M/S Vhb Life Sciences LTD vs. M/S Biocon Biologics Limited
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Cause title — parties, addresses and appearances
JUDGMENT AND DECREE DATED 30.04.2015 PASSED IN O.S.NO.4385/2010 ON THE FILE OF THE XVIII ADDL. CITY CIVIL & SESSIONS JUDGE, BENGALURU, (CCH 10), PARTLY DECREEING THE INJUNCTION.
THIS APPEAL, COMING ON FOR ORDERS, THIS DAY, JUDGMENT WAS DELIVERED THEREIN AS UNDER:
CORAM: HON'BLE MR. JUSTICE S.R.KRISHNA KUMAR
ORAL JUDGMENT This appeal, by the defendant No.1 in O.S.No.4385/2010 is directed against the impugned judgment and decree dated 30.04.2015, whereby the said suit filed by the respondent No.1- plaintiff against the defendants was partly decreed by the Trial Court in favour of the respondent No.1 - plaintiff.
The matter having been referred to the Karnataka Mediation Centre, the parties have amicably settled the dispute by way of Memorandum of Settlement, which reads as under: "MEMORANDUM OF SETTLEMENT UNDER SECTION 89 OF CPC READ WITH RULES 24 AND 25 OF HC-KAR NC: 2026:KHC:2457 THE KARNATAKA CIVIL PROCEDURE (MEDIATION) RULES, 2005. SYNOPSIS: I. The Appellant has filed the above Appeal against the Respondents challenging the judgment and decree dated 30.04.2015 passed in O.S. No. 4385/2010 on the file of the City Civil Judge, CCH:05, Bengaluru, to set aside the said Order. II. The aforesaid Appeal was referred to mediation for resolving the dispute between the parties. In the course of mediation, the Appellant and the Respondent No.1 represented by their respective authorized signatories along with their respective counsels were present, they have resolved their dispute and have agreed to the following terms and conditions:- FACTS OF THE CASE:
Biocon Limited being the owner of the trademarks, "NUFIL", "NUFIL SAFE", in respect of pharmaceutical preparations initiated a suit for passing off as against the Appellant and another in O.S. No. 4385 of 2010 on the file of the Learned City Civil Court at Bengaluru to inter alia restrain the Parties of the Appellant from using the mark "NEUFIL".
The said suit was partly decreed in favour of Biocon Limited, whereby the Appellant was restrained from using the mark "NEUFIL". HC-KAR NC: 2026:KHC:2457
Being aggrieved by this the Appellant preferred R.F.A. No. 845 of 2015 before the Hon'ble High Court of Karnataka at Bengaluru seeking to set aside the Decree and Judgment dated 30.04.2015 passed in O.S. No. 4385 of 2010 and obtained an order of stay as against the Judgment and Decree in O.S. No 4385 of 2010. 4. It is stated by both parties that the Respondent No.2 is only a formal party and not a necessary party to this litigation and hence is not a party to this settlement.
During the pendency of the Appeal, Biocon Limited has, inter alia, assigned all rights, title and interest in the trademarks NUFIL, NUFIL SAFE to its subsidiary Biocon Biologics India Limited vide Assignment Deed dated 01.08.2019. 6. Subsequently, Biocon Biologics India Limited., has changed its name to Biocon Biologics Limited i.e., the Parties of the Respondent herein.
The Respondent No.1 is also the owner of the trademarks NUFIL SFS and PEGNUFIL along with the marks NUFIL and NUFIL SAFE.
An Application for substitution of Biocon Limited with Biocon Biologics Limited is filed before the Hon'ble High Court of Karnataka and is pending consideration. The Appellant has no objections to the said application. TERMS OF THE SETTLEMENT: HC-KAR NC: 2026:KHC:2457
ASSIGNMENT OF TRADEMARKS AND OWNERSHIP: (a) The Respondent No.1 agrees to enter into a separate Assignment Agreement to assign in favor of the Appellant all its rights, title and interest along with goodwill in the trademarks "NUFIL", "NUFIL SAFE", "NUFIL SFS", PEGNUFIL as specified in Annexure 1 below together with all associated goodwill, logo, get-up, and trade dress for the Brands. (b) Upon execution of the Assignment Deed, the Appellant shall become the absolute proprietor and lawful owner of the said trademarks and shall be entitled to use, license, or deal with the same without any objection, hindrance or otherwise any restrictions or covenants of any kind from the Respondent No.1. (c) The Respondent No.1 agrees to provide all cooperation and assistance in effecting the recording of such assignment with the Trademarks Registry. (d) The Respondent No.1 agrees not to use the said marks or any other marks visually or phonetically similar to the marks assigned herein to the Appellant in India
SETTLEMENT CONSIDERATION AND PAYMENT: (a) The Parties have agreed that the Trademarks specified in Annexure 1 below will be assigned along with goodwill for a total and complete consideration of Rs.20,00,000/-(Rupees Twenty Lakhs only). The Appellant HC-KAR NC: 2026:KHC:2457 shall pay the aforesaid sum of Rs.20,00,000/- (Rupees Twenty Lakhs only) to the Respondent by way of Bank transfer the details of which is mentioned in Annexure 2 hereunder, on the date of signing this Agreement and in consideration of the same the Respondent and the Confirming parties shall execute deed of Assignment and the necessary forms prescribed under the Trade Marks Act, 1999 and Rules made there under in respect to the above mentioned mark within 90 days from the date not agreement. (b) All applicable stamp duty, and taxes (including GST, if any) arising out of or in connection with the execution of this Settlement Agreement and the Assignment Deed shall be borne solely by the Appellant.
DISPOSAL OF LITIGATION: (a) The Parties agree that the Assignment of the Trademarks specified in Annexure 1 below and the consideration mentioned hereinabove shall serve as a full and final settlement of the R.F.A. No. 845 of 2015 arising out of the decree and Judgment dated 30.04.2015 passed in O.S. No. 4385 of 2010 by the Hon'ble City Civil Court, at Bengaluru. (b) The Parties agree that the Appeal in R.F.A. No. 845 of 2015 pending before the Hon'ble High Court of Karnataka, at Bengaluru be allowed and the Judgment and Decree dated 30.04.2015 passed in O.S. No. 4385 of 2010 HC-KAR NC: 2026:KHC:2457 by the Hon'ble City Civil Court, at Bengaluru in terms of the Settlement Agreement.
NO FURTHER CLAIMS: The Parties further agree that upon recording this settlement, all proceedings, claims, and counterclaims between them arising out of or relating to the aforesaid trademarks shall stand fully and finally settled. Further, the Respondent No.1 shall recognize and acknowledge the Appellant as the absolute proprietor and lawful owner of the trademarks mentioned in the R.F.A. No. 845 of 2015 and O.S. No. 4385 of 2010, and that the Appellant shall be entitled to use, license, or deal with the same without any objection, hindrance or otherwise any restrictions or covenants of any kind from the Respondent.
CONFIDENTIALITY: The terms of this Agreement shall remain confidential except as required to be disclosed for the purpose of filing before the Hon'ble High Court of Karnataka, or the Trade Marks Registry.
IRREVOCABLE AND BINDING AGREEMENT: That the present Agreement is irrevocable and binding upon the Parties. In case of any breach and/or failure of any Parties to comply with the terms of the present Agreement, the non-defaulting Parties shall be entitled to seek specific performance of the present Agreement HC-KAR NC: 2026:KHC:2457 through an appropriate court of law and/or forum as provided in this Agreement.
GOVERNING LAW: This Agreement shall be governed by and construed in accordance with the laws of India. III. In view of the aforesaid agreement entered into between the parties, the parties pray that this Hon'ble Court be pleased dispose off the above appeal and to pass appropriate order in terms of this agreement. IV. Parties will appear before the Hon'ble Court as per the directions of the counsels for passing appropriate orders in terms of the agreement. ANNEXURE: 1 (Marks owned by Biocon Biologics Limited) Trademark Class Application Number Filing date Withdrawn date Status Country NUFIL 5 1580496 16 July 2007 Withdrawn on 8th January 2025 Withdrawn India NUFIL SAFE 5 1664950 14 March 2008 Withdrawn on 8th January 2025 Withdrawn India NUFIL SFS 5 2578155 08 August 2013 Regd. On 18 July 2018 Registered India PEGNUFIL 5 2554629 26 June 2013 Regd. On 08 June 2017 Registered India HC-KAR NC: 2026:KHC:2457 ANNEXURE2 (Bank Details) Beneficiary Name: Biocon Biologics Limited Beneficiary Account Number: 05230310003272 Beneficiary RTGS Code: HDFC0000523 Beneficiary Branch: Richmond Road Branch, Bangalore-25 Beneficiary Bank: HDFC BANK"
Both the parties have filed Memorandum of Settlement before the Karnataka Mediation Center under Section 89 of CPC read with Rules 24 and 25 of the Karnataka Civil Procedure (Mediation) Rules, 2005. The appellant-defendant No.1 and respondent No.1 - plaintiff have agreed to the terms and conditions of the settlement.
The appellant-defendant No.1 and respondent No.1 - plaintiff are physically present and have been identified by their respective counsel.
In view of the aforesaid settlement arrived at between the parties, the appeal stands disposed of in terms of the Memorandum of Settlement.
In view of the above, I pass the following: ORDER (i)
The appeal is hereby disposed of in terms of the Memorandum of Settlement. HC-KAR NC: 2026:KHC:2457 (ii) The impugned judgment and decree dated 30.04.2015 passed in O.S.No.4385/2010 by the XVIII Additional City Civil Judge, Bengaluru is modified and the suit is disposed of in terms of mediation settlement / agreement. (iii) The Registry of this Court is directed to refund the entire Court Fee paid on the memorandum of appeal back to the appellants. (iv) The Registry of the Trial Court is directed to refund the entire Court Fee paid on the memorandum of plaint back to the plaintiff . (S.R.KRISHNA KUMAR) JUDGE
SV List No.: 4 Sl No.: 1
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