ORDER

% 19.02.2024

1. The present suit concerns Defendant No.2’s video game titled “TURTLE VERSUS TATA” [‘Impugned game’]. Plaintiff alleges that the same is inter alia defamatory and infringes their trademark “TATA” as well as “T WITHIN A CIRCLE” device mark [‘Plaintiffs’ marks’].

2. Ms. Vrinda Grover, counsel for Defendant No. 2, on instructions, states that this video game, which is the subject matter of the suit, has been taken down/ removed from their website in July, 2017 and is no longer accessible or being circulated or distributed by the Defendants.

3. Mr. Pravin Anand, counsel for the Plaintiff, states that despite the game being removed from the Defendants’ websites, it remains accessible through various third-party websites and digital archives. This continued availability outside of the Defendants’ direct control raises concerns regarding the complete cessation of the game's distribution.

4. Ms. Grover further emphasizes that, since the Defendant No.2 has permanently ceased the distribution of the game, and harbours no plans for its future release, they have no objection to any directions from the Court that would require third parties to remove or restrict access to the Impugned game.

5. In light of the above, Mr. Anand states that he will bring a list of URLs where the Impugned game is still accessible. This list will facilitate the issuance of appropriate directions for removal of the game from these locations.

6. In the above circumstances, the issue that remains for adjudication is the Plaintiff's claim for damages. To determine this, the court would be tasked with adjudication of Plaintiff’s claim of trademark infringement, libel, defamation, and dilution of their marks.

7. In the opinion of the court, the absence of the Impugned game from public access, coupled with Defendant No. 2’s explicit declaration against its future distribution, substantially diminishes the grounds for protracted dispute over damages. The cessation of the game’s circulation effectively minimizes the prospect of any continuing alleged infringement or reputational harm, thereby laying a conducive foundation for the parties to negotiate the issue of damages in a conciliatory manner. This scenario suggests that, an amicable settlement of the dispute, over claim of damages, is both feasible and appropriate which the parties must explore.

8. Although an earlier attempt at mediation has failed, in the opinion of the Court, parties should make another attempt, to which counsel are agreeable.

9. The parties are referred to Delhi High Court Mediation and Conciliation Centre. For this purpose, the Mediation Centre is requested to appoint Mr. Rajeev K. Virmani, Senior Advocate, as the Mediator, where they shall appear on 27th February, 2024.

10. The parties are permitted to participate in mediation through video- conferencing mechanism, subject to further directions of the Mediator. In case in-person mediation is desired by the Mediator, parties must endeavour to comply with the same.

11. List before the Court on 7th March, 2024.

SANJEEV NARULA, J FEBRUARY 19, 2024 as