Roland Corporation vs Hi Tone Electronics
2021 Latest Caselaw 3605 Del

                               $~50
                               *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                               +      RFA(OS)(COMM) 2/2021
                                      ROLAND CORPORATION                                      ..... Appellant
                                                         Through      Mr.Pravin Anand with Mr.Shrawan
                                                                      Chopra, Mr.Vibhav Midhal and
                                                                      Mr.Achyut Tewari, Advocates.
                                                         versus

                                      HI TONE ELECTRONICS                              ..... Respondent
                                                    Through           Mr.Neel Mason with Mr.Vihan Dang
                                                                      and Mr.Shivang Sharma, Advocates.


                               %                                     Date of Decision: 23th December, 2021
                               CORAM:
                               HON'BLE MR. JUSTICE MANMOHAN
                               HON'BLE MR. JUSTICE NAVING CHAWLA
                                                           JUDGMENT

MANMOHAN, J (Oral):

C.M.Nos.20748/2021 & 20750/2021 Exemption allowed, subject to all just exceptions. Accordingly, the applications stand disposed of. RFA(OS)(COMM) 2/2021 & C.M.Nos.20747/2021, 20749/2021

1. The present matter was referred to the Delhi High Court Mediation and Conciliation Centre vide order dated 28th July, 2021.

2. Learned counsel for the parties state that the matter has been amicably resolved in the mediation proceedings. The Terms of Settlement are reproduced hereinbelow:-

Signature Not Verified Digitally Signed By:JASWANT SINGH RAWAT Signing Date:24.12.2021 20:07:19 " ROLAND vs HITONE ELECTRONICS - Mediation Terms

1) HiTone shall withdraw its cancellation petition, bearing no. ORA/198/2007/TM/DEL, to Roland's "BOSS" word mark, TM No. 1294072.

2) Roland shall withdraw its cancellation petition, bearing no. ORA/194/2008/TM/DEL to HiTone's mark, TM. No. 441779.

3) HiTone shall change mark to " within a period of two (2) years.

                                   4) HiTone shall always use the new             mark in combination with        mark, and not
                                   use              or           alone.
                                   5) HiTone can use                 only for those products shown on their catalogue in 2019

6) HiTone shall not oppose Roland's applications, registrations or use in India of Roland's "BOSS" trademark.

7) Roland shall withdraw its opposition proceeding to HiTone's mark, if Hi-Tone takes steps to amend its application TM No. 1584958 for as per clause 9.

8) Roland has no objection to use of the Hi-Tone's mark being used in any colour.

NEW PROPOSED HITONE TRADEMARK

(9) The Parties shall move a joint application before the Division Bench in RFA (OS) (COMM) 2 of 2021 for an appropriately worded order from the Court directed towards the Trademarks Registrar for amendment of Registration No. 441779 for the trademark and for Application No. 1584958 for the trademark ."

3. Learned counsel for the parties assure and undertake to this Court that they shall comply with the Settlement Terms agreed upon before the Mediator. The Statements/undertakings given by learned counsel for the parties are accepted by this Court and the parties are held bound by the same.

Signature Not Verified Digitally Signed By:JASWANT SINGH RAWAT Signing Date:24.12.2021 20:07:19

4. Consequently, this Court directs the Registrar of Trademarks to permit amendment of:-

(a) Trademark registration number 441779 in class 9 from

to .

(b) Trademark application number 1584958 for to

.

5. Accordingly, the present appeal is decreed in terms of the Settlement Terms agreed before the Mediator and the decree passed by the learned Single Judge is modified accordingly.

MANMOHAN, J

NAVIN CHAWLA, J DECEMBER 23, 2021 KA

Signature Not Verified Digitally Signed By:JASWANT SINGH RAWAT Signing Date:24.12.2021 20:07:19