IMPORTANT POINT
Enforcement of settlement agreement and acknowledgment of validity of Registered Design under the Designs Act, 2000

ORDER (Oral)

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. 1's Design bearing Registration No. 263172 which amounts to infringement of the Plaintiff's 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 Party's/Defendant's 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. 1's 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 th