PENTEL KABUSHIKI KAISHA & ANR vs M/S ARORA SATIONERS AND ORS
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 361/2017, I.A. 6057/2017, I.A. 2692/2022 & I.A. 2693/2022
PENTEL KABUSHIKI KAISHA & ANR ….. Plaintiffs
Through: Mr. Afzal B. Khan and Ms. Suhrita Majumdar, Advs.
versus
M/S ARORA SATIONERS AND ORS ….. Defendants
Through: Ms. Zeba Tarannum Khan, Ms. Deeksha Gulati and Ms. Sruthi Venugopal, Advs.
CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (O R A L)
% 12.12.2023
1. The dispute between the parties stand settled in terms of the settlement agreement dated 11 September 2023, which has been placed on record.
2. The terms of settlement read thus:
(i) That the Second Party / Defendants acknowledge the validity of the Registered Design of the First Party/Plaintiff in Design No. 263172 and acknowledge that Plaintiff no. 1 is the owner of the Design No. 263172 under the Designs Act, 2000 as well as under common law.
(ii) That the Second Party/ Defendants agree and undertake to cease manufacture, sale, offer for sale and/or advertise any product that is identical to or an obvious fraudulent imitation of the Plaintiff No. 1s Design bearing Registration No. 263172 which amounts to infringement of the Plaintiffs rights in their Registered Design including, but not limited to, the designs marketed under the brands MONTEX MASTANI and MONTEX X-20. An extract of the two writing instruments sold under the said brands is annexed herewith and marked as ANNEXURE-D.
(iii) That the First Party/ Plaintiffs agree and undertake that they shall not object to the Second Partys/ Defendants use of the Trade Marks-MONTEX MASTANI and MONTEX X-20.
(iv) The Second Party/ Defendants undertake to take down all product listings across all E-Commerce and other platforms pertaining to the aforementioned designs under the brands MONTEX MASTANI and MONTEX X-20 within one month from the date of this agreement and, if any other listings are found, within 24 hours of the said listing being brought to the attention of the Defendants.
(v) That during the course of mediation proceedings, the Second Party/ Defendants had proposed an alternative design to be applied to a pen/writing instrument, which design along with the surface texture is annexed herewith and marked as ANNEXURE-E. The Plaintiffs agree and undertake that they have no objection to the use of the annexed design by the Defendants.
(vi) That the First Party / Plaintiffs agree and undertake that they have no objection to the use of trade mark MASTANI as well as to the use of blue and black color combination on the defendant’s modified pen, marked as ANNEXURE E.
(vii) That the Defendant No. 2 agrees and undertakes that it shall
withdraw the Cancellation Petition filed against the Plaintiff No. 1s Registered Design bearing Registration No. 263172 and take necessary steps for seeking such withdrawal including addressing such communication/ petition as may be necessary to The Designs Office prior to October 14th, 2023 under intimation to the counsel for Plaintiffs/ First Party.
(viii) That the Defendant No. 3 agrees and undertakes that it shall
surrender/ seek cancellation of their Registered Design under Registration No. 282909 and take necessary steps for seeking such cancellation including addressing such communication/ petition as may be necessary prior to October 14th, 2023 under intimation to the counsel for First Party /Plaintiffs.
(ix) That Mr. Ramanlal Rughnathmalji, the proprietor of Defendant no. 2, agrees and undertakes that it shall seek cancellation of the Registered Trade Mark under Registration no. 3242266 under Section 58 of The Trade Marks Act, 1999 by filing requisite form TM-P and take other necessary steps as may be necessary prior to October 14th, 2023, under intimation to the counsel for First Party / Plaintiffs.
(x) That the Second Party/ Defendants agree and undertake that they shall withdraw the review petition being REVIEW PET No. 341 of 2019 in FAO(OS)(COMM) 29 of 2018.
(xi) That the Second Party / Defendants agree and undertake to pay to the First Party / Plaintiffs an amount of INR 10,00,000 (INR Ten Lakhs Only) by way of account transfer on or before October 14th, 2023, towards full and final settlement, litigation costs and damages to the following account of the Plaintiff No.1:
Beneficiary Bank: MUFG BANK, LTD.
SWIFT code: BOTKJPJT
Branch Name: ASAKUSABASHI BRANCH
Beneficiary Account Number: 069-0540446
Beneficiary Name: PENTEL CO., LTD
(xii) The parties agree that the terms of this settlement agreement shall be kept confidential and the same shall not be communicated to the public in any manner whatsoever including communication to the media.
(xiii) That both the Parties agree that this settlement has been arrived at after long mutual discussions and in good faith and entered into by them at their respective free will and without any kind of influence, force or pressure, coercion and duress, but out of their own free will, consent and after fully understanding the implications/ consequence of having arrived at the aforesaid Settlement and hence the same shall be binding upon the said Parties.
(xiv) That the Parties hereby agree to decree the suit in view of the above terms 2 (i) to 2 (xi) and prayers (a) of paragraph 34 of the Plaint. The First Party/Plaintiff agree to not pursue and is giving up the prayers (b) to (f ) of paragraph 34 of the Plaint.
3. Learned Counsel for the parties are present. They undertake on behalf of their respective clients to remain bound by the terms of settlement agreement.
4. The Court has perused the terms of settlement and find them to be legal and in order.
5. As such, the dispute in the present suit does not survive for consideration.
6. The suit stands decreed in terms of the settlement agreement dated 11 September 2023, by which the parties shall remain bound.
7. Let a decree sheet be drawn up accordingly by the Registry.
8. The plaintiffs would be entitled to refund of 50% court fees deposited by it. The refund be made to learned Counsel for the plaintiffs as the plaintiffs are situated outside India.
C.HARI SHANKAR, J
DECEMBER 12, 2023
ar
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CS(COMM) 361/2017 Page 4 of 4