NEW BALANCE ATHLETICS INC. vs ASHOK KUMAR & ORS.
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 90/2023
NEW BALANCE ATHLETICS INC. ….. Plaintiff
Through: Mr. Urfee Roomi, Ms. Janaki Arun and Mr. Ayush Dixit, Advocates.
versus
ASHOK KUMAR & ORS. ….. Defendants
Through: Mr. Mudit Makhijani, Mr. Eeshan Pandey and Mr. Chandan Goswami, Advocates for defendant No. 1.
M. Mrinal Ojha, Mr. Debarshi Datta, Mr. Anand Raja and Ms. Tanya Chaudhry, Advocates for defendant No. 2.
Mr. Varun Pathak and Ms. Vibhuti Vasisth, Advocates for defendant No. 5.
Mr. Vijay Arora and Mr. Karan Singh, Advocates for defendant No. 8.
Mr. Arnav Kumar, CGSC with Mr. Gurdas Khurana, Advocate for defendant Nos. 9 & 10.
Mr. Praveen Kumar Jain, Advocates for defendant No. 11.
CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
O R D E R (O R A L)
% 22.12.2023
I.A. 26242/2023(Order XXIII Rules 3 of the CPC)
1. The disputes between the parties stand settled and a joint application under Order XXIII Rule 3 of the Civil Procedure Code, 1908 (CPC) has been filed on behalf of the plaintiff and Defendant 1, which is signed by the parties as well as the learned counsel.
2. The terms of the settlement read thus:
a. This settlement agreement binds not only the Defendant No. 1 personally, but also his successors and assignees, and any other entity or concern in which he may be a partner, a shareholder, a director or hold a majority stake.
b. The Defendant No. 1 acknowledges the Plaintiffs right, title and interest in the (i) NEW BALANCE mark, (ii) NB Device mark (shown in Document 1), (iii) N Device mark (also shown in Document 1) and (iv) variations of the NEWBALANCE, NB Device and N Device marks. The marks referred to in paragraphs (b)(i) to (b)(iv) are hereinafter collectively referred to as the Plaintiffs Marks.
c. The Defendant No. 1 states that, until at least May 11, 2023, he was engaged in the business of marketing, offering for sale, and selling footwear bearing the Plaintiffs Marks, including, but not limited, through the websites located at www.luxuryjunctionlj.com, www.luxuryjunction.in, www.sneakerhead7.com and www.luxurylj.com, mobile application Luxury Junction and the Instagram pages located at @luxury_junctionlj and @men_wordable, without authorization from the Plaintiff. The Defendant No. 1 states that he has ceased any and all use of the Plaintiffs Marks. The term use for the purposes of this settlement agreement includes, but is not limited, to use on and in relation to any goods, including but not limited to footwear, on promotional and advertising material, on the Defendant No. ls own websites or any third-party websites or through social media channels, including, but not limited to Instagram.
d. The Defendant No. 1 has destroyed, at his own cost, any and all goods/materials, including but not limited to footwear, packaging, promotional material and business incidentals bearing the Plaintiffs Marks or any mark similar to the Plaintiffs Marks, that was in his possession, or in the possession of any other person(s)/entities related/ affiliated to the Defendant No. 1.
e. The Defendant No. 1 undertakes that he will never, directly or indirectly, in the future, use the Plaintiffs Marks or any mark similar to the Plaintiffs Marks, on and in relation to any goods/ services, including but not limited to footwear.
f. The Defendant No. 1 states that he has not filed, and undertakes that he will not, whether directly or indirectly, at any future time, file, any trademark/copyright application(s) to register the Plaintiffs Marks or any mark similar to the Plaintiffs Marks, on or in relation to any goods or services, including, but not limited to, footwear.
g. The Defendant No. 1 will never, now, or in the future, challenge, or take any action against, the Plaintiffs rights in the Plaintiffs Marks or any mark that the Plaintiff may create or adopt in the future.
h. The Defendant No. 1 will not hold himself as being related to the Plaintiff in any way.
i. The Defendant No. 1 will not, whether, directly or indirectly, cause, enable or assist another patty to do any of the acts that he is undertaking not to do.
j. The Defendant No. 1 has paid the Plaintiff a sum of INR 1,50,000 (Rupees One Lakh and Fifty Thousand) as reimbursement of the costs incurred in acting against the Defendant No. 1 and his infringing use of the Plaintiffs Marks via bank transfer into the bank account of the Plaintiffs counsel via transaction no. 330816555489.
k. The Plaintiff and the Defendant No. 1 agree to be bound by the terms and conditions of this present settlement agreement and further undertake that they shall neither challenge nor violate the terms and conditions of this settlement agreement.
l. The Plaintiff and the Defendant No. 1 agree that a decree may be passed by the Honble Court in terms of this present settlement agreement. The parties understand that in case the decree so passed by the Hon’ble Court is not complied with or any default is committed by either of the parties, the other party shall be at liberty to execute the said decree against such defaulting party in the court of law.
m. In the event the Defendant No. 1 breaches the terms of the present settlement terms and uses/continues to use the Plaintiffs Marks and/or any marks that are similar to the Plaintiffs Marks, he shall be liable to pay the Plaintiff liquidated damages amounting to INR 10,00,000 and reimburse the complete costs incurred by the Plaintiff in acting against it. Such liquidated damages and costs shall be in addition to any damages, awards, costs of equitable relief to which the Plaintiff may be entitled with respect to the breach of these settlement terms.
n. The Honble Court may consider refund of the court fees to the Plaintiffs counsel in terms of Section 16 of the Court Fees Act, 1870 read with Section 89 of the Code of Civil Procedure, 1908.
3. Both the parties are represented by learned Counsel who undertake on behalf of their respective clients to remain bound by the terms of the settlement.
4. The Court has perused the terms of the settlement and find them to be lawful and in order.
5. As such, the dispute in the suit does not survive for consideration.
6. The suit stands decreed in terms of the settlement terms reproduced hereinabove by which the parties shall remain bound.
7. Let a decree sheet be drawn up accordingly.
8. The plaintiff shall be entitled to refund of 50% of the court fees positively. Let refund of the court fees be made through counsel.
9. It is noted that Defendant 5 & 8 are only intermediaries and are, therefore, not required to be the part of the settlement.
10. The next date fixed in the matter, i.e. 22 January 2024 stands cancelled.
C.HARI SHANKAR, J
DECEMBER 22, 2023/kd
Click here to check corrigendum, if any
CS(COMM) 90/2023 Page 1 of 5