Delhi High Court
Sunshine Teahouse Pvt. Ltd. vs Mtrm Global Pvt. Ltd. on 11 October, 2022
$~26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 11th October, 2022
+ CS (COMM) 617/2022 & I.A. 14369/2022
SUNSHINE TEAHOUSE PVT. LTD. ..... Plaintiff
Through: Mr. Ankit Miglani & Ms. Kaveri
Rawal, Advocates (M-7276358720)
versus
MTRM GLOBAL PVT. LTD. ..... Defendant
Through: Ms. Swati Sukumar, Mr. Abhishek
Jain, Ms. Sutapa Jana, Mr. Gagan
Gulati, Ms. Anjali Bisht, Mr.
Shivansh Bhatt, Mr. Jasneet Singh &
Ms. Himangi Kapoor, Advocates (M-
9810857920)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff, seeking permanent
injunction restraining infringement of its registered trademark and the
unauthorised use of the trade name etc. relating to the competing trademarks
'CHAAYOS' and 'CHAIOPS'. The Plaintiff - M/s Sunshine Teahouse Pvt.
Ltd. is a company registered under the Companies Act, 1956 having its
registered office based out of New Delhi. It is the trademark owner of the
brand 'CHAAYOS' which it claims to be using since the year 2012 and
became the registered owner of the trademark in the year 2017. The Plaintiff
claims to be the leading chain of Chai Cafes in India operating in various
states across the country offering customised Chai in over 12,000 ways in
more than 200 outlets across the country. Further, where the physical stores
are not present, the Plaintiff has reached out to its customers through its
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
website www.chaayos.com offering delivery services and e-marketplaces
like www.amazon.in, www.flipkart.com, Bigbasket, Instamart, Grofers, etc.
The Plaintiff has a number of registered trademarks in various Classes as set
out below:
3. The Defendant - MTRM Global Pvt. Ltd., which was incorporated on
10th March, 2017 has its registered office based out of Ghaziabad, UP. The
Defendant conceptualised and adopted the mark
sometime in July, 2020 for selling tea products through
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
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a cafe under the name and style of 'CHAIOPS'.
4. The case of the Plaintiff is that the Defendant adopted the mark
'CHAIOPS' for offering products and services identical to that of the
Plaintiff which is a violation of the Plaintiff's registered trademark
'CHAAYOS'. Ms. Sukumar, ld. Counsel for the Defendant submits that the
Defendant already had 37 outlets.
5. The present suit was first listed on 6th September, 2022, on which date
considering the prayer for interim injunction that had been made, this Court
was of the opinion that an amicable resolution ought to be explored between
the parties considering the status of the businesses of the Plaintiff and the
Defendant. The Plaintiff had about 200 outlets and the Defendant had
already opened 37 outlets by that date. Since the dispute primarily was on
the word mark and the device and the logo were not objected to, the parties
explored various options for the word mark, which the Defendant could
have adopted. However, the mediation proceedings failed and on the next
date of hearing, i.e., 23rd September, 2022 further options were explored.
6. Yesterday, i.e., on 10th October, 2022 in the presence of Mr. Satvir
Singh on behalf of the Defendant, it was finally agreed that the Defendant
would change its word mark to 'ChaiApps' instead of 'CHAIOPS'. This
was acceptable to the Plaintiff. Ld. Counsels for the parties were requested
to finalise the consented settlement terms and place the same before Court.
7. Draft consent terms are stated to have been exchanged between
counsel for the parties. Today, submissions have been heard on the consent
terms as well. There is some dispute as to what timeline should be given to
the Defendant to give effect to changeover the word mark. After hearing the
submissions and considering the fact that the legal notice was exchanged
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
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between the parties in August, 2021 and the suit was filed one year later, this
Court is of the view that some reasonable time can be granted to the
Defendant to give effect the changeover. The Court then put to the counsels
for both the parties as to whether the parties would be satisfied if the
Defendant effects the change to its existing centres, physical boards,
stationery etc. by 1st April, 2023 and in respect of online platforms and/or
any new outlets to be opened, the change would be immediate. This is
acceptable to both parties. Draft consent terms which were exchanged
between counsel in track change mode have been handed over to the Court.
On the basis of the same and the submissions made today, the following
consent terms are recorded as a full and final settlement of all the disputes
that have arisen between the parties in the present suit:
1. The Plaintiff and the Defendant hereto confirm and declare that
they have voluntarily and of their own free will and volition without
any force or coercion arrived at this full and final settlement.
2. The Defendant confirms and declares that it will change its
mark 'CHAIOPS' to 'ChaiApps' (New Word Mark). Accordingly,
the new mark/logo of the Defendant will be as follows:
3. The change to the new mark 'ChaiApps' as set out above shall
be effected in the following manner.
(i) For all new outlets to be opened with effect from today, the
new name and logo shall be used by the Defendant, its
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
franchisees and/or licensees.
(ii) In respect of usage on all online platforms including the
website, email addresses, social media handles like Twitter,
Facebook, Linkedin etc. the Defendant shall within one
month inform its customers that it has now changed over to
the new name "ChaiApps" as set out above. Upon the expiry
of the one month period, the Defendant shall cease all use of
Chaiops on all online platforms;
(iii) In respect of all physical outlets of the Defendant, i.e., 37
outlets, which have already been opened by the Defendant,
the change in the display boards outside the physical
premises shall be effected with effect from 1st April, 2023.
In the meantime, in all the said outlets the stationery etc.
shall be removed in a phased manner so that the customers
are informed that the earlier name 'CHAIOPS' has been
changed to the new name 'ChaiApps'. With effect from 1st
April 2023, all use of the mark CHAIOPS even in existing
outlets shall be ceased.
(iv)The Defendant agrees that it will change the marks in the
existing outlets, shops, kiosks, cafes etc., menu cards,
pamphlets, labels, stationery articles, flyers, façades and
destroy all pending inventory or stocks bearing the mark
"Chaiops" by 1st April, 2023. The Defendant also agrees
that subsequent to the said date, it will neither be in
possession of nor in power or control of any pending stock,
stationery items, advertisement or promotional or any
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
materials, or otherwise any item of any nature bearing the
mark "Chaiops".
(v) The terms of this agreement shall be duly informed to all the
Defendant's franchisees, affiliates and subsidiaries, which
are operating the existing outlets so that they are made
aware of the terms of settlement and they can prepare their
respective activities so as to be in compliance with the
deadlines specified above.
(vi) Hence, the Defendant agrees that w.e.f 1st April, 2023, it
will cease use of the mark 'CHAIOPS'. However,
subsequently, in case any such material comes to the notice
of the Plaintiff, the Plaintiff undertakes to bring such
material immediately to the knowledge of the Defendant
wherein the Defendant shall take down boards, signage,
destroy such goods, materials, online or otherwise, not later
than within one week of receipt of such notice, failing which
the defendant shall be liable to damage to the tune of
Rs.50,000/- for each day, the default continues.
(vii) The Defendant agrees to change its domain name and
emails and remove all references of the earlier mark
'CHAIOPS' from the World Wide Web including websites,
social media platforms, food delivery platforms, e-
commerce websites or any other third party websites
managed, operated, owned or dealt by the Defendant or on
their behalf directly or indirectly in any manner whatsoever
within one month from today.
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
(viii) The Defendant shall take down, remove and delete all the
posts, videos, photos, reels etc. bearing or containing
reference of earlier mark 'CHAIOPS', posted by the
Defendant on any social media platforms including but not
limited to Instagram, Facebook, Twitter, LinkedIn, Youtube
etc. within one month from the date of settlement. The
Defendant shall further immediately stop all their
promotional activities, promotions, advertisements relating
to earlier mark 'CHAIOPS' being run on any platform,
whether online or offline, within one month of signing the
settlement agreement.
4. The Plaintiff agrees not to object to the use and/or registration
of above-mentioned New Word Mark 'ChaiApps', or any variants
thereof, in any manner whatsoever before any judicial and/or quasi-
judicial authority.
5. The Defendant shall withdraw their currently pending
trademark applications before the Trademark Registry for the
trademark "Chaiops" or its variants within one week of this
settlement and e-mail the proof of having done so to the counsel for
the Plaintiff.
6. The Defendant hereby declares and undertakes that it shall
destroy all hoardings, boards, signage etc. that may have been put up
by or on behalf of the Defendant bearing the mark 'CHAIOPS'
and/or its variations by 31st March, 2023, of the present suit being
decreed and share the proof of the same to the counsel of the
Plaintiff.
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By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
8. The Parties hereto declare, assure and undertake that no other case or
court proceedings are pending between the Parties except as mentioned
above.
9. The Parties agree that the settlement terms provided herein are final
and binding on both Parties and their respective partners, servants, agents,
licensees, assigns in business and/or any person directly or indirectly related
to them in their ordinary course of business activities or even otherwise.
10. The present settlement terms shall be confidential to the Parties and
shall not be disclosed to third parties without the written consent of the other
party. The Defendant may disclose the essence of this Agreement to its
franchisees to enable them to change their existing branding.
11. The above consent terms shall be binding on the parties and anyone
acting on their behalf. In view of the undertakings and assurances given by
the Defendant, as recorded above, the Plaintiff does not press for damages
and rendition of accounts.
12. The suit shall stand decreed in the terms captured above. Decree
sheet be drawn accordingly. All pending applications are also disposed of.
13. The present order be sent to the office of CGPTDM at [email protected]
for compliance.
14. In view of the amicable resolution of disputes, full court fee is
directed to be refunded to the Plaintiff in terms of the judgment of the ld.
Division Bench of this Court in Nutan Batra v. M/s. Buniyaad Associates,
2018 (255) DLT 696, through counsel.
PRATHIBA M. SINGH
JUDGE
OCTOBER 11, 2022/dk/SR
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:12.10.2022
17:01:57
