Dismissed

Marico Limited v. Mr Jay Kumar Bangeja & Ors.

Delhi HC19 Jul 2017CS(COMM)/361/2016

Case brief

AI extract

What is this about?

In an action for trademark and copyright infringement, the court disposed of the suit by decreeing it in terms of an out-of-court settlement between the plaintiff and defendants 1-3, vacating the other defendants from trial, and ordering the refund of court fees.

What did the court decide?

Suit decreed based on settlement; Defendants 1-3 to abide by terms; Defendant 4 to abide by undertaking; Court fee refunded; Other ancillary applications dismissed as withdrawn or infructuous.

Marico Limited Vs Mr Jay Kumar Bangeja & Ors. — Intellectual Property | Delhi HC (2017)

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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% Decided on: 19^th July, 2017

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CS(COMM) 361/2016

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MARICO LIMITED ..... Plaintiff

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Represented by: Mr. Yaten Grover, Advocate.

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versus

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MR JAY KUMAR BANGEJA & ORS. ..... Defendants Represented by: Mr. H.P. Singh and Mr. Dheeraj Seth, Advocates for defendant Nos. 1 to 3. Mr. Sourabh Leekha, Advocate for defendant No. 4 with Mr. Danish Ali Khan, Authorised Representative-Indiamart

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CORAM: HON'BLE MS. JUSTICE MUKTA GUPTA

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MUKTA GUPTA, J. (ORAL)

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I.A. No. 7980/2017 (under Order XXIII Rule 3 CPC)

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By this joint application the plaintiff and defendants seek disposal of the suit in terms of the settlement arrived at between the parties.

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Application is disposed of disposing of the suit in terms of the settlement.

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CS(COMM) 361/2016

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Plaintiff and defendant Nos. 1 to 3 who are the contesting parties have entered into an out of court settlement and have arrived at the following

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CS(COMM) 361/2016 Page 1 of 7

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terms and conditions of settlement:

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“A. The Defendants acknowledge the Plaintiff to be the proprietor of the trademark/labels namely PARACHUTE word, FLAG device, broken CoconutDevice, PARACHUTE trade dress, PARACHUTE ADVANSED JASMINE, ADVANSED, ADVANSED JASMINE, PARACHUTE ADVANSED JASMINE (label), NIHAR and NIHAR NATURAL SHANTI AMLA (label) as shown in Annexure A to the present application, and undertakes to this Hon’ble Court never to challenge the same anywhere in the world, including India on any grounds whatsoever;

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B. The defendants acknowledge the Plaintiff to be the owner of the copyright in the original artistic work in the trade dress/ labels/ packaging as shown in Annexure A to the present application, and undertakes to this Hon’ble Court never to challenge them anywhere in the world, including India on any grounds whatsoever;

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C. The defendants including their partners, agents, associates, distributors, suppliers, affiliates, subsidiaries, licensees, representatives and assigns undertake to this Hon’ble Court that they shall refrain from:

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i. Manufacturing, or authorizing the manufacture distributing, exporting, selling, offering for sale, advertising, promoting, displaying and/or using, in any manner whatsoever, the impugned products namely PRESIDENT COCONUT OIL(LABEL), PRESIDENT COCONUT OIL BOTTLE AND/OR JAR, PRESIDENT POUCH, POOJA COCONUT OIL(LABEL), POOJA COCONUT OIL POUCH, PRECEDENT JASMINE (LABEL), POJA JASMINE (LABEL), POJA JASMINE POUCH (LABEL) AND/OR PRECEDENT SHANTI AMLA as shown in Annexure B and/or any other product bearing any other mark/label/trade/dress/ packaging deceptively and/or confusingly similar to the

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CS(COMM) 361/2016 Page 2 of 7

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Plaintiff’s trademarks/labels namely, PARACHUTE, PARACHUTE ADVANSED JASMINE, NIHAR NATURAL SHANTI AMLA(label) as shown in Annexure A or any other label/ trade mark which is deceptively or confusingly similar to PARACHUTE word, FLAG device, broken coconut device, PARACHUTE trade dress, PARACHUTE ADVANSED, PARACHUTE ADVANSED JASMINE, ADVANSED, ADVANSED JASMINE, PARACHUTE ADVANSED JASMINE(label), NIHAR and/or NIHAR NATURAL SHANTI AMLA(label) AS shown in Annexure A.

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ii. Reproducing, printing, publishing and/or using the labels/packaging as mentioned in Annexure B and/or from imitating in material form the Plaintiff’s labels/packaging, as represented in Annexure A the copyrights of which vest with the Plaintiff, thereby amounting to the infringement of the Plaintiff’s copyrights in the said works.

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iii. Manufacturing, or authorizing the manufacture distributing, exporting, selling, offering for sale, advertising, promoting, displaying and/or using, in any manner the colour combination of the trade dress similar to PARACHUTE, PARACHUTE ADVANSED JASMINE and/or NIHAR SHANTI AMLA.

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D. The Defendants undertake to this Hon’ble Court that they have changed the labels of their products namely PRESIDENT COCONUT OIL (LABEL), POOJA COCONUT OIL (LABEL), PRECEDENT JASMINE (LABEL), POOJA JASMINE (LABEL) as shown in Annexure B to the labels/trade dress as shown in Annexure C to this application and will use these labels / trade dress only with the “Cyan 100 + Magenta 100 for the colour with which word PRESIDENT is written and Cyan 100+ Magenta 25 or 100% pantone process blue”

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CS(COMM) 361/2016 Page 3 of 7

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for the PRESIDENT LABEL and with “pantone 2728C + white + Cyan 100 Magenta 20 and Cyan 100 Magenta” for PRECEDENT JASMINE, hereinafter referred to as the “approved pantone shades”. The plaintiff agrees that it shall have no objection to the said labels/trade dress mentioned in Annexure C if the same are used on the bottles which are with the approved pantone shades. It is also understood by the parties the Plaintiff’s no objection is limited only to the labels as shown in the Annexure C and any changes (howsoever minor) to the said labels are not subject to the current settlement.

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E. The Defendants further undertake to this Hon’ble Court that they shall refrain from using (a) blue and white combination for its Jasmine related products except for in the manner as shown in Annexure C to this application (b) Pantone shade 285c or any other similar shade of blue for its coconut oil products.

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F. The defendants including their principals, proprietor, partners, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns further undertake to this Hon’ble Court to:

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i. Exhaust the stock ( finished goods) seized by the Local Commissioner during the raid conducted on May 2, 2017 within a period of three (3) months from the date the present application is allowed.

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ii. Destroy all materials including all old stock and/or old finished goods, in particular, those seized in the search & seizure conducted on April 25,2016, packaging, bottles/jars, moulds, brochures, business cards, business envelopes, letterheads, labels, cartons, publicity materials such as pamphlets, hoardings, signboards, stationary etc., within a period of two (2) weeks from the date the present application is allowed. The destruction will take place in presence of the representative of the Plaintiff on a mutually convenient date and time. It is agreed between the parties that the prescribed time

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CS(COMM) 361/2016 Page 4 of 7

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period of three (3) months is only for disposal of the finished goods that were seized by the Local commissioner during the commission dated May 2, 2017.

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iii. Recall all the impugned products and/or any marketing, promotional and advertising materials that bear or incorporate the impugned mark/labels/packaging/trade dress or any other mark/labels/packaging/trade dress/bottle shape deceptively and confusingly similar to the Plaintiff’s mark/labels/packaging/trade dress, which has been manufacture and/or sold, distributed in the market, including on online retail:

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iv. Deliver to the Plaintiff for destruction of all the material including all packaging, bottle/jars, moulds, brochures, business cards, business envelopes, letterheads, labels, cartons, publicity material such as pamphlets, hoardings, signboards, stationery etc. that bear or incorporate the impugned mark/labels/packaging/trade dress, or any other mark/labels/packaging trade dress/bottle shape deceptively and confusingly similar to the Plaintiff’s mark/labels/packaging/trade dress;

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v. Withdraw the trademark applications bearing numbers3024119, 3024120, 1794064, 3297783 within 15 days of the present application being taken on record and shall provide the Plaintiff with an endorsed copy of the said withdrawal letter.

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vi. Disclose to the Plaintiff any other trade mark and /or copyright applications/registrations for the impugned label/mark/trade dress/packaging/bottle shape or any other label/mark/trade dress/packing which is deceptively or confusingly similar to the Plaintiff’s trademarks/label/trade dress/packaging as shown in Annexure A and immediately withdraw the same within 15 days of the present application being taken on record and shall provide the Plaintiff with an endorsed copy of the said withdrawal letter.”

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CS(COMM) 361/2016 Page 5 of 7

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Defendant Nos. 1 to 3 have further agreed to pay the plaintiff liquidated damages to the tune of ₹10 lacs in case of violation of any terms of the agreement noted above.

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Affidavits in support of the settlement has been filed by Shri Amit Tripathi, authorised representative of the plaintiff and Shri Jay Kumar Bangeja, defendant No. 1, Shri Jitendra Kumar Nagwani, defendant No. 2, & Shri Ashish Bangeja, defendant No. 3.

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Copy of the authorisation in favour of Shri Amit Tripathi on behalf of plaintiff as per the Resolution passed at the meeting of the Administrative Committee of the Board of Directors of Marico Limited held on 17^th July, 2012 is at pages 477 to 479 of the documents file Volume–II.

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In the plaint the plaintiff had pleaded infringement, passing off of its trademark, trade dress against the defendant Nos. 1, 2 and 3 and the claim against the defendant No. 4 was of promoting, selling, offering for sale, advertising the infringing products of defendant Nos. 1, 2 and 3 through its website http://www.indiamart.com/amooloil/.. An affidavit of Shri Nikhil Goyal, authorised representative of defendant No. 4 company, that is, Indiamart Intermesh Limited has been filed wherein it is stated that on becoming aware of the interim order dated 19^th April, 2016 the defendant No. 4 company has removed all the photographs of the infringing products and the infringing trade names and trademarks from its website – www.indiamart.com.

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Learned counsel for defendant No. 4 who appears along with Mr. Danish Ali Khan, now authorised representative of defendant No. 4 states that defendant No. 4 company would abide by the affidavit of Shri Nikhil Goyal filed on behalf of defendant No. 4 on 28^th September, 2016 before this

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CS(COMM) 361/2016 Page 6 of 7

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Court copy whereof is at pages 124-125 of the paper-book Part-B.

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Suit is decreed in terms of the settlement arrived at between the plaintiff and defendant Nos. 1 to 3. The defendant No. 4 would abide by the undertaking given to this Court. Decree sheet be prepared incorporating the terms of settlement.

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Since the trial had not commenced and issues had not been settled, court fee be refunded to the plaintiff in terms of Section 16A of the Court Fees Act. Suit is disposed of accordingly.

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I.A. No. 4712/2016 (under Order XXXIX Rule 1 and 2 CPC)

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The suit having already been disposed of in terms of the settlement, the application is dismissed as infructuous.

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I.A. No. 5122/2017 (under Order XXXIX Rule 2A CPC)

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In view of the settlement arrived at between the parties, learned counsel for the plaintiff seeks leave to withdraw this application.

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Application is dismissed as withdrawn.

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(MUKTA GUPTA) JUDGE

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JULY 19, 2017 ‘ga’

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CS(COMM) 361/2016 Page 7 of 7

Marico Limited v. Mr Jay Kumar Bangeja & Ors.

Case brief

What is this about?

What did the court decide?

Marico Limited v. Mr Jay Kumar Bangeja & Ors.

Case brief

What is this about?

What did the court decide?

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