Delhi High Court
Sandisk Llc vs Manish Vaghela & Ors. on 6 July, 2018
$~OS-1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 06.07.2018
+ CS(COMM) 69/2017
SANDISK LLC ..... Plaintiff
Through Mr.Prithvi Singh, Adv.
versus
MANISH VAGHELA & ORS. ..... Defendants
Through None.
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 2005. 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
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 2005. 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, 1999. 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
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 www.amazon.in being sold by
an entity known as "mmshop". The same memory cards were also being
made available for sale on www.shopclues.com., 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 4th December, 2016. Upon enquiry, defendant no.2
confirmed that he had a current stock of about 2000-3000 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
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
camera" has been copied in entirety from the product packaging of the
plaintiff by the defendants.
(iv) 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, 1957. 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 07.02.2017. The local commissioner has filed his report dated
21.03.2017. About 800 products were seized which had infringed the trade
CS(COMM) 69/2017 Page 5 of 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/-.
11. 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.
JAYANT NATH, J.
JULY 06, 2018/v
corrected and released on 23.07.2018
