Walmart Apollo Llc vs Aayush Jain & Anr on 29 July, 2022

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Delhi High Court - Orders

Walmart Apollo Llc vs Aayush Jain & Anr on 29 July, 2022

1. The present suit has been filed by the Plaintiff - Walmart Apollo LLC, seeking permanent injunction restraining infringement of trademark, copyright, passing off, rendition of accounts etc., against the Defendants, in respect of its trademarks 'WALMART'/'WAL-MART'. Rights to the marks 'WALMART'/'WAL-MART' were assigned to the Plaintiff by virtue of a Deed of Assignment dated 31st January, 2018, between the Plaintiff and Wal-Mart Stores Inc. The Plaintiff operates in more than approximately 10,500 stores in over 20 countries. The stores of the Plaintiff prominently display the mark , which was adopted in the year 2006.

2. The grievance of the Plaintiff is that the Defendants filed for registrations of the mark 'WMART'/ 'WM MART' under application nos. 4411997 and 4411998, in classes 25 and 35 respectively, for hosiery, Signature Not Verified Digitally Signed CS(COMM) 565/2021 Page 1 of 4 By:DEVANSHU JOSHI Signing Date:03.08.2022 14:57:33 uniforms, under-garments etc. The Defendants had also been advertising products under the Plaintiff's mark, and other identical or deceptively/confusingly similar marks on their website www.wmartretail.com, as well as in being engaged in the business of brick- and-mortar stores. Hence the present suit was filed seeking protection of rights in WALMART.

3. Vide order dated 12th November, 2021, this Court had granted an ex- parte injunction restraining the Defendants, the operative portion of which is extracted below:

"20. Considering the submissions made above, the comparison of the two marks would show the plaintiff has a prima facie case and in case the defendants are not restrained ex parte, to use the trademark, the plaintiffs will suffer irreparable loss and injury.

21. In view of above, till the next date of hearing, the defendants, their successors, servants, agents, licensees, franchisees, representatives, sister concerns, assignees and any one acting for and/or on their behalf from using the trademarks WMART and/or any other mark deceptively similar/identical to the Plaintiff's trademarks WAL-MART / WALMART ' as a trademark/trade name/trading style/domain name with respect to their goods and/or services or in any manner whatsoever, which would amount to infringement of the registered trade mark of the Plaintiff and passing off the goods/services of the defendants as the goods/services of the plaintiff;"

Signature Not Verified Digitally Signed CS(COMM) 565/2021 Page 2 of 4 By:DEVANSHU JOSHI Signing Date:03.08.2022 14:57:33

4. During the pendency of the present Suit, parties have reported that their disputes have been amicably settled. An application under Order XXIII Rule 3 CPC has been jointly filed by the Plaintiff and the Defendants. The terms and conditions of the Settlement Application are contained in Paragraph 6 (a) - (n).

5. The Defendants have broadly acknowledged the Plaintiff's rights in the mark 'WALMART'/'WAL-MART'. The materials, stationary matters, visiting cards, packaging material, etc., bearing the impugned mark, shall be destroyed by the Defendants, and proof of the same shall be provided to the Counsel for the Plaintiff. The Defendants have agreed to change their name to 'WM BAZAAR', 'CITYKART', or any other mark which is not identical or confusingly/deceptively similar to the mark 'WALMART'/'WAL- MART'. To that effect, the Defendants have agreed to give up the mark 'WMART'. The Defendants have also undertaken to seek withdrawal of all the infringing trademark applications, including those bearing nos. 5054688 and 5054687. If there is any violation of the settlement terms set out in the Settlement Application, the Defendants have agreed to pay the monetary compensation of Rs.50,00,000/-, to the Petitioner.

6. The Court has perused the terms and conditions of the Settlement Application. The same are lawful. Parties and all others acting for or on their behalf shall be bound by the terms set out in the Settlement Application. The Settlement Application has been signed by the parties, as also their Counsels. The supporting affidavits have also been annexed to the Application. There is no impediment in recording the same.

7. Accordingly, the suit stands decreed in terms of paragraph 6(a) - (n) of the application jointly filed under Order XIII Rule 3 CPC. The said Signature Not Verified Digitally Signed CS(COMM) 565/2021 Page 3 of 4 By:DEVANSHU JOSHI Signing Date:03.08.2022 14:57:33 paragraphs shall form part of the decree. Decree sheet be drawn.

8. In view of the term and conditions set out in the Settlement Application, the following directions are issued:

i. Within 15 days, the changes set out in the Settlement Application shall be effected by the Defendants.

ii. The Defendants shall also write to the trademark registry seeking withdrawal of the aforementioned trademark applications within 15 days. The trademark registry shall pass appropriate orders and update the portal in respect of these applications, showing the status of the same as withdrawn within four weeks of receipt of this order.

iii. The letters which are written to the trademark registry for follow up action, shall also be supplied to ld. Counsel for the Plaintiff. iv. It is submitted that the domain name www.wmartretail.com already stands cancelled and, therefore, no further orders are called for.

v. The proof of change in the stores of the Defendants shall be provided within 15 days.

9. Accordingly, the suit stands decreed. All pending applications are disposed of. No order as to costs.

10. Copy of this order to be supplied to the Trademark Registry (Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan, Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: cgoffice- [email protected], [email protected]).

PRATHIBA M. SINGH, J.

JULY 29, 2022/dj/ss Signature Not Verified Digitally Signed CS(COMM) 565/2021 Page 4 of 4 By:DEVANSHU JOSHI Signing Date:03.08.2022 14:57:33

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Delhi High Court - Orders