ORDER

% 24.01.2024

1. Plaintiff, the registered proprietor of trademarks “VALVOLINE” and “ ” has initiated the present suit in respect of Defendant’s marks “WALWOSHINE” and “ ” [collectively, “impugned marks”].

The mark “ ” stands registered in the Defendant’s name.

interim injunction was granted on 21st August, 2023, which is continuing till date.

3. Mr. Vivek Kumar Chadha, Defendant-in-person, represented through his counsel, Ms. Pratha Atray, submits that he does not wish to contest the present suit and has no objection to issuance of a decree of permanent injunction. He explains that Defendant commenced usage of the impugned marks after securing registration, nonetheless, operations thereunder have been discontinued. Mr. Chadha further informs that as he does not intend to use the impugned marks any longer, he has preferred Form TM-P for cancellation of registration of the mark “ ” under application No.

4995310, on 23rd January, 2024. Therefore, he prays that no damages be awarded in Plaintiff’s favour.

4. On the other hand, Mr. Peeyoosh Kalra, counsel for Plaintiffs, argues that since the Defendant was using the impugned marks, the Court may consider awarding nominal damages against the Defendant for such infringement.

Without prejudice and on instructions, he submits that the Court may consider refunding the court fee to the Plaintiff.

5. The Court has considered the aforenoted contentions. The only question for Court’s adjudication pertains to assessment of damages. The Plaintiffs did not seek appointment of a Local Commissioner to ascertain the stock of the impugned products available with the Defendant. This omission is critical as it leaves the Court without a concrete foundation upon which the damages could be quantified. There is also no other material on record that would assist the Court on this issue. The Defendant commenced use of the impugned marks only after obtaining registration for the mark “ ” and has now agreed to relinquish the same, suggesting that there was no deliberate intent to infringe Plaintiffs’ mark. Given these circumstances, particularly the lack of concrete evidence quantifying any potential loss and the non-contentious stance of the Defendant, the Court finds that the imposition of damages in this case is not justifiable.

6. In view of the above, the suit is decreed in favour of the Plaintiffs and against the Defendant in terms of paragraph 35 A of the plaint. Defendant is further directed to ensure that none of the products bearing the impugned marks are listed for sale on the website www.indiamart.com.

7. Considering that the Defendant has not contested the suit and has surrendered the impugned mark, the Court finds an element of consensus between the parties and accordingly, Registry is directed to issue a certificate for refund full court fee to the Plaintiffs.

8. Decree sheet be drawn up. SANJEEV NARULA, J JANUARY 24, 2024 nk