Family arrangements are governed by a special equity and will be enforced if honestly made, and the existence of an arbitration clause in a family settlement allows parties to initiate arbitration proceedings in case of disputes.

Manmohan Singh, J.

1. The present petition under Section 9 of the Arbitration & Conciliation Act, 1996 (hereinafter referred to as ‘the Act’) is instituted by the Petitioner, Mrs. Vimi Verma, for the protection of her rights in the registered trademarks SIMPEX and SIMPEX-PRO used in connection with apparatus and instruments for use in photography in class 09 which are alleged to be infringed by the use of a deceptively similar mark SIMPLEX by the respondents.

2. Relevant facts as per petition

i) The Petitioner is the registered trademark owner of the marks “SIMPEX” and “SIMPEX-PRO” bearing application Nos. 544019 and 1290981 respectively, having residence at B-126, Ashok Vihar, Phase-II, New Delhi-110052. The said trademarks are said to be exclusively, extensively and continuously in use by the petitioner and its predecessor in interests including licensees/ permissive users since 1986.

ii) The father-in-law of the petitioner i.e. late Mr. O.P. Verma had started the business of photography equipments in 1974 in the name of M/s Delhi Photo Store. Besides this, there was an unregistered partnership firm viz. M/s Verma and Sons consisting of four partners- Mrs. Sulochana Verma, w/o Mr. O.P. Verma, Mr. Sanjay Verma, Mr. Pankaj Verma and Ms. Swaran Kanta.

iii) M/s Verma Sons had filed a trademark application for registration of the mark SIMPEX and for the logo VS which was made in 1991 to the office of the Registrar of Trademarks for grant of registration of these two marks. M/s Verma Sons applied for another trademark PROLITE.

From the beginning, all the matters regarding filing of the trademark applications of M/s Verma Sons were looked after by Mr. Sanjay Verma, elder son of Late O.P. Verma. While the trademark applications of aforesaid marks were pending for further processing in the Trademark Registry, Mr. O.P. Verma formed a partnership firm with his daughter-in-law Mrs. Vimi Verma, w/o Mr. Pankaj Verma, his younger son, in the name of M/s Sunlight Industries and in 1999, they obtained the rights of the trademarks SIMPEX by virtue of an assignment dated 13th February, 1999, duly executed by Mr. Sanjay Verma on behalf of all the four partners.

Thereafter, Form TM-24 dated 22nd March, 1999 was filed in the Trade Marks Registry for recordal of the assignment in the records of the Registrar of Trademarks alongwith Undertaking dated 6th October, 2005 signed by Sanjay Verma. On 18th June, 2004, M/s Verma and Sons applied for registration of another trademark SIMPEX-PRO which was also assigned in favour of M/s Sunlight Industries by virtue of an assignment deed dated 31st August, 2005 given by the partners of the firm.

iv) The petitioner’s husband Pankaj Verma and the respondent No. 1 are real brothers. In 2005, Mr. O.P. Verma and his wife voluntarily agreed to withdraw themselves from all of the family business and distributed all the properties including the trademarks between the immediate family of the petitioner and the respondent’s family.

v) The said family settlement was recorded by way of a Memorandum of Understanding (MOU) dated 5th September, 2005 through which the division of businesses and trademarks took place and was executed between six parties- Mr. O.P. Verma, Mrs. Sulochana Verma, Mr. Sanjay Verma, Mr. Pankaj Verma, Mrs. Sangeeta Verma and Mrs. Vimi Verma.

vi) The event of family settlement and entering MOU was witnessed by the elders of the family including Late Ms. Swaraj Verma, the sister of Mr. O.P. Verma. According to the MOU, the disputes between the parties were to be settled by resorting to Arbitration.

vii) As per the terms of the said MOU, a public notice and affidavit of Mr. O.P. Verma regarding the transfer of all the assets and goodwill of M/s Photo Store to Mr. Pankaj Verma was executed. As per clause 7 of the MOU, M/s Sunlight Industries was consequently dissolved by executing a Dissolution Deed dated 5th September, 2005 and on the same date, the Petitioner issued an NOC in favour of Sunli