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2018 DIGILAW 4244 (MAD)

UNZA International Limited v. Cavinkare Private Limited

2018-11-15

KRISHNAN RAMASAMY, M.M.SUNDRESH

body2018
JUDGMENT : M.M. SUNDRESH, J. 1. When these matters are taken up for hearing, learned counsel appearing for the parties submit that the matter has been resolved pursuant to the compromise memo signed by the parties in the month of July 2018. The aforesaid memo of compromise along with respective covenants are also filed with Annexures A and B. The terms of memo of compromise read as under: “STATEMENT WITH RESPECT TO THE TRADEMARKS ENCHANTEUR/SPINZ enchante A. THAT the Party of the Fourth Part agrees to use the mark SPINZ ENCHANTE only in conjunction with their mark SPINZ in respect of Perfumes, Colognes, Deodorants, Antiperspirants, Body Lotions, Facial creams, Facial pack, False Eye Lashes, False Nails, Foundation Make up, Hair colourants, Hair remover, Hair spray, Hand/leg lotion, Lip Gloss, Lip Stick, Mascara, Nail Enamel, Nail Polish, Nail Polish remover, Vanishing cream, Talcum Powder, Preparations (non medicated) for use in face, hair conditioner, hair dye, hair gel, hair oil, makeup removing preparations, moisturizer, nail varnish, petroleum jelly, punice stone, rose oil, rouge, shampoo, skin care preparations, deostick aftershave, chapstick, cleansing milk, cold cream, cream, cream for whitening the skin, dentrifices, denture polish, depilatories, depilatory preparations, depilatory wax, eye brow pencil, eye liner, eye shadow, facial bleach, soaps, essential oils, cosmetics and toiletries preparations and the party of the first and second party has no objection to the use of the mark SPINZ Enchante for the said products including in respect of any promotion, advertisements, public notices etc. B. THAT the party of the fourth part agrees not to use the variant ENCHANTE as a standalone mark as it is used only as variant name for the brand SPINZ. The party of the fourth part has right to continue to use Enchante as variant name and it will be used in conjunction with the trademark SPINZ as done at present. C. THAT the party of the fourth part undertakes to use the mark ENCHANTE and SPINZ only as depicted in ANNEXURE-A wherever used. The party of the fourth part has right to continue to use Enchante as variant name and it will be used in conjunction with the trademark SPINZ as done at present. C. THAT the party of the fourth part undertakes to use the mark ENCHANTE and SPINZ only as depicted in ANNEXURE-A wherever used. D. THAT the party of the fourth part undertakes not to ever extend the use of ENCHANTE variant, in conjunction with any other mark to products other than Perfumes, Colognes, Deodorants, Antiperspirants, Body Lotions, Facial creams, Facial pack, False Eye Lashes, False Nails, Foundation Make up, Hair colourants, Hair remover, Hair spray, Hand/leg lotion, Lip Gloss, Lip Stick, Mascara, Nail Enamel, Nail Polish, Nail Polish remover, Vanishing cream, Talcum Powder, Preparations (non medicated) for use in face, hair conditioner, hair dye, hair gel, hair oil, makeup removing preparations, moisturizer, nail varnish, petroleum jelly, punice stone, rose oil, rouge, shampoo, skin care preparations, deostick aftershave, chapstick, cleansing milk, cold cream, cream, cream for whitening the skin, dentrifices, denture polish, depilatories, depilatory preparations, depilatory wax, eye brow pencil, eye liner, eye shadow, facial bleach, soaps, essential oils, cosmetics and toiletries preparations. THAT the party of the first and second part agrees and have no objection to the use of the Trademark variant SPINZ Enchante in conjunction as agreed in paragraphs A to D above. E. THAT the party of the fourth part agrees and has no objection to the use of the Trademark ENCHANTEUR used by the Party of the First and Second Part for Talcum Powder, Deodorants & Perfumes, Soaps, Essential Oils, Ean De Cologne, Eau De Toilette, Preparations (Non medicated) for use on the face skin and body, hair lotions, mousses, conditioners and shampoos, preparations for use in the bath and shower, face wash, tooth paste & toiletries, body sprays, liquid soaps, hand-wash, gels & cosmetic products. F. THAT the party of the first and second part undertake not to ever extend the use of the Trademark ENCHANTEUR, either in isolation or in conjunction with any other mark to products other than those mentioned in Paragraph E above. F. THAT the party of the first and second part undertake not to ever extend the use of the Trademark ENCHANTEUR, either in isolation or in conjunction with any other mark to products other than those mentioned in Paragraph E above. SETTLEMENT WITH RESPECT TO THE TRADEMARKS FAIREVER/FOREVER G. THAT the party of the third part agrees to use the Trademark CHANDRIKA FOREVER as whole mark under classes 3 & 5 only in respect of all kind of toilet soaps, liquid soaps and medicated soap, hand-wash and sanitizers in all cases. H. THAT the party of the third part agrees not to use the Trademark FOREVER as a standalone Trademark as the mark is used only in conjunction with the brand CHANDRIKA. I. THAT the party of the third part undertakes to use the Trademark CHANDRIKA and FOREVER in ANNEXURE-B wherever used. J. THAT the party of the third part undertakes not to ever extend the use of FOREVER, either in isolation or in conjunction with any other mark to products other than all kind of soaps including toilet soaps, liquid soaps and medicated soap, hand-wash and sanitizers in all cases. THAT the party of the fourth part agrees and have no objection to the use of the Trademark CHANDRIKA FOREVER only as agreed in Annexure – B in accordance with the MEMO OF COMPROMISE. K. THAT the party of the first and third part have no objection to the use of the trademark FAIREVER and further also have no objection whatsoever to any new application made by the party of the fourth part for registration of any mark/label or device which comprises of the mark fairever in any manner whatsoever in respect of skin lotions, cream, antiperspirants, hair care preparations, facial bleach, cleansing milk, fairness cream, facial leach, moisturizers, cold cream, vanishing cream, facial cream, cosmetics and toiletries preparations. L. THAT the party of the fourth part has no objection for setting aside the order dated 10th August 2012 in ORA No. 246/2010/TM/CH and restoring the registration secured by the party of the third part under No. 1615601 in classes 3 & 5 in respect of all kinds of soaps including toilet soaps, liquid soaps and medicated soap, hand-wash and sanitizers in all cases with respect to the Trademark CHANDRIKA FOREVER and in such manner disposing off Writ Petition No. 15387 of 2013. M. THAT in view of the above, the party of the first part has no objection for setting aside the order dated 10th August 2012 in ORA no. 97-100/2010/TM/CH and restoring the registration secured by the party of the fourth part under Nos. 810756, 1014841, 1255978 & 1249412 with respect to the trademark FAIREVER and in such manner disposing of WP No. 23855 of 2012. N. The Party of the fourth part shall also have no objection whatsoever to any new application made by the party of the first and third part for registration of any mark/label or device which comprises of the mark CHANDRIKA FOREVER as whole mark for the products listed in Paragraphs G & J above.. O. The party of the first and third part shall also have no objection whatsoever to any new application made by the Party of the Fourth Part for registration of any mark/label or device which comprises of the mark FAIREVER in any manner whatsoever. P. THAT parties to the memo compromise clarify that the grounds on which the marks were rectified including Association of the marks/User Affidavit filed with the Registered marks under 810756, 1014841, 1255978, 1249412 & 1615601 shall stand withdrawn as not maintainable. MISCELLANEOUS Q. THAT the party of the first and second part are giving up Defendant No. 2 Spencer Retail Limited arrayed as 2nd defendant in C.S.No.1006 of 2009. R. THAT it is made clear that Respondents 1 to 3 in WP No. 15387 of 2013 are only formal parties and are hence not party to this Memo of Compromise except for restoration of the marks 810756, 1014841, 1255978 & 1249412 as originally existed in the registers before the Writ Petition/Suits were filed by and between the Parties. S. THAT it is made clear that respondents 2 to 4 in WP No. 23855 of 2012 are only formal parties and are hence not party to this Memo of Compromise except for restoration of the mark 1615601 as originally existed in the registers before the Writ Petition/Suits were filed by and between the Parties. T. THAT the following suits and writ petitions stated hereunder may be decreed/disposed off in terms of this Memo of Compromise and that the Memo of Compromise may form part of the decree/order. (Suits and Writ Petition) Sl. No. Plaintiff/Petitioner Defendant/Respondent Case No. Trademark 1. T. THAT the following suits and writ petitions stated hereunder may be decreed/disposed off in terms of this Memo of Compromise and that the Memo of Compromise may form part of the decree/order. (Suits and Writ Petition) Sl. No. Plaintiff/Petitioner Defendant/Respondent Case No. Trademark 1. UNZA International Ltd Wipro Enterprises Ltd Cavinkare Pvt Ltd. & Anr. CS No. 1006 of 2009 Enchanteur/Spinz Enchante 2. Cavinkare Pvt. Ltd. Wipro Ltd. CS No. 221 of 2010 Fairever/Chandrika a Forever/Forever 3. Cavinkare Pvt. Ltd. Wirpro Ltd. CS No. 222 of 2010 Enchanteur/Spinz Enchante 4. Cavinkare Pvt. Ltd. Wipro Ltd. & 3 others WP No. 23855 of 2012 Forever/Fairever 5. Wipro Chandrika Ltd. Cavinkare Pvt. Ltd. & 3 others WP No. 15387 of 2013 Fairever/Forever 2. In such view of the matter, C.S.No.1006 of 2009 stands decreed as per the memo of compromise signed by the parties in the month of July 2018. The memo of compromise shall form part of the decree. Consequently, C.S.Nos.221 and 222 of 2010 stand dismissed and W.P.Nos.23855 of 2012 and 15387 of 2013 stand closed. No costs. Consequently, connected miscellaneous petitions are closed.