In the case of Samsung India Electronics Pvt. Ltd. & Anr. vs. M/s Arvind Enterprises & Ors., the Delhi District Court partly decreed a suit for a permanent injunction in favor of Samsung. Samsung filed the suit against several defendants for infringement, passing off, and counterfeiting of products bearing the “SAMSUNG” brand, specifically the ‘LEVEL U’ and ‘UFLEX’ model headsets.
Samsung India Electronics Private Limited, Plaintiff 1, is a wholly-owned subsidiary of the Korean tech giant, Samsung Electronics Company Ltd, Plaintiff 2 (hereinafter collectively referred to as “Samsung”). Samsung Electronics has been the registered proprietor of the trademark “SAMSUNG”, since 1969. Through a trademark License and Registered User Agreement, Samsung Electronics licensed the use of the trademark “SAMSUNG” in India to Samsung India.
In November 2019, Samsung discovered that certain shop owners at Nehru Place Market, New Delhi were advertising and selling counterfeit copies of Samsung’s LEVEL U and UFLEX models headsets under its brand name “SAMSUNG”. A private investigation identified 5 parties who were involved in selling and circulating these counterfeit products without authorization. The mentioned counterfeit goods were being sold at significantly lower prices, with deviations in packaging and labeling, and without proper invoices or bills.
Aggrieved by this unauthorized use, Samsung requested the Delhi District Court to appoint a commissioner who could ascertain the alleged acts of infringement and passing off. Thereby, two Local Commissioners were appointed by the Court to visit the premises identified by Samsung. The court-appointed commissioners confirmed the presence of counterfeit goods during raids on the defendants’ premises, corroborating Samsung’s claims.
Summons were issued to 3 Defendants – (1) M/s AB Infotech (Arvind Enterprises), (2) M/s Communication Point (John Doe) and (5) M/s KG Communication. The defendants did not participate in the proceedings and were thus deemed ex-parte.
Samsung further argued that the unauthorized use of stickers bearing its registered trademark “SAMSUNG” and the sale of counterfeit ‘LEVEL U’ and ‘UFLEX’ headsets, constituted infringement and passing off its goods. Additionally, the import of these counterfeit products violated the Customs Act, 1962.
The Court observed from the material available on record that the defendants no. 1, 2 and 5 were selling, supplying, distributing and/or offering for sale, counterfeit “SAMSUNG” branded ‘LEVEL U’ and ‘UFLEX’ headsets clearly amounting to passing off. Apart from causing gross misrepresentation, the defendants’ actions served to dilute and tarnish the brand value of ‘SAMSUNG’ while also undermining the reputation and goodwill of Samsung in the market.
In view of the above, the Court issued a permanent injunction against the defendants, restraining them from further infringement and ordered the destruction of counterfeit products. Samsung was also awarded litigation costs amounting to ₹1,75,000, but punitive damages of ₹5,00,000 were denied due to lack of repeated infringement evidence.
Citation: Samsung India Electronics Pvt. Ltd. & Anr. vs M/s Arvind Enterprises & Ors., Delhi District Court, 17th August, 2024 [CS (COMM.) No. 70/2020] Available on: https://indiankanoon.org/doc/48686894/
Authored by Benita Alphonsa Basil, Associate, Trademark and Copyrights
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