ORDER (Oral)

CS(COMM) 86/2023 & I.A. 3659/2023

1. The plaintiff, in the present suit, alleged infringement, by the defendant, of the [IMG] registered trademark of the plaintiff by use of the defendant's [IMG].

2. By order dated 20th February 2023, ad interim interlocutory reliefs were granted by this Court. While issuing summons in the suit and notice in the application filed by the plaintiff in I.A. 3130/2023 filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).

3. Subsequently, the parties have arrived at an amicable resolution of the dispute between them. They have placed on record an undertaking dated 24th February 2023, signed by Mr. Chauhan Mohmad Moshin, director of the defendant, whereby the defendant has agreed to suffer a decree of injunction in terms of prayers b to d in para 47 of the plaint and to undertake as under:

1. "The Defendant acknowledges the intellectual property rights of the Plaintiffs in the trade mark/trade name NOVARTIS, as well as the exclusive right of the Plaintiffs to use the said mark as a trade mark/trade name/house mark/corporate name in relation to its goods and services.

2. The Defendant further undertakes to file appropriate request with the Trade Marks Registry for withdrawal of its trade mark application no. 4222559 for the mark NOVAEGIS/[IMG] within 1 week of this undertaking. The said trade mark application shall be deemed to withdrawn.

3. The Defendant has confirmed that it has not filed any other trade mark, copyright or trade name applications before any concerned authority for the word/name/mark NOVAEGIS either by itself or part thereof, nor it has filed any such application containing word/name/mark which may be deceptively similar to the trade mark/trade name/corporate name NOVARTIS of the Plaintiffs.

4. The Defendant undertakes that it shall not use the mark NOVAEGIS/or any other mark as a domain name/trade mark/trade name/part of the corporate name in future as may be phonetically, visually, and structurally deceptively similar to the trade mark/trade name NOVARTIS of the Plaintiffs.

5. The Defendant undertakes to file appropriate application seeking change of its company name Novaegis (India) Private Limited before the Registrar of Companies within 7 days from the date of this undertaking under intimation to the Plaintiffs' or its counsel about the changed company name/mark adopted by the Defendant and undertakes that the company name containing the impugned mark NOVAEGIS shall not remain on Register of the Company beyond 7 days from the signing of this undertaking nor it shall be used in future "earlier known as Novaegis".

6. The Defendant undertakes that it shall not adopt any trade mark/domain name/trade name or company name which may be visually, phonetically or structurally deceptively similar to the Plaintiffs' trade marks/trade name NOVARTIS.

7. The Defendant undertakes and agrees that it shall dispose of the existing stock of medicines bearing the mark NOVAEGIS/[IMG] having the value of INR 24,97,517.69 as detailed in para 6 of the I.A. No. 3659 of 2023 within 60 days from the date of this undertaking.

8. The Defendant undertakes that the products bearing the mark NOVAEGIS/[IMG] already in circulation in the market are as per the following details including batch number, date of manufacture and expiry date with the sale value of the product.