Delhi High Court - Orders
Ab Skf & Anr vs M/S Osaka International Inc. & Ors on 15 May, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~40
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 197/2024, I.A. 5268/2024, I.A. 5273/2024, I.A.
10648/2024
AB SKF & ANR. ..... Plaintiffs
Through: Mr. Pravin Anand, Mr. Saif Khan,
Mr. Shobhit Agarwal and Mr.
Prajjwal Kushwaha, Advocates.
versus
M/S OSAKA INTERNATIONAL INC. & ORS. ..... Defendants
Through: Mr. Kumar Shashank, Mr. Piyush
Tonk and Mr. Nivesh Kumar,
Advocates for D-1 to 6.
Ms. Apurba Pattanayak, Advocate for
D-9.
Mr. Debarshi Dutta, Mr. Mrinal Ojha,
Ms. Tanya Chaudhary and Mr.
Samyak B., Advocates for D-12.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 15.05.2024 I.A. 10993/2024 (under Order XXXIX Rules 2A of CPC)
1. Issue notice. Mr. Piyush Tonk, counsel for non-Applicant, accepts notice.
2. Mr. Pravin Anand, counsel for Plaintiffs, submits that Defendant No. 5/ Contemnor No. 1, i.e., M/s Escort Bearing (India) Private Limited, has not complied with injunction order dated 05th March, 2024. In response, Mr. Tonk states that certain sales were inadvertently made by Defendant No. 5/ Contemnor No. 1, however, they have now initiated the process of cancellation of such sales and refund to customers. Accordingly, Defendant No. 5/ Contemnor No. 1 is directed to file a compliance affidavit indicating This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/05/2024 at 23:06:42 all steps taken by them to comply with injunction order, within two weeks from today.
3. Re-notify on 08th August, 2024.
I.A. 10994/2024 (on behalf of Plaintiffs seeking leave of the Court to file additional documents)
4. Issue notice. Counsel mentioned in appearance above accept notice.
5. Reply(s) to the application, if any, be filed within four weeks from today. Rejoinder thereto, if any, be filed within two weeks thereafter.
6. Upon filing of process fee, issue notice to remaining Defendants, by all permissible modes, returnable before the Court on the date fixed, i.e., 08th August, 2024.
7. On service, such Defendants shall file a reply within a period of 30 days from the date of service.
I.A. 11034/2024 (under Order XXXIX Rules 1 and 2 of CPC)
8. Issue notice. Ms. Tanya Chaudhary, counsel for Defendant No. 12 - i.e., GoDaddy LLC accepts notice. Reply(s) to the application, if any, be filed within four weeks from today. Rejoinder thereto, if any, be filed within two weeks thereafter.
9. Upon filing of process fee, issue notice to remaining Defendants, by all permissible modes, returnable before the Court on the date fixed, i.e., 08th August, 2024.
10. On 5th March, 2024, an ex-parte ad-interim injunction order was granted in favour of Plaintiff, restraining Defendants from using the trademark 'SKF' or any other mark deceptively similar to Plaintiff's trademark.
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/05/2024 at 23:06:42
11. Plaintiffs contend that they have received several consumer complaints stating that Defendant No. 3, i.e., International Bearing Industries, has been supplying counterfeit bearings to third parties. Plaintiffs also received complaints from their customer, M/s Tata Steel Long Products Limited, enclosing e-mails sent by Defendant No. 3, from the e-mail address [email protected], claiming that Defendant No. 3 is an authorised importer of SLS Bearings (Singapore) Private Limited, which is in fact a genuine distributor of Plaintiffs' bearings. From this above email communication, Plaintiffs became aware of the domain name "www.skfsg.com".Even though no website is hosted on the said domain name, Plaintiffs contend that the said domain name is clearly infringing Plaintiffs' trademarks "SKF".
12. In view of the above, and for the reasons noted in order dated 05th March, 2024, Defendant No. 12 is directed to lock and suspend the impugned domain name "www.skfsg.com". They shall, within four weeks from the date of this order, file in a sealed cover, details of registrant/owner of the impugned domain name, as available in their records. A copy of the said documents shall also be provided to counsel for Plaintiff, which shall be kept confidential by them and strictly used by them only for the purpose of investigation and identification of the perpetrators.
13. List before the Court on the date already fixed for hearing, i.e., 08th August, 2024.
SANJEEV NARULA, J MAY 15, 2024/d.negi This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/05/2024 at 23:06:42