The Bombay HC disposed of a trademark suit by recording a settlement agreement where defendants limited 'BILLABONG' use to schools and plaintiffs withdrew oppositions, sanctioning the final order.
Suit and Notice of Motion disposed of based on mutual settlement terms regarding trademark usage.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
GSM (Operations) Pty Ltd v Lina Ritin Ashar & Anr.
906-NMSL-1280-2016.DOC
JSN
IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION
SUIT (L) NO.396 OF 2016 ALONG WITH
NOTICE OF MOTION (L.) NO.1280 OF 2016
GSM (Operations) Pty. Limited
Versus
Lina Ritin Ashar & Anr.
…Plaintiff
…Defendants
Ms. Anuradha Salhotra, a/w Mr. Shrivardhan Deshpande & Mr.
Yuvraj Singh, i/b M/s. Desai & Diwanji for the Plaintiff.
Mr. Ashutosh Kane, a/wNiyati Davawala, i/b M/s. W.S. Kane &
Co. & Robin George.
CORAM: G.S. PATEL, J DATED: 26th April 2016
PC:-
1.By consent, parties are agreed that the following order will
dispose of the Suit itself at this ad-interim stage. Mr. Kane waives
service of the Writ of Summons and of the Notice of Motion.
2.In order to appreciate the controversy, it is necessary only to
note that it relates to the mark ‘BILLABONG’. According to the
Defendants, they have for some time now used this mark in India in
relation to their network of schools in India, including in Mumbai
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GSM (Operations) Pty Ltd v Lina Ritin Ashar & Anr.
906-NMSL-1280-2016.DOC
and elsewhere. They now propos to be open a school in the National
Capital Region, specifically Noida. The Plaintiff on the other hand is
an international company that uses the mark in relation to sports
equipments, sports wear, and similar goods including accessories
and apparel, particularly in relation to water sports.
3.The parties are agreed that irrespective of the class in which
the Defendants choose to apply for or obtain registration, they will
limit their use of the mark ‘BILLABONG’ such that it is used only
in conjunction with the word ‘School’ or ‘High School’ or some
other expression that indicates that the Defendants are an
educational institution. They will further limit their use of this mark
(with the additional expression) only to their school and school-
related activities such as school uniforms, footwear required for
schools, text books, stationery and so on. In other words, the
Defendants will not use the mark with or without any additional
expression in relation to any goods for sale in the consumer market.
4.It is also agreed that the Plaintiffs will be at liberty to use their
mark in relation to any facility, training camp or academy, including
for water sports, that they may set up in India but the Plaintiffs will
also take care to sufficiently distinguish their facility, training
academy or camp and its name from the Defendants’ school
network and educational institutions.
5.The Plaintiff agrees and undertakes to withdraw its notices of
opposition and rectification applications filed before Trademark
Registry within a period of 30 days from today. This statement is
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GSM (Operations) Pty Ltd v Lina Ritin Ashar & Anr.
906-NMSL-1280-2016.DOC
made on instructions. It is noted and accepted as an undertaking to
the Court.
6.The Suit itself is disposed of in these terms with no order as
to costs. Refund of Court Fees, if any, in accordance with rules.
7.In view thereof, the Notice of Motion does not survive and is
disposed of accordingly.
8.This order is to be uploaded as the final order disposing of
both the Suit and the Notice of Motion.
(G. S. PATEL, J.)
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26 April 2016
2 issues framed by the court
Whether the suit and notice of motion regarding use of the mark 'BILLABONG' can be disposed of via a settlement agreement between the parties.
Whether the agreed undertakings regarding limitation of mark use and withdrawal of opposition applications are acceptable to the court.
G. S. PATEL
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court