$~OS-1 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: CS(COMM) 69/2017. versus CORAM: HON'BLE MR. JUSTICE JAYANT NATH

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1 $~OS-1 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: CS(COMM) 69/2017 SANDISK LLC Through versus... Plaintiff Mr.Prithvi Singh, Adv. MANISH VAGHELA & ORS. Through None.... Defendants CORAM: HON'BLE MR. JUSTICE JAYANT NATH JAYANT NATH, J.(ORAL) 1. The plaintiff has filed the present suit seeking permanent injunction restraining infringement of trademark, copyrights in the artistic work and passing off etc. against the defendants. Other connected relief are also sought. 2. The relevant facts of the present case are that the plaintiff company founded in 1988, is one of the world's largest dedicated providers of flash memory storage solutions under the house mark SANDISK and has been directly selling its products in the Indian market since The said plaintiff was previously known as SanDisk Corporation and pursuant to a name change in the month of July 2016, is presently known as SanDisk LLC. The plaintiff is a Fortune 500 and S&P 500 company which designs, develops and manufactures data storage solutions in a range of form factors CS(COMM) 69/2017 Page 1 of 6

2 using the flash memory, controller and firmware technologies. The plaintiff is the registered user of the trademarks SanDisk, and the Red Frame Logo belonging to the plaintiff. 3. It is stated in the plaint that the plaintiff s pioneering flash memory technologies, which are marketed directly to retail consumers and enterprises as well as to other equipment makers, are integrated into and/or used in a wide range of consumer electronic devices i.e. mobile phones, tablets, digital cameras etc. It is further stated that approximately 3,00,000 storefronts worldwide stock and sell the plaintiffs products and the annual revenue of the plaintiff in the year 2015 was over USD 5 billion. The plaintiff also spends hundreds of millions of dollars in Research and Development of its products and on advertising. 4. It is stated in the plaint that the plaintiff possesses both common law trade mark rights as well as trade mark registrations for the mark SanDisk in more than 150 countries worldwide. The said trademark has been in extensive, continuous and uninterrupted use globally since 1995 and in India since The plaintiff sells its products in India through its country wide network of official national distributors who have been authorised by the plaintiff to distribute its products. In addition to the worldwide trademark registrations, the plaintiff is also the registered proprietor of both a variety of word marks and device marks in India including the and the Red Frame logo, since 2003 under Class 9 of the Trade Marks Act, These trademarks are valid and subsisting. 5. It is averred in the plaint that the plaintiff sells memory cards with a unique packaging. The key elements of the product packaging are described hereinbelow:- CS(COMM) 69/2017 Page 2 of 6

3 a. Red product packaging with white lettering. b. A Red Frame Logo which described the capacity of the memory card on the top right corner. c. The logo in a unique font in white lettering prominently at the bottom. 6. Learned counsel for the plaintiff states that in December, 2016, upon inquiry, an investigator found that the defendant was dealing in loose microsdhc cards on the E-commerce portal being sold by an entity known as mmshop. The same memory cards were also being made available for sale on which appeared to be identical products using the trademark Platina but in a packaging identical to the plaintiff s packaging. In order to confirm the same, the investigator of the plaintiff placed an order for two memory cards. The memory cards were delivered on or about 4 th December, Upon enquiry, defendant no.2 confirmed that he had a current stock of about memory cards and was primarily selling them online. A photographic comparison of the original SanDisk products of the plaintiffs and the counterfeit products of the defendant is reproduced hereinbelow: Plaintiff s memory card Defendant s memory card CS(COMM) 69/2017 Page 3 of 6

4 7. The striking similarities between the product packaging of the plaintiff and the defendants are as follows: (i) The defendants have copied the entire trade dress of the plaintiff s product packaging including the get up and the colour scheme. (ii) Both the products use the red and white colour combination with the brand name written and the bottom in white letters on a red background. (iii) The text dependable memory card for your favourite photos, videos, apps and games. Easily transfer files between phone tablet and CS(COMM) 69/2017 Page 4 of 6

5 (iv) camera has been copied in entirety from the product packaging of the plaintiff by the defendants. The Defendants have also used the "Red Frame logo" which is a registered trademark of the Plaintiff on their product packaging. The Defendants have further described the storage capacity of the memory card within the "Red Frame" logo which is a feature of the product packaging of the Plaintiff. 8. Learned counsel for the plaintiffs further states that defendant has infringed upon the statutory rights of the plaintiffs by copying each and every element of the plaintiffs product and/or product packaging, with the sole intent of duping unwary customers by selling its products and to ride on the plaintiffs reputation and goodwill. 9. It is pleaded that the plaintiff is the owner of the copyright in the artistic work in its SANDISK logo as well as the Red Frame Logo. The plaintiff is also the owner of the copyright in the artistic work comprised in SANDISK s unique packaging style, which qualifies as an original artistic works within the meaning of Section 2(c) of the Copyright Act, It is further pleaded that plaintiff s unique red and white rectangular packaging comprises of a Red Frame Logo which describes the capacity of the memory card, on the top right corner, words MicroSDHC Card or SD Card written on the top left corner in dark red coloured bands, depending upon the capacity of the memory card. 10. Pursuant to the order passed by this court, a local commissioner was appointed on The local commissioner has filed his report dated About 800 products were seized which had infringed the trade CS(COMM) 69/2017 Page 5 of 6

6 dress. Mr.Vishal Vig, the constituted attorney of the plaintiff has filed his affidavit by way of evidence. He has on oath stated that the total loss to the plaintiff is Rs.2,72,500/- on account of the recovery. It is stated that based on this calculation, the actual loss of sale of goods would be for a period of 12 weeks at Rs.32,70,000/ It is quite clear from the perusal of the facts that defendants are guilty of violating the copyrights in the artistic work of the plaintiff and of its products. Regarding damages, the witness of the plaintiff Mr.Vishal Vig has stated that there is a loss of sale of goods to the plaintiff to the tune of Rs.32,70,000/- for a period of 12 weeks. Keeping in view the above computation, I assess the loss of profit over time at Rs.10 lacs. 12. Accordingly, in view of the above, a decree is passed in favour of the plaintiff and against the defendant in terms of prayer para 22 (a), (b), (c) and (d) of the plaint. A decree is also passed for damages for a sum of Rs.10 lacs in favour of the plaintiff and against the defendant. The plaintiff shall also be entitled to actual cost. Necessary details shall be filed by the plaintiff within two weeks from today. 13. The defendant is also directed to hand over all the goods that were received by them on superdari from the local commissioner within a period of two weeks from today. Plaintiff on receipt of such goods is entitled to destroy the same. JULY 06, 2018/v corrected and released on JAYANT NATH, J. CS(COMM) 69/2017 Page 6 of 6