Samsung Electronics Company ... vs Mr. Akhilesh Tiwari & Ors.
2018 Latest Caselaw 5103 Del

14
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*        IN THE HIGH COURT OF DELHI AT NEW DELHI

+        CS(COMM) 147/2017

         SAMSUNG ELECTRONICS
         COMPANY LIMITED & ANR.             .....Plaintiffs
                     Through: Mr. Sudeep Chatterjee, Advocate with
                              Mr. SonalChhablani and
                               Ms. Aishwariya, Advocates.


                            Versus


         MR. AKHILESH TIWARI & ORS.           ..... Defendants
                       Through: Ms. Neelam Pathak, Advocate for
                                defendants No.42 and 45.


%                                      Date of Decision:28thAugust, 2018.

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                                  JUDGMENT

MANMOHAN, J (Oral)

1. Present suit has been filed against the defendants for permanent injunction, restraining use of trademark 'SAMSUNG'/ 'GALAXY' for counterfeit mobile phones & mobile accessories, resulting in violation & infringement of rights in the trademark 'SAMSUNG', copyright, passing off, unfair competition, dilution, rendition of accounts, delivery up and recovery of damages, etc. The prayer clause in the present suit is reproduced hereinbelow:-

"87. The Plaintiffs therefore, respectfully prays that the following reliefs be granted in its favour:-

A) A decree of declaration that the trade mark/logo SAMSUNG and

its oval device of the Plaintiffs are well-known trademarks;

B) A decree of permanent injunction restraining the Defendants No.1 to 90, their principal officers, family members, servants, agents, dealers, distributors, importers, retailers and anyone acting for and on its behalf from manufacturing or getting manufactured, importing, selling, offering for sale or advertising in any manner any product including mobile phones, handsets, hand held devices, tablets, smartphones, dongles, etc. and accessories thereof bearing the mark/label/logo/writing style/packaging "SAMSUNG", "GALAXY" and sub-brands thereof and/or any other mark/logo/label/packaging which is identical or deceptively similar to the Plaintiffs' trade marks/sub-brands and/or using the Plaintiff's marks/labels /logos/writing style/packaging as part of any sub-brands, product descriptions etc., either in print or electronic form which would result in violation of Plaintiffs' statutory and common law rights in the said mark;

C) A decree of permanent injunction directing the Defendant No.91 to assist the Plaintiffs and Custom authorities or any other authority as may be directed by this Hon'ble Court to provide information to ascertain the illegality in the use of the IMEI numbers on counterfeit products including mobile handsets, tablets, phablets etc.,

D) A decree of permanent injunction directing the Defendant No.92 to 97 to issue appropriate instructions directing the customs authorities at every port including airports in India not to allow the import of counterfeit mobiles, handsets, devices, dongles, tablets etc. and accessories thereof bearing the Plaintiff's marks/sub-brands including the SAMSUNG GALAXY Series/ SMTEL CALAYX Note or any other identical or deceptively

similar brands/marks that are not imported by the Plaintiffs and further directing the Customs Authorities to intimate the Plaintiffs as and when any consignment of mobile phones, handsets, hand held devices, tablets, smartphones, dongles, etc. and accessories thereof bearing the marks SAMSUNG, sub-brands including the GALAXY Series/SMTEL CALAYX Note or any other identical or deceptively similar brand/mark are imported and to decide the objections, if any, raised by the Plaintiffs thereto as per the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.

E) In respect of Defendants Nos.98 to 110, Local Commissioners be appointed by this Hon'ble Court and be empowered to identify with the assistance of the Plaintiffs, such manufacturers/wholesale traders/retailers/importers who are manufacturing/selling/importing counterfeit SAMSUNG, sub- brands including the GALAXY Series such as mobile phones, handsets, hand held devices, tablets, smartphones, dongles, etc. and accessories thereof, in Delhi and Mumbai. On the basis of the report of the Local Commissioners, such Defendants, as identified by the Local Commissioners, in respect of whom the seizure has been effected, be served with the complete set of documents and pleadings filed before this Hon'ble Court along with the summons bearing only the heading "M/s ________" Such defendants may be allowed to defend the present suit just as any other named Defendants in accordance with law;

F) A decree of permanent injunction restraining the Defendants, their principal officers, family members, servants, agents, dealers, distributors, licensees and anyone acting for and on their behalf from using the oval device of SAMSUNG or any other mark/label/device which is identical/deceptively similar to the

Plaintiffs' oval device of SAMSUNG including the software which would result in infringement of Plaintiffs' copyright.

G) A decree of delivery up of all the infringing and counterfeit material of SAMSUNG including Galaxy series and its sub-brands such as mobile phones, handsets, handheld devices, tablets, smartphones, dongles, etc. and accessories thereof and also of all the infringing material having packaging that is an imitation of SAMSUNG packaging or bearing the SAMSUNG including Galaxy series mark/name/logo/label/packaging, including foils, packets, rolls, printing drums, dyes, posters, publicity material, advertisements, brochures, sign boards, bags, pouches newsletters, hoardings etc., for the purposes of destruction and/or erasure;

H) Pass a decree of damages and/or rendition of accounts to the tune of Rs.25,00,000/- payable by Defendants Nos.1 to 90 and also the unnamed Defendants as and when they are identified. The Plaintiffs undertakes to file additional court fee if on appropriate rendition of accounts by the Defendants a higher amount is found to be due and is directed by this Hon'ble Court.

I) Costs be awarded in favour of the Plaintiffs.

J) Any such further and other order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."

2. On 20th February 2015, this Court granted an ex parte ad interim injunction in favour of the plaintiffs and against the defendants. The relevant portion of the said order is reproduced hereinbelow:-

"Accordingly, till the next date of hearing, the defendants No.1 to 90, their proprietors, partners, servants, agents, representatives, dealers, distributors, importers, retailers, employees or any one acting for or on their behalf, are restrained from directly or indirectly selling, offering for sale or advertising in any manner, the counterfeit products, including mobile phones, tablets, hand-held devices, smart phones, dongles and their accessories bearing the mark/label/logo/packaging/tradedress "SAMSUNG"/"GALAXY" or any other mark/logo/label/packaging/trade dress, which is identical

or deceptively similar to the plaintiffs' registered trademark/sub- brand "SAMSUNG"/ "GALAXY", with or without its oval device

.

3. Vide order dated 03rd April, 2018, the defendant nos.1, 3 to18,21 to 32,34 to 38,40,41,43,44,46,47,50 to 65,68 to 91, 94 and 95were proceeded ex-parte and defendant nos. 92 to 97 were deleted. Today, only learned counsel for defendants No.42 and 45 is present. Consequently, other than defendants No.42 and 45, all other defendants are proceeded ex parte.

4. Today, learned counsel for plaintiffs states that he has instructions only to press the prayers (B) and (F)of para 87 of the plaint. The statement made by learned counsel for plaintiffs is accepted by this Court and plaintiffs are held bound by the same.

5. Learned counsel for the plaintiffs states that in view of the judgment of this Court in Satya Infrastructure Ltd. &Ors. Vs. Satya Infra & Estates Pvt. Ltd., the present suit should be decreed qua the reliefs in paragraph 87(B) and (F) of the plaint against all defendants except defendant nos.42 and 45. The relevant portion of the judgment in Satya Infrastructure Ltd. &Ors. (Supra) relied upon by learned counsel for the plaintiffs is reproduced hereinbelow:-

"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs

and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."

6. The contentions and submissions advanced by the learned counsel for the plaintiffs are as under:-

(i) The Plaintiffs are a part of the Samsung group of companies engaged in the business of manufacturing and trading in telecommunication devices, such as mobile phones, tablets, hand- held devices, smart phones, GSM and CDMA mobile phones, TVs, DVD players TVs, DVD players, home theater systems, etc. The plaintiffs' global market share in mobile phones is stated to be almost 25% and their market share in the telecom products market in India is 31.5%. The plaintiffs claim to have more than 285 worldwide operations in 67 countries and are employing 425,000 employees worldwide.

(ii) the word SAMSUNG/GALAXY forms a part of the Plaintiffs' trade name and that of their group of companies and they have secured statutory trademark registrations in respect of the said marks SAMSUNG/GALAXY and the oval device in various classes in India,

(iii) The said oval device represented in a stylized manner is stated to be an artistic work under the Copyright Act, 1957 and the plaintiffs' claim to be the owners thereof.

(iv) the plaintiffs are the registered proprietors of the mark, SAMSUNG/GALAXY and the device mark, and/or their derivatives in several countries including India. The net sales figure of the

plaintiffs for the year 2013-14, was US$268.8 billion and their net income was US$ 26.2 billion.

(v) The plaintiffs in the month of January, 2015, conducted an investigations in various markets in Delhi and Mumbai and learnt that the defendants were manufacturing and getting manufactured counterfeit products and affixing the mark SAMSUNG and the oval device on them.The Defendants are manufacturing and/or selling counterfeit mobile phones and mobile accessories and are also copying the softwares of the plaintiffs'.

(vi) the International Mobile Station Equipment Identity or IMEI number, that is a unique number assigned to identify a valid device and is used in routine by the government security agencies and government authorities to verify the legitimacy of handsets being imported into a country, have been cloned by the defendants on the counterfeit mobile handsets thus jeopardizing national security due to multiple registrations of IMEI numbers, across different mobile operators. The defendants have also copied the mobile software of the plaintiffs wherein they have exclusive proprietary rights.

(vii) Thedefendants have adopted an identical trademark/logo and packaging with a view to deceive the consumers and take advantage of the goodwill and reputation earned by the plaintiffs

7. In the opinion of this Court, the aforementioned defendants have no real prospect of defending the claim as they have been proceeded ex parte. Further, the plaintiffs are the registered user of the trade marks in question.

8. In view of the above, the suit is decreed in favour of the plaintiffs and against the aforementioned defendants in terms of paragraph 87(B) and (F) of

the plaint and the defendants are directed to destroy the goods seized by the Local Commissioners and handed over to them on superdari in the presence of an authorised representative of the plaintiff. Registry is directed to prepare a decree sheet accordingly.

9. Consequently, the present suit stand disposed of qua all defendants except the defendant nos. 42 and 45.

10. List the mater on 31st August, 2018. The defendant nos. 42 and 45 are directed to be personally present in Court on the next date of hearing.

MANMOHAN, J AUGUST 28, 2018 sp/js