Delhi High Court
Marico Limited vs Mr Jay Kumar Bangeja & Ors. on 19 July, 2017
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Decided on: 19th July, 2017
+ CS(COMM) 361/2016
MARICO LIMITED ..... Plaintiff
Represented by: Mr. Yaten Grover, Advocate.
versus
MR JAY KUMAR BANGEJA & ORS. ..... Defendants
Represented by: Mr. H.P. Singh and Mr. Dheeraj
Seth, Advocates for defendant
Nos. 1 to 3.
Mr. Sourabh Leekha, Advocate
for defendant No. 4 with Mr.
Danish Ali Khan, Authorised
Representative-Indiamart
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
MUKTA GUPTA, J. (ORAL)
I.A. No. 7980/2017 (under Order XXIII Rule 3 CPC)
1. By this joint application the plaintiff and defendants seek disposal of
the suit in terms of the settlement arrived at between the parties.
2. Application is disposed of disposing of the suit in terms of the
settlement.
CS(COMM) 361/2016
1. Plaintiff and defendant Nos. 1 to 3 who are the contesting parties have
entered into an out of court settlement and have arrived at the following
terms and conditions of settlement:
"A. The Defendants acknowledge the Plaintiff to be the
proprietor of the trademark/labels namely PARACHUTE
word, FLAG device, broken CoconutDevice,
PARACHUTE trade dress, PARACHUTE ADVANSED
JASMINE, ADVANSED, ADVANSED JASMINE,
PARACHUTE ADVANSED JASMINE (label), NIHAR
and NIHAR NATURAL SHANTI AMLA (label) as shown
in Annexure A to the present application, and undertakes
to this Hon'ble Court never to challenge the same
anywhere in the world, including India on any grounds
whatsoever;
B. The defendants acknowledge the Plaintiff to be the owner
of the copyright in the original artistic work in the trade
dress/ labels/ packaging as shown in Annexure A to the
present application, and undertakes to this Hon'ble
Court never to challenge them anywhere in the world,
including India on any grounds whatsoever;
C. The defendants including their partners, agents,
associates, distributors, suppliers, affiliates, subsidiaries,
licensees, representatives and assigns undertake to this
Hon'ble Court that they shall refrain from:
i. Manufacturing, or authorizing the manufacture
distributing, exporting, selling, offering for sale,
advertising, promoting, displaying and/or using,
in any manner whatsoever, the impugned
products namely PRESIDENT COCONUT
OIL(LABEL), PRESIDENT COCONUT OIL
BOTTLE AND/OR JAR, PRESIDENT POUCH,
POOJA COCONUT OIL(LABEL), POOJA
COCONUT OIL POUCH, PRECEDENT
JASMINE (LABEL), POJA JASMINE (LABEL),
POJA JASMINE POUCH (LABEL) AND/OR
PRECEDENT SHANTI AMLA as shown in
Annexure B and/or any other product bearing any
other mark/label/trade/dress/ packaging
deceptively and/or confusingly similar to the
Plaintiff's trademarks/labels namely,
PARACHUTE, PARACHUTE ADVANSED
JASMINE, NIHAR NATURAL SHANTI
AMLA(label) as shown in Annexure A or any
other label/ trade mark which is deceptively or
confusingly similar to PARACHUTE word, FLAG
device, broken coconut device, PARACHUTE
trade dress, PARACHUTE ADVANSED,
PARACHUTE ADVANSED JASMINE,
ADVANSED, ADVANSED JASMINE,
PARACHUTE ADVANSED JASMINE(label),
NIHAR and/or NIHAR NATURAL SHANTI
AMLA(label) AS shown in Annexure A.
ii. Reproducing, printing, publishing and/or using
the labels/packaging as mentioned in Annexure B
and/or from imitating in material form the
Plaintiff's labels/packaging, as represented in
Annexure A the copyrights of which vest with the
Plaintiff, thereby amounting to the infringement of
the Plaintiff's copyrights in the said works.
iii. Manufacturing, or authorizing the manufacture
distributing, exporting, selling, offering for sale,
advertising, promoting, displaying and/or using,
in any manner the colour combination of the trade
dress similar to PARACHUTE, PARACHUTE
ADVANSED JASMINE and/or NIHAR SHANTI
AMLA.
D. The Defendants undertake to this Hon'ble Court that they
have changed the labels of their products namely
PRESIDENT COCONUT OIL (LABEL), POOJA
COCONUT OIL (LABEL), PRECEDENT JASMINE
(LABEL), POOJA JASMINE (LABEL) as shown in
Annexure B to the labels/trade dress as shown in
Annexure C to this application and will use these labels /
trade dress only with the "Cyan 100 + Magenta 100 for
the colour with which word PRESIDENT is written and
Cyan 100+ Magenta 25 or 100% pantone process blue"
for the PRESIDENT LABEL and with "pantone 2728C +
white + Cyan 100 Magenta 20 and Cyan 100 Magenta"
for PRECEDENT JASMINE, hereinafter referred to as
the "approved pantone shades". The plaintiff agrees that
it shall have no objection to the said labels/trade dress
mentioned in Annexure C if the same are used on the
bottles which are with the approved pantone shades. It is
also understood by the parties the Plaintiff's no objection
is limited only to the labels as shown in the Annexure C
and any changes (howsoever minor) to the said labels are
not subject to the current settlement.
E. The Defendants further undertake to this Hon'ble Court
that they shall refrain from using (a) blue and white
combination for its Jasmine related products except for
in the manner as shown in Annexure C to this application
(b) Pantone shade 285c or any other similar shade of
blue for its coconut oil products.
F. The defendants including their principals, proprietor,
partners, officers, employees, agents, distributors,
suppliers, affiliates, subsidiaries, franchisees, licensees,
representatives, group companies and assigns further
undertake to this Hon'ble Court to:
i. Exhaust the stock ( finished goods) seized by the Local
Commissioner during the raid conducted on May 2, 2017
within a period of three (3) months from the date the
present application is allowed.
ii. Destroy all materials including all old stock and/or old
finished goods, in particular, those seized in the search &
seizure conducted on April 25,2016, packaging,
bottles/jars, moulds, brochures, business cards, business
envelopes, letterheads, labels, cartons, publicity
materials such as pamphlets, hoardings, signboards,
stationary etc., within a period of two (2) weeks from the
date the present application is allowed. The destruction
will take place in presence of the representative of the
Plaintiff on a mutually convenient date and time. It is
agreed between the parties that the prescribed time
period of three (3) months is only for disposal of the
finished goods that were seized by the Local
commissioner during the commission dated May 2, 2017.
iii. Recall all the impugned products and/or any marketing,
promotional and advertising materials that bear or
incorporate the impugned mark/labels/packaging/trade
dress or any other mark/labels/packaging/trade
dress/bottle shape deceptively and confusingly similar to
the Plaintiff's mark/labels/packaging/trade dress, which
has been manufacture and/or sold, distributed in the
market, including on online retail:
iv. Deliver to the Plaintiff for destruction of all the material
including all packaging, bottle/jars, moulds, brochures,
business cards, business envelopes, letterheads, labels,
cartons, publicity material such as pamphlets, hoardings,
signboards, stationery etc. that bear or incorporate the
impugned mark/labels/packaging/trade dress, or any
other mark/labels/packaging trade dress/bottle shape
deceptively and confusingly similar to the Plaintiff's
mark/labels/packaging/trade dress;
v. Withdraw the trademark applications bearing numbers-
3024119, 3024120, 1794064, 3297783 within 15 days of
the present application being taken on record and shall
provide the Plaintiff with an endorsed copy of the said
withdrawal letter.
vi. Disclose to the Plaintiff any other trade mark and /or
copyright applications/registrations for the impugned
label/mark/trade dress/packaging/bottle shape or any
other label/mark/trade dress/packing which is deceptively
or confusingly similar to the Plaintiff's
trademarks/label/trade dress/packaging as shown in
Annexure A and immediately withdraw the same within
15 days of the present application being taken on record
and shall provide the Plaintiff with an endorsed copy of
the said withdrawal letter."
2. Defendant Nos. 1 to 3 have further agreed to pay the plaintiff
liquidated damages to the tune of ₹10 lacs in case of violation of any terms
of the agreement noted above.
3. Affidavits in support of the settlement has been filed by Shri Amit
Tripathi, authorised representative of the plaintiff and Shri Jay Kumar
Bangeja, defendant No. 1, Shri Jitendra Kumar Nagwani, defendant No. 2, &
Shri Ashish Bangeja, defendant No. 3.
4. Copy of the authorisation in favour of Shri Amit Tripathi on behalf of
plaintiff as per the Resolution passed at the meeting of the Administrative
Committee of the Board of Directors of Marico Limited held on 17th July,
2012 is at pages 477 to 479 of the documents file Volume-II.
5. In the plaint the plaintiff had pleaded infringement, passing off of its
trademark, trade dress against the defendant Nos. 1, 2 and 3 and the claim
against the defendant No. 4 was of promoting, selling, offering for sale,
advertising the infringing products of defendant Nos. 1, 2 and 3 through its
website http://www.indiamart.com/amooloil/.. An affidavit of Shri Nikhil
Goyal, authorised representative of defendant No. 4 company, that is,
Indiamart Intermesh Limited has been filed wherein it is stated that on
becoming aware of the interim order dated 19 th April, 2016 the defendant
No. 4 company has removed all the photographs of the infringing products
and the infringing trade names and trademarks from its website -
www.indiamart.com.
6. Learned counsel for defendant No. 4 who appears along with Mr.
Danish Ali Khan, now authorised representative of defendant No. 4 states
that defendant No. 4 company would abide by the affidavit of Shri Nikhil
Goyal filed on behalf of defendant No. 4 on 28 th September, 2016 before this
Court copy whereof is at pages 124-125 of the paper-book Part-B.
7. Suit is decreed in terms of the settlement arrived at between the
plaintiff and defendant Nos. 1 to 3. The defendant No. 4 would abide by the
undertaking given to this Court. Decree sheet be prepared incorporating the
terms of settlement.
8. Since the trial had not commenced and issues had not been settled,
court fee be refunded to the plaintiff in terms of Section 16A of the Court
Fees Act. Suit is disposed of accordingly.
I.A. No. 4712/2016 (under Order XXXIX Rule 1 and 2 CPC)
The suit having already been disposed of in terms of the settlement,
the application is dismissed as infructuous.
I.A. No. 5122/2017 (under Order XXXIX Rule 2A CPC)
In view of the settlement arrived at between the parties, learned
counsel for the plaintiff seeks leave to withdraw this application.
Application is dismissed as withdrawn.
(MUKTA GUPTA)
JUDGE
JULY 19, 2017
'ga'
