Ashok Kumar Gupta & Anr. v. Rishabh Bansal & Anr.

1. The Disputes between the parties stand settled, vide Settlement Agreement dated 14th March 2023 executed under the aegis of the Delhi High Court Mediation and Conciliation Centre, which has been placed on record. The terms of settlement read thus: “a. The Respondent no. 1/Defendant admits that the Plaintiffs/Petitioners are original and registered proprietor of the trademark/label 'SAKARNI PLASTER/SAKARNI WALL GUARD/SAKARNI’ in respect of the goods falling in class 19 of the Trade Marks Act, 1999 and the Respondent no. 1/Defendant acknowledges the proprietary light of the Plaintiffs/Petitioners in the said trademarks as enumerated in the plaint of CS (Comm.) NO. 48 of 2023. b. The Respondent no. 1/Defendant also admits and acknowledges the Plaintiffs/Petitioners' Copyright in the artistic features of the packaging pouches, labels including their distinctive scripts, fonts, positions and placing of features, their respective get ups, lay outs, combination of colours and arrangements of general and descriptive materials in respect of goods falling in class 19. c. The Respondent no. 1/Defendant also admits and acknowledges that the Plaintiffs/Petitioners are prior user of the trademark/label 'SAKARNI PLASTER/SAKARNI WALL GUARD/SAKARNI’ for the goods falling in class 19. d. The Respondent no. 1/Defendant further admits the Plaintiffs/Petitioners to be the owner of Copyright in the artistic works as involved in the trademark/label 'SAKARNI PLASTER/SAKARNI WALL GUARD/SAKARNl' and the Respondent no. 1/Defendant shall not have any objection with respect to the registration of the pending trademarks and copyright applications of the Plaintiffs/Petitioners in any manner whatsoever. e. The Respondent no. 1/Defendant undertakes before this Hon'ble Court not to commit any act of infringement and/or passing off by the use of the trade mark/device SATKARMI/ /SAKARNI and/or any other mark/name which is identical and/or deceptively similar to the Plaintiffs/Petitioners registered trademarks/labels in any manner whatsoever. f. The Respondent no. 1/Defendant undertakes before this Hon'ble Court not to use the scripts, fonts, positions and placement of any features, get ups, lay outs, combination of colours and arrangement as are or is identical or deceptively similar to the features, get ups, lay-outs, positions and placement or combination of colours of the Plaintiffs/Petitioners' pouches/packaging material in respect of and in relation to the product P.O.P etc. g. The Respondent no. 1/Defendant undertakes before this Hon'ble Court not to reproduce and/or to make any adaptation of any of the artistic features of the Plaintiffs/Petitioners' pouches/packaging material including get up, lay out, arrangement and/or combination of colours constituting infringement of plaintiffs/petitioners' copyright herein including the works as are subject matter of copyright registration. h. That Respondent no. 1/Defendant further undertakes this Hon'ble Court to withdraw the application/registration of the impugned mark/device SATKARMI bearing no. 3564551 in Class 19 within two weeks from the date of the execution of the present settlement. That the Respondent no. 1/Defendant further undertakes that there is no application pending before the Registrar of Trade Marks or any other authority filed by the Defendant/Respondent No. 1 bearing the trademark/device “SATKARMI/ /SAKARNI” and even in future also the respondent no. 1/defendant shall not file any such application for the registration which may be similar or identical to the Plaintiffs/Petitioners' trademark/label/artistic work/trade dress. In view of the said undertaking by the Respondent no. 1/Defendant, the plaintiffs/petitioners agree to withdraw the rectification petition C.O. (Comm. IPD-TM) No. 752/2022. i. The Respondent no. 1/Defendant undertakes to this Hon'ble Court to recall all the marketing, promotional and advertising materials that bear or incorporate the mark “SATKARMI/ /SAKARNI” or any other mark similar to the Plaintiffs/Petitioners' "SAKARNI PLASTER/SAKARNI WALL GUARD/SAKARNI" mark, which have been distributed, sold or shipped before entering into the present settlement. j. The Respondent no. 1/Defendant undertakes before this Hon'ble Court that he will destroy all the blocks, dies, screens, works, wrappers and any other material in which the impugned mark or infringing trade dress or copyright within fifteen days from the date of the order passed by this Hon'ble Court. k. The Respondent no. 1/Defendant further undertakes to this Hon'ble Court that he will not either directly or indirectly, or through any of its entity apply or encourage others directly or indirectly for the registration of any trade mark/trade name “SATKARMI/ /SAKARNI” or any word/mark deceptively similar to the trademark "SAKARNI PLASTER/SAKARNI WALL GUARD/SAKARNI" of the Plaintiffs/Petitioners.

1. That the Respondent no. 1/Defendant has already paid a sum of Rs. 1,25,000/- by way of two transactions through UPI aggregating the settlement amount being Rs. 1,25,000/- to the plaintiffs towards token damages in the Bank Account of the Plaintiff No. 1/Petitioner No.l's Firm i.e. Jai Durga Plaster Industries receipt whereof duly acknowledged. m. The Respondent no. 1/Defendant further agrees to pay the plaintiffs/petitioners without any demur or protest a sum of INR 25,00,000/- (Twenty Five Lakhs Only) in the event of the occurrence of any default/breach by them of any condition set forth herein above provided that such breach/default arises out of the act(s) which are directly within the power and control of the Respondent no. 1/Defendant; n. The Respondent no. 1/Defendant has no objection if a decree of perpetual injunction is passed by this Hon'ble Court in favour of the plaintiffs according to the prayer clause of the paragraph 32 (a)&(b) of the plaint in CS (Comm.) No. 48 of 2023 along with terms and conditions of the present settlement. o. The parties have gone through the terms and conditions herein and confirm and verify the same to be correct and that they put their signatures hereunder without any threat, coercion, pressure, or undue influence from any quarter and both sides agree to abide by the terms and conditions herein. p. The Parties have gone through this present Settlement Agreement and have understood the same and have no objections to the present terms and conditions. The parties also understand that bleach of the terms and conditions of this Settlement Agreement shall invite lawful action for contempt of court against them by the other party in the concerned Court q. That the Parties undertake before the Hon'ble Court to abide by the terms and conditions set out in the agreement and not to dispute the same hereinafter in future. r. The parties agree that they shall appear before the Hon'ble court during the hearing to make their statements in terms of the present settlement agreement.”

2. Learned Counsel are present on behalf of their respective parties. They undertake to abide by the aforesaid terms of settlement.

3. As such, nothing survives for adjudication in the suit as well as the rectification petition. Rectification petition stands disposed of and the suit stands decreed in terms of the aforesaid Settlement Agreement executed between the parties to which they shall remain bound.

4. Let a decree-sheet be drawn up by the Registry.

5. The plaintiffs would be entitled to refund of court fee, if any, deposited by them.

6. Miscellaneous applications do not survive for consideration and are disposed of accordingly.

C.HARI SHANKAR, J MARCH 29, 2023