Delhi High Court - Orders
Swarovski Aktiengesellschaft vs Ganesh Jewellery (India) Private ... on 18 September, 2023
Author: C. Hari Shankar
Bench: C.Hari Shankar
$~34
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 102/2022 & I.A. 18093/2023
SWAROVSKI AKTIENGESELLSCHAFT ..... Plaintiff
Through: Mr. Ranjan Narula, Mr. Shashi
Ojha, Ms. Aishani Singh & Ms. Shivangi
Kohli, Advs.
versus
GANESH JEWELLERY (INDIA) PRIVATE LIMITED
..... Defendant
Through: Mr. Mukul Lather, Mr. Devesh
Kumar Chourasia, and Mr. Ashish Kumar
Singh, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 18.09.2023 I.A. 18093/2023 & CS(COMM) 102/2022
1. The dispute between the parties stands settled in terms of Settlement Agreement dated 17 July 2023 drawn up under the aegis of the Delhi High Court Mediation & Conciliation Centre.
2. The terms and conditions of settlement read thus:
"1. That Second Party hereby recognizes and acknowledges the First Party's exclusive statutory and common law rights in the SW AROVSKI mark/ packaging in respect of but not limited to goods/ services in Classes 14 and 35 and all the goodwill associated therewith and further undertakes not to challenge First Party's said statutory and proprietary rights, directly or indirectly, at any time in future in India and globally.
2. The Second Party confirms that in compliance with the court interim injunction order dated February 14, 2022, they have CS(COMM) 102/2022 Page 1 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/09/2023 at 22:51:28 completely stopped dealing in and agrees not to engage in future in buying, importing, exporting, trading, selling or storage of the counterfeit SWAROVSKI. goods/ packaging in any manner, whatsoever.
3. The Second Party confirms that they have not filed any application and/or obtained registration for the mark SW AROVSKI in a standalone manner or in combination with any other words/ element in respect of any goods or services under their present business operations.
4. The Second Party undertakes to destroy the complete stock of finished or unfinished counterfeit zirconia/ gemstones products, packaging material, stickers, boxes, printed advertisement/ promotional material, etc. bearing the SWAROVSKI name/mark/packaging that was seized by the court appointed two Local Commissioners during the search and seizure action conducted at Second Party's premises on February 18, 2022 at their own cost. The Second Party agrees to provide proof of such destruction to the counsel of the First Party. As regards the specified 205 sealed boxes of gemstones which are claimed to be original, the Second Party confirms to first send the said products to the First Party's authorized representative RNA, IP Attorneys, Gurgaon for arranging their chemical analysis at First Party's Lab in Wattens (Austria). Subject to the result of the Lab inspection confirming that the products are original, the First Party agrees to release the said products to the Second Party or their authorized representative. If the Lab test results indicate that the sample products are not original Swarovski, it is agreed the said products will not be returned to the Second Party and the same will also be destroyed. Pursuant to the final order passed by the Hon'ble Court recording the present settlement agreement, the First Party confirms to complete the lab test process of the products within a period of 90 days from the date of receipt of the products by the First Party's authorized representative in India.
5. The Second Party agrees to remove all the listings and references of fake SWAROVSKI products/ packaging, if any, from their websites, B2B websites or any other online directories, B2C websites or portals used by the Second Party to promote their cubic zirconia and gemstones products or any other products/ packaging that is deceptively similar or lookalike of the First Party's SWAROVSKI products/ packaging.
6. The Second Party undertakes not to adopt, use and/or register any mark in future whether for sale in domestic market or for export that is identical with or deceptively similar to the First Party's SWAROVSKI mark/ packaging or carry out any such CS(COMM) 102/2022 Page 2 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/09/2023 at 22:51:28 activities as may be likely to cause confusion or deception amounting to infringement of First Party's trademark and copyright, passing off their goods as and for those of the First Party under their existing or future businesses, products or services.
7. The Second Party undertakes to disclose the source of the infringing products i.e., the name, address and contact details of the suppliers and the printer where the infringing product packaging material, including look alike SW AROVSKI labels/ stickers and empty boxes, were procured from.
8. That the Second Party has agreed to pay a sum of Rs.8,00,000/- (Rupees Eight Lakhs Only) as a Settlement Amount to the First Party in 4 cheques of Rs. 2,00,000/- (Rupees Two Lakhs Only) each drawn in favour of RNA IP ATTORNEYS in a maximum period of six months from the date of execution of the present Settlement Agreement. The first instalment of Rs. 2,00,000/(Rupees Two Lakhs Only) is to be paid, through Demand Draft, at the time of finalizing/ signing the settlement agreement before the Mediation Centre. The balance amount shall be paid by way of 3 post-dated cheques of Rs.2,00,000/ (Rupees Two Lakhs Only) each to be handed over to the authorized representative of First Party at the time of finalizing/ signing the settlement before the Mediation Centre.
9. It is expressly understood by the Second Party that in case of violation of the above undertakings by them, at any time in future, the Second Party undertakes to pay the First Party all legal fees, costs incurred in acting against the Second Party in relation to breach of the terms of the settlement or in enforcing the terms thereof. For such an act of violation of the above undertakings, if any, the Second Party will also be liable for the costs, damages and penalties as provided under the relevant provisions of the Trade Marks Act, 1999 and the Copyright Act, 1957.
10. That in view of compliance with the aforesaid undertakings by the Second Party, the First Party agrees to forego its claim of rendition of any/all account/damages/punitive damages against the Second Party including account/damages/punitive damages as stated in Paragraph No. 42 of the Plaint and the Parties agree that in view of the above undertakings and acknowledgments, a decree may be passed in terms of the present mediation Settlement Agreement.
11. The Parties agree that they shall abide by the terms and conditions set out in the present Settlement Agreement and shall not dispute the same hereinafter in future. The Parties further agree that the statements made by them herein in this Settlement CS(COMM) 102/2022 Page 3 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/09/2023 at 22:51:28 Agreement shall be taken as their respective undertakings to the Hon'ble Court and the defaulting Party shall be held liable for contempt of court under the Contempt of Courts Act, 1971.
12. The Parties agree that they have executed the present Settlement Agreement by their free will and volition without any force or pressure from anybody. The Parties also agree that they have understood the contents of the present Settlement Agreement as the same have been explained to them by the Mediator and their respective counsels, in the presence of each other and they have consented to the same in its true letter and spirit, and as such they shall not dispute the same ever in future.
13. That Parties have agreed that full court fees of the present suit will be refunded to the First Party as Parties have settled the dispute amicably at the early stage of the proceedings."
3. The parties are represented by learned Counsel who undertake on behalf of the respective clients to remain bound by the aforesaid terms and conditions.
4. The Court has perused the terms and conditions of the settlement agreement and find them to be lawful and in order.
5. In view thereof, nothing further survives for adjudication in the present suit.
6. The suit stand decreed in terms of the Settlement Agreement dated 17 July 2023 by which the parties shall remain bound.
7. The Registry is directed to draw up a decree-sheet accordingly.
8. Learned Counsel for the plaintiff shall be entitled to refund of court fees, if any, deposited by the plaintiff.
CS(COMM) 102/2022 Page 4 of 5This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/09/2023 at 22:51:28
9. The next date of 12 December 2023 already fixed in this matter shall stand cancelled.
C. HARI SHANKAR, J.
SEPTEMBER 18, 2023 dsn CS(COMM) 102/2022 Page 5 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/09/2023 at 22:51:28