The value and repute of a well-established brand is undisputed. In such a case, while litigation may go on for long, parties sometimes find viable solutions in settlements. As witnessed in the case of Xerox Corporation and Anr. v. Sailash Patel and Others 2008 (37) PTC 526 (Del.), the Delhi High Court affirmed and validated the settlement arrived between the two parties, as regards the sale and distribution of its second hand products.
Xerox Corporation alleged Sailash Patel and his co-parties, of infringing and conducting unlawful activities with respect to their trademark "Xerox". They alleged them of importing second hand office automation equipment, which were refurbished in India and sold to sellers, who in turn sold the equipment to jobbers/photocopiers. They claimed that an exclusive inbuilt software enabled the functioning of the hardware and that on switching on the equipment, a green light with a distinctive "X" logo appeared and that they claimed copyright with respect to the same artistic work.
Sailash Patel denied that Xerox Corp. was the proprietor of the trademark Xerox, while denying that they were pursuing any unlawful activities. They stated that the importing activities were on an "as is where is basis" and that the import was legal and valid. They stated that the goods in question were genuine and that at the time of importation as well as re-sale, the goods were conveyed as being second hand and not new. It was also asserted that having such knowledge, the same were purchased.
The parties to the dispute, entering into a compromise, decided to affix a disclosure on each of the pieces sold stating that the same were second hand and had not been imported from Xerox Corp.; that the same were not serviced or maintained by Xerox Corp.; that the machine in no way has been altered vide addition or removal of any parts; and that the machine was not covered by a guarantee or warranty from Xerox or its affiliates. They also agreed to display the same prominently while incorporating it in their publicity materials. They also agreed that incase any change was made "Xerox" would be removed from the machine before its sale. They also agreed that the disclosure would not be obliterated or removed by the purchasers of the machine.
The High Court took these terms on record and stated the settlement to be lawful. The suit was thereby decreed in these terms and disposed off all suits in the regard.
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