Delhi High Court: A Single Judge Bench of Amit Bansal, J.* granted permanent injunction in favour of SanDisk LLC for the infringement of its trade marks ‘SanDisk and ‘Cruzer Blade’. The Court also opined that this was not a case of innocent adoption and therefore, the plaintiffs were entitled to damages of Rs. 5,00,000 which were to be recovered from the defendant.
Plaintiff 1, SanDisk LLC was an entity existing under the laws of the State of Delaware, USA and was a registered proprietor of the trade marks SanDisk (logo), the red frame logo, SanDisk Ultra and Cruzer Blade. Plaintiff 2, SanDisk India Device Design, a sister concern of the Plaintiff 1 was the registered user of the SanDisk trade marks. The plaintiffs design, develop and manufacture data storage solutions in a range of form factors using flash memory, controller, and firmware technologies. The plaintiffs were the registered proprietors of the trade mark SanDisk and SanDisk formative marks in Class 9 of the Trade Marks Act, 1999. Plaintiff 1 sold its memory cards in unique and distinct packaging. The packaging of the plaintiffs qualified as an “original artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff was entitled to the exclusive rights in the same. The Plaintiff 1 had been selling its products in the Indian market since 2005.
In 2018, the plaintiffs discovered that some unauthorized third parties were marketing and selling counterfeit micro SDHC cards and USB flash drives bearing the identical trade marks and packaging as the plaintiffs’ products marketed and sold under the trademarks ‘SanDisk’ and ‘Cruzer Blade’. The plaintiffs availed the services of an investigator to ascertain the business activities of the defendant. The investigator purchased samples of the counterfeit products bearing the mark ‘SanDisk’ and ‘Cruzer Blade’ from the defendant.
Analysis, Law, and Decision
This Court in its earlier Order dated 5-7-2018 granted an ex parte interim injunction in favour of the plaintiffs restraining the defendant from dealing in any product or packaging bearing the plaintiffs’ registered trade marks SanDisk, the red frame logo and Cruzer Blade. The Court opined that the plaintiffs had been able to prove that they were the registered proprietors of the SanDisk trade marks and the said registrations were valid and subsisting. The Court further opined that “from the comparison of the plaintiffs and defendant’s marks, it was clear that the defendant had made use of identical trade marks and packaging in relation to counterfeit goods. The report of the Local Commissioner, who was appointed by the Court to seize the infringing products, also showed that the defendant was indulging in marketing and sales of counterfeit products, which had the identical marks as that of the plaintiffs.
The Court also opined that “the marketing and selling of counterfeit products by the defendant not only amounted to infringing of the registered ‘SanDisk’ trade marks and copyrights of the plaintiffs but also to passing off the goods of the defendant as that of the plaintiffs. The defendant had taken unfair advantage of the reputation and goodwill of the plaintiffs’ marks and had also deceived unwary consumers of its association with the plaintiffs. Such acts of the defendant would also lead to dilution of the plaintiffs’ marks”.
The Court held that the various registrations and the long usage of the SanDisk trade marks by the plaintiffs and the goodwill vesting in the SanDisk trade marks entitled the plaintiffs to a grant of permanent injunction. The Court further directed that the goods seized by the Local Commissioner kept with the defendant were to be handed to the plaintiff’s representatives for destruction.
The Court noted that the Local Commissioner found a total number of 253 infringing and counterfeit goods at the premises of the defendant, which were inventoried by him and seized and handed over on supardari to the defendant. Further, the sale invoices filed by the defendant since 2016 reflected total sales of more than Rs. 29,00,000. Thus, the Court opined that this was not a case of innocent adoption and therefore, the plaintiffs were entitled to damages of Rs. 5,00,000 which were to be recovered from the defendant.
[Sandisk LLC v. Excel Marketing, 2023 SCC OnLine Del 1707, decided on 17-3-2023]
Advocates who appeared in this case :
For the Plaintiffs: Advocate Prithvi Singh;
Advocate Devyani Nath;
Advocate Coral Shah.
*Judgment authored by: Justice Amit Bansal.