Xerox Corporation & Anr vs P K Khansaheb & Anr

TRADEMARK,CLASS,REGN. NO.,"D A T E OF

FILING",STATUS

XEROX,01,155627,22.09.1952,Registered

XEROX,01,217823,18.09.1963,Registered

XEROX,07,217824,18.09.1963,Registered

XEROX,09,217825,18.09.1963,Registered

X E R O XT HE

DOCUMENT COMPANY",09,546220,27.09.1991,Registered

with them or otherwise are restrained from using the mark ZEROZ (sic ZEROX) or any other trade mark deceptively/confusingly similar to the,,,,

plaintiffs' trade mark in any form of advertisement whether in print or visual media, or in any other manner.",,,,

Plaintiff shall comply with the provisions of Order XXXIX Rule 3 CPC within four days from today.â€​,,,,

The said interim order was continued until further orders. The Defendants have moved an application under Order XXXIX, Rule 4 which is still",,,,

pending. In the meantime, admission/denial of documents was concluded. Issues were framed on 16th May, 2017. The Plaintiff filed its affidavit in",,,,

evidence along with a large number of additional documents which were exhibited by the Joint Registrar. This exhibition of documents was challenged,,,,

by the Defendant which led to the order dated 3rd December, 2018, allowing the documents to be taken on record. The matter was carried in appeal",,,,

by the Defendant vide order dated 27th May, 2019. The appeal was disposed of with the direction that the application filed by the Plaintiff for taking",,,,

the additional documents on record would be heard. Plaintiffâ€​s witness was also partially crossed examined in the meantime on 17th January, 2019.",,,,

Today, the matter has been listed before this Court pursuant to the order of the Division Bench. Counsel for the Plaintiff has submitted that there",,,,

are various valid reasons why the documents could not be filed and in any case, since one of the issues framed is in respect of competency of the",,,,

Plaintiffâ€s constituted attorney and the fact that the Defendant has challenged advertising by the Plaintiff, the Plaintiff had to file additional",,,,

documents. Learned counsel for the Defendants opposes the additional documents taken on record.,,,,

However, on enquiry by this Court, ld. counsel for the Defendants states that the advertisement which was running for its product “Kachha",,,,

Mango Biteâ€​ has since been stopped and is not likely to be re-launched in any manner. The television commercial is also off air and the by-line is also,,,,

not being used. The Plaintiff, as recorded in order dated 3rd December, 2018, had agreed not to press for damages and costs if the Defendants agreed",,,,

not to re-telecast the television commercial and withdraw the oppositions filed against the Plaintiffâ€s trade marks. The relevant portion of the order,,,,

dated 3rd December, 2018 is set out below:",,,,

“25. In this matter, mediation was explored earlier. On the last two hearings, i.e. on 16th October, 2018 and 23rd October, 2018, the matter was",,,,

adjourned in order to enable the Defendant to seek instructions. This was due to the fact that the Plaintiff had made an offer for settlement to the,,,,

Defendant i.e. that if the Defendant agrees not to re-telecast the television commercial using the word ZEROX or XEROX and withdraw the,,,,

oppositions filed against the Plaintiff’s trade marks, the Plaintiff would be willing to give up its claim for damages and costs. However, the Ld.",,,,

Counsel for the Defendant has, upon instructions, submitted that the Defendant wishes to contest the matter on merits. The Plaintiff's offer for",,,,

settlement and the Defendant's stand is being recorded in order to enable the Court to determine costs under Section 35(3)(d) of the Commercial,,,,

Courts Act as also Chapter XXIII Rule 2 of the DHC (OS) Rules (as amended on 1st November, 2018), in respect of costs of the suit.â€​",,,,

Mr. N.K. Bhardwaj appearing for the Defendants submits that the Defendants do not have any intention of re-telecasting the commercial by using,,,,

the impugned tag line ""KACHE AAM KA ZEROX"". The Plaintiff has already agreed to give up damages and costs.",,,,

Considering the stand of the Plaintiff and the Defendants, this Court is of the opinion that under the provisions of Order XV-A as amended by the",,,,

Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, no issue in fact survives in as much as the",,,,

cause of action in the present suit is in respect of the television commercial which uses the work ZEROX. Since the Defendants do not intend to use,,,,

the word ZEROX, the Defendants are directed to not launch the impugned television commercial with the word ZEROX or any other mark",,,,

identical/similar to the Plaintiffâ€s mark XEROX. The Defendants shall also withdraw the oppositions filed to the Plaintiffs†mark XEROX within a,,,,

period of four weeks. No issue remains for being adjudicated in the present suit.,,,,

If the Defendants at any future point intend to use the word XEROX or ZEROX or any other similar mark in advertising or in any other manner,",,,,

the Defendants shall give at least one month advance notice to the Plaintiff-companies. The Defendants are at liberty to use the words “Kachha,,,,

Mango Biteâ€​ which is the Defendants own trademark, in respect of which there is no order passed by this Court in this matter.",,,,

The suit is decreed in the above terms. Decree sheet be drawn.,,,,