The court upheld the validity of a settlement agreement regarding trademark rights, confirming the assignment of the trademark 'ELEKTRON' to the plaintiffs.

ORDER

% 10.09.2024

1. The present suit has been filed on behalf of the plaintiffs against the defendants for permanent injunction restraining infringement of trademark ‘ELEKTRON’/ passing off, acts of unfair competition, misrepresentation, dilution, rendition of accounts, delivery up, damages, etc.

2. During the course of pendency of the present suit, the parties were referred to mediation, wherein they have successfully negotiated a settlement and executed a Settlement Agreement dated 22nd July, 2024.

3. Learned counsels appearing for the parties confirm the terms of the settlement and pray that the suit be decreed in terms, thereof.

4. This Court has perused the terms of the settlement and finds the same to be lawful.

5. As per the settlement, the defendants have recognised and unequivocally acknowledged the rights of the plaintiffs in the mark/logo/label ‘ELEKTRON’, as adopted by the plaintiffs.

6. Further, the defendants have undertaken not to interfere with the rights of the plaintiffs in their trademark/logo/label ‘ELEKTRON’ or oppose/rectify registration of the said marks.

7. Attention of this Court has been drawn to Clauses 8 and 9 of the said settlement, which read as under:

“xxx xxx xxx

8. That the Defendants state that Application No. 726721 in Class 9 bearing Certificate No. 249200 for trademark "ELEKTRON" (logo) was filed in the name of Sanjay Electricals, partnership firm of Mr. Dilip Kumar Bhutoria and Smt. Kamala Devi Bhutoria. After the demise of Smt. Kamla Devi Bhutoria on 23.10.2000, the said Partnership Firm was converted into a Proprietorship concern of Mr. Dilip Kumar Bhutoria. The said proprietor, Mr. Dilip Kumar Bhutoria, incorporated a Private Limited Company namely Essee Networks Private Limited, that is the Defendant No. 1 herein.

Essee Networks Private Limited acquired and took over the Proprietorship business of M/s. Sanjay Electricals along with all the Assets, Liabilities and Goodwill, including trademarks, of the said concern as a going concern and to carry on all such business as done by the said concern. In this regard reliance is placed upon the Memorandum and Articles of Association of Essee Networks Private Limited which stipulates that the main object to be pursued by the Essee Networks Private Limited on its incorporation is to acquire and take over the existing proprietorship business of M/s. Sanjay Electricals along with all the Assets, Liabilities and Goodwill of the said firm as a going concern and to carry on all such business as done by the said concern.

Mr. Dilip Kumar Bhutoria being the erstwhile partner of the partnership concern namely Sanjay Electricals, subsequently the Sole Proprietor of Sanjay Electricals when Sanjay Electricals was converted from a partnership concern to a proprietorship concern of Mr. Dilip Kumar Bhutoria, and being the Director of Essee Networks Private Limited, states that as on date, the said Trademark "ELEKTRON" (logo) being bearing Application No. 726721 in Class 9, is solely owned by Essee Networks Private Limited in as much as Essee Networks Private Limited has acquired and took over the Proprietorship business of M/s. Sanjay Electricals along with all the Assets, Liabilities and Goodwill, including trademarks, of the said concern as a going concern and to carry on all such business as done by the said concern. Mr. Dilip Kumar Bhutoria has filed an Affidavit to this effect which is annexed as Annexure E. Mr. Dilip Kumar Bhutoria has also categorically stated in the said affidavit that pursuant to the assignment of the aforesaid Trade Mark being "ELEKTRON" (logo) being bearing Application No. 726721 in Class 9, by Essee Networks Private Limited to Mr. Vikas Nagpal, no rights whatsoever in the said Trade Mark remain with Mr. Dilip Kumar Bhutoria, Essee Networks Private Limited or Sanjay Electricals.

Mr. Dilip Kumar Bhutoria and all the persons acting on their behalf, specifically and categorically assert that they have never transferred, sold, licensed any rights