Sunit Shah v. Trilok Foods Pvt Ltd

1. The disputes between the parties stand settled with the intervention of the Delhi High Court Mediation and Conciliation Centre. Settlement Agreement dated 27th January 2023 has been placed on record. The terms of settlement read thus: “6.1. The Defendant acknowledges that the Plaintiff are the owners of all intellectual property pertaining to the HOT MIX/SHAH HOT MDC (LABEL) as mentioned in the plaint and agrees to not contest the same in the future.

6.2. The Defendant undertakes not to commit any act of infringement and/or passing off by the use of the mark of the Plaintiff and/or any other mark which is identical and/or deceptively similar to the plaintiffs registered mark/artistic work.

6.3. The Defendant undertakes to not use the scripts, fonts, positions and placement of any features, get ups, lay outs, combination of colours and arrangement as are identical or deceptively similar to the features, get ups, lay-outs, positions and placement or combination of colours of the Plaintiffs trade dress/packaging materials.

6.4. The Defendant undertakes to not sell its goods/ products in the current packaging and agrees and undertakes to use the mark HOTKING MIXTURE with the new agreed upon packing only as detailed i.e. of the present Settlement Agreement to which the Plaintiff has no objection thereof, which is enclosed as Annexure-3.

6.5. That the defendant also undertakes that it shall not usehhe trademark HOT MIX/SHAH HOT MIX (LABEL) and any other mark with the combination of HOT and MIX or the combination which is a variant of the said to words/marks i.e. HOT and MIX besides the agreed upon packaging as enclosed in Annexure-3.

6.6. The Defendant undertakes that the defendant shall withdraw any and all trademark applications filed by the defendant for the registration of the trademark BALAJ[1] HOT MIX/HOT MIX and in any event agrees to not press any of its application after signing of the present Agreement.

6.7. The parties agree that the packaging materials i.e. which had been seized by the Local Commissioner appointed by this Hon'ble Court on 08.03.2022 and sealed and kept at the premises of the Defendant at A-2/9-10, Sector-17, Kavi Nagar Industrial Area, Ghaziabad-201002, (U.P.) as enshrined in the LC Inventory list enclosed as Annexure-4 will be destroyed in the presence of the representative of the Plaintiff on 05.02.2023 at 11 a.m., but in any event the same shall be carried out latest by 10.02.2023, at the cost of the Defendant.

6.8. The parties further agree that the other packaging i.e. and which were lying at other location i.e. House No.-605 F/F, Kb- No.121/122, Krishna Gali, Maujpur, Delhi 110053, which were not seized will be sold by the Defendant by putting/adding a sticker on the said packaging and the parties agrees that the same shall be disposed off within a period of four months and not later than 30.05.2023. The copy of the same is also enclosed as Annexure-5.

6.9. After filing of the present Suit, the Defendant had also prepared new packaging subsequent packing i.e. which the parties undertake and agree shall be used by the Defendant within a period of four months and not later than 30.05.2023 and the same is also enclosed as Annexure-6.

6.10. The Defendant agrees that after the expiry of the aforestated period i.e. 30.05.2023, the Defendant shall cease and desist from using all of the said packaging material mentioned in paragraph 6.[8] and 6.[9] in any manner whatsoever and shall destroy all of the packaging materials at its own cost. As the packaging material bears manufacturing stamps, the Defendant in undertakes that said packaging material will not be used in any manner beyond 30.05.2023.

6.11. That the defendant further undertakes to pay a sum of INR 1,00,000/- (Indian National Rupee One Lac Only) to the plaintiff towards token damages which has already been made via UTR no. N023232300542459 into the bank account bearing NO. 5145089972 at Kotak Maliindra Bank of the Plaintiff and the Plaintiff confirms and acknowledges the payment thereof.

6.12. The defendant has no objection if a present matter is disposed in terms of the present settlement and in terms prayers made in paragraphs 33 (a) and (b) of the plaint which is reproduced hereinbelow: (a) That this Hon'ble Court may kindly be pleased to restrain the defendant, its proprietor, partners, associates, sister concerns, dealers; distributors through himself and through servants, agents, assigns and representatives and others actingf or and on his behalff rom processing, selling, offeringf or sale, advertising directly and indirectly dealing in impugned goods included in Class- 30 bearing the impugned trademark/label HOT MIX or any other trademark/label as may be identical with or deceptively similar to plaintiffs said trademark/label SHAH HOT MIX, which results in infringement and passing off of said trademark/label ofplaintiff. (b) That this Hon'ble Court may kindly be pleased to restrain the defendant, his proprietor, partners, associates, sister concerns, dealers, distributors through himself and through servants, agents, assigns and representatives and all others actingf or and on their behalff rom processing, selling, offering for sale, advertising directly and indirectly dealing in impugned goods included in Class-30 bearing the impugned artistic work or any other artistic work as may be identical with or deceptively similar to plaintiff’s said artistic works which results in infringement and passing off of said artistic work of plaintiff;

6.13. In view of the above undertakings tendered by the Defendant, the plaintiff forgoes all of the other including that of rendition of accounts, damages and costs of the proceedings.”

2. In view of the aforesaid settlement, nothing survives for adjudication in the present case.

3. Learned Counsel for the parties are present. They undertake on behalf of their respective clients to remain bound by the terms of the settlement.