Calcutta High Court Mediation and Conciliation Centre

Calcutta High Court, Calcutta

Settlement/Agreement
Date- 07.03.2024

By and Between

Petitioner

Caprihans (India) Private Ltd (hereinafter referred as “Petitioner”) along

with Vikas Kumar(Advocate for Respondent)

Respondent

Rajneesh (hereinafter referred as “Respondent”)

along with Registrar of Trade Marks and Ramesh

Kumar(Advocate for Respondent)

Mediator

Parth Sharma (hereinafter referred as “Mediator”)

I held one joint session with parties

Negotiations held
Whereas The petitioner filed petition under Section 56 of the Trade and
Merchandise Marks Act, 1958 for rectification of Trademark named as
“Formica” is Titled as Caprihans (India) Private Ltd. Vs. Registrar of Trade
Marks and Ors pending in High Court of Calcutta
Whereas The Respondent filed a countersuit in the High Court of Calcutta
(further facts for the case are marked and annexed as Annexure 1)

Whereas Ld. Counsel for Respondent submits that Respondent is willing to

explore the possibilities of compromise. Ld. Counsel for Petitioner is also
interested in compromise talk. Let the matter be referred to Mediation Cell,
High Court of Calcutta, Calcutta. Parties are directed to appear before the
Mediation Cell, Hon’ble High Court of Calcutta, Calcutta on 07.03.2024 at
2:30 p.m.
Whereas The parties duly acknowledge that bona fide dispute and
controversy exist between them, and they desire proceeding with a
compromise to settle the claims and causes of action of any kind arising out
of any action or transaction or occurrence which is the subject matter of the
litigation.
Whereas This is an agreement between Caprihans (India) Private Ltd and
Rajneesh., hereinafter “participants,” and Parth Sharma, hereinafter
“mediator,” to enter mediation with the intent of resolving issues related to
trademark infringement of the Mark “Formica”.

After negotiations, the petitioner and Respondent have agreed to settle

their disputes as follows
1. It is agreed that the participants proceed with appointing Parth
Sharma as the mediator for the present negotiation and the mediator
shall assist the participants to reach a settlement in a consensual and
informed manner.
2. It is agreed that the mediator would facilitate communication and
 negotiation between the participants and shall be impartial towards
the participants.
3. It is agreed that the petitioner as well as the respondent will withdraw
their respective suit as well as counter-suit in accordance to law
4. It is agreed that both parties will acknowledge and recognize each
other’s interest.
5. It is agreed that Respondent will use Trademark “Formica” for non-
metallic laminated materials for use in building and construction in
class 19.
6. It is agreed that Petitioner can use trademark “Formica” in India only
if it is used for things other than non-metallic laminated materials for
use in building and construction in class 19 and will have to give
respondent 20 % (Twenty percent) of the net profit, that is earned by
using this Trademark.
7. It is agreed that failing to provide the Petitioner will be liable to pay
compensation equivalent to Rupees 10 lakhs and the Petitioner will be
taken away the right to use the Trademark.
8. It is agreed that both parties agree to keep the terms and details of this
Settlement Agreement confidential, except as required by law.
9. It is agreed that in view of the present settlement, the petitioner and
respondent shall withdraw their respective cases from the referral
court as well as the connected case pending in the court of. However,
in case of default as mentioned hereinabove, the both parties shall be
at liberty to continue with the trial of case referred for mediation.
10. The petitioner and the respondent with the assistance of their
respective counsels shall cooperate in the execution of the terms and
conditions of this settlement.
 11. It is agreed that this agreement shall be binding upon and inure to the
benefit of the participants and their respective heirs, successors, and
assignees.
12. It is settled that after compliance of the terms of the present
settlement, there shall remain no dispute due between the parties
arising out of the said dispute and that none of the parties shall file
any civil or criminal proceedings against each other in future and that
if any other case/petition/complaint etc. between the parties is
pending in any Court or Authority, the same shall be withdrawn/got
disposed of by the respective party.
13. The parties have settled their dispute out of their own free will,
without any fear, force, coercion or undue influence from any side.
Signature of Petitioner Signature of Respondents

Caprihans (India) Private Ltd Rajneesh

Registrar of Trademarks
The content of the settlement wave been explained to the parties in
vernacular and they have understood the same and have admitted the same
to be correct,

The content of the settlement has been explained to the participants in

English and vernacular languages, and they have duly acknowledged and
understood the same and have admitted the same to be correct and true.

Settlement proceedings be sent to the referral court. Parties to appear before

the referral Court on the next date of hearing i.e. 15.03.2024 for further
direction.
Copy of settlement be given to both the parties.
Original copy of the settlement be also sent to the concerned courts in
connected case
Signature of
Mediator
 Annexure – 1

Facts of the Case as Caprihans (India) Private Ltd. Vs. Registrar of

Trade Marks and Ors
1. Application for Rectification was filed by Petitioner for removal of
Respondent’s Trademark “Formica” from Register of Trademarks, It
was registered with it coming into effect from 13.05.1952 for of non-
metallic laminated materials for use in building and construction in
class 19. The registration of the same Trademark has been renewed
for a time of 15 years from 13.05.1959
2. It was said by Petitioner that even though it has been seven years
since the date of registration, the word "Formica" is not a trade mark
and is just descriptive of the goods, thus even if it has been
registered, it cannot be regarded as fully legitimate. Secondly, the
word in question is misleading because it does not refer to mica or
any of its constituents as goods.
3. The Grounds filed by Petitioner for removal of Trademark
“Formica” from the records were as follows-
i) the registration of the said trade mark in respect of non-
metallic laminated materials for use in building and
construction in class 19 is bad being contrary to the
provisions of sub-sections (a), (b) and (c) of Section 11 of
the Act.
ii) The said trade mark is inherently not adapted to
distinguish the goods of the registered proprietors and
therefore, the said trade mark is not distinctive even now
of the goods of the registered proprietors. The said mark
 remains wrongly on the Register and its entry ought to be
removed from the records.
iii) The registration of the said trade mark is bad under
provisions of sub-sections (b) and (c) of section 32 of the
Act
4. The registered proprietors have filed a counterstatement denying the
allegations contained in the application for its rectification.
5. In the statement of case the Petitioner submitted that the Trade Mark
was registered in contravention of section 6 of the Trade Marks Act
1940 which corresponds to section 9 of the Act of 1958. It is
contended that the mark patently describes and refers to mica which
is the second part of the mark. The mark, in addition, means that the
goods under the mark are a substitute for mica although they are
neither mica nor do they have any element of mica