Delhi High Court
Sandisk Llc vs Ishu Narang on 11 April, 2018
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 857/2016
SANDISK LLC ..... Plaintiff
Through Mr.Prithvi Singh with Mr.Utkarsh
Joshi, Advocates.
versus
ISHU NARANG .....Defendant
Through None
% Date of Decision: 11th April, 2018
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J: (Oral)
I.A. 4478/2018
1. Present application has been filed under Order XIII-A, Rule 2 read
with section 151 of the Code of Civil Procedure, 1908, for summary
judgment.
2. It is pertinent to mention that the present suit has been filed for
permanent injunction restraining infringement of trade dress, copyright,
passing off; rendition of account of profits, damages and delivery up. The
prayer clause in the present suit is reproduced hereinbelow:-
"26. It is, therefore, prayed that the following reliefs may be
granted to the Plaintiffs:
a) An order for permanent injunction restraining the
defendants, their partners, proprietors, servants, agents
and all others in active concert or participation with them
from manufacturing, selling, offering for sale, advertising,
directly or indirectly dealing in packaging and/or
products that are identical or deceptively similar to the
products bearing the plaintiff's trademarks SANDISK,
with/without identical or deceptively similar product
packaging, product get-up, trade dress, colour scheme,
layout, overall look and feel as that being used by the
plaintiff or passing off their goods as those of the plaintiff
or doing business in a manner as may suggest a
connection or association with the plaintiff;
b) An order for permanent injunction restraining the
defendants, their partners, proprietors, servants, agents
and all others in active concert or participation with them
from manufacturing, selling, offering for sale, advertising,
directly or indirectly dealing in packaging and/or
products which infringe the plaintiff's copyright in the
artistic work comprised in the colour scheme, product
layout or any substantial part thereof;
c) An order for rendition of accounts of profits directly or
indirectly earned by the defendants from the infringing
activities and wrongful conduct and a decree for the
amount so found due to be passed in favour of the
plaintiff;
d) An order for delivery up to the plaintiff by the defendants
of all infringing goods, advertising material, blocks, dies
etc. bearing the plaintiff's marks and/or product literature
that appears on its packaging for the purposes of
erasure/destruction;
e) A sum of Rs.20,01,600/- for a decree of damges as valued
for the purposes of this suit towards loss of sales,
reputation and goodwill of the plaintiff's trademarks and
copyright caused by the activities of the defendants;
f) An order as to the costs of the proceedings;
g) Any further order as this Hon'ble Court may deem fit and
proper in the facts and circumstances of the case."
3. Vide order dated 29th May, 2015 this Court granted an ex parte ad
interim injunction in favour of the plaintiff and against the defendant. The
relevant portion of the ex-parte injunction order is reproduced hereinbelow:-
"9. Accordingly, till the next date of hearing, the defendant No.1 as
also the unknown/undisclosed persons arrayed in the suit as
defendant No.2/John Doe, their servants, agents, distributors,
assigns, etc., are restrained from manufacturing, selling, offering for
sale, directly or indirectly dealing in adaptors for memory cards
under the trademark, "SANDISK" or any other mark independently
or in conjunction with other words that is identical and/or deceptively
similar to the plaintiff's registered trademark, "SANDISK". The
defendants are also restrained from using the label, get up, trade
scheme, etc. on their product as it used by the plaintiff."
4. On 29th May, 2015, the learned Predecessor of this Court also
appointed a Local Commissioner. During the local commission, Mr. Ishu
Narang, trading as M/s Arya Impex was found selling counterfeit products
infringing the plaintiff's trademark and vide order dated 14th February, 2017,
he was impleaded as defendant no.2. He was proceeded ex parte vide order
dated 08th March, 2018.
5. Vide order dated 20th September, 2017 , the suit was decreed qua
defendant no.1 in view of the joint compromise application filed by the
parties under Order XXIII Rule 3.
6. The contentions and submissions advanced by learned counsel for the
plaintiff are as under:-
i. The plaintiff is a company organized and incorporated under the laws
of State of Delaware and has been using the trademark SanDisk since
1988 for consumer electronic goods all over the world.
ii. The plaintiff is one of the world's largest dedicated provider of flash
memory storage solutions under the mark SANDISK and has been
directly selling its products in the Indian market since 2005. 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 using the flash memory, controller and firmware technologies.
iii. The annual revenue generated by the plaintiff in the year 2011 from
the sale of its products under the mark SANDISK was US$ 5.66
Billion. The plaintiff made an expenditure of US$513 million on
advertising and research and development.
iv. 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 2005 and 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 SanDisk logo.
v. In last week of May, 2015, the plaintiff came to know that large
quantities of counterfeit SanDisk memory cards were being sold in the
market. The Local Commissioner seized a total of 890 infringing
goods on 10th June 2015 from the premises of defendant no.2.
vi. Learned counsel for plaintiff states that the total value of goods seized
during the local commission from the premises of the defendant was
Rs.4,45,000/- He prays that the suit be decreed in accordance with
para 26(a), (b) and (f) of the plaint as well as damages of
Rs.4,45,000/-.
7. Order XIII-A of the Code of Civil Procedure, 1908, empowers this
Court to pass a summary judgment, without recording evidence, if it appears
that the defendant has no real prospect of defending the claim.
8. In the opinion of this Court, defendant no.2 has no real prospect of
defending the claim as the defendant has not filed its written statement.
9. This Court is also of the view that the defendant is liable to pay to the
plaintiff for the value of goods seized by the Local Commissioner and the
legal costs incurred by the plaintiff.
10. Consequently, the suit is decreed in favour of the plaintiff and against
defendant in terms of para 26(a), (b) and (f) of the plaint as well as
Rs.4,45,000/- for the value of goods seized at the premises of the defendant.
The costs shall amongst others include the lawyers' fees as well as the
amounts spent on purchasing the court fees. The plaintiff is given liberty to
file on record the exact cost incurred by it in adjudication of the present suit,
if not already filed. The defendant shall hand over the goods seized by the
Local Commissioner to the plaintiff for destruction on 14 th May, 2018.
Registry is directed to prepare a decree sheet accordingly. Accordingly, the
present suit and application stand disposed of.
MANMOHAN, J
APRIL 11, 2018
Sp/KA
