LIVGUARD ENERGY TECHNOLOGIES PVT LTD. v. MOHAMMAD AKIL AND ANR

1. The dispute between the parties in C.O. (COMM.IPD-TM) 172/2021 stands settled and a joint application has been moved by the parties under Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (CPC). I.A. 12998/2023 (under Order XXIII Rule 3 of the CPC)

2. The terms of settlement as contained in this application read thus: a) “The Respondent No.1 recognizes and acknowledges the Petitioner's exclusive proprietary rights in the trademarks LIVFAST/. b) The Respondent No.1 confirms that it has already stopped using the mark LEFAST/ or any other deceptive variations thereof in relation to the products manufactured by it, namely batteries, home UPS batteries, batteries for vehicles, electric batteries, stabilizers, solar batteries, etc. and is now using the mark “SPEEDLINE” in relation to the said products. c) Respondent No.1 undertakes that it will not use, advertise or sell any products under the mark LEFAST/ or any other deceptive variations thereof or any other mark which is identical or confusingly similar to the Petitioner’s mark LIVFAST/ in any manner whatsoever, including but not limited to as a trade mark, trading/corporate name, domain name, social media handle, etc. at any time in future. d) The Respondent No.1 further undertakes not to file any application for registration of mark LEFAST/ or any other deceptive variations thereof or any other mark which is identical or deceptively similar to the Petitioner’s mark LIVFAST/ at any time in future. e) The Respondent No.1 undertakes not to challenge the proprietary rights of the Petitioner in the marks LIVFAST/. f) Within fifteen (15) days of signing the present settlement application, the Respondent No.1 undertakes to take all appropriate steps to ensure that the domain name <lefast.in> is taken down/cancelled. g) Within fifteen (15) days of signing the present settlement application, the Respondent No.1 undertakes to instruct in writing all third-party e-commerce/trading websites such as India Mart, Just Dial, Olx, etc. to take down/cancel its listing from their websites which carry information or photographs of its products bearing the mark LEFAST and to take all appropriate steps, including but not limited to writing follow up letters, to ensure that these websites take down the said listings. h) Within seven (7) days of signing the present settlement application, the Respondent No.1 will take down its social media accounts on websites such as Facebook, Instagram, Twitter, etc which carry listings or photographs or information pertaining to the trade mark LEFAST. i) The Respondent No.1 undertakes to destroy all packaging material, magazines, brochures, pamphlets or any other publicity material bearing the mark LIVFAST/ or any other deceptive or confusingly similar variations thereof within seven (7) days of signing the present agreement. j) The Respondent No.1 has informed the Petitioner that it has some left-over stock of goods bearing the mark LEFAST/. The Respondent No.1 has sought the Petitioner's permission to exhaust its existing stock of goods bearing the mark LEFAST/. In this regard, the Respondent No.1 is seeking time till June 30, 2023 to exhaust its existing stock of goods bearing the mark LEFAST/. The Respondent No.1 undertakes that it will not sell any products bearing the mark LEFAST/ or any deceptive variation thereof after June 30, 2023. k) Respondent No.1 agrees and undertakes that within one week of signing the present settlement application, it will file an appropriate request under form TM-P before the Trade Marks Office seeking cancellation of the registration of the mark LEFAST, registered under no. 4059607 in class- 9 (Impugned Registration) and provide a copy thereof duly acknowledged by the Trade Marks Office to the Petitioner's counsel. l) Respondent No.1 agrees and undertakes that within one week of signing the present settlement application, it will file an appropriate request under form TM-P before the Trade Marks Office seeking cancellation of the registration of the mark registered registered under no. 4380874 in class - 9, against which the Petitioner has filed a separate rectification petition (bearing no. 271213) which is pending before the Trade Marks Office, and provide a copy thereof duly acknowledged by the Trade Marks Office to the Petitioner's counsel. m) In view of the above undertakings made by the Respondent No.1, the Petitioner agrees to grant the Respondent No.1 time till June 30, 2023 to exhaust its existing stock of goods bearing the mark LEFAST/. The Petitioner further agrees to not to press for any costs of the proceedings. n) In view of the above undertakings made by the Respondent No.1 and subject to the Respondent No.1 complying with the same the Petitioner agrees not initiate any legal action against the Respondent no.l with respect to the mark LEFAST/. However, if the Respondent No.1 violates any of the above terms, the Petitioner will be entitled to avail the appropriate legal remedies available to it under law.”

3. Parties are represented by learned Counsel. Mr. George, learned Counsel for the plaintiff draws my attention to para “k” and “l” of the terms of settlement, wherein Respondent 1 has undertaken to file applications before the Trade Marks Registry for cancellation of the word mark LEFAST as well as the device mark.

4. He prays that the Registry of Trade Marks may be directed to cancel the aforesaid marks, instead of wating for an application to be filed by the respondent and action to be taken thereon.

5. In view thereof, the Trade Marks Registry is directed to cancel, forthwith, the word mark LEFAST registered under no. 4059607 in class 9 and the device mark registered under NO. 4380874 in class 9 in favour of Respondent 1.

6. Nothing further survives for adjudication in the present petition.

7. The petition is accordingly disposed of in terms of the aforesaid settlement and the directions issued today.

C. HARI SHANKAR, J.