AI Structured Summary
Not yet generated for this judgment
Judgment
Manmohan, J
Present suit has been filed for permanent injunction restraining violation and infringement of rights in the trademark SAMSUNG, copyright, passing
off, unfair competition, dilution, rendition of accounts, damages etc. The prayer clause in the suit is reproduced hereinbelow:-
“71. 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 36, their principal officers, family members, servants, agents,
importers, dealers, distributors, retailers and anyone acting for and on its behalf from manufacturing, selling, importing, offering for sale
or advertising in any manner any product bearing the mark/label/logo/writing style/packaging “SAMSUNG†and/or any other
mark/logo/label/packaging which is identical or deceptively similar to the Plaintiffs†trade mark SAMSUNG and its oval device
 and/or using the mark/label/logo/writing style/packaging of SAMSUNG as part of any sub-brands, product descriptions etc.,
either in print or electronic form which would result in violation and infringement of Plaintiffs†statutory and common law rights in the
said mark;
C) In respect of Defendants Nos. 37 to 47, Local Commissioners be appointed by this Court and be empowered to identify with the
assistance of the Plaintiffs, such manufacturers/wholesale traders/retailers who are manufacturing and selling goods infringing the
Plaintiffs rights in its well-known and registered trademark SAMSUNG in Delhi, Mumbai, Ahmedabad and Surat. 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 Honâ€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.
D) A decree of permanent injunction restraining the Defendants, their principal officers, family members, servants, agents, dealers,
importers, distributors, licensees, importers 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 and its writing style and manner
which would result in infringement of Plaintiffs†copyright.
E) A decree of delivery up of all the infringing goods such as televisions, DVD players, DVD lenses, mixers, speakers, gas stoves, t-shirts,
sewing machines, and material having packaging that is an imitation of SAMSUNG packaging or bearing the SAMSUNG
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.
F) Pass a decree of damages and/or rendition of accounts to the tune of Rs.25,00,000/- payable by Defendants Nos. 1 to 36 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 Honâ€ble Court.
G) Costs be awarded in favour of the Plaintiffs.
H) Any such further and other order(s) as this Honâ€ble Court may deem fit and proper in the facts and circumstances of the present
case.â€
At the outset, the learned counsel for the plaintiffs states that he wishes to press prayers ‘A’, ‘B’ and 'D' of the paragraph 71 of the
plaint.
He specifically gives up prayers 'E', 'F' and 'G' of the paragraph 71 of the plaint. He also states that prayer 'C' of the paragraph 71 of the plaint has
been rendered infructuous.
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 36, proprietors, partners, servants, agents, representatives, dealers,
distributors, importers, retailers, employees or any one acting on their behalf, are restrained from directly or indirectly manufacturing,
selling, importing, offering for sale or advertising in any manner, the infringing products, including TVs, DVD players, speakers, home
theater systems, microwaves, air conditioners, washing machines, sewing machines, gas stoves, etc., bearing the
mark/label/logo/packaging/trade dress, “SAMSUNG†or any other mark/logo/label/packaging/trade dress, which is identical or
deceptively similar to the plaintiffs†registered trademark “SAMSUNG†with or without its device  and
On 31st July, 2017, defendant Nos. 9, 19, 31, 32, 33, 36 and 37 to 47 were deleted from the array of parties and the present suit was decreed in
favour of the plaintiffs and against the defendant Nos. 2, 12, 13 and 17 in accordance with prayers ‘B’ and 'D' of the paragraph 71 of the plaint
pursuant to the statement/undertaking given by the them. Since the remaining defendants did not enter appearance despite service, they were
proceeded ex parte vide the aforesaid order.
Mr. Saikrishna Rajagopal, learned counsel for plaintiffs states that the plaintiffs form part of the SAMSUNG group of companies and the group's
core business sectors consist of electronics, finance, trade and services. He states that the plaintiffs are engaged in the business of manufacturing and
trading in telecommunication devices such as mobile phones, tablets, hand-held devices etc and are today the number one mobile phone
manufacturer/trader in the world.
Learned counsel for the plaintiff states that the plaintiff No. 1 is the registered proprietor of the mark SAMSUNG and the SAMSUNG formative
works including the oval device . He states that the said mark is registered in India since 1981 and the plaintiff No.1 vide license
agreement dated 8th July, 2003 has granted license to the plaintiff No. 2 to use the mark SAMSUNG in India.
He further states that the plaintiff No. 1 is the owner of the copyright in writing style and manner of SAMSUNG represented in the stylized manner
and artistic impression and  and the same is protected as artistic work under Section 2(c) and Section 41 of the
Copyright Act, 1957 read with the International Copyright Order, 1999.
Mr. Saikrishna states that plaintiff's trade mark SAMSUNG is a well known and famous mark worldwide owing to its quality products and the
plaintiffs' said mark has acquired a heightened degree of distinctiveness owing to the exclusive, extensive and continuous use of the mark both in India
as well as globally.
He states that the plaintiffs’ trade mark SAMSUNG fulfils all the requirements as stipulated under Section 11(6)(i) to (v) of the Trade Marks
Act, 1999. He further states that this Court has the power to declare a mark to be a well known mark. In support of his contention, he relies on
Sections 11(6)(v) and 11(8) of the Trade Marks Act, 1999.
He contends that in January-February, 2015, the plaintiffs conducted an investigation in various markets in Delhi, Mumbai, Ahmedabad and Surat
in order to ascertain the extent and the amount of infringing SAMSUNG goods available in the market and were shocked to comes across the
defendants’ goods such as sewing machines, gas stoves, rubber hose, mixers, helmets, t-shirts, mobile accessories, DVD players etc bearing the
plaintiffs’ trade mark SAMSUNG.
He states that the goods/products of the defendants are counterfeits of the plaintiffs’ goods and the acts of the defendants are deliberate and
calculated to consciously deceive the public into believing that the infringing goods originate from the plaintiffs.
Mr. Saikrishna in support of his contentions and submissions has relied upon the following documents:
a. Exhibit PW 1/2:- Copy of the certificate of incorporation of the plaintiff No. 2.
b. Exhibit PW 1/8 and Mark E :â€" Copy of the Registration certificates and online status for the trade mark SAMSUNG and its derivatives in India
as well as other jurisdictions.
c. Mark D:- Copy of the license agreement dated 8th July, 2003 granting license to the plaintiff No. 2 to use the mark SAMSUNG in India,
Bangladesh, Bhutan, Nepal and Sri Lanka.
d. Mark G:- Copy of the investigation report for counterfeit/infringing goods in various markets of Delhi, Mumbai, Ahmedabad and Surat.
Having perused the papers and having heard the learned counsel for plaintiff, this Court is of the view that the defendants’ impugned mark
SAMSUNG/  is identical to the plaintiffs’ registered mark SAMSUNG. Further, since the plaintiffs are the registered proprietors of
the trade mark SAMSUNG, Section 28 of the Trade Marks Act, 1999 confers exclusive rights upon the plaintiffs to use the said mark and the
defendants’ unauthorised use of the plaintiffs’ mark SAMSUNG in respect of identical goods amounts to infringement of the plaintiffs’
proprietary rights under Section 29(1) of the Trade Marks Act, 1999.
Recently, this court in the case of Exxon Mobil Corporation and Others Vs. Anser Pasha: CS(OS) 2032/2015, decided on 03rd July, 2017, had
culled out the relevant law pertaining to Section 29(4) of the Act. The same reads as under:-
“11. Coordinate Benches of this Court in Rolex SA Vs. Alex Jewellery Pvt. Ltd. & Ors., 2009 (41) PTC 284 (Del.) and Bloomberg Finance LP
Vs. Prafull Saklecha & Ors., 2013 (56) PTC 243 (Del.) while analysing Section 29(4) of the Act, 1999 have held as under:-
A. Rolex SA Vs. Alex Jewellery Pvt. Ltd. & Ors. (Supra):
The trademark ROLEX has been registered in favour of the plaintiff with respect to watches etc since much prior to the user claimed by
the defendants from 1995. If the plaintiff satisfies the test of Section 29(4)(c), the plaintiff even on the basis of its registrations other than
with respect to jewellery, would be entitled to maintain an action of infringement against defendants with respect to jewellery. The only
question to be determined at this prima facie stage is whether the registered trademark ROLEX of the plaintiff, in relation to watches, has a
reputation in India and the use of the mark by the defendants is without due cause and takes unfair advantage of and/or is detrimental to
the distinctive character or repute of the registered trademark.
xxx xxx xxx
This court, even prior to introduction of Section 29(4) in the 1999 Act had in Daimler Benz Aktiegesellschaft Vs Hybo Hindustan (1994)
14 PTC 287 in relation to another well known trademark “Benz†held that such names are different from other names â€" these are
names which have become household words â€" it was held that there would hardly be anyone conscious of automobiles who would not
recognize the name “Benz†used in connection with cars. The defendant in that case was restrained from using the name “Benzâ€
with reference to underwear. The Senior counsel for the plaintiff also relied upon (i) Hamdard National Foundation Vs Abdul Jalil
application for interim relief in suit No. 1240/2004 decided on 13th August, 2008 where use of name Hamdard in relation to processing and
marketing of rice was injuncted notwithstanding plaintiff till then not dealing in the same and diversity in the goods and considerable delay
in bringing the action. It was held that the consumer was likely to believe that the goods of defendant, though dissimilar, originate from the
plaintiff. (ii) General Motors Corpn Vs Yplon SA decided by the court of Justice of European Communities and Premier Brands UK Ltd Vs
Typhoon Europe Ltd Fleet Street Reports (2000) 767 on the aspect of deception and dilution respectively. iii) Order of Assistant Registrar of
Trade Marks, Singapore holding that watches have over the years evolved from their traditional function as being merely time keepers to
being distinguished as items of fashion/fashion accessories. iv) Cartier International B.V. Vs Choosy Corner (2003) 26 PTC 160 (Delhi)
where the mark cartier was held to have tremendous goodwill and reputation and use thereof in relation to different goods i.e., garments
was injuncted. v) Honda Motors Co Ltd Vs Charanjit Singh (2003) 26 PTC 1 (Del) where mark Honda was held to have a global goodwill
and reputation and use thereof in relation to pressure cooker was injuncted on the principles of passing off. and a number of other
judgments, which are discussed in judgments aforesaid and with which it is not necessary to burden this order.
B. Bloomberg Finance LP Vs. Prafull Saklecha & Ors. (Supra):
Section 29 (4) is also distinct from Section 29 (1) to (3) of the TM Act in another important aspect. The element of having to
demonstrate the likelihood of confusion is absent. Perhaps to balance out this element, the legislature has mandated the necessity of
showing that (a) the mark has a reputation in India (b) that the mark has a distinctive character (c) the use by the infringer is without due
cause. In other words, the legislative intent is to afford a stronger protection to a mark that has a reputation without the registered
proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an identical or similar mark in relation to
dissimilar goods and services. The words “detriment†in the context of the “distinctive character†of the mark brings in the concept
of “dilution†and “blurringâ€. In the context of “repute†they are also relatable to the concept of “tarnishment†and
“degradationâ€. The words “takes “unfair advantage†refers to “free-riding†on the goodwill attached to mark which enjoys
a reputation. The disjunctive “or†between the words “distinctive character†and “repute†is designedly inserted to cater to a
situation where a mark may not have a distinctive character and yet may have a reputation.
xxx xxx xxx
46.2 In the above background, the Court discussed Section 29(4) in the context of “dilution†and observed:
“(1) The ""likelihood of Confusion"" test which is the essential basis of Trademark law, is not incorporated in relation to infringement of
the kind Section 29(4) envisions. Section 29(1) - which talks of trademark infringement, generally, prescribes that the impugned mark
should be ""identical with, or deceptively similar to the registered trademark. Section 29 (2), (which deals with trademark infringement)
enacts that the impugned mark should be similar or identical with the registered mark, as to cause confusion in relation to similar goods.
The emphasis on similar goods is the recurring theme in each of the sub clauses ((a), (b) and (c)) and the identity/ similarity requirement
along with the similarity of goods are twin, conditions (established by the use of the conjunctive ""and""). However, Section 29 (4) posits
identity or similarity of the mark alone but, in relation to dissimilar goods.
(2) The object of the ""dilution"" form of infringement (under Section 29(4)) in effect, is a wider trademark protection without the concomitant
likelihood of confusion requirement, as it is in respect of dissimilar or unrelated products and services.
(3) The confusion requirements under Section 28 are different from those under Section 29 (4). Section 29 (4) does not refer to the need for
proving confusion anywhere in the relevant portions. Obviously the emphasis here is different.
(4) The plaintiff has to establish, under Section 29 (4) apart from the similarity of the two marks (or their identity) that his (or its) mark â€
(i) has a reputation in India;
(ii) the use of the mark without due cause
(iii) the use (amounts to) taking unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) Importantly, there is no presumption about trademark infringement, even if identity of the two marks is established, under Section 29 (4).
In contrast, Section 29 (3) read with Section 29 (2) (c) enact that if it is established that the impugned markâ€s identity with the registered
trade mark and the identity of the goods on services covered by such registered trade mark is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered trade mark, “the court shall presume that it is likely to cause
confusion on the part of the public.â€
The ratio of the decision in ITC Limited, relevant to the instant case is Section 29 (4) offers “a wider trademark protection without the
concomitant likelihood of confusion requirement, as it is in respect of dissimilar or unrelated products and services.......â€
This Court is further of the opinion that the adoption of the SAMSUNG mark as well as an identical logo by the defendants is dishonest and
amounts to passing off and misrepresentation as the consumers would be misled into buying the defendants’ infringing products believing them to
be originating from the plaintiffs.
The defendants’ false and unauthorised use and application of the marks identical to that of the plaintiffs’ registered mark SAMSUNG is
also bound to dilute the distinctive character of the mark SAMSUNG. The acts of the defendants are bound to result in tarnishment and blurring of the
distinctive link between the plaintiffs’ and their goods
In any event, as the averments in the plaint have not been rebutted by the contesting defendants nor did they bother to put forth their stand in spite
of ample opportunities given by this Court, they are deemed to have been admitted.
However, this Court is of the view that in order to ascertain the status of a well known mark in respect its trade mark, the appropriate recourse to
the plaintiffs would be to resort to the procedure prescribed under Rule 124 of the latest Trade Marks Rules, 2017 and file the requisite application
before the Registrar.
This Court is also of the view that since the defendants have not contested the present suit by leading evidence, the plaintiffs cannot circumvent
the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 with respect to determination of a trade mark as a well known mark. Had
the Defendants formally contested the Plaintiff’s contention, this court could have passed a reasoned and well-weighed order regarding the
maintainability of the plaintiffs claim that the mark SAMSUNG is well-known.
This Court clarifies that it has not evaluated the plaintiffs’ evidence with regard to the submission that the plaintiffs’ mark is a well known
mark. It is further clarified that no observation in this order will be treated as rejection of plaintiffs’ request for declaration as a well known mark.
Keeping in view the aforesaid facts, mandate of law and the persistent conduct of the defendants in selling products bearing the mark
SAMSUNG, the suit is decreed in terms of prayers ‘B’ and 'D' of the paragraph 71 of the plaint. The plaintiffs shall be entitled to costs
including monies spent on court-fees, Local Commissioner’s fees and other expenses etc. Registry is directed to prepare a decree sheet
accordingly.