settlement arrived at by the parties to the proceeding.
7. Registry to draw the decree, incorporating the relevant portion of the terms and conditions of the settlement extracted below;
"The Defendant by itself, its Directors, officers, servants, representatives, stockists, dealers, agents, and all other persons claiming under or through them or acting in concert with them or otherwise, irrevocably, and unconditionally undertakes and agrees that irrevocably and unconditionally undertakes and agrees that:
a) Defendant accepts and acknowledges that Plaintiff No.2 is the exclusive Proprietor of the registered Design bearing no. 280506 which is valid and subsisting under law.
b) Defendant accepts and undertakes that Defendant or its affiliates/subsidiary or parent company either -5- NC: 2024:KHC:10509 OS No. 6 of 2021 through itself or through its Directors, officers, servants, representatives, stockists, dealers, agents, and all other persons claiming under or through them or acting in concert with them or otherwise, will not challenge/assist in challenging the validity of the registered Design bearing no.280506.
c) Defendant accepts and undertakes that it by itself, its Directors, officers, servants, representatives, stockists, dealers, agents, and all other persons claiming under or through them or acting in concert with them or otherwise has stopped dealing in the impugned Flexible Median Markers embodying the Plaintiff No. 2' s registered Design bearing no. 280506 in any manner whatsoever, since the passing of the ex-parte ad interim Order of temporary injunction.
d) Defendant further accepts and undertakes that it shall refrain from manufacturing, selling, distributing, offering for sale, advertising, marketing, exporting directly or indirectly, either for itself or for any third party, dealing with either the impugned "Flexible Median Marker" embodying the Plaintiff No. 2 's registered Design bearing no. 280506 in any manner whatsoever or any other Flexible Median Marker, which allegedly infringes uponPlaintiffNo.2's registered Design bearing no. 280506, during the -6- NC: 2024:KHC:10509 OS No. 6 of 2021 term of the Plaintiff's registered Design bearing no.
280506.
e) Defendant accepts and undertakes that it currently has no stock of infringing impugned "Flexible Median Marker" in its possession.
f) Defendant accepts and declares that all moulds and dies used for manufacturing/designing of the infringing impugned ''Flexible Median Marker" no longer exists as the same have been completely destroyed in entirety and not transferred to any third party ..
g) Defendant accepts and undertakes to sell the "Alternate Flexible Median Marker" that shall not infringe PlaintiffNo.2's registered Design bearing No. 280506. The Plaintiffs admit and declare that the current design of Defendant's Flexible Median Marker as in Annexure A is not infringing Plaintiff No.2 registered design bearing No. 280506.
h) The Defendant confirms that it has no objection whatsoever to the Plaintiffs is suing a press release in any/all mediums in relation to the settlement of the present dispute with the Defendant, final version whereof is annexed herewith as Annexure B.
i) Both parties shall bear their own cost of litigation. -7-
NC: 2024:KHC:10509 OS No. 6 of 2021
j) Defendant shall take steps to withdraw the Original Side Appeal (Avery Dennison (India) Private Limited v. 3M India Limited & Anr., in OSA No. 8 of 2022) pending before the Hon'ble Division bench of this Hon'ble Court, forthwith.
This compromise binds the parties, their heirs, successors in interest, and assigns.
The Plaintiffs reserve the liberty to initiate appropriate legal proceedings against the Defendant for breach of any of the present settlement terms, in accordance with law. Notwithstanding the above and without prejudice to any other remedy available to the Plaintiffs in law, the Plaintiffs shall be entitled to seek liquidated damages for the Defendant's breach of Clause 9 set out above."
8. The compromise petition presented before the Court is treated as part of the decree. Since, reference is made to annexures - A and B in the compromise petition, said annexures are also treated as part of the decree.
Suit is decreed accordingly.
Sd/-
JUDGE PHM/List No.: 1 Sl No.: 10