Metro Brands Limited vs Metro Shoes

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION

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COMM. IPR SUIT N0.45 OF 2025

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Metro Brands Limited ) a company incorporated under ) the Companies Act, 1956, ) having its Registered Office at ) 401, Kanakia Zillion, 4^th floor, ) L.B. S. Marg & C. S. T. Road ) Junction, Kurla (West), ) Mumbai 400 070 ) ... Plaintiff Versus Metro Shoes ) Hanuman Bazaar, ) Berhampur, Ganjam, ) Odisha - 7 60002 ) ... Defendant

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CONSENT TERMS

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BY CONSENT, THE PARTIES TO THE SUIT SETTLE THEIR DISPUTES IN THE FOLLOWING MANNER:

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The Defendant acknowledges the proprietary rights of the Plaintiff in the trademarks and the copyright that subsists in the artistic work of the trademarks^{" 9-6TIIII}^{," t:J�J} '^J�Q,, '^M:TRO"

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...

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«M�RO", "�" "METRO", "METRO BRANDS", and variants thereof ("said marks") as more particularly referred to and annexed at Exhibit "G" to "P8" of the Plaint in the above suit.

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The Defendant state that they had adopted the tradename "METRO SHOES" / "METRO FOOTCARE" / "METRO EXCLUSIVE" /

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1WIICI I . .

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/ FOOTCARE /

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I ("impugned marks"), which they also caused to use it as a mark for providing the services of sale of f o twear from their one & only retail outlet situated at "Hanuman Bazaar, Berhampur, Ganjam, Odisha - 760002" ("Defendant's retail outlet") and they from time to time graphically represented as the impugned marks. The reproductions and images of the graphical representations of the impugned marks is more particularly provided at Exhibits "DD" to "GG" of the Plaint in the aforementioned suit.

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The captioned Suit was filed by the Plaintiff on 07th December 2024, inter alia seeking permanent injunction against the Defendant from using the impugned marks so as to prevent the Defendant from infringing and passing off their goods and services bearing/under the impugned marks as that of the Plaintiff.

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The Plaintiff had caused to file Interim Application (L) No.37270 of 2024 ("said IA") in the captioned Suit, for seeking ad-interim and interim relief against the Defendant from violating its rights in the said marks by use of the impugned marks.

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The said IA came up for hearing on 08^th January 2025 and 09th January 2025 when the Attorney on behalf of the Defendant appeared and sought time to file an Affidavit in Reply to the said IA.

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Pursuant to which the Attorney of the Defendant approached the Attorney for the Plaintiff with the proposal of concluding the captioned matter on the terms that the Defendant would discontinue the use of the impugned marks. The Attorney of the Plaintiff communicated the intention of the Defendant to settle the matter. The Plaintiff put forth its conditions for settling the same which were deliberated and discussed between the Attorney's to the parties in the Suit which has resulted in the terms and conditions recorded hereinunder:

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a. The Defendant unequivocally acknowledges, accepts, _agrees, declares and confirms that the Plaintiff is the exclusive owner and proprietor of the said mark METRO as well as its variants which include the said marks.

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b. The Defendant accepts, agrees and declares to cease and desist from using the impugned marks in any manner whatsoever within ten (10) days of signing of the consent terms and shall be free to use any mark which shall not resemble any of the mark of the Plaintiff.

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c. The Defendant further undertakes that neither the Defendant nor any one claiming under or through him which shall include but not be limited to its successors, assigns, affiliates, subsidiaries, partners, representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees shall not adopt, use, register, or attempt to

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register the said marks/impugned marks or any other mark which contains the said marks/impugned mark and/or is identical and/or similar to the said marks/impugned marks in any manner whatsoever for its business, tradename, goods, services, products, domain name, social media handle, packaging, promotional material and/or any other paraphernalia used to conduct the business or commercial activities of the Defendant.

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d. The Defendant also accepts, agrees and confirms that neither the Defendant nor any one claiming under him or through him which shall include but not be limited to its successors, assigns, affiliates, subsidiaries, partners, representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees to adopt, use, or register the said marks/impugned marks or any mark identical and/or deceptively similar to the Plaintiff's marks in any manner whatsoever.

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e. The Defendant accepts, agrees, declares and confirms that neither the Defendant nor any one claiming under him or through him which shall include but not be limited to its successors, assigns, affiliates, subsidiaries, partners, representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees shall not directly or indirectly apply for registration, attempt to register, use or aid any third party in registering, using or attempting to register or use the said marks/impugned marks or any mark identical and/or similar mark thereto in any country for any goods or services before the Learned Registrar of Trademarks.

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f. The Defendant accepts, agrees, declares and confirms that neither the Defendant nor any one claiming under him or through him which shall include but not be limited to its successors, assigns, affiliates, subsidiaries, partners, representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees shall not directly or indirectly apply for any registration, attempt to register, use or aid any third party in registering, using or attempting to register or use the said marks/impugned marks on any social media platforms, including but not limited to Instagram, Threads, Facebook, Linkedln, X, Youtube, websites, domain names or any digital marketplace.

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g. The Defendant hereby accepts, agrees, declares and confirms that neither the Defendant nor any on::� claiming under him or through him which ·shall include but not be limited to its successors, assigns, affiliates, subsidiaries, partners� representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees shall not directly or indirectly, oppose, contest, or challenge any application for registration or the validity of any registered mark of the Plaintiff, which the Plaintiff seeks to register or has already secured registration for, in any jurisdiction, for any goods and/or services, which may or may not include the word/mark :tvfETRO or any variation thereof. The Defendant further undertakes not to support or assist any third party in opposing, contesting, or challenging any such application or registration.

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h. The Defendant hereby accepts, agrees, declares that neither the Defendant nor any one claiming under him or through him which shall

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include but not be limited to its successors, assigns, affiliates, subsidiaries, partners, representatives, or agents, stockiest, affiliates, agents, distributors, dealers, subsidiaries, franchisees, licensees, assignees, heirs, family members, employees shall not, directly or indirectly, communicate, represent, or imply that the Defendant and/or the Plaintiff are connected, affiliated, or associated with each other in any manner whatsoever.

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1. The Defendant accepts, agrees, declares, and confirms that in the event of a breach of any term or condition of these consent terms by the Defendant, the Plaintiff shall be entitled to seek appropriate legal remedies, including but not limited to injunctive relief, damages, accounts of profits and costs, without prejudice to any other rights. The Defendant further agree that such breach shall be deemed a material violation and that they shall be liable to compensate the Plaintiff for any losses or damag:: · s arising therefrom.

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J^. The Defendant accepts, agrees, declares, and confirms that he waives any rights, claims, defences or er.titlements arising out of its prior or current use of the impugned marks and agrees that it shall have no claim whatsoever against the Plaintiffs ownership and rights over the Plaintiffs Marks.

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Dated this 8^th day of May 2025

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For METRO BRANDS

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METRO SHOES Md. Naushad Khan �\�J" - - -

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ate for the Defendant

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY

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ORDINARY ORIGINAL CIVIL JURISDICTION