Full Text
HIGH COURT OF DELHI
CS(COMM) 530/2021 & I.A. 13926/2021 (Order XXXIX
Rules 1 and 2 of the CPC), I.A. 1867/2022 (Order VI Rule 17 of the CPC)
SANDISK LLC ..... Plaintiff
Through: Ms. Devyani Nath, Adv.
Through: Mr. Joney, Adv. for Defendant 1 with Defendant 1 in person
Mr. Harsh Kumar and Mr. Parveen Kaushik, Advs. for Defendant 2 with Defendant 2 in person
Mr. Yash Kumar, Adv. for Defendant 3 None for Defendant 4
JUDGMENT
02.03.2023
1. Defendant 4 has remained absent in these proceedings despite service.
2. Accordingly, Defendant 4 is proceeded ex parte.
3. With the intervention of the Delhi High Court Mediation and Conciliation Centre, the dispute stands settled between the plaintiff and Defendants 1 to 3. Three separate Settlement Agreements dated 15th February 2023, executed by the plaintiff with each of the said defendants have been placed on record. The terms of these Settlement Agreements are in all relevant aspects identical. The terms of settlement with D[1] read thus: “(i) The Second Party/Defendant No.1 acknowledges that the First Party is the owner of the well-known trademark 'SANDISK' under the Trademarks Act, 1999 as well as under common law. A representative list of the Plaintiffs SANDISK trademarks is annexed herewith as
ANNEXURE-B.
(ii) The Second Party will not take any steps to register or apply for registration of any trademark/ trade name which is same or similar to SANDISK trademark/Product packaging/trade dress or any deceptively similar variations of the SANDISK trademarks in any manner whatsoever in India or in any other jurisdiction.
(iii) The Second Party agrees and undertakes to refrain from using the First Party's trademarks SANDISK word and logo in any manner whatsoever with respect to USB pen drive, micro SDHC card, and other related storage products and/ or for any other goods and services. The Second Party agrees that a breach of this clause 2(iii) would amount to infringement of First Party's trademark and passing off.
(iv) The Second Party agrees and undertakes to refrain from using the First Party's SanDisk product packaging and trade dress in any manner whatsoever with respect to USB pen drive, micro SDHC card and/ or any other goods and services. The Second Party agrees that a breach of this clause 2(iv) would amount to infringement of First Party's copyright in the said product packaging.
(v) The Second Party undertakes to handover of the products seized during the local commission conducted in the present suit and kept with him in Superdari to the First Party's legal counsel, within one week of the signing of the Settlement Agreement.
(vi) That the Second Party agrees and undertakes to pay damages to the First Party a total sum of ESIR 80,000/- (Indian Rupees Eighty Thousand Only). The said damages of INR 80,000/- shall be paid in four installments of INR 20,000 (Indian Rupees Twenty Thousand Only) over four months with the first installment being made at the time of signing of this settlement agreement. In view of the said arrangement, the Second Party agrees to handover three (3) post dated cheques, the cheque numbers of the same reproduced below. The four (4) cheques through which the Second Party shall make the payment of damages to the Plaintiff are mentioned below. The all the four (4) cheques shall be handed over to the First Party's legal counsel at the time of signing this settlement agreement.
1. Cheque Number 309943dated 12.12.2022
2. Cheque Number 309944 dated 12.01.2023
3. Cheque Number 309945 dated 12.02.2023
4. Cheque Number 309946 dated 12.03.2023
(vii) The parties agree that the discussions that took place during the mediation proceedings on 23rd November 2022 shall be kept confidential. The Second Party further agree that he shall not use the terms of this agreement against the First Party in any farther proceedings and/or in any other manner whatsoever.
(viii) That both the Parties agree that this settlement has been arrived at after long mutual discussions and in good faith and entered by them at their respective free will and without any kind of influence, force or pressure, coercion arid duress, but out of their own free will, consent and after fully understanding the implications/ consequence of having arrived at the aforesaid Settlement and hence the same shall be binding upon the said Parties.
(ix) That the Parties hereby agree to decree the suit in view of the above terms 2 (i) to 2 (vii) and prayers (a) to (c) and (e) of paragraph 43 of the Plaint and prayer (f) of paragraph 43 of the Plaint subject to Term 2 (v) of this settlement agreement. The First Party agree to not pursue and is giving up the prayers (d), (g) and (h) of paragraph 43 of the Plaint.”
4. In the case of Defendant 2 and Defendant 3, the cheque numbers in clause (vi) of the settlement agreement would be required to be substituted as under: Defendant 2-
Defendant 3- “1. Cheque Number 000001 dated 12.12.2022
2. Cheque Number 000002 dated 12.01.2023
3. Cheque Number 000003 dated 12.02.2023
4. Cheque Number 000004 dated 12.03.2023”
5. As such, nothing survives for adjudication in the suit. The suit stands decreed between the plaintiff and each of the said Defendants 1 to 3 in accordance with the terms of the Settlement Agreement dated 15th February 2023, executed between the plaintiff and the said defendants.
6. Each of the defendants would, in accordance with Clause (v) of the terms of settlement, handover the goods seized from its premises and handover it on Superdari to the plaintiff within one week from today.
7. Each of the defendants has handed over a cheque in accordance with Clause (vi) of the terms of settlement to the learned Counsel for the plaintiff during the course of the proceedings today.
8. The suit stands decreed in the above terms. Let the decree-sheet be drawn up by the Registry. Miscellaneous applications do not survive for consideration and stand disposed of.
9. Accordingly, the plaintiff would be entitled to refund of the court fee, if any.
10. Let this order be uploaded on the website of this Court within 24 hours.
C.HARI SHANKAR, J MARCH 2, 2023