Rectification petitions challenging registration of the mark MOMENTS in class 30 were disposed of on the basis of a memorandum of compromise under which respondent 1 acknowledged petitioner's rights in FERRERO MOMENTS, agreed to restrict use to specified goods, and sought amendment of registrations; petitions were closed as settled.
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2024:MHC:2122
(T)OP(TM) Nos.298 and 299 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 15.04.2024
CORAM
THE HONOURABLE DR.JUSTICE ANITA SUMANTH
(T)OP(TM) Nos.298 and 299 of 2023
Soremartec S.A
Findel Business Centre, Rue De Treves, L – 2632 Findel, Luxembourg
.... Petitioner in both O.Ps.
Vs
.... Respondents in both OPs
Common Prayer: These Petitions came to be numbered by transfer of O.R.A.Nos.13 & 14/2019/TM/CHN from the file of the Intellectual Property Appellate Board, Chennai praying this Court to rectify the register by cancelling the registration for the impugned trademark under registration Nos.1530394 and 1530393.
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(T)OP(TM) Nos.298 and 299 of 2023
In both O.Ps. For Petitioner : Mr.Shrivatsav for M/s.Anand and Anand For Respondents : Ms.Swabhhi Tyagi for Mr.Arun C. Mohan – R1 Mr.C.Kulandaivel Senior Panel Counsel - R2
C O M M O N O R D E R
Read this order in conjunction with and in continuation of order
dated 05.04.2024 where the submissions of Mr.Shrivatsav, learned counsel for the petitioner and Ms.Swabhhi, learned counsel for R1 to the effect that the matter stands settled and the settlement agreements were under execution, were recorded.
dated 04.04.2024, which is extracted below and is made part and parcel of the record.
"MEMO OF COMPROMISE ENTERED BETWEEN
PETITIONER AND THE 1ST RESPONDENT
The petitioner and the 1st Respondent humbly beg to submit as follows:-
1. That the Petitioner has filed rectification petitions numbered as (T)OP(TM) 298 of 2023 and (T)OP(TM) 299 of 2023 seeking the removal and/or rectification of the trademarks bearing Registration no.1530393
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(T)OP(TM) Nos.298 and 299 of 2023
for the mark in class 30 for the goods "COFFEE, TEA, COCOA, SUGAR, RICE, TAPIOCA, SAGO, ARTIFICIAL COFFEE, FLOUR AND PREPARATIONS MADE FROM CEREALS, BREAD, PASTRY AND CONFECTIONERY, ICES; HONEY, TREACLE; YEAST, BAKING POWDER; SALT, MUSTARD; VINEGAR, SAUCES, (CONDIMENTS); SPICES; ICE" and Registration No.1530394 for the mark MOMENTS in class 30 for the goods "COFFEE, TEA, COCOA, SUGAR, RICE, TAPIOCA, SAGO, ARTIFICIAL COFFEE, FLOUR AND PREPARATIONS MADE FROM CEREALS, BREAD, PASTRY AND CONFECTIONERY, ICES; HONEY, TREACLE; YEAST, BAKING POWDER, SALT, MUSTARD; VINEGAR, SAUCES, (CONDIMENTS); SPICES; ICE"(hereinafter collectively referred to as the "impugned marks"). 2. That during the course of the proceedings, the parties initiated settlement talks and voluntarily arrived at an amicable solution to resolve the above mentioned disputes and differences.
3. That the parties hereto confirm and declare that they have voluntarily and of their own free will arrived at this settlement.
4. That the 1st respondent acknowledges and accepts that the petitioner is the absolute and sole owner of the trademark "FERRERO MOMENTS" bearing registration no.3906628 in class 30 for the goods namely "Pastry and confectionary, biscuits, filled wafers, chocolate and chocolate confectionery, candy and edibles ices" and acknowledges the Petitioner's superior and earlier trademark rights in the trademark "FERRERO MOMENTS".
5. That the Petitioner acknowledges that the 1st Respondent has registered the trademarks
"MOMENTS" and bearing registration
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(T)OP(TM) Nos.298 and 299 of 2023
nos.1530394 and 1530393 respectively in class 30 for coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, condiments, spices, ice.
6. That the 1st Respondent herein undertakes not to use/register/apply the impugned marks with respect to goods enumerated below. These goods are referred to as "Prohibited Goods"
Prohibited Goods:
"Pastry and confectionary, biscuits, filled wafers, chocolate and chocolate confectionery, candy, edibles ices, flour and preparations made from cereals, cocoa and sugar"
7. That the 1st respondent herein undertakes to use/register/apply the impugned marks only with respect to goods enumerated below. These goods are referred to as "Agreed Goods".
"coffee, tea, rice, tapioca, sago, artificial coffee, bread, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, condiments, spices".
8. That the 1st respondent herein undertakes not to challenge any trademarks or any use of the marks incorporating the mark MOMENTS by the petitioner for the products of their interest enumerated below. These goods will be referred to as "Goods of Petitioner's interest".
Goods of Petitioner's interest:
"Pastry and confectionary, biscuits, filled wafers, chocolate and chocolate confectionery, candy, edibles ices and other related goods."
9. That the 1st Respondent herein undertakes to provide consent to the registration and use of any future FERRERO MOMENTS/ MOMENTS mark of the Petitioner for the Goods of Petitioner's interest.
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(T)OP(TM) Nos.298 and 299 of 2023
FERRERO MOMENTS for goods identical/ deceptively similar to Goods of Petitioner's interest and/or for Prohibited Goods.
Dr.ANITA SUMANTH,J.
compromise dated 04.04.2024, these Original Petitions are closed as settled. Needless to say that the parties are bound by the time lines set
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(T)OP(TM) Nos.298 and 299 of 2023
out under the memorandum of compromise and all consequences shall flow therefrom. No costs.
15.04.2024
Sl Index:Yes/No Speaking order Neutral Citation:Yes
To
The Registrar of Trade Marks The office of the Trade Marks Registry, Intellectual Property Bhavan, Boudhik Sampada Bhawan, G.S.T. Road, Guindy, Chennai – 600 032.
(T)OP(TM) Nos.298 and 299 of 2023
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1 issue framed by the court
Should the trademark rectification petitions be closed in terms of the memorandum of compromise between the parties?
Soremartec S.A
M/s.CavinKare Private Limited
The Registrar of Trade Marks
Anita Sumanth
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
