Delhi High Court - Orders
Dharampal Satyapal Limited vs Mr. Raj Kumar Agarwal & Anr on 15 September, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 1012/2018 & CRL. M.A. 33444/2018, I.A. 9095/2018,
12661-62/2018, 13607/2018, 5654/2019
DHARAMPAL SATYAPAL LIMITED ..... Plaintiff
Through: Ms. Vaishali Mittal and Mr. Shivang
Sharma, Advocates.
versus
MR. RAJ KUMAR AGARWAL & ANR. ..... Defendants
Through: Mr. Krishna Kumar Singh and
Mr. Sandeep Vishnu, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 15.09.2022
1. Learned counsels appearing on behalf of the parties submit that the parties have amicably resolved their disputes before the Delhi High Court Mediation and Conciliation Centre. Settlement Agreement in terms of the settlement between the parties has been executed on 16.08.2022. Terms of settlement are as follows:-
(a) The Defendants acknowledge and recognize the Plaintiff's sole and exclusive proprietary rights in the Plaintiff's following trademarks, which rights the Defendants do not and shall not contest:
Application Mark
Trademark Class Date of Use
No. Description
TANSEN Device
January 01,
1907857 31
1976
Signature Not Verified
Digitally Signed CS(COMM) 1012/2018 Page 1 of 7
By:KAMAL KUMAR
Signing Date:20.09.2022
20:36:37
TANSEN Trademark
January 01,
1907855 31
1976
TANSEN Device
BLUES
December 01,
2827889 31
2013
TANSEN Device
January 01,
1907856 34
1976
TANSEN Wordmark
January 01,
1912790 34
1976
January 21,
311838 TANSEN Wordmark 31
1976
January 01,
396776 TANSEN Wordmark 31
1976
December 01,
BLUES 2013
2827890 Device 31
BLUES
December 01,
2827887 Device 34
2013
(b) The Defendants acknowledge that the Plaintiff is the proprietor of the trademark TANSEN and TANSEN BLUES and trade dress Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 2 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:37 including but not limited to the , , , , , including the carton packaging (hereinafter referred to as the 'TANSEN trademarks and trade dress') and that the Plaintiff has worldwide reputation and goodwill in its TANSEN trademarks.
(c) The Defendants hereby acknowledge and recognize the Plaintiff's sole and exclusive rights vested in the TANSEN and TANSEN BLUES trademarks including but not limited to the , , , , , which constitute a significant part of the trade-dress pertaining to its flavored pan-masal as under the trademark TANSEN and TANSEN BLUES. The Defendants further agree and undertake not to contest the Plaintiff's above mentioned sole and exclusive rights at any point of time in the future.
(d) The Defendants herein acknowledge and recognize the Plaintiff's sole and exclusive rights contained in the get-up, color combination, overall layout of the cartons which constitute a significant part of the trade-dress pertaining to its flavored pan masala under the well-known TANSEN and TANSEN BLUES trademarks.
(e) The Defendants undertake to not contest any trademark applications or trademark registrations filed or secured by the Plaintiff through an opposition, application for rectification or invalidation or cancellation or in any other way.Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 3 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:37
(f) The Defendants state that they had been using the mark TENSION FREE and trade dress , including the carton (hereinafter collectively referred to as the "TENSION FREE trademarks and trade-dress), in relation to their pan masala product. However, the Defendants affirm that henceforth i.e. with immediate effect, the Defendant would absolutely refrain from using the TENSION FREE trademarks and trade-dress in any manner whatsoever and it further assures that no stock of either the finished product or raw material vis-à-vis packing material and advertising brochure etc. is held/ kept with the defendant.
(g) The Defendants undertake that they have already destroyed all packaging, brochures, promotional materials, stickers, cartons, articles or any other material bearing the TENSION FREE trademarks and trade-dress in their possession.
(h) The Defendants herein agree and undertake that they are not using and will not use in the future, the TENSION FREE trademarks and trade-dress and/or use the same or any other deceptively similar or identical marks, colour-combination, get-up and/or a combination thereof in any manner, either directly or with any other trademark or word, in any manner whatsoever, including in relation to any goods or services, or as part of physical/digital promotional materials, packaging, communications, metatags, metadata, purchased key words or the like use in relation to or associated with any websites owned or controlled by the Defendants.Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 4 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:37
(i) The Defendants undertake that they do not have any other trademark application/s or registration/s for the TENSION FREE trademarks and trade-dress except the ones detailed in the table below. The Defendants further agree and undertake that they will withdraw/seek cancellation of the following trademark applications and registrations within fifteen (15) days of the present suit viz. CS(Comm.) 1012/2018, being decreed in terms of the present settlement:
Mark Application Date of Trademark Descr Class No. Application iption Devic March 21, 3784622 29 e 2018 March 21, 3784623 TENSION FREE Word 29 2018 March 24, 3787882 TENSION Word 29 2018 March 21, 3784625 TENSION FREE Word 34 2018 Devic March 21, 3784624 34 e 2018 October 3385575 APNI TENSION Word 34 11, 2016 Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 5 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:37 March 24, 3787883 TENSION Word 34 2018
(j) The Defendants undertake not to apply for a domain name, purchased keyword, metatag, corporate name or trademark application containing TENSION FREE trademarks or trade-dress or any mark identical or deceptively similar to and/or nearly resembling the Plaintiff's well-known and registered TANSEN and TANSEN BLUES trademarks.
(k) The Defendants further agree and undertake that they will withdraw the copyright registration bearing number A-
128902/2019 for the artistic work vested in the TENSION FREE/ label within the period of fifteen (15) days from the date on which the present suit, i.e. CS(Comm) 1012/2018, is decreed in terms of the present settlement and undertake not to file any copyright application which are identical to or deceptively similar to and/or nearly resembling the Plaintiff's get-up, layout, artistic work and copyright vested in the TANSEN and TANSEN BLUES labels and name, trade dress, or artwork confusingly similar thereto in any manner whatsoever.
(l) The Defendants hereby undertake that they have informed all their associates, retailers and other commercial outlets that they have ceased making sale and/or promotion of their goods under the TENSION FREE Trademarks and trade-dress.
2. This Court has perused the terms of settlement and the same are found to be lawful.
3. Suit stands decreed in terms of the Settlement Agreement dated 16.08.2022. Terms of the Settlement Agreement shall form part of the decree.
Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 6 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:374. Needless to state, parties concerned shall remain bound by the terms of the Settlement Agreement and the undertakings given therein.
5. Registry is directed to draw up the Decree sheet.
6. Plaintiff is entitled to refund of the full Court Fees deposited by it, in accordance with provisions of Section 16 of the Court Fees Act, 1870 read with Section 89 CPC, 1908.
7. Registry is directed to refund the Court fees deposited by the Plaintiff.
8. Suit is disposed of along with the pending applications JYOTI SINGH, J SEPTEMBER 15, 2022/shivam Signature Not Verified Digitally Signed CS(COMM) 1012/2018 Page 7 of 7 By:KAMAL KUMAR Signing Date:20.09.2022 20:36:37