Delhi District Court
Samsung Inida Electronics Private ... vs M/S Glass Campus And Ors on 6 September, 2023
DLCT010010502020
IN THE COURT OF MS.KAVERI BAWEJA, DISTRICT
JUDGE (COMMERCIAL COURT)-07,
CENTRAL DISTRICT,
TIS HAZARI COURTS, DELHI
CS (Comm.) - 167/2020
IN THE MATTER OF:
1. SAMSUNG INDIA ELECTRONICS PRIVATE
LIMITED
6th Floor, DLF Centre,
Sansad Marg,
New Delhi - 110001
Through its Authorized Representative
Mr. Praveen Sangwan ..... Plaintiff No.1.
2. SAMSUNG ELECTRONICS COMPANY LIMITED
129, Samsung-ro, Yeongtong-gu,
Suwon-si, Gyeonggi-do,
Republic of Korea,
Through its Authorized Representative
Mr. Praveen Sangwan ..... Plaintiff No.2.
Versus
1. M/S GLASS CAMPUS
Mobile Hub Basement, Shop No.11 & 12
Gali No.17, Gaffar Market, Beadonpura,
Karol Bagh, New Delhi - 110005 ... Defendant No.1
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
2. M/S HOTSPOT ACCESSORIES
Mobile Hub, G8 Basement,
Hardhyan Singh Road,
Karol Bagh,
New Delhi - 110005 ... Defendant No.2
(Change of name vide order dated 12.03.2020)
3. M/S GURU NANAK DEV JI
Mobile Hub, Shop No. G-13 - G-14,
Karol Bagh,
New Delhi - 110005 ... Defendant No.3
4. M/S HAAFIZ ENTERPRISES
Shop No.164, Hardhyan Singh Road,
Karol Bagh,
New Delhi - 110005 ... Defendant No.4
5. M/S SOROO, THE FUTURE TECHNOLOGY
KOHINOOR ACCESSORIES
Shop No.13, Mount Floor,
Karol Bagh,
New Delhi - 110005 ... Defendant No.5
6. M/S BT GOLD
Shop No. G 4, Gaffar Market,
Karol Bagh,
New Delhi - 110005 ... Defendant No.6
(impleaded vide order dated 12.03.2020)
7. M/S S.S. COMMUNICATION
Shop No.5, Gaffar Market,
Karol Bagh,
New Delhi - 110005 ... Defendant No.7
(impleaded vide order dated 12.03.2020)
Date of Institution : 24.01.2020
Judgment Reserved on : 05.08.2023
Date of judgment : 06.09.2023
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
EX PARTE JUDGMENT
Brief Facts:-
1. Instant suit has been filed by the Plaintiff seeking a decree of permanent injunction restraining the Defendants from infringing the registered Trademark of the Plaintiffs, passing off, delivery up, rendition of accounts of profits and damages.
2. Brief facts of the case are that Plaintiff No. 1, Samsung India Electronics Private Limited is a company incorporated in the year 1995 under the provisions of Companies Act, 1956 and has its registered office (i.e., the principal place of business) at 6th Floor, DLF Centre, Sansad Marg, New Delhi- 110001 and is stated to be 100% wholly owned subsidiary of the Plaintiff No. 2.
3. Plaintiff No. 2, Samsung Electronics Company Ltd., is a Company registered under the laws of the Republic of Korea, having its registered office at 129, Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, Republic of Korean and is one of the leading names in the world in respect of a wide variety of goods and services in the realm of electronic sector which are advertised and sold under the brand name "SAMSUNG". Plaintiff No. 2 is stated to be the registered proprietor of the trademark "SAMSUNG", which was adopted in the year 1969 and is Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 presently being used in most jurisdictions of the world, including in India.
4. It is submitted that by virtue of the Trademark License and Registered User Agreement dated 08.07.2003, the Plaintiff No. 2 has licensed the use of the trademark "SAMSUNG" in India to the Plaintiff No. 1 according to which the Plaintiff No. 1 is declared to be a wholly owned subsidiary in India of the Plaintiff No. 2. It is also submitted that the trademark "SAMSUNG" forms an integral part of the Plaintiffs' group companies and has come to be identified solely and exclusively with the Plaintiffs.
5. It is averred in the plaint that Defendants are the wholesale/retail importers and suppliers of mobile accessories and other mobile products and operate from their shops/establishments located at Karol Bagh market, Delhi.
6. It is the case of the Plaintiffs that the Defendants are permitting use of, and using, in the course of trade by advertising, putting in the market, offering for sale and selling and importing counterfeit 'LEVEL U' and 'UFLEX' headsets containing "SAMSUNG" trademark without the consent or permission of the Plaintiffs and that the Defendants are also connected to each other and are carrying the illegal activities (as stated above) in connivance and conspiracy with each other. Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
7. The Plaintiff also claims that by virtue of the Plaintiffs' extensive use, sale and promotion of its goods and services under the "SAMSUNG" trademark, the said trademark has become a household name in India. From the aforesaid and also as per the provisions of the Trade Marks Act, 1999, the "SAMSUNG" trademark qualifies to be a well-known trademarks in terms of Section 2 (1)(zg) of the Trade Marks Act, 1999 respectively.
8. It is further stated that worldwide, the Plaintiff No. 2 owns 16 registrations for its trademark "SAMSUNG" under various classes being Class No. 7, 9, 11, 14, 35, 36, 37, 38, 39, 40, 42 and 45.
9. The trademarks registrations of the Plaintiff No. 2 are stated to be valid and subsisting till date and it is submitted that by virtue of the said registrations, the Plaintiff No. 2 has the exclusive right to use the trademarks in relation to the goods and services for which the trademarks are registered and to take action for infringement in accordance with applicable law. It is also submitted that through such extensive use, advertisement and the excellent quality of the goods sold thereunder, the trademark "SAMSUNG" has exclusively been identified with the Plaintiffs' business activities.
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
10. It is the case of the Plaintiff that in the last week of November, 2019, the Plaintiffs became aware of the fact that certain shop owners were advertising, offering for sale and selling counterfeit copies of "SAMSUNG" LEVEL U and UFLEX models from their shops located in the Karol Bagh market, Delhi and that the said advertisement and sales by the Defendants were being done without any authorization or permission from the Plaintiffs. The Plaintiffs further submit that the aforesaid illegal activities of the Defendants has been causing confusion in the minds of the public, owing to the identity of the mark and the goods being sold by the Defendants, by using the trademark identical to "SAMSUNG" trademark on counterfeit copies of LEVEL U and UFLEX models of the Plaintiffs' headsets.
11. It is also alleged that a ground investigation/market survey by the Plaintiffs with respect to the counterfeit headsets (models LEVEL U and UFLEX) being illegally sold by the Defendants under the brand name "SAMSUNG", in the Karol Bagh market of Delhi, revealed that a series of entities/individuals (i.e., the Defendants herein) were found to be engaged in identical and illegal activities of advertising, putting in the market, offering for sale and selling counterfeit copies of the Plaintiffs' 'LEVEL U' and 'UFLEX' model headsets containing the trademark "SAMSUNG". It was further revealed that the Defendants were selling Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 the above-mentioned counterfeit products at a very low price and without issuance of proper invoices/bills and the Defendants offered for sale the said counterfeit products on 'no exchange' and 'no warranty' basis. Furthermore, it was revealed that there were material and significant deviations on the packaging and labelling of the counterfeit products as compared to their respective originals.
12. Plaintiffs placed reliance upon the report of its investigator dated 10.12.2019, the contents of which are reproduced as under:
i). The First Defendant is selling counterfeit 'LEVEL U' headsets for INR 450 and 'UFLEX' headsets for INR 850, both under the brand name "SAMSUNG", with an estimated available stock of 250 pieces (approx.);
ii). The Second Defendant is selling counterfeit 'LEVEL U' headsets for INR 600 and 'UFLEX' headsets for INR 800, both under the brand name "SAMSUNG", with an estimated available stock of 150 pieces (approx.);
iii). The Third Defendant is selling counterfeit 'LEVEL U' headsets for INR 650 and 'UFLEX' headsets for INR 950 under the brand name "SAMSUNG", with an estimated available stock of 50 pieces (approx.);
iv). The Fourth Defendant is selling counterfeit 'LEVEL U' headsets for INR 450 and 'UFLEX' headsets for INR 770 under the brand name "SAMSUNG", with an estimated available stock of 150 pieces (approx.);
v). The Fifth Defendant is selling counterfeit 'LEVEL U' headsets for INR 600 and 'UFLEX' headsets for INR 850, Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 both under the brand name "SAMSUNG", with an estimated available stock of 150 pieces (approx.);
13. On the basis of the aforesaid investigation report, the Plaintiff submitted that all the Defendants are engaged in the sale of counterfeit 'LEVEL U' and 'UFLEX' headsets under the brand name "SAMSUNG", by affixing stickers bearing Plaintiffs' trademark "SAMSUNG" on them. The plaintiff further laid emphasis on the conclusion of the investigation report, as per which the Defendants are mainly dealing in bulk and retail selling of all electronic supply and seen circulating the products to other retailers inside and outside Delhi NCR and North India.
14. It is further submitted that all the Defendants are believed to be either importers, wholesale suppliers or retailers of mobile accessories, who are importing and/or selling counterfeit copies of 'LEVEL U' as well as 'UFLEX' headsets bearing the Plaintiffs' registered and well- known trademark "SAMSUNG" without the consent or permission of the Plaintiffs and that neither of the Defendants are the authorized dealers/licensees of the Plaintiffs and as such are not authorized to sell, offer for sale or otherwise deal with the products of the Plaintiffs.
15. It is further submitted that the use of such stickers by all the Defendants on counterfeit 'LEVEL U' and 'UFLEX' headsets bearing Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 the Plaintiffs' registered trademark "SAMSUNG", clearly amounted to infringement of the Plaintiffs' registered trade mark and passing off of the Plaintiffs' goods, being sold under the provisions of the Trade Marks Act, 1999. In addition to this, the 'LEVEL U' and 'UFLEX' headsets being sold by the Defendants under the brand "SAMSUNG" are counterfeit products, which do not originate from that of the Plaintiffs, which is also evident from the fact that all the Defendants selling them, do not provide any 'exchange' or 'warranty', after sale of such products.
16. Plaintiffs further contended that the Defendants' act of selling, supplying, distributing and/or offering for sale, counterfeit "SAMSUNG" branded LEVEL U and UFLEX headsets clearly amounts to passing off the said products as the Plaintiffs' genuine "SAMSUNG" branded products since:
• The Defendants are using the trademark "SAMSUNG" owned by the Plaintiffs in the exact stylized manner; and • The counterfeit "SAMSUNG" branded 'LEVEL U' and 'UFLEX' headsets are being sold as being those manufactured by the Plaintiffs herein and the acts of the Defendants apart from causing gross misrepresentation also serve to dilute and tarnish the Plaintiffs' well-known trademark "SAMSUNG".
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
17. Hence, the Plaintiffs have filed the instant case inter alia praying as under:-
a. An order of permanent injunction restraining all the Defendants, their associates, partners, proprietors, servants, agents, legal heirs, as the case may be, their assigns in business, franchises, affiliates, subsidiaries, licensees and agents and all others in active concert or participation with them from selling, offering for sale, importing, advertising or from using in any manner whatsoever, directly or indirectly dealing in any products or services under the Plaintiffs' registered trademark/trade name "SAMSUNG" and/or any other mark/ logo or device, which is identical or deceptively similar thereto by itself or in conjunction with any other word in relation to the goods, services or a trade name or part of a trade name in any manner whatsoever, on the counterfeit 'LEVEL U' and 'UFLEX' models headsets;
b. An order of permanent injunction restraining all the Defendants, their associates, partners, directors, principal officers, proprietors, servants, agents, legal heirs and all others in active concert or participation with them or any other person, from passing off the Plaintiffs' trademark/trade name 'LEVEL U' and 'UFLEX' or any other mark, identical/deceptively similar thereto, using it by itself or in conjunction with any other word in relation to the goods, services or trade name or part of a trade name or in any other manner whatsoever;
c. An order directing the Central Board of Excise and Customs, Department of Revenue, Ministry of Finance, Government of India, not to allow import of counterfeit 'LEVEL U' and 'UFLEX' model Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 headsets by the Defendants, whether or not the said counterfeit products contain "SAMSUNG" trademark of the Plaintiffs or any other mark identical/ deceptively similar thereto;
d. In the alternative, an order directing the Central Board of Excise and Customs, Department of Revenue, Ministry of Finance, Government of India that as and when any consignment is imported by the Defendants, intimation thereof shall be given to the Plaintiffs and objections, if any, of the Plaintiffs thereto shall be decided under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007;
e. An order for delivery up to the Plaintiffs' attorneys or representatives by the Defendants or for destruction of all infringing products, labels, stickers, business cards, prints and packages in their possession or under their control, bearing the mark "SAMSUNG" by itself or in conjunction with any other word, or any simulation, reproduction, copy or colorable imitation of the Plaintiffs' registered trademark "SAMSUNG" on the counterfeit 'LEVEL U' and 'UFLEX' models headsets;
f. An order for rendition of account of profits directly or indirectly earned by the Defendants from the aforesaid infringing activities and wrongful conduct and a decree for the amount so found due to be passed in favor of the Plaintiffs;
g. A decree of damages for a sum of INR 5,00,000/-
(Rupees Five Lakhs only) towards loss of sales, reputation and goodwill of the Plaintiffs' trademarks, as caused by the illegal and unauthorized activities of the Defendants;
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 h. An order as to the costs of the suit be awarded to the Plaintiffs.
18. It is submitted that the cause of action for filing the present suit arose in favour of the Plaintiffs in the last week of November, 2019, when the Plaintiffs first learnt of the illegal activities being carried out by the Defendants using the Plaintiffs' well-known and registered trademark "SAMSUNG" in relation to the counterfeit 'LEVEL U' and 'UFLEX' headsets, which were sold by them without taking any authorization or permission from the Plaintiffs. The cause of action further arose on 10.12.2019, when the investigation being conducted by the Plaintiffs confirmed that the Defendants were engaged in the aforesaid illegal activities. It is further submitted that the cause of action is recurring in nature and will continue to subsist since the Defendants continue to advertise, offer for sale, sell, etc. counterfeit 'LEVEL U' and 'UFLEX' model headsets containing the infringing Plaintiffs' registered trademark "SAMSUNG".
19. During the course of proceedings vide order dated 25.01.2020, a Local Commissioner was appointed, who submitted his report on 20.02.2020, which forms part of the record. As per the report of learned Local Commissioner, the counterfeit products recovered from the Defendants are as follows:-
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 Name of Defendant Articles Recovered Defendant No.1 M/s Glass 03 sets of LEVEL U headsets Campus and 12 Sets of UFLEX headsets were identified to be counterfeit in nature as they did not match with the details of the original SAMSUNG branded LEVEL U and UFLEX headsets.
Defendant No.2 M/s Hotspot 06 sets of lose LEVEL U Accessories headsets and 02 sets of lose UFLEX headsets were identified to be counterfeit in nature as they did not match with the details of the original SAMSUNG branded LEVEL U and UFLEX headsets.
Defendant No.3 M/s Guru Nothing was recovered Nanak Dev Ji Defendant No.4 M/s Haafiz 07 sets of LEVEL U headsets Enterprises and 04 sets of UFLEX headsets were identified to be counterfeit in nature as they did not match with the details of the original SAMSUNG branded LEVEL U and UFLEX headsets.
Defendant No.5 M/s Soroo, Could not be located in the The Future Technology premises of the Gaffar Market, Karol Bagh and hence, the inspection could not be carried out.
Defendant No.6 M/s B.T. 11 sets of LEVEL U headsets Gold and 25 sets of UFLEX headsets were identified to be counterfeit in nature as they did not match with the details of the original SAMSUNG branded LEVEL U and UFLEX headsets.
Defendant No.7 M/s S.S. 04 sets of UFLEX headsets were Communication identified to be counterfeit in nature as they did not match with the details of the original SAMSUNG branded LEVEL U and UFLEX headsets.
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
20. Perusal of record further reveals that upon an application jointly filed by the Plaintiffs and Defendant Nos. 1 & 2 under Order XXII Rule 3 CPC, the suit was settled with Defendant No.1 & 2 and a consent decree was passed against Defendant No.1 & 2 vide order dated 05.03.2022.
21. Further, vide order dated 05.03.2022, the name of Defendant No.5 M/s Soroo, The Future Technology Kohinoor Accessories was deleted from the array of parties.
22. Since, Defendant No.3 M/s Guru Nanak Dev Ji and Defendant No.4 M/s Haafiz Enterprises failed to appear before the court, both of them were proceeded against ex parte vide order dated 28.05.2022.
23. Insofar as Defendant No. 6 M/s BT Gold & and Defendant No.7 M/s S.S. Communication are concerned, both of them have been served by way of publication in the newspaper on 23.04.2022. However, since both of them failed to appear before the court, they were also proceeded against ex parte vide order dated 03.09.2023.
Evidence, Analysis & Findings:-
24. In order to substantiate its case, the Plaintiffs examined PW-1 Mr.Praveen Sangwan, who tendered his evidence by way of affidavit and exhibited the following documents :-
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
(i) Power of Attorney dated 28.10.2016 of plaintiff no.1 as Ex.PW1/1(OSR)
(ii) Power of Attorney dated 31.01.2019 of plaintiff no.2 as Ex.PW1/1(OSR)
(iii) Copy of Trademark License and Registered User Agreement dated 08.07.2003 Ex.PW1/3 in affidavit Ex.PW1/A is now de-exhibited and is marked as Mark PW1/3.
(iv) Printout of documents containing plaintiff's history as Ex.PW1/4.
(v) Printout of documents evidencing registration status of trademark Samsung under class-9 as Ex.PW1/5
(vi) Printout of Registration Certificate bearing no.368564 along with journal copy as Ex.PW1/6
(vii) Printout of documents evidencing registration status of trademark Samsung under class-11 as Ex.PW1/7
(viii) Printout of Registration Certificate bearing no.368562 along with journal copy: Ex.PW1/8
(ix) Printout of documents evidencing registration status of tradmark Samsung under class-14 as Ex.PW1/9
(x)Printout of Registration Certificate bearing no.368563 along with journal copy as Ex.PW1/10
(xi)Printout of documents evidencing registration status of trademark Samsung under class-7 as Ex.PW1/11
(xii) Printout of Registration Certificate bearing no.370918 along with journal copy as Ex.PW1/12
(xiii)Printout of documents evidencing registration status of trademark Samsung under class-7 as Ex.PW1/13 Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
(xiv) Printout of Registration Certificate bearing no.591127 along with journal copy as Ex.PW1/14
(xv)Printout of documents evidencing registration status of trademark Samsung under class-9 as Ex.PW1/15 (xvi) Printout of Registration Certificate bearing no.591128 along with journal copy as Ex.PW1/16 (xvii) Printout of documents evidencing registration status of trademark Samsung under class-11 as Ex.PW1/17 (xviii)Printout of Registration Certificate bearing no.591126 along with journal copy as Ex.PW1/18 (xix)Printout of documents evidencing registration status of trademark Samsung under class-16 as Ex.PW1/19 (xx) Printout of Registration Certificate bearing no.591306 along with journal copy as Ex.PW1/20 (xxi)Printout of documents evidencing registration status of trademark Samsung under class-14 as Ex.PW1/21 (xxii)Printout of Registration Certificate bearing no.757092 along with journal copy as Ex.PW1/22 (xxiii)Printout of documents evidencing registration status of trademark Samsung under class-7 as Ex.PW1/23 (xxiv)Printout of Registration Certificate bearing no.1055554 along with journal copy as Ex.PW1/24 (xxv)Printout of documents evidencing registration status of trademark Samsung under class-9 as Ex.PW1/25 (xxvi)Printout of Registration Certificate bearing no.1055555 along with journal copy as Ex.PW1/26 (xxvii)Printout of documents evidencing registration status of trademark Samsung under class-11 as Ex.PW1/27 Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 (xxviii)Printout of Registration Certificate bearing no.1055556 along with journal copy as Ex.PW1/28 (xxix)Printout of documents evidencing registration status of trademark Samsung under class-14 as Ex.PW1/29 (xxx)Printout of Registration Certificate bearing no.1055557 along with journal copy as Ex.PW1/30 (xxxi)Printout of documents evidencing registration status of trademark Samsung under class-7, 9, 11, 38 & 42 as Ex.PW1/31 (xxxii)Printout of Registration Certificate bearing no.1240403 along with journal copy as Ex.PW1/32 (xxxiii)Printout of documents evidencing registration status of trademark Samsung under class-99 as Ex.PW1/33 (xxxiv)Printout of Registration Certificate bearing no.1240401 along with journal copy as Ex.PW1/34 (xxxv)Printout of documents evidencing registration status of trademark Samsung under class-99 as Ex.PW1/35 (xxxvi)Printout of Registration Certificate bearing no.1240402 along with journal copy as Ex.PW1/36 (xxxvii) Copy of Legal Proceeding Certificates in relation to the trademarks as Ex.PW1/37(OSR) (xxxviii)Printout of Best Global Brands 2017 Ranking as Ex.PW1/38 (xxxix)Printout of Best Global Brands 2019 Ranking as Ex.PW1/39 (xl) Copy of C.A Certificate verifying revenue, advertising and publicity expenses of plaintiff no.1 for the last 5 years as Ex.PW1/40(OSR) Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 (xli) Printout of plaintiffs' business activities which highlight their dealing in LEVEL U and UFLEX headphones as Ex.PW1/41 (xlii)Copy of Investigation Report dated 10.12.2019 as Ex.PW1/42(OSR) (xliii) Local Commissioner's Report as Ex.PW1/43 (xliv)Certificate u/s.65-B of Indian Evidence Act, 1872 as Ex.PW1/44
25. PW-1 also deposed that Plaintiffs have also won accolades for their corporate initiatives as well as their product innovations and the overall Revenue Advertising and Publicity expenses of Plaintiff No.1 for the last 5 years is as follows:-
Financial Year Revenue Advertising & Sales
(INR Million) Promotion Expenses
(INR Million)
2018-19 706277 30,940
2017-18 593709 37,491
2016-17 545313 29,528
2015-16 463788 21,585
2014-15 388681 21,220
26. The CA Certificate verifying the aforesaid facts is Ex.PW-1/40.
27. PW-1 further deposed that in November, 2019, the Plaintiffs became aware of the fact that certain shop owners were advertising, offering for sale and selling counterfeit copies of "SAMSUNG" 'LEVEL U' and 'UFLEX' models from their shops located in Karol Bagh Market, Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 Delhi. He also deposed that immediately upon obtaining knowledge of such illegal activities being carried out in Karol Bagh market, Delhi, the Plaintiffs, through an independent investigative agency, conducted a ground investigation/market survey with respect to the counterfeit headsets (models LEVEL U and UFLEX) being illegally sold under the brand name "SAMSUNG" in Karol Bagh market of Delhi. He further deposed that the original models of the 'LEVEL U' and 'UFLEX' model headsets sell in the market for around Rs.2,999/- and Rs.3,799/- respectively, the counterfeit copies of the same were being sold in the region between Rs.500/- to Rs.1,000/- and that the Defendants offered for sale, the said counterfeit products on 'no exchange' and 'no warranty' basis. The documents elucidating Plaintiff's business activities which highlight their dealing in 'LEVEL U' and 'UFLEX' headsets are exhibited as Ex.PW-1/41.
28. The investigation report dated 10.12.2019 is exhibited as Ex.PW- 1/42.
29. PW-1 further deposed that post receipt of the investigation report, the Plaintiffs also carried out a physical verification of the counterfeit products being sold by the Defendants on the sample purchases made by the investigator and provided to the Plaintiffs and that the Plaintiffs undertook their investigation with the support of their technical experts Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 and concluded that all the products were counterfeit since it was evident that, among others, the products were much lighter in weight and with lesser strength as compared to their respective originals. The details of the counterfeit products seized by the learned Local Commissioner forms part of his report, which is Ex.PW-1/43.
30. The certificate under Section 65B of the Indian Evidence Act, 1872 is exhibited as Ex.PW-1/44.
31. PW-1 further deposed that the Defendant's act of selling, supplying, distributing and/or offering for sale, counterfeit "SAMSUNG" branded LEVEL U and UFLEX headsets clearly amounts to passing off the said products as the Plaintiff's genuine "SAMSUNG" branded products since :-
- The Defendants are using the trademark "SAMSUNG"
owned by the Plaintiffs in the exact stylized manner and
- The counterfeit "SAMSUNG" branded LEVEL U and UFLEX headsets are being sold as being those manufactured by the Plaintiffs herein and the acts of the Defendants apart from causing gross misrepresentation also serve to dilute and tarnish the Plaintiff's well-known trade mark "SAMSUNG".
32. It is further contended that since the Defendant's infringing and illegal activities have caused immense loss to the reputation and Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 goodwill to the Plaintiffs, the Plaintiffs are entitled to exemplary/punitive damages to the tune of notional value of Rs.5 lacs.
33. I have heard detailed arguments advanced by learned counsel for the Plaintiffs and gone through the evidence on record. I have also gone through the case law cited by counsel for the Plaintiffs in the course of arguments. The testimony of the Plaintiff's witness remained unrebutted since the Defendants chose not to appear and contest the matter. There is thus no doubt to disbelieve the unrebutted testimony of PW-1.
34. From the material on record, it is apparent that the act of Defendants No.3, 4, 6 & 7 of selling, supplying, distributing and/or offering for sale, counterfeit "SAMSUNG" branded 'LEVEL U' and 'UFLEX' headsets clearly amounts to passing off the said products as the Plaintiff's genuine "SAMSUNG" branded products owned by the Plaintiffs in the exact style and manner and counterfeit "SAMSUNG" branded 'LEVEL U' and 'UFLEX' headsets as being those manufactured by the Plaintiffs and the acts of the Defendants apart from causing gross misrepresentation also serve to dilute and tarnish the Plaintiff's well known trademark "SAMSUNG" beside undermining the reputation and goodwill of the Plaintiffs in the market.
35. I also find myself in agreement with the submissions of learned counsel for the Plaintiffs that the sale of counterfeit 'LEVEL U' and Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 'UFLEX' headsets by the Defendants No.3, 4, 6 & 7 bearing the suit trade mark belonging to the Plaintiff, without the authorization from the Plaintiff amounts to infringement under Section 29(1) read with Section 29(6) of the Trade Marks Act. Similar observation was made by the Hon'ble High Court in the case titled as 'Philip Morris Products vs. Sameer & Ors.' (2014) SCC Online Del 1077, wherein it has been observed in para-34 as under:-
"34. Counterfeits, which are not the genuine products manufactured by the plaintiffs/affiliates, but are sold by the said defendants under the suit trademarks as plaintiffs' original products, indeed infringe plaintiffs' rights in the suit trademarks under section 29 of the Act."
36. By using Plaintiff's well-known trademark 'SAMSUNG' , without obtaining the consent of Plaintiff (the registered proprietor of the suit trade mark), the above named Defendants are thus wrongfully benefiting from the goodwill maintained by the Plaintiffs in the suit trade mark besides passing off the business and counterfeit goods as those of the Plaintiffs and thereby deceiving the consumers by selling counterfeit and poor-quality 'LEVEL U' and 'UFLEX' headsets under the garb of the Plaintiff's well known trade mark.
37. In the light of the above discussion, the Plaintiffs, in my opinion, are entitled to decree of permanent injunction, as prayed. Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020
38. Accordingly, a decree of permanent injunction is hereby passed in favour of the Plaintiffs and against the Defendants No.3,4,6, & 7 restraining them, their associates, partners, proprietors, servants, agents, legal heirs, affiliates, subsidiaries, licensees and agents and all other in active concert or participation with them from selling, offering for sale, importing, advertising or from using in any manner whatsoever, directly or indirectly dealing in any products or services under the Plaintiff's registered trademark/trade name "SAMSUNG" and/or any other mark/logo or device, which is identical or deceptively similar thereto by itself or in conjunction with any other word in relation to the goods, services or a trade name or part of a trade name in any manner whatsoever, on the counterfeit 'LEVEL U' and 'UFLEX' models headsets and from passing off the Plaintiff's trademark/trade name 'LEVEL U' and 'UFLEX', in any manner, whatsoever.
39. Further, a decree of permanent injunction is also passed restraining the Defendants No.3,4, 6 & 7, their associates, partners, directors, principal officers, proprietors, servants, agents, legal heirs and all others in active concert or participation with them or any other person, from passing off the Plaintiffs' trademark/trade name 'LEVEL U' and 'UFLEX' or any other mark, identical/deceptively similar thereto, using it by itself or in conjunction with any other word in relation to the goods, Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 services or trade name or part of a trade name or in any other manner whatsoever.
40. The Plaintiffs are also entitled to the relief of delivery up to Plaintiff's attorneys or representatives by the Defendants No.3, 4,6 & 7 or for destruction of all infringing products, labels, stickers, business cards, prints and packages in their possession or under their control, bearing the mark "SAMSUNG" or other imitation of the Plaintiff's registered trademark "SAMSUNG" on the counterfeit 'LEVEL U' and 'UFLEX' model headsets. The order of the superdari in respect of the products seized by the Local Commissioner is accordingly cancelled.
41. Further, the relief sought in paras (c) and (d) of the prayer clause of the Plaint cannot be granted for want of any evidence showing import of counterfeit 'LEVEL U' and 'UFLEX' model headsets by the Defendants. The said fact was not disputed by learned counsel for the Plaintiffs during the course of arguments and accordingly the said reliefs were also not pressed.
42. Insofar as the relief for rendition of accounts is concerned, since the Defendants No.3, 4, 6 & 7 chose to stay away from the proceedings, the said relief also cannot be granted, as prayed.
43. However, the Plaintiffs has also prayed for a decree of damages for a sum of Rs.5 lacs towards loss of sales, reputation and goodwill of Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 the Plaintiff's trademarks. Reliance has also been placed upon the following judgments in support of his submissions by learned counsel for the Plaintiff:-
i) Philip Morris Products vs. Sameer & Ors. (2014) SCC Online Del 1077;
ii) Hero Honda Motors Ltd. vs. Shree Assuramji Scooters, 125 (2005) DLT 504 &
iii) Disney Enterprises Inc. vs. Mr.Rajesh Bharti & Ors., 2013 (54) PTC 372 (Del.)
44. I have considered the arguments advanced by learned counsel for the Plaintiff with regard to the relief of damages and have also gone through the judgments relied upon by learned counsel for the Plaintiff in support of his submissions.
45. In a recent ruling of Hon'ble High Court of Delhi in case titled as Retail Royalty Company and Another vs. Nirbhay Marg News Broadcast Private Limited, 2023 SCC OnLine Del 2439, the Hon'ble High Court relied upon the case of Hindustan Lever Limited vs. Satish Kumar, 2012 SCC OnLine Del 1378 and observed as under:-
"Insofar as the relief of damages as sought in prayer clauses 66 (k) and (l) is concerned, reference may be made to the judgment in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 "23. One of the reasons for granting relief of punitive damages is that despite of service of summons/notice, the defendant had chosen not to appear before the court.
It shows that the defendant is aware of the illegal activities otherwise, he ought to have attended the proceedings and give justification for the said illegal acts. Since, the defendant has maintained silence, therefore, the guilt of the defendant speaks for itself and the court, under these circumstances, feels that in order to avoid future infringement, relief of punitive damages is to be granted in favour of the Plaintiff."
46. Relying on the observations in the aforesaid case, the Hon'ble High Court of Delhi in the case Retail Royalty Company & Anr. (Supra), awarded damages to the tune of Rs. 3 lacs to the Plaintiffs therein while observing that the Defendant has blatantly infringed the trademark of the Plaintiffs and also failed to appear before the said court.
47. Keeping in view the said rulings of the Hon'ble Superior Courts and also in view of the fact that the Defendant No.3,4,6 & 7 chose not to appear before the court and infringed the trademark of the Plaintiffs, the Plaintiffs, in my opinion, are entitled to damages from the said Defendants. However, having regard to the fact that no recovery of any infringed products was made from the possession of Defendant No.3 M/s Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 Guru Nanak Devi Ji, as per the report of the Learned Local Commissioner, no damages are being awarded against Defendant No.3.
48. Further, keeping in view the number of infringed products recovered from the premises of Defendant No. 4 M/s Haafiz Enterprises, Defendant No.6 M/s B.T. Gold and Defendant No.7 M/s S.S. Communication, I am of the opinion that interest of justice would be met if the said Defendants i.e. Defendant No.4 & 6 are directed to pay damages to the tune of Rs.25,000/- (Rupees Twenty Five Thousand) each to the Plaintiff(s) and Defendant No.7 is directed to pay damages to the tune of Rs.15,000/- (Rupees Fifteen Thousand) to the Plaintiff(s). Ordered accordingly. Costs of the suit, including the cost of pre-litigation mediation proceedings are also awarded in favour of the Plaintiff(s) and against the Defendant No.3,4,6 & 7.
49. Decree sheet be prepared accordingly. File be consigned to record room.
Announced in open (Kaveri Baweja)
court on 06.09.2023 District Judge (Commercial Court)-07
Central District, THC, Delhi
'ns'
Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 CS (Comm.) 167/2020 Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors.
06.09.2023
Present : None
The suit has already been decreed in respect of the Defendants No.1 & 2.
Defendant No.5 has been deleted from the array of parties. Remaining Defendants i.e. Defendants No.3,4,6 & 7 are ex parte.
Vide separate ex parte judgment announced today in open court, reliefs in prayer clauses (c), (d) and (f) are declined and the suit is decreed as follows:-
(i) A decree of permanent injunction is hereby passed in favour of the Plaintiffs and against the Defendants No.3,4,6, & 7 restraining them, their associates, partners, proprietors, servants, agents, legal heirs, affiliates, subsidiaries, licensees and agents and all other in active concert or participation with them from selling, offering for sale, importing, advertising or from using in any manner whatsoever, directly or indirectly dealing in any products or services under the Plaintiff's registered trademark/trade name "SAMSUNG" and/or any other mark/logo or device, which is identical or deceptively similar thereto by itself or in conjunction with any other word in relation to the goods, services or a trade name or part of a trade name in any manner whatsoever, on the counterfeit 'LEVEL U' and Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 'UFLEX' models headsets and from passing off the Plaintiff's trademark/trade name 'LEVEL U' and 'UFLEX', in any manner, whatsoever.
(ii) A decree of permanent injunction is also passed restraining the Defendants No.3,4, 6 & 7, their associates, partners, directors, principal officers, proprietors, servants, agents, legal heirs and all others in active concert or participation with them or any other person, from passing off the Plaintiffs' trademark/trade name 'LEVEL U' and 'UFLEX' or any other mark, identical/deceptively similar thereto, using it by itself or in conjunction with any other word in relation to the goods, services or trade name or part of a trade name or in any other manner whatsoever.
(iii) The Plaintiffs are also entitled to the relief of delivery up to Plaintiff's attorneys or representatives by the Defendants No.3, 4,6 & 7 or for destruction of all infringing products, labels, stickers, business cards, prints and packages in their possession or under their control, bearing the mark "SAMSUNG" or other imitation of the Plaintiff's registered trademark "SAMSUNG" on the counterfeit 'LEVEL U' and 'UFLEX' model headsets. The order of the superdari in respect of the products seized by the Local Commissioner is accordingly cancelled.
(iv) In view of the fact that the Defendant No.3,4,6 & 7 chose not to appear before the court and infringed the trademark of the Plaintiffs, the Plaintiffs, in my opinion, are entitled to damages from the said Defendants. However, having regard to the fact that no recovery of any infringed Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020 products was made from the possession of Defendant No.3 M/s Guru Nanak Devi Ji, as per the report of the Learned Local Commissioner, no damages are being awarded against Defendant No.3.
(v) Further, keeping in view the number of infringed products recovered from the premises of Defendant No. 4 M/s Haafiz Enterprises, Defendant No.6 M/s B.T. Gold and Defendant No.7 M/s S.S. Communication, I am of the opinion that interest of justice would be met if the said Defendants i.e. Defendant No.4 & 6 are directed to pay damages to the tune of Rs.25,000/- (Rupees Twenty Five Thousand) each to the Plaintiff(s) and Defendant No.7 is directed to pay damages to the tune of Rs.15,000/- (Rupees Fifteen Thousand) to the Plaintiff(s). Ordered accordingly.
Costs of the suit, including the cost of pre-litigation mediation proceedings are also awarded in favour of the Plaintiff(s) and against the Defendant No.3,4,6 & 7. Decree sheet be prepared accordingly. File be consigned to record room.
(Kaveri Baweja) District Judge (Commercial Court)-07 Central District, THC, Delhi 06.09.2023 'ns' Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Glass Campus & Ors. CS (Comm.) 167/2020