Luxottica Group S. P. A & ANR v. Mify Solutions Private Limited And ORS
$~5 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 216/2018 & I.A. 13273/2014 LUXOTTICA GROUP S. P. A & ANR ..... Plaintiffs Through:
Mr. Rishabh Gupta, Advocate versus MIFY SOLUTIONS PRIVATE LIMITED AND ORS ..... Defendants Through:
Ms. Anshu Kapoor, Director Mily Solutions Pvt. Ltd.(through VC)
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
O R D E R
% 16.05.2024 1.
Counsel for plaintiff has handed up an application vide diary No. E-1509317/2024 under Order XXIII Rule 3 of Code of Civil Procedure, 1908 ("CPC") by the parties, however, the same is not on record. The same is directed to be placed on record.
2.
The Court has perused the application which is signed by authorised signatories on behalf of plaintiff and defendant no.1. 3.
The authorised signatory of defendant no.1, Ms. Anshu Kapoor, is present through VC and confirms the terms of settlement. The application is supported by an affidavit of authorised signatories of the parties as well. 4.
Defendant no. 2, Mr. Ashish Paliwal, has since passed away. 5.
Defendant no.3 has been proceeded ex parte.
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6.
The terms of settlement as executed between plaintiff and defendant no.1 are reproduced as under:
"3. That during course of proceedings, the Plaintiff and the Defendant has agreed to settle the matter and have entered a compromise on the following terms and conditions: a. That the Defendant acknowledges the proprietary rights of the Plaintiff in the trade mark/label RAY BAN/ and various formative trademarks/labels owned by the Plaintiff (hereinafter referred to as the Plaintiff's "said trademarks/labels"). A list of the Plaintiffs trademarks is reproduced below:
Trade Mark Applicati Cla Status Date of Disclaim on no.
ss Applicati er/ on Conditio ns RAY-BAN 115796 Register 05/12/19 NIL ed 711144 Register 11/04/19 NIL ed RAY-BAN 1007549 Register 04/05/20 NIL ed The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
RAY-BAN 517284 Register 22/09/19 NIL ed RAY-BAN 1007550 Register 04/05/20 NIL ed RAY-BAN 1007551 Register 04/05/20 NIL ed RAY-BAN 504509 Register 30/01/19 NIL ed RAY-BAN 504511 Register 30/01/19 NIL ed 5741231 Register 28/12/20 NIL ed 5741232 Register 28/12/20 NIL ed RAY-BAN 1528008 Register 05/02/20 NIL VISIONARY [16, ed AWARD 25, 41] 2111705 Register 08/03/20 NIL ed 1007552 Register 04/05/20 NIL ed The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
b. In addition to the above, the Defendant also acknowledges the proprietary rights of the Plaintiff in the various other trademarks and labels owned by the Plaintiff. A list of the trademarks owned by the Plaintiff in addition to the said trademark/labels are annexed with the present Application (hereinafter the term "said trademarks/labels" shall deem to include all trademarks included the List of Trademarks/Labels) c. That the Defendant also acknowledge the Plaintiff's Copyright in the artworks of the Plaintiff involved in the Plaintiff's said trademarks/labels (the term said trademarks/labels shall hereinafter refer to and include the Plaintiff's artworks/copyrights involved);
d. That the Defendant undertake not to adopt and/or use the impugned trademark/label RAY BAN/ or any other word/mark/logo which may be identical with and/or deceptively similar to the Plaintiff's said trademarks/labels in relation to any goods or services, including at any time in the future;
e. That the Defendant undertake not to oppose or challenge any trademark/copyright application and/or registration of the Plaintiff in its said trademarks/labels;
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f. That the Defendant further undertakes to bear the cost of proceedings incurred by the Plaintiff in connection with the present case amounting to Rs. 2,00,000 (Rupees Two Lakh, equivalent to USD 2,400 approx.). In that regards the Defendant has already handed over to the Plaintiff a Demand Draft for Rs. 2,00,000/-, details of which are reproduced below for the ready reference of this Hon'ble Court: S.
DD Amoun Date Dra N No.
t (Rs.) wn o.
On 1.
2,00,00 30.04.2 HD 0/- FC Ban k g. That the Defendant have no objection if the suit is decreed in terms of prayer contained in Para 41 (a) (i) to (iii) of the Plaint. The said paras of the Plaint are being reproduced below for the ready reference of this Hon'ble Court: "41. Under the facts and circumstances of the present case, the Plaintiff most respectfully prays that this Hon'ble Court may kindly be pleased to pass a decree in favour of Plaintiff and against the Defendants detailed as hereunder :- (a)For a decree of permanent injunction restraining the The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
defendants by themselves as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from manufacturing, marketing, purveying, supplying, using, selling, soliciting, exporting, displaying, advertising on the online marketplace or by any other mode or manner dealing in or using the Plaintiffs said trade mark RAYBAN and or any other word/mark which may be identical with and/or deceptively similar word/mark to the plaintiffs said trade mark RAYBAN on the impugned website www.kaunsa.com or any other website in relation to the business of sunglasses , eyewear and related/allied products and from doing any other acts or deeds amounting to or likely to:
(i) Infringement of Plaintiffs registered Trade mark RAYBAN.
(ii) Passing off and violation of the Plaintiff s rights in the Plaintiff s said Trade Mark RAYBAN.
(iii) Infringement or otherwise violating by way of passing off the Plaintiff s copyrights in the Plaintiffs said Trade Mark RAYBAN."
h. That the above-mentioned terms and conditions of the compromise shall be binding on all the parties, their representatives, heirs, assignees, agents, successors etc., as the case may be.
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i. In the event that Defendant fails to fulfil one or more of its obligations under this Settlement Agreement:
i.The Plaintiff shall have the right to cancel this Settlement Agreement fully or partially; and ii.The Defendant will furnish a forfeit, without any further notice or demand required, an immediate payable penalty in the amount of Rs. 5,00,000/- (Rupees Five Lakhs only) for any breach without limiting or precluding the rights of the Plaintiff to additionally claim from the Defendant any damage which Plaintiff has incurred or may incur as a result of the trademark infringements.
4. That the Defendant No. 1 has informed the Plaintiff that the Defendant No. 2, who was one of the directors of the Plaintiff, has passed away on 23.06.2021. The Plaintiff herein agrees that since the dispute is being amicably settled with the Defendant No. 1, the Plaintiff shall not press the suit against the legal heirs of the Defendant No. 2.
5. That the terms of this settlement are strictly executed in confidence and shall be binding between the Plaintiff and Defendant and cannot be used by any third party to claim/conduct/connive use/infringement of the Intellectual Property Rights of the Plaintiff. In conformity thereof, the The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
Defendant undertakes that it shall keep the terms and conditions of this settlement extremely confidential and not divulge it to any third party, violating which the Defendant shall be liable to pay Rs. 5,00,000/- (Rupees Five Lakhs Only) to the Plaintiff within one week, without any negotiations." 7.
It is stated by counsel for plaintiff that they have received a demand draft as noted in para 3(f) of the terms of settlement. 8.
Accordingly, as per the terms of settlement, decree is passed in terms of prayer contained in para 41(a) (i) to (iii) of Plaint. 9.
Let decree sheet be drawn up in the above terms. 10.
Parties will be bound by the terms of settlement. 11.
In view of the settlement between the parties, plaintiff shall be entitled to 50% of refund of the Court fees, through counsel for plaintiff. 12.
Registry is directed accordingly.
13.
The suit is disposed of accordingly. Pending applications, if any, are rendered infructuous.
14.
Order be uplaoded on the website of this Court. ANISH DAYAL, J MAY 16, 2024/RK/na Click here to check corrigendum, if any The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.