Parmod Kumar Jain v. State & Ors.

1. Present petition has been filed for quashing of case FIR No. 0189/2022 dated 06.08.2022 registered under Sections 103/104 of Trade Mark Act, 1999 at PS Hauz Qazi.

2. Ld. Counsels for both the parties submit that the present dispute arose from a trade mark issue which has now been amicably settled between the parties. A joint settlement application has been moved by both the parties in terms of the order dated 12.04.2023.

3. It has been submitted that the petitioner is a trader and importer of Fire Hoses, Fire sprinklers, Fire blankets, Fire Fighting Equipment, Fire Fighting monitors, Fire Extinguishing Apparatus, Fire Beaters, Fire- Fighting Equipment etc. under the trademarks FORCE and AQUA. It has further been submitted that the marks FORCE and AQUA were coined by the Petitioner in the year 2006 and is in commercial use since

2006. It has been submitted that by virtue of the long and continuous use of the trademarks FORCE and AQUA for more than sixteen years the same has acquired secondary meaning, become highly distinctive with the Petitioner only and no one else. It has been submitted that by virtue of prior adoption, prior use coupled with extensive publicity and promotion, the Petitioner has exclusive common law and proprietary interest in the trademarks FORCE and AQUA. It has further been submitted the petitioner is the owner and registered proprietor of the trademarks FORCE and AQUA in relation to their goods/products and services.

4. The respondent no. 2 claims to be a non-profit organization which certifies safety of various articles including fire sprinklers and is the proprietor of certification trademark 'UL' which is claimed to be registered in India. Respondent no. 2 further permits use of the certification trademark UL on fire sprinklers on payment of an annual license fee. Allegedly, on the payment of the same, the petitioner was stated to be entitled to use the aforesaid trademark UL on their articles. Respondent no. 3 is claimed to be a subsidiary of respondent no. 2 and carries out all business of respondent no. 2 in India under its authorization.

5. The parties submit that the FIR was registered on the basis of a police complaint filed on behalf of UL LLC (inadvertently mentioned as Underwriter Laboratories-UL in the complaint) which is a global safety science company headquartered in Northbrook, Illinois, alleging infringing of trademark 'UL' under the Trademark Act, 1999, on the basis of which, a raid was conducted by the police on 18.08.2022 on the premises of the petitioner and goods were seized. Basis the said complaint the present FIR was registered.

6. It has been submitted that however during the pendency of the present petition, the parties have amicably settled the dispute and the petitioner has issued an undertaking dated 23.03.2023 to respondent nos.[2] and 3 which is as under:

7. The parties have also e-filed joint settlement application. Let the physical copy be placed on record. In the settlement application it has been submitted that in view of the settlement, the goods seized during the raid conducted consequent to the registration of the FIR may be released to the petitioner in the presence of the officials of respondent no.3 for further disposal by the parties in the below manner on the same day of release of goods:

(i) Fire sprinklers wherein UL is mentioned only on the cap and not embossed on the body of the fire sprinkler, will be handed over to the Petitioner after removing the caps.

(ii) Fire sprinklers bearing the trade mark FORCE, embossed with the year 2021, will be handed over to the Petitioner for disposal/sale.

(iii) Fire sprinklers wherein UL is embossed on the body of the fire sprinkler (other than the fire sprinklers mentioned in para

(ii) above) will be handed over by the Petitioner to the representative of Respondent No. 3 at the date and time fixed by the Parties for the purpose of destruction, or will be destroyed by the Petitioner in the presence of Respondent NO. 3's representative. The cost of this destruction shall be borne by the Petitioner. This destroyed material can then be sold /disposed by the Petitioner as scrap only.

8. In terms of the settlement it has also been agreed that the petitioner shall pay to the respondent no. 2 a sum of Rs. 50,000/- as nominal cost for the legal expenses incurred in initiating the legal proceedings. Learned counsel for the petitioner undertakes that this amount shall be transferred through bank transfer to the respondent no.2 within a week.

9. Learned counsel for respondent nos. 2 and 3 state the respondents have entered into the settlement with the petitioner voluntarily, without any fear, force or coercion.

10. I have considered the submissions. The present complaint stems from a civil dispute of trade mark infringement. The parties have amicably settled all their disputes and no further grievance remain qua the petitioner. In terms of the settlement, the parties no longer wish to pursue the present complaint and have no objection if the same is quashed. Thus no useful purpose will be served in continuing with the present complaint. It has been repeatedly held in catena of judgments that in cases where the possibility of conviction is bleak on account of a compromise between the parties, this Court in its inherent jurisdiction under section 482 Cr.P.C can quash the proceedings to secure the ends of justice or to prevent the abuse of the process of this Court.