Delhi High Court - Orders
Khadi And Village Industries ... vs Virendra Kumar And Anr on 14 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 422/2023 & I.A. 11338/2023
KHADI AND VILLAGE INDUSTRIES
COMMISSION, ..... Plaintiff
Through: Ms. Diva Arora Menon and Ms.
Devyani Nath, Advs (M.
7042547106)
versus
VIRENDRA KUMAR AND ANR. ..... Defendants
Through: Mr. Abhishek Gupta, Advocate along
with D-1, present virtually.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 14.12.2023
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff- Khadi and Village Industries Commission seeking permanent injunction against Defendant No.1-Virendra Kumar, who is the President of Defendant No.2- Prakritik Paint Manufacturers' Association from using the mark 'KHADI' and 'KHADI PRAKRITIK PAINT'
3. The Plaintiff is a statutory body formed in April 1957. The Plaintiff has been engaged in implementation of programs for the development of Khadi and other village industries. The Plaintiff also implements the Prime Minister's Employment Generation Program (PMEGP) for upliftment and improvement of artisans, weavers and other members of small-scale village and rural industries.
4. The Plaintiff adopted the mark 'KHADI' on 25th September, 1956 and sought registrations in various classes i.e., 2, 35, 36 and 37. It has been claimed that the mark has also attained well- known status through CS(COMM) 422/2023 Page 1 of 8 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 18/12/2023 at 21:08:55 Trademark Journal bearing no. 2065 dated 15th August, 2022. The Plaintiff also launched eco-friendly anti-fungal, antibacterial paints, under the name 'PRAKRITIK PAINT' on 12 th January, 2021. The mark 'PRAKRITIK PAINT' has registrations in class 2.
5. It is the case of the Plaintiff that the Defendants are one of the authorised manufacturers of the Plaintiff, who are engaged in manufacturing and selling cow-dung paints under the Plaintiff's trademark. It is averred that the Defendant No.2 has unauthorizedly registered the name / mark 'Prakritik Paint Manufacturers Association' bearing registration no.5777783 in class 2.
6. The matter was stated to have been listed before the Mediation Centre on 12th December, 2023 and the mediation was closed as per the report filed by the ld. Mediator. However, Ms. Diva Arora, ld. Counsel for the Plaintiff and Mr. Abhishek Gupta, ld. Counsel for the Defendants submits that disputes have been resolved and the settlement terms have been finalized. However, since the license agreement that is to be executed between the Plaintiff and the Defendants was taking time, the mediation was closed. The ld. Counsel for the Plaintiff has hands over the draft settlement agreement.
7. Ld. Counsel for the Defendants submits that his client is willing to settle the disputes on the terms mentioned therein. Accordingly, the suit is decreed in the following terms:
1. "That the Plaintiff and the Defendants, in order to put an end to the litigation and with a view to amicably resolve their disputes have agreed to settle the matter as per the following terms:
(a) The Defendants acknowledge that the Plaintiff is the owner of the trademarks KHADI, CS(COMM) 422/2023 Page 2 of 8 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 18/12/2023 at 21:08:55 and (the KHADI trademarks) under the Trademarks Act, 1999 as well as under
common law as elaborated in the Plaint. The Defendants further acknowledge that the Plaintiff is the owner of the trademarks KHADI PRAKRITIK PAINT and the device marks , , ("the PRAKRITIK PAINT trademarks") under the Trademarks Act, 1999 as well as under common law as elaborated in the Plaint.
(b) The members of Defendant No.2 have a valid and subsisting Technology Transfer Agreement with Kumarappa National Handmade Paper Institute (KNHPI). The Defendants and the members of Defendant No.2 undertake that they will use the Plaintiff's PRAKRITIK PAINT trademarks [as defined in clause 2(a)] for the limited purpose of applying the same on the packaging of the eco-friendly paint products (which are manufactured in accordance with the said Technology Transfer Agreements) and for advertising, marketing, and selling the said products. The exact terms and manner of use of the Plaintiff's KHADI and PRAKRITIK PAINT trademarks shall be governed by a Trademark License Agreement which will be executed between the parties and with the members of Defendant No.2 within 1 month of execution of this settlement agreement.CS(COMM) 422/2023 Page 3 of 8
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 18/12/2023 at 21:08:55
(c) The Defendants undertake that they will transfer the ownership of the domain name www.prakritikpaint.org to the Plaintiff within 1 week of the execution of this agreement. The Plaintiff permits the Defendants, after the transfer of ownership of the domain name to the Plaintiff by the Defendant, to use the said domain name in the manner authorized by the Plaintiff as per the terms of the Trademark License Agreement which shall be executed between the parties within one month form the execution of this agreement. It is clarified that the Defendants are free to register any other domain name to advertise and sell the products that are manufactured by them as long as the domain name does not contain any mark that is identical and/ or similar to the Plaintiff's trademarks and the Defendants use the Plaintiff's trademark on the new website as per the terms mentioned in this agreement and the Trademark License Agreement.
(d) The Defendants has already withdrawn the trademark application filed for the mark under number 5777783 in class 02 on 19.06.2023. Copy of letter dated 19.06.2023 is attached as ANNEXURE-C.
(e) The Plaintiff undertake to file trademark application(s) for the mark PRAKRITIK PAINT MART (word and logo) in appropriates class(es) and thereafter license the use of the said mark(s) to the Defendants as per the Trademark License Agreement that will be executed between the parties.
(f) The Defendants shall be entitled to use the Plaintiff's trademark PRAKRITIK PAINT as part of its trading name, the terms governing which CS(COMM) 422/2023 Page 4 of 8 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 18/12/2023 at 21:08:56 are detailed in the Trademark License Agreement.
(g) The Plaintiff permits the Defendants and all the members of Defendant No.2 (existing and future members) to use the mark PRAKRITIK PAINT MART only for the purpose of advertisement and sale of products that are manufactured by them as per the Technology Transfer Agreement with KNHPI. The list of Defendant No.2's existing members in annexed herewith as ANNEXURE D.
(h) The Defendant No.2 is also permitted by the Plaintiff to use images of the products bearing the Plaintiff's KHADI and PRAKRITIK PAINT trademarks [as defined in clause 2(a)] on banners/signage of the shops to the limited extent of providing information as to availability of the aforesaid products only. The Defendant No.2 undertake to communicate to its existing members to remove all videos from their social media accounts which promote/advertise the stores bearing the mark/name PRAKRITIK PAINT MART. The communication so made by Defendant No.2 to its members is annexed herewith as ANNEXURE E. In case any of the members of Defendant No.2 fails to abide by the terms of this settlement agreement, the Plaintiff shall take independent action against the said members as per the terms of Technology Transfer Agreement and the Defendants undertake to provide all necessary information to the Plaintiff and to assist the Plaintiff in all possible ways.
(i) The Defendants undertake to use the Plaintiff's trademark, subsequent to execution of the Trademark License Agreement between the parties, only in accordance with the terms of the CS(COMM) 422/2023 Page 5 of 8 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 18/12/2023 at 21:08:56 Trademark License Agreement. The Defendants shall ensure that every use of the Plaintiff's PRAKRITIK PAINT trademark is with the ™ logo and contains a disclaimer that the Plaintiff is the owner of KHADI and PRAKRITIK PAINT trademarks.
(j) The Defendants undertake that they shall cease and desist from using the trademarks and and/or any other mark identical/deceptively similar to the Plaintiff's KHADI trademark and PRAKRITIK PAINT trademarks which the Defendant has not been authorized to use by the Plaintiff.
(k) The Defendants undertake that they shall handover the social media pages active on Facebook (https://www.facebook.com/people/Prakritik- Paint-Manufacturers-
Association/100087640011972/) and Twitter (https://twitter.com/prakritik_paint) to the Plaintiff with all its control and provide passwords so that the Plaintiff has the power to operate them solely. The Defendants undertake that they shall not create/operate any other social media pages which use the Plaintiff's KHADI trademarks and PRAKRITIK PAINT trademarks in an infringing manner. They are permitted to create social media pages of their own establishments/ stores/ businesses and advertise the availability of the Plaintiff's products. The Defendants will be entitled to advertise as per CS(COMM) 422/2023 Page 6 of 8 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 18/12/2023 at 21:08:56 terms of Trademark License Agreement only.
(l) The Defendants undertake that that they will, in future, not file any trademark application for any mark identical/deceptively similar to the Plaintiff's KHADI trademarks and PRAKRITIK PAINT trademarks and/or any other mark that is identical or deceptively similar to that of the Plaintiff's KHADI trademarks and PRAKRITIK PAINT trademarks as detailed in the Plaint.
(m) The Defendants undertake to destroy/alter/modify all infringing advertising and promotional material, visiting cards, labels, stationery, banners, signages, pamphlets, brochures, and all other business papers and materials bearing the trademarks , and undertakes to use the Plaintiff's PRAKRITIK PAINT trademarks for advertisements and promotional purposes only as per the Trademark License Agreement executed between the parties;"
8. Mr. Virendra Kumar i.e., Defendant No.1 joins virtually and submits that he is the President of Defendant No.2 -Prakritik Paint Manufacturers' Association. The Defendant has acknowledged that the Plaintiff is the owner of the mark 'KHADI' and 'KHADI PRAKRITIK PAINT'. The Defendant has further undertaken to transfer their domain name www.prakritikpaint.org and all social media platforms to the Plaintiff. The parties have also agreed to enter into a trademark license agreement. The ld. Counsel for the Plaintiff CS(COMM) 422/2023 Page 7 of 8 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 18/12/2023 at 21:08:56 submits that the said license shall now be executed within a period of four weeks.
9. Accordingly, the suit is decreed in terms of paragraph 2(a) to (m) of the settlement agreement above. The trademark license agreement be executed within a period of four weeks.
10. Decree sheet be drawn accordingly.
11. Suit is disposed of in these terms. All pending applications are also disposed of.
12. List on 9th February, 2024 for reporting compliance of execution of the trademark license agreement.
PRATHIBA M. SINGH, J.
DECEMBER 14, 2023 Rahul/ks CS(COMM) 422/2023 Page 8 of 8 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 18/12/2023 at 21:08:56