Full Text
HIGH COURT OF DELHI
Date of Decision: - 1st December, 2023.
RSPL LIMITED & ANR. ..... Plaintiffs
Through: Mr. S K Bansal and Mr. Pankaj Kumar Advs (M. 9810017859)
Through: Mr. Pravin Anand, Mr. Achuthan Sreekumar, Mr. Rohil Bansal, Ms. Apoorva Prasad R., Advs. (M.
9079965359)
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The present case has been filed by the Plaintiffs seeking permanent injunction restraining infringement of trade mark and passing off.
3. The case of the Plaintiffs is that in the year 1975 the Plaintiff No.1 - RSPL Ltd., through its predecessor, adopted the trade mark DEVICE OF GHARI/WATCH/CLOCK in relation to soap/detergent. The Plaintiff No.2 - RSPL Health Private Limited, through its predecessors originally conceived, coined and adopted the trademark/label trade dress XPERT in the year 1993 in respect of manufacturing and marketing of washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry.
4. The Plaintiffs have numerous trade mark registrations for their mark DEVICE OF GHARI/WATCH/CLOCK and trade mark/label trade dress XPERT in several classes. Details of trade mark registrations of the said marks by the Plaintiffs and its predecessors are given in paragraph 14 of the plaint. The said marks are extracted below:
5. Broadly, the grievance of the Plaintiffs in this case is use of the mark EXPERT and depiction of the partial clock on the detergent packaging of the Defendants as also the use of the word expert and use of the elongated X and DX. The same are extracted below:
6. The case of the Plaintiffs is that its trademark GHADI used for detergents relates and connotes a watch/clock. Thus, the use of the depiction of a partial clock device for detergent products of the Defendants would violate the Plaintiff’s right in the mark GHADI.
7. Ld. counsel for the Defendants has taken instructions in the matter and submits that the Defendants are willing to give up the words EXPERT and XPERT in respect of soaps, detergents and substances for cleaning and laundry use. In addition, the Defendants are willing to depict the circular device without the yellow portion and make the entire circle as red and blue without depiction of a partial clock.
8. In view of the above agreement of the Defendants, the two issues that were raised by the Plaintiff stand satisfied.
9. The present suit was filed in 2020. Summons are yet to be issued. Parties were in mediation in an attempt to amicably resolve the disputes. In view of the above stand of the parties, the dispute is resolved in the following terms: a) The Defendants shall cease use of the partial clock device and use a red/blue circular device for depicting/encircling the expression `15 minutes’. It will be ensured that the modified device does not look similar to a clock/watch. b) The letters DX shall be used without the elongated `X’ as in the Plaintiff’s `XPERT’ mark; c) The Defendants shall not use the word XPERT as a trade mark but shall only use the word EXPERT in a non-trademark sense in a descriptive manner. d) The Defendants shall also not use the DX along with elongated X and DX shall be used in a normal font. e) The Defendants shall withdraw the trademark applications which consists of the partial clock device and an elongated X bearing nos. 4030559, 3986893, 3986892, 3979697 and shall not claim any copyright over the labels that are the subject matter of any of the said trademark application/registrations.
10. With these terms, the dispute between the parties stands resolved with the consent of the parties.
11. The suit is disposed of in the above terms.
12. All pending applications are also disposed of.
PRATHIBA M. SINGH JUDGE DECEMBER 01, 2023/dk/kt