The Sandisk Marks (M/S Sandisk Corporation Vs Ramjee & Ors.)

The suit was filed in October 2014 against certain unknown persons who were selling counterfeit SanDisk Micro SD memory cards through a large number of stalls set up across at Daryaganj, Delhi. An ex-parte ad interim injunction was granted by the Delhi High Court in favour of SanDisk Corporation and against the unknown defendants on 17th October 2014. Moreover, Commissioners were appointed to seize the counterfeit products and identify the infringers.

The infringers identified by the Commissioners were later impleaded into the suit as Defendants. After perusing the evidence including the documents submitted by the Commissioners, the Court found that the Defendants had infringed the trademarks of SanDisk Corporation. The plaintiff SanDisk LLC, previously known as SanDisk Corporation, is registered in the United States of America.

The plaintiff has been involved in the business of flash memory storage solutions for a significant amount of time and is working under the trademark 'SanDisk'. The plaintiff had expanded his market globally and sells more than two million products, each day all over the world.

The memory cards of the plaintiff bearing the mark 'SanDisk' are manufactured and used in mobile phones, computers and other consumer electronics. The Plaintiff claims to have registered its trademarks in over 150 countries with respect to the mark 'SanDisk'. In addition to this, the plaintiff claims to have done his registration of the wordmark 'SanDisk' and Logo-mark 'SanDisk’.

Besides the plaintiff who has been holding the copyright of its unique packaging style, which the plaintiff claims are an artistic work and is protected within the meaning of Section 2(c) of the Copyright Act, 1957. As a result of having an extensive market by advertisement through various modes, research works and on account of excellent quality of their products, the plaintiff's 'SanDisk' mark enjoys immense goodwill and having a reputation in both India and worldwide.

The plaintiff became aware that there are certain unknown persons who are selling counterfeit SanDisk Micro SD memory cards through a large number of stalls set up all across the pavements in the makeshift Sunday markets at Daryaganj, Old Delhi.

The packaging of these counterfeit with memory cards which are being identical to that of plaintiff's bearing the trademark 'SanDisk' of the plaintiff in an identical manner. Since it was impossible to identify the names of such persons primarily because they were fly-by-night operators, these unnamed and undisclosed persons were arrayed as 'John Doe/s' initially. Present suit has accordingly been filed praying for relief of permanent injunction and seeking a restraint on the infringement of the trademark and copyright of the plaintiff. Restraint on passing off, delivery up of goods and damages to the tune of Rs.20,00,000/- has also been prayed for.

The Local Commissioners in their reports identified the sellers of the counterfeit products of the plaintiff as Mr Ramjee, Mr Munna Kumar and Mr Vikas Jain. These proposed defendants were then impleaded as defendant

No. 1, defendant

No. 2 and defendant

No. 3 respectively,

in terms of the order dated 13.03.2015. The local commissioners had also seized 4500 packets of the infringing memory cards bearing the identical SanDisk logo and packaging. The plaintiff has established and proved his case. Photographs of the counterfeit products when compared with those of the plaintiff's bearing the trademark 'SanDisk' (Ex.PW1/8(colly)) clearly show that the infringing products are identical in all aspects.

It is clear that the defendants have copied the trademark and logo of the plaintiff's in all respects. This adoption of the trademark of the plaintiff’s work is considered to be fraudulent and is done with a completely malafide intention and has caused huge losses to the plaintiff which is not only in monetary terms but in terms of belittling their reputation and goodwill. Accordingly,

the suit of the plaintiff is decreed and by way of the permanent injunction, the defendants, their partners, proprietors, servants and agents and all others acting for and on their behalf are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in products identical to the products bearing the plaintiff's trademark 'SanDisk' and 'SanDisk logo' and the 'Red Frame' logo, with identical product packaging, product get-up, colour scheme, layout, overall look and feel as that being used by the plaintiff and from passing off their goods as those of the Plaintiff and

also which infringes the exclusive copyright rights which have been granted to the plaintiff in the artistic work composition in the SanDisk product packaging, the 'Red Frame' Logo, colour pallets, structural product layout or any other substantial part thereof. The defendants are also directed to destroy all the infringing goods, advertising material, blocks, dies etc bearing the plaintiff's mark and the product literature appearing on its packaging. The plaintiff has also claimed damages.

In the affidavit by way of evidence (Ex.PW1/A) it has been reiterated that the use of the infringing trademark by the defendants has caused huge losses to the plaintiff not only in monetary terms but also to the goodwill and reputation of the plaintiff. The plaintiff has also made out a case for entitlement of damages and is awarded damages quantified at

Rs. 15 lacs/-. Cost of the suit also is granted in favour of the plaintiff. Decree sheet is drawn. File be consigned to record room.

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