Delhi High Court
Tata Sons Private Limited vs Kailash Devi Trading As M/S Mahabir ... on 8 December, 2022
Author: C.Hari Shankar
Bench: C.Hari Shankar
Neutral Citation Number : 2022/DHC/005418
$~4 (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 160/2021 and I.A. 6997/2021 (Order IX Rule 7 of
the CPC)
TATA SONS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr.
Achutman Sreekumar and Mr. Rohil Bansal,
Advs.
versus
KAILASH DEVI TRADING AS
M/S MAHABIR TEXTILES ..... Defendant
Through: Mr. Manu Sishodia and Ms,
Hina Rajput, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (ORAL)
% 08.12.2022
1. The dispute between the parties in this case stands settled vide Settlement Agreement dated 1st November 2022, executed under the aegis of the Delhi High Court Mediation and Conciliation Centre. The terms of settlement read thus:
"(i) The Defendants acknowledge the Plaintiff to be the proprietor of the well-known trade mark TATA.
(ii) That the Defendants acknowledge that the trade mark TATA of the Plaintiff is a well-known and famous trademark and by their act of using the same on their products, they had infringed the Plaintiff's registered and well-known trademark TATA and passed of their goods as that of the Plaintiff's.
(iii) That the Defendants hereby undertake that in future, they shall never use for manufacturing, marketing, distributing, selling (online/offline/directly or indirectly), offering for sale, advertising, sponsoring or howsoever otherwise dealing in any goods/products/services bearing aforementioned mark TATA of the Plaintiff and/or any other mark similar and/or Signature Not Verified Digitally Signed By:KAMLA RAWAT CS(COMM) 160/2021 Page 1 of 4 Signing Date:09.12.2022 16:03:45 Neutral Citation Number : 2022/DHC/005418 deceptively similar to the mark TATA of the Plaintiff on its goods, services or products in any manner whatsoever, or through its agents, employees, dealers or franchisees.
(iv) That within one month of signing of the present settlement agreement and in any event not beyond 27.11.2022, the Defendants undertake to withdraw their registered trademark bearing no. 526748 dated 23/03/1990 in class 25 for all kinds of hosiery goods' for a device /label mark containing the mark TATA and undertake to never register the same in future also and in any event abandon any and all mark similar to that of the Plaintiff including the mark as given below:
(v) The Defendants undertakes that except for the abovementioned trademark, bearing no. 526748, they neither own nor have applied for the registration of the mark TATA or any other mark deceptively similar to the mark TATA, before any authority, for any purpose whatsoever, nor shall they apply for the registration of mark TATA or any other mark deceptively similar to the mark TATA in future. In any event, the Defendants agree to not proceed or register any mark similar to TATA if otherwise not mentioned as aforestated.
(vi) That the Defendants declare that they do not have in their possession any stock of the impugned goods bearing the Plaintiff's well-known mark TATA besides the stock seized as explained below. The Defendants further undertake to destroy all their goods bearing the mark TATA, that were seized at the time of execution of the local commission proceedings, pursuant to the directions passed by the Hon'ble Delhi High Court on 5th April, 2021, and which were then returned to them on superdarinama. The Defendants further undertake to conduct such destruction of such seized goods, bearing the Plaintiff's well-known mark TATA, within two months of signing of the present settlement agreement and in any event before 28.12.2022. It is understood between the parties that the Plaintiff's representative will within this duration contact the Defendants to supervise the said procedure for their convenience. The Defendants further undertake to carry out the said process in the presence of the Plaintiff's representative Signature Not Verified Digitally Signed By:KAMLA RAWAT CS(COMM) 160/2021 Page 2 of 4 Signing Date:09.12.2022 16:03:45 Neutral Citation Number : 2022/DHC/005418 only which will be undertaken on or before 28.12.2022.
(vii) It is agreed between the parties that the Defendants shall on their own cost engage a professional, who would try to remove the Plaintiff's well-known mark 'TATA', from the abovementioned goods which were seized at the time of execution of the local commission proceedings and were returned to them on superdarinama. In the event the mark is removed from the said products, the same will be used by the Defendants as per the terms and conditions of the present settlement agreement. however, in the event such mark is not being removed to the satisfaction of the Plaintiff's representatives, the said goods, will be destroyed in the presence of the Plaintiff's representatives on or before 28.12.2022.
(viii) That the Defendants have agreed to pay the Plaintiff a sum of Issue notice returnable on 5,50,000/- (Rupees Five Lakh Fifty Thousand Only) towards full and final settlement of all the claims and/or disputes, past and present between the parties under the terms and conditions of the present settlement agreement and Plaintiff has accepted the same. Pursuant to which the Defendants had handed over to the Plaintiff, one cheque dated 1st April 2022, in the name of Tata Sons Private Limited', bearing number 962876 and drawn on Indian Bank for Rs. 1,50,000/- (Rupees One Lac Fifty Thousand Only) and transferred Rs. 2,00,000/- (Rupees Two Lac Only) on 13th May 2022 via NEFT bearing UTR/Reference no.
LT/IDIBH2213347247/NEFT and thereafter transferred the remaining Rs. 2,00,000/- (Rupees Two Lac Only) on 1st August 2022 via RTGS bearing UTR/Reference no. DIBR52022080129506073. The Plaintiff acknowledges the receipt of the same.
(ix) The undertaking given herein shall be binding on all the legal heirs, representatives, assigns-in-business of both the parties henceforth.
(x) That the Plaintiff in view of the aforesaid declarations, undertaking and assurances of the Defendants, forgoes its claims for delivery of goods, rendition of accounts, damages and costs of the proceedings as stipulated in prayer paragraph nos. 58 (vi), (vii) and (viii) of the plaint, which are reproduced hereinbelow -
(vi) An order for rendition of accounts of profits illegality earned by the Defendant on account of the misuse of the Plaintiff's well-known trademarks TATA and /or its Hindi variant i.e. and / or any Signature Not Verified Digitally Signed By:KAMLA RAWAT CS(COMM) 160/2021 Page 3 of 4 Signing Date:09.12.2022 16:03:45 Neutral Citation Number : 2022/DHC/005418 deceptively similar mark/name thereto and a decree for the amount so found be passed in favour of the Plaintiff; and
(vii) An order for damages in the sum of Rs.2 crores in favour of the Plaintiff and against the Defendant on account of the unauthorized use of the impugned mark/name/device and a decree for the said amount be passed in favour of the Plaintiff; and
(viii) An order for costs of the proceedings against the Defendant and in favour of the Plaintiff; and
(xi) That parties have agreed that the said commercial suit for infringement of trademark, passing off, rendition of account, damages etc. being CS(COMM) No. 160 of 2021 may be disposed of as compromised by Hon'ble High Court of Delhi in view of the terms and condition of the present Settlement Agreement."
2. Both sides submit that the suit may be disposed of in terms of the aforesaid Settlement Agreement.
3. Given the facts that the dispute between the parties stands settled, nothing survives for adjudication in the suit. Accordingly, the suit stands decreed in terms of the aforesaid Settlement Agreement dated 1st November 2022. Both sides undertake on behalf of their respective clients to remain bound by the terms of the Settlement Agreement.
4. The Registry is directed to draw up a decree-sheet accordingly. The plaintiff would be entitled to refund of the court fee paid by it, if any. Miscellaneous application is also disposed of.
C.HARI SHANKAR, J DECEMBER 8, 2022 rb Signature Not Verified Digitally Signed By:KAMLA RAWAT CS(COMM) 160/2021 Page 4 of 4 Signing Date:09.12.2022 16:03:45