India: BBC settles a suit before the Delhi High Court Mediation and Conciliation Centre

Recently, in the case of The British Broadcasting Corporation vs Kuldeep Singh Kalra & Ors., The British Broadcasting Corporation (hereinafter referred to as the ‘Plaintiff’) prayed for a decree of permanent injunction, restraining Kuldeep Singh Kalra (hereinafter referred to as the ‘Defendants’) from using any mark which is deceptively and confusingly similar to the mark ‘BBC’. However, during the pendency of the suit the parties entered into a settlement before the Delhi High Court Mediation and Conciliation Centre, because of which Honorable Justice Mukta Gupta of the Delhi High Court decreed the suit as per the terms and conditions of the settlement

Brief Background

• In the present suit the Plaintiff have prayed for the following reliefs:
• A decree of permanent injunction restraining the Defendants, their directors/proprietor/partners, their principals, employees, agents, distributors, franchisees, representatives and assigns from using the impugned marks and any other trademarks or trade name which are deceptively or confusingly similar to the Plaintiff's registered mark ‘BBC’ in any manner whatsoever without the permission, consent, license of the Plaintiff, thereby infringing the rights of the Plaintiff in its registered trademarks amounting to infringement thereof.
•  An order of delivery up be passed, thereby directing the Defendants to hand over to the Plaintiff all goods, packaging and promotional material, catalogues, stationery and any other material whatsoever in its possession or under its control bearing the impugned marks or any other mark as may be confusingly or deceptively similar to the Plaintiff's mark BBC;
• A decree in favor of the Plaintiff for recovery of damages to the tune of INR 1,00,01,000 (USD 155888 approx.) as punitive/compensatory damages for committing the illegal activities of infringement of trade mark, passing off & falsification.
•   For an order for rendition of account of profits earned by the Defendants by its impugned illegal trade activities and a decree for the amount so found in favor of the Plaintiff on such rendition of accounts;

However, during the pendency of the suit before the issues could be settled, the parties entered into a settlement before the Delhi High Court Mediation and Conciliation Centre.

Terms of Settlement Agreement

The Defendant undertook not to use the Plaintiff's well-known mark BBC in a standalone manner or in any manner whatsoever including but not limited to its publications, books, stationary, pamphlets, visiting cards, etc.

Both the parties understand that the concern of the Plaintiff is with the word bbc and the same has been addressed by the Defendants by agreeing to not use bbc in isolation but always in conjunction with Brajindra Book Company. Amongst others, the Plaintiffs agreed to the following terms - :

1.   The term 'bbc' shall always be used in small characters; and
2.   The term 'bbc' shall always be used and reflected in close conjunction with Brajindra Book  Company; and
3.  The font size ratio of the terms 'bbc' and Brajindra Book Company for all purposes shall be  such that bbc is not more than half the size of the word Brajindra Book Company.

After complying with the aforesaid conditions the Defendants may seek any registration of the trade mark bbc Brajindra Book Company and/or bbc Brajindra Book Company COMPACTA or bbc Brajindra Book Company with any other suffix. Additionally, the Defendant is fully entitled to use the word COMPACTA in any manner as it deems fit, but when used with the bbc brand the aforesaid conditions will apply.

The Defendants shall immediately cease further publication of the marks impugned in CS (COMM) 1144/ 2016 and agrees not to adopt any identical or similar mark in the future, other than the allowed manner of use as defined in the settlement agreement. The Defendants further undertakes to voluntarily amend its trade mark application bearing no. 2639325 in Class 16 for the mark bbc compacta (stylized) within a period of six weeks from the date of signing of this agreement to bring it in conformity with the aforesaid terms.

The Plaintiff agreed that in view of the undertakings by the Defendants recorded in the settlement agreement, it shall not oppose the application(s) if any, filed by the Defendants for the registration of the mark "bbc" in conjunction with 'BRAJINDRA BOOK COMPANY', and/or with COMPACTA in conformity with the terms of the present settlement deed.

Judgement

In view of the settlement arrived at between the parties, Hon’ble Justice Mukta Gupta decreed the suit as per the terms of the agreement. Further the terms of settlement arrived at between the parties will be incorporated in the decree sheet and since the parties have entered into a settlement before the Delhi High Court Mediation and Conciliation Centre, the Court fees will be returned to the Plaintiff under Section 16 of the Court Fees Act.