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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Cadbury U K Limited - Appellant
Versus
Manoj Agarwal & Ors. - Respondents
CS(COMM) 913 of 2018, I.A. 7614 of 2018 & I.A. 11060 of 2018
Decided On : 12-12-2023
Trademark Dispute - Settlement Agreement - Court Fees Act, 1870, Code of Civil Procedure - Section 16A, Section 89
Fact of the Case:
The dispute between the parties was settled through a mediation and a settlement agreement was reached, acknowledging the exclusive ownership of the trademark 5 STAR' by the First Party and imposing various undertakings on the Second Party.
Finding of the Court:
The Court found the terms of settlement to be legal and in order, and decreed the suit in terms of the settlement agreement, with the parties remaining bound by its terms.
Issues: Settlement of trademark dispute, validity of settlement agreement, refund of court fees
Ratio Decidendi: The Court upheld the settlement agreement and decreed the suit accordingly, emphasizing the binding nature of the settlement terms on the parties.
Final Decision: The suit was decreed in terms of the settlement agreement, and the plaintiff was entitled to a refund of the court fees.
ORDER (Oral)
1. The dispute between the parties stand settled with the intervention of the Delhi High Court Mediation and Conciliation Centre. Settlement agreement dated 18 August 2023 has been placed on record.
2. The terms of settlement read thus:
"A. The Second Party acknowledges the First Party to be the exclusive owner and lawful proprietor of the Trademark "5 STAR", 5 STAR stylized, and the trade dress/label 
and in the artistic work involved in the device mark and all the packaging/labels/trade dress mentioned in the Plaint at Para No.8. The Second Party undertakes that it shall not challenge the trademarks and copyrights of the First Party as mentioned in the Plaint at Paragraph Nos. 6 and 8 either directly or indirectly, at any time in future before any Hon'ble Court, Tribunal and/or Statutory Body, whether in India or in any foreign jurisdiction for any goods/services and/or on any ground(s) whatsoever.
A. The Second Party affirms that they have ceased all manufacturing, sale, distribution and use of the product bearing the impugned mark and impugned label/trade dress 
in compliance with the order dated May 29, 2018 in all markets-physical and online, and further undertakes that they shall not manufacture, distribute, export, sell, offer for sale, advertise, promote, display and/or use in any manner whatsoever, the impugned product SUPERSTAR as represented in the Paragraph No.40 of the Plaint i.e. or any other product bearing the impugned label/trade dress and impugned mark or any other label/trade dress and/or mark which is identical or deceptively and confusingly similar to the First Party's trademarks or part of a trade mark and labels/trade dress or part of a label/trade dress as tabulated under Paragraph Nos. 6 and 8 of the Plaint, in any manner, whatsoever, in relation to any goods, or in relation to any promotional, marketing or advertising material or any other material used or intended to be used for labelling or packaging or for advertising any goods whatsoever.
B. The Second Party also affirms that they have removed use of the impugned product bearing the impugned trade dress/label from their promotional and advertising materials including but not limited to all packaging, labels, pouches, cartons, brochures, business cards, business envelopes, letterheads, cartons, publicity material, pamphlets, hoardings, sign boards, stationary, etc.
C. The Second Party undertakes to send take down notices to remove the use of the impugned product bearing the impugned trade dress/label to all third party online listings, including but not limited to the listings/posts on social media websites, e-commerce websites, online portals etc. within 7 days from the date of passing of the consent order in terms of the present Settlement Agreement.
D. The Second Party undertakes to withdraw the Registration for the word mark PRIYAGOLD SUPERSTAR bearing No. 2232282 in Class 30, and furnish an endorsed copy of such withdrawal, within 10 days from the date of passing of the consent order in terms of the present Settlement Agreement.
E. The Second Party undertakes that they shall never apply, file or assert any right in the mark SUPERSTAR and/or SUPERSTAR and/or any other STAR formative mark, as a word mark or as a standalone mark for Class 30 goods or any goods which are identical or similar to confectionery goods.
F. That the Second Party is at liberty to apply for registration of the label 
(as mentioned in Annexure-E) as a trademark and copyright. The Second Party undertakes not to claim any rights over the word STAR forming part of the label and include a disclaimer in the application(s) so filed for registration of the label mark (Annexure E) to the same effect. The First Party undertakes to not file any Opposition or Rectification Petition against the label mark as mentioned Annexure-E.
G. The Second Party further undertakes that they shall never adopt and/or use any trade dress/label/packaging which may be identical and/or deceptivel
Settlement agreements in trademark disputes are binding and enforceable, and the Court may decree the suit in accordance with the terms of the settlement.
The central legal point established in the judgment is the approval and enforcement of a Settlement Agreement to resolve trademark infringement disputes.
The court's approval of the settlement agreement and the subsequent decree based on the terms of the agreement.
The settlement agreement was found to be lawful and binding, leading to the disposal of the trademark disputes.
The acknowledgment of proprietary rights in the trademark and copyright, and the lawful disposal of seized goods in accordance with environmental regulations.
The central legal point established in the judgment is the lawfulness of the Settlement Agreement and the parties' undertaking to remain bound by its terms.
Enforceability of settlement agreements in resolving disputes.
Voluntary settlement agreements can effectively resolve disputes and lead to the withdrawal of legal petitions.
The court upheld the enforceability of the Settlement Agreement, emphasizing the importance of parties abiding by the terms of settlement reached through mediation.
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