Delhi High Court - Orders
Cadbury Uk Limited vs Mr. Aditya Signhal & Ors on 28 February, 2019
Author: Manmohan
Bench: Manmohan
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 1134/2018 & I.A.No.13023/2018
CADBURY UK LIMITED ..... Plaintiff
Through Mr.Chander M.Lall, Sr.Advocate with
Mr.Karan Bajaj, Mr.Anirudh Bhatia,
Ms.Kangan Roda and Ms.Shreya
Sethi, Advocates.
versus
MR. ADITYA SIGNHAL & ORS. ..... Defendants
Through Mr.D.K.Yadav, Advocate for D-1.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
ORDER
% 28.02.2019 Present suit has been filed for injunction and damages for infringement of copyrights, trademarks, passing off and unfair competition under Section 134(1) read with Section 27 & 29 of the Trade Marks Act and Section 62(1) of the Copyright Act, 1957.
On 06th December, 2018, learned counsel for the defendants had stated that the defendants have stopped manufacturing 'Flare Sweet Milk Sparkle', 'Flare Sweet Milk' and 'Flare My Shots' in the impugned packaging/trade dress. He had further stated that the revised packaging would be filed with the Registry of this Court.
Today learned counsel for defendant no.1 has handed over an affidavit. The same is taken on record. The relevant portion of the said affidavit is reproduced hereinbelow:-
4. I say and state that in the pendency of the present suit, I have approached the Plaintiff to amicably settle this present suit, and in view thereof, with respect to the packaging/ trade dress/ label/ representation used by me for products sold under the impugned marks FLARE SWEET MILK, FLARE SWEET MILK SPARKLE and FLARE MY SHOTS, and products so distributed by Defendant Nos. 3 & 4, I give the following undertaking to this Hon'ble Court:
a. To refrain from manufacturing, authorizing the manufacture, selling, offering for sale, retailing, distributing, exporting, marketing or in any other manner whatsoever using the impugned mark SHOTS, which is identical to the Plaintiff's earlier trade marks CADBURY SHOTS/ CADBURY DAIRY MILK SHOTS, and/or any other trade mark, device, logo, name, expression, representation or any derivative which is identical and/or deceptively and/or confusingly similar to Plaintiff's earlier trade marks CADBURY SHOTS/ CADBURY DAIRY MILK SHOTS, in any other manner, or part thereof in any other manner whatsoever, so as to pass off their goods as that of the Plaintiff;
b. To refrain from manufacturing, authorizing the manufacture, selling, offering for sale, retailing, distributing, exporting or marketing products with, or using in any other manner whatsoever, packaging/ trade dress/ label/ representation/ colour scheme impugned in the Plaint with respect to the impugned product SHOTS/ FLARE MY SHOTS, and/or any other packaging/ trade dress/ label/ representation/ colour scheme that is identical and/or deceptively and/or confusingly similar to the trade dress/ packaging/ label/ representation/ colour scheme used by the Plaintiff with respect to products under its earlier trade marks DAIRY MILK/ CADBURY DAIRY MILK and CADBURY SHOTS/ CADBURY DAIRY MILK SHOTS, or in any other manner whatsoever so as to infringe the Plaintiff's intellectual property rights, or pass off their goods as that of the Plaintiff;
c. To refrain from manufacturing, authorizing the manufacture, selling, offering for sale, retailing, distributing, exporting or marketing products with, or using in any other manner whatsoever, packaging/ trade dress/ label/ representation/ colour scheme impugned in the Plaint with respect to the impugned product SPARKLE/ FLARE SWEET MILK SPARKLE, and/or any other packaging/ trade dress/ label/ representation/ colour scheme that is identical and/or deceptively and/or confusingly similar to the trade dress/ packaging/ label/ representation/ colour scheme used by the Plaintiff with respect to products under its earlier trade marks DAIRY MILK/ CADBURY DAIRY MILK and CADBURY DAIRY MILK CRACKLE, or identical or confusingly and/or deceptively similar to the Plaintiff's earlier, registered marks CADBURY DAIRY MILK (label) and CADBURY DAIRY MILK CRACKLE (label), or in any other manner whatsoever so as to infringe the Plaintiff's intellectual property rights, or pass off their goods as that of the Plaintiff;
d. To refrain from manufacturing, authorizing the manufacture, selling, offering for sale, retailing, distributing, exporting or marketing products with the writing style, font style, font size, font colour and overall stylization that has been impugned in the Plaint, with respect to the impugned mark SPARKLE, which is identical to the writing style, font style, font size, font colour and overall stylization that is used by the Plaintiff for the representation of it's earlier trade mark CRACKLE/ CADBURY DAIRY MILK CRACKLE, or in any other manner whatsoever which would amount to a violation of the trade marks of the Plaintiff;
e. To refrain from manufacturing, authorizing the manufacture, selling, offering for sale, retailing, distributing, exporting or marketing products with the writing style, font style, font size, font colour and overall stylization that has been impugned in the Plaint, with respect to the impugned mark SWEET MILK, which is identical to the writing style, font style, font size, font colour and overall stylization that is used by the Plaintiff for the representation of it's earlier trade mark DAIRY MILK/ CADBURY DAIRY MILK;
5. In addition to the above, I also undertake to this Hon'ble Court that a. I shall never use a packaging/ trade dress/ label/ representation comprising of the colour purple, or any colour combination as used by the Plaintiff, or any colour or colour combination which is deceptively and/or confusingly similar to the colour Purple or any other colour combination as used by the Plaintiff, and b. I have already changed the packaging/ trade dress/ label/ representation/ get up of the impugned product under the mark FLARE SWEET MILK Smooth &Silky product to the packaging/ trade dress/ label/ representation/ get up which has been annexed herewith, and is marked under Annexure A, which, inter alia, comprises of the colour Light Blue, being Pantone PMS 2935, and c. I have already changed the packaging/ trade dress/ label/ representation/ get up of the Defendant Nos. 1 & 2's FLARE MY SWEETS product to the packaging/ trade dress/ label/ representation/ get up which has been annexed herewith, and is marked under Annexure B, which, inter alia, comprises of the colour Light Blue, being Pantone PMS 2935, and d. I undertake to change the packaging/ trade dress/ label/ representation/ get up of the Defendant Nos. 1 & 2's FLARE SWEET MILK SPARKLE product to the packaging/ trade dress/ label/ representation/ get up which has been annexed herewith, and is marked under Annexure C. I say and state that, presently, the background/ packaging/ base colour is Dark Blue, being Pantone 286 C, and I undertake that, for the product sold under the FLARE SWEET MILK SPARKLE mark, I shall adopt a background/ packaging/ base colour as Light Blue, being Pantone PMS 2935, i.e., the background/ packaging/ base colour identical to that which is being used for the FLARE SWEET MILK Smooth & Milky product and the FLARE MY SWEETS product.
e. I have changed the stylization of the impugned mark FLARE SWEET MILK SPARKLE to a manner which is not identical or deceptively and/or confusingly similar to that used by the Plaintiff for its earlier trade mark CADBURY DAIRY MILK CRACKLE, which change is shown in Annexure C hereto, and further undertake never to adopt and/or use a stylization which is identical or deceptively and/or confusingly similar to the stylization used by the Plaintiff for its earlier trade mark CADBURY DAIRY MILK CRACKLE;
f. That I have changed the stylization of the impugned mark SWEET MILK to a manner which is not identical or deceptively and/or confusingly similar to that used by the Plaintiff for its earlier trade mark CADBURY DAIRY MILK/ DAIRY MILK, which change is shown in Annexures A, B & C hereto, and further undertake never to adopt and/or use a stylization which is identical or deceptively and/or confusingly similar to that used by the Plaintiff for its earlier trade mark CADBURY DAIRY MILK/ DAIRY MILK;
g. That I have changed the impugned mark FLARE MY SHOTS to FLARE MY SWEETS, and further undertake never to adopt and/or use a mark which is identical or deceptively and/or confusingly similar to the Plaintiff's earlier trade mark CADBURY DAIRY MILK SHOTS/ SHOTS;
h. That I have changed the words 'SMOOTH & SILKY' to 'SMOOTH & MILKY', and I undertake never to adopt the mark 'SILK'/ 'SILKY' or any formative thereof, on any packaging/ trade dress/ label/ representation for any of my chocolate or confectionary products;
i. To take all necessary steps, including the filing of the appropriate application before the Trade Marks Registry, for withdrawing all pending applications for the registration of the impugned marks and impugned label, details whereof have been provided in the document annexed herewith, and marked under Annexure D, within a period of 15 days of the execution of the present Affidavit, and shall furnish appropriate proof to the Plaintiff, in the form of endorsed withdrawal letters;
j. To remove all references of the impugned products from all third - party social media websites, platforms and pages, as well as all third-party e-commerce websites and platforms, including but not be limited to those that have been referenced in the Plaint, within a period of 15 days from the date of the execution of the present Affidavit.
6. I undertake that, in case of the breach of any terms of the present settlement application, as agreed herein, the Plaintiff shall be at liberty to initiate any and all appropriate action, and will also be entitled to claim liquidated damages to the tune of INR 25,00,000/- from me, without prejudice to any and all other claims that the Plaintiff may have against me in law, including but not limited to filing a petition for contempt of court.
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8. I say and state that the Defendant No. 2 is my brother and is only responsible for marketing activities at M/s Uditi International. Further, I say and state that the Defendant Nos. 3 & 4 being the distributors of M/s Uditi International and that they, along with all the principals, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives and assigns, etc., shall remain bound by the contents and undertakings given in this present Affidavit."
The undertakings given by learned counsel for defendant no.1 are accepted by this Court and the defendants are held bound by the same. Registry is directed to prepare a decree sheet accordingly.
In view of the above, present suit and pending application are disposed of.
MANMOHAN, J FEBRUARY 28, 2019 KA